A recent decision from the Central District of California held that a deposition of the author of source code, or similar engineers, cannot be withheld until the producing party, i.e., the party providing the witness, is satisfied that the pinpoint infringement contentions are sufficient. In so holding, the Court indicated that such a determination typically is fact-specific and that given the circumstances in this case the deposition was relevant and not an abuse of the discovery process.
In this instant case, the defendant took the position that until the plaintiff provided sufficient pinpoint citations to the source code, it would not permit the deposition of its principal systems architect over its source code. The defendant expressed its concern that, absent such pinpoint citations, the plaintiff would use the deposition as a "fishing expedition." The plaintiff, on the other hand, argued that it could not supplement its infringement contentions to provide pinpoint citations to the source code until it took the deposition. Both sides supported their positions with expert testimony. Thus, the Court was faced with the proverbial "chicken and egg question."
In resolving the question in the plaintiff's favor, the Court stated that it did not find any case that "per se restricts a party's ability to take a deposition of a software writer contingent upon its providing pinpoint source code citations." The Court further explained that "in cases like this, the mere production of source code may not be the final answer to the question of when the receiving party is mandated to provide more specific or pinpoint infringement contentions than it did before it received the source code, or even after receipt of it." Setting aside the question of when a party is mandated to provide pinpoint infringement contentions, the Court stated that "[w]hile it may be the case (which the Court will only observe as an aside) that a party cannot use such depositions to develop infringement contentions, it would also seem to be reasonable for a party to utilize such depositions to develop more precise contentions as to infringement. Again, such an inquiry should be fact-specific, and in this case, the Court believes that [the plaintiff] had made out a sufficient case that it has not received adequate technical documents or source code, and that it does require depositions of [defendant's] software engineers in order to provide more focused infringement contentions." Finally, the Court did not find any harm to the defendant that would be caused by such a deposition and also refused to limit the deposition to the pinpoint infringement contentions identified by the plaintiff.
This case illustrates that a party having information that is relevant to an infringement claim bears a heavy burden resisting the discovery of such information on the grounds that the infringement contentions do not have pinpoint citations. While courts, like the one here, may not allow a party to take discovery in order to establish its infringement contentions, courts likely will find it is reasonable to allow a party to take discovery regarding its infringement contentions in order to further develop and refine them.
Nomadix, Inc. v. Hewlett-Packard Company, et. al., 2-09-cv-08441 (C.D. Cal. August 10, 2011)