Source Code Custody

Source Code Custody and Control is Defendant’s Responsibility, Court Rules: eDiscovery Case Law

eDiscovery Case Week follows up with yesterday’s dispute about a horse with today’s dispute about source…code! In R & R Packaging, Inc. v. Evenflo Co., No. 5:20-CV-05095 (W.D. Ark. April 11, 2022), Arkansas District Judge P.K. Holmes III granted the plaintiff’s motion to compel discovery on several items, finding that source code custody and control is the defendant’s responsibility. He also granted the motion for sanctions, “concluding that R&R is entitled under Rule 37(a)(5) to recover its reasonable expenses incurred in making this motion, including attorney fees”.

Case Discussion

In this patent dispute over technology that alerts users when a child may have been forgotten in a car seat, the plaintiff claimed that after disclosing sensitive technical information about their technology’s design and function to the defendant, the defendant broke off contact and then released a product of its own, called “SensorSafe,” despite being aware of the plaintiff’s then-pending patent applications.

Most of the discovery disagreements revolved around these issues: (1) the latest iteration of the defendant’s SensorSafe system, called “SensorSafe 3.0”; and (2) the defendant’s relationships with a third-party company called “Seibert Williams Glass LLC” (“SWG”) and a Czech company called “CookieLab.”

With respect to SensorSafe 3.0, the defendant claimed that the plaintiff’s complaint and infringement contentions only formally accuse SensorSafe versions 2.0 and 2.1 of infringement (as SensorSafe 3.0 was still in development when the complaint was filed). The defendant partnered with SWG to develop its SensorSafe products, and with CookieLab to develop a SensorSafe mobile phone application.

There were several specific topics of dispute associated with the plaintiff’s motion to compel, which included documents in the possession of SWG and Cookielab – essentially source code.

Judge’s Ruling

Regarding the dispute over SensorSafe 3.0, Judge Holmes stated: “The Court has reviewed both R&R’s complaint and its initial infringement contentions regarding the 943 patent…Neither of these documents limits R&R’s accusations to a particular product version. Rather, R&R’s initial infringement contentions repeatedly identify the ‘Accused Product’ as the ‘SensorSafe System,’…and R&R’s complaint describes the ‘Accused Products’ as ‘child safety seat systems … that are equipped with a ‘SensorSafe’ device or buckle’. Although version 3.0 apparently was still in development when the complaint was filed, the complaint’s ‘Accused Products’ section explicitly includes product versions that were then currently under development…The objection that SensorSafe 3.0 is not an accused product is not a valid basis for Evenflo to withhold production of materials that are otherwise responsive to R&R’s discovery requests.”

Regarding the defendant’s relationship with SWG and Cookielab, Judge Holmes stated: “R&R has presented a consulting agreement between Evenflo and SWG plainly stating that ‘[a]ny intellectual property developed or conceived by’ SWG relating to SensorSafe ‘shall be promptly disclosed to Evenflo in writing and shall be the sole property of Evenflo.’…The Framework Services Agreement under which the SLA was concluded states that all technical materials prepared by CookieLab in connection with SensorSafe ‘will become and remain Client’s sole property.’…It also requires CookieLab to ‘guarantee that the Client has … access’ to that material ‘at any time,’ and to ‘provide to Client all such material or documentation’ within seven days of ‘a request by Client.’”

Continuing, Judge Holmes stated: “In light of the foregoing evidence, the Court finds that SWG’s and CookieLab’s SensorSafe materials are within Evenflo’s ‘control’ for purposes of Rule 34. The objection that Evenflo somehow lacks the legal authority or practical ability to obtain SensorSafe documents or information from SWG or CookieLab is not a valid basis for Evenflo to withhold production of materials that are otherwise responsive to R&R’s discovery requests.”

Finding that source code custody and control is the defendant’s responsibility, Judge Holmes stated: “The Court has already found above that SWG’s and CookieLab’s SensorSafe materials are within Evenflo’s “control” for purposes of Rule 34. To whatever extent Evenflo does not understand SensorSafe source code sufficiently well to discern which portions are relevant to R&R’s infringement allegations, then it is Evenflo’s obligation either to acquire a sufficient understanding of its own product to identify and produce responsive materials or else to instruct persons at SWG and CookieLab who already possess such knowledge to identify and produce the responsive materials. To the extent Evenflo’s objection is one of proportionality or undue burden, the Court rejects this argument because Evenflo has not made any concrete showing as to the time or expense that would be involved in producing SensorSafe source code…Finally, to whatever extent Evenflo’s objection is that it should not have to produce source code for SensorSafe 3.0 because the latter is not an accused product, the Court rejects this objection for the same reasons already given in its preliminary rulings earlier in Section III of this opinion.”

As a result, Judge Holmes granted the motion to compel on the source code, finding that source code custody and control is the defendant’s responsibility, and also granted the motion to compel on the other data sources in dispute and the motion for sanctions as noted above.

So, what do you think? Do you agree with the Court’s finding that source code custody and control is the defendant’s responsibility? Please share any comments you might have or if you’d like to know more about a particular topic.

Case opinion link courtesy of eDiscovery Assistant, an Affinity partner of eDiscovery Today.

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