The Financial Peril of Failing to Produce Source Code

Christopher T. Rucinski

IP Litigation

May 21, 2019

During discovery, litigants request and receive information and documents from each other that are relevant to the case so that both sides can learn the facts and develop their legal strategies around them. As technical experts, we often help clients draft such requests for technical documentation as well as source code for computer programs. The particular wording of such source code requests matters because it defines the scope of source code to be included in the production as well as the format in which it’s produced.

Most frequently, source code is requested to be produced in the same format that it is kept in the “ordinary course of business.” Such a format ensures that source code experts like us receive source code forms that are as easy to interact with as the forms the producing company’s software engineers have access to. Since source code is often produced in a small conference room at a law office where source code experts have little control over the environment, avoiding other possible impediments to their analysis is crucial for an efficient review to take place.

As with other types of discovery requests, companies sometimes do not comply with discovery requests for source code in their entirety. Sometimes objections to discovery requests are merited if the requested material is completely irrelevant to the dispute, but often companies express only a vague concern about the security surrounding the production. Companies are surely entitled to be concerned about security in general, but it’s rare for such objections to cite previous examples where computer source code was stolen or otherwise misappropriated as a result of being produced through discovery; in fact, we are not aware of any such examples that exist.

Regardless of whether producing parties succeed in their objections, sometimes they do not produce the code as requested. Sometimes they produce only partial source code for certain products on the unilateral assertion that all other code is irrelevant, an assertion which often turns out to be incorrect. Most egregiously, we once encountered a defendant that not only withheld large amounts of their code, but also produced the few source code files in directories associated with each patent in the case rather than in directories as organized in the ordinary course of their business. Eventually, that defendant produced much more of the requested code in the appropriate format, but they also had to pay the cost for us, the experts hired by the plaintiff, to review their production again.

So please think carefully when responding to production requests for source code because withholding production or producing it in an inappropriate format can be costly.