Opinion
Civil Action No. 15-137-LPS
09-28-2016
INTERNATIONAL BUSINESS MACHINES CORPORATION, Plaintiff, v. THE PRICELINE GROUP INC., KAYAK SOFTWARE CORPORATION, OPENTABLE, INC., and PRICELINE.COM LLC, Defendants.
MEMORANDUM ORDER
At Wilmington this 28th day of September, 2016.
WHEREAS, the Court has considered the parties' letter submissions, (D.I. 189, 194), relating to Plaintiff International Business Machines Corporation's ("Plaintiff or "IBM") requests for relief regarding certain source code issues in connection with the pending discovery-related motion, (D.I. 180), as well as the parties' arguments made during the September 23, 2016 teleconference with the Court;
NOW, THEREFORE, IT IS HEREBY ORDERED that:
1. With respect to IBM's request that the Court order that Defendants Kayak Software Corporation ("Kayak"), OpenTable, Inc. ("OpenTable") and priceline.com LLC ("Priceline") (collectively, "Defendants") supplement their responses to Interrogatory Nos. 8 and 9 to identify documents sufficient to show how the Accused Instrumentalities carry out the identified functionality, (D.I. 189 at 3-4), the Court GRANTS-IN-PART and DENIES-IN-PART the request as follows. To the extent that any non-source code documents exist that describe the functionality in question and have not yet been identified, (id. at 3), the Court GRANTS IBM's request and ORDERS that Defendants shall supplement their responses by no later than October 12, 2016. In these supplemental responses, Defendants shall describe and identify above-referenced documents sufficient to show how the referenced functionality works with regard to the Accused Instrumentalities.
2. However, to the extent that IBM's request seeks an order requiring Defendants to "identify[] those portions of the computer source code that implement the functionality in question[,]" (id.), the Court DENIES IBM's request. Defendants have indicated that they have provided (or will soon provide, in the case of Priceline) "written 'road map[s]' to the relevant source code repositories [produced,] including a description of the functionality generally contained within such repositories[.]" (D.I. 194 at 3) Beyond that, Defendants have represented that "no such log [identifying what portions of the code contribute to the functionality of the web site] exists and it would be time consuming and burdensome to create." (Id.) Therefore, Defendants represent that armed with the road maps and the source code, "'the burden of deriving or ascertaining [the requested information] will be substantially the same for either party'" and therefore Defendants have properly complied with Federal Rule of Civil Procedure 33(d) by referencing the source code in response to these Interrogatories. (Id. at 4 (quoting Fed. R. Civ. P. 33(d))
3. In similar circumstances, where a plaintiff has access to the source code and the task of requiring a defendant to sift through its source code to identify accused features would be unduly burdensome, courts have denied requests like IBM's here. See Apple Inc. v. Samsung Elecs. Co. Ltd., No. 12-CV-0630-LHK (PSG), 2013 WL 1563253, at *1-2 (N.D. Cal. Apr. 12, 2013) (denying Apple's motion to compel a "'complete response'" to its interrogatory requesting that Samsung "'[i]dentify from the Source Code produced ... all files that relate to the Accused Features and functionality of the Accused [] Products'" where "Apple has made allegations regarding the features of Samsung's products; Samsung has made source code available for Apple to evaluate how those features operate [and] Samsung has no obligation to search its source code to extract the portions it thinks Apple thinks infringe"); CIF Licensing, LLC v. Agere Sys. Inc., Civil Action No. 07-170-JJF, 2009 WL 187823, at * 1-2 (D. Del. Jan. 23, 2009) (denying the plaintiff's motion to compel the defendants to provide a detailed answer to interrogatories designed to "find ... specific sections of [the defendants'] source code that perform specific functions claimed in the patents at issue" where the "[p]laintiff already has adequate access to the information it seeks, if that information exists" and "[defendants' and [p]laintiff's experts would undertake essentially the same process to glean the requested information from the source code").
IBM has explained that a primary reason for the difficulty it faces in parsing through Defendants' source code is that the thousands of produced source code files "include both source code that contributes to the functionality of the Accused Instrumentalities ('live code') and source code that does not ('dead code')—and Defendants have not identified which is which." (D.I. 189 at 3) OpenTable's Federal Rule of Civil Procedure 30(b)(6) deponent, Bryce Catlin, was questioned during his September 16, 2016 deposition about whether he would be capable of discerning what portions of the produced source code constitute live code and what portions constitute dead code. (D.I. 194 at 3 (citing D.I. 195, ex. 2)) Mr. Catlin responded that while "[i]t would be challenging to do that. . . there are off the shelf tools that you could use to do that" such as "code coverage tools[,]" (D.I. 195, ex. 2 at 65), which IBM has not yet requested from Defendants, (D.I. 194 at 3). To the extent such navigational tools exist that would aid IBM in its analysis of Defendants' source code in this respect, and IBM requests of Defendants that such a tool be installed, the Court expects that Defendants will continue to comply with such requests if reasonable. (See id.); see also Apple, 2013 WL 1563253, at *2.
4. With respect to IBM's request that the Court order that Defendants provide a witness to testify with respect to Topics 1 and 2 from IBM's Third Notice of Deposition issued to the three Defendants at issue, pursuant to Federal Rule of Civil Procedure 30(b)(6), (D.I. 189 at 4; D.I. 194 at 4), the Court DENIES the request. The Court agrees with Defendants that (1) "it would be unduly burdensome [on Defendants] to prepare corporate witnesses on the topics, which cover details of the thousands of files made available for review[;]" and (2) because the "topics are framed to paraphrase claim limitations, [they are] thus . . . de facto contention deposition categories and more properly the subject of expert testimony[.]" (D.I. 194 at 4); see also, e.g., Callwave Commc'ns LLC v. AT&T Mobility LLC, Civil Action Nos. 12-1701-RGA, 2015 WL 4039813, at *1 (D. Del. June 29, 2015) (denying the plaintiff's request for a court order requiring the defendant to "present a witness to testify on the structure and function operation of the [defendant's] source code[,]" agreeing with the defendant that "it would be impossible to prepare a witness on the millions of lines of source code [defendant] has produced" and "to compel the 30(b)(6) witness to testify regarding the functionality of a source code would inappropriately shift the burden of analyzing and interpreting the code to the defendants").
Nothing about the Court's decision here prohibits Plaintiff from narrowing Topics 1 and 2 and further meeting and conferring with Defendants' counsel as to whether a deposition could include inquiry as to a narrowed version of the content described in those topics. --------
5. With respect to IBM's request that the Court order that Defendants make available source code computers at the depositions of witnesses who testify about source code, (D.I. 189 at 4), the Court DENIES IBM's request in light of Defendants' concerns with respect to the request, (D.I. 194 at 4), and in the absence of any authority from IBM suggesting that this should be required.
/s/_________
Christopher J. Burke
UNITED STATES MAGISTRATE JUDGE