In a recent Order, Magistrate Judge Christopher J. Burke resolved the parties’ various source code and other discovery disputes. International Business Machines Corporation v. The Priceline Group Inc., C.A. No. 15-147-LPS-CJB (D. Del. Sept. 29, 2016). First, Judge Burke granted in part plaintiff’s request that defendants be required to supplement responses to certain interrogatories in order “to identify documents sufficient to show how the Accused Instrumentalities carry out the identified functionality.” Id. at 1-2. Judge Burke granted the request to the extent that “any non-source code documents exist that describe the functionality in question and have not yet been identified,” and explained that defendants “shall describe and identify above-referenced documents sufficient to show how the referenced functionality works with regard to the Accused Instrumentalities.” Id.
Judge Burke, however, denied plaintiff’s request that defendants be required “to identify those portions of the computer source code that implement the functionality in question.” Id. at 2. Judge Burke explained 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 2. Judge Burke further noted that “[i]n 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 [plaintiff’s] here.” Id. at 2-3.
Judge Burke also denied plaintiff’s request that defendants provide a witness pursuant to Rule 30(b)(6) to testify with respect to two topics plaintiff noticed. Id. at 3-4. As Judge Burke explained, “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 “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.’” Id. at 4.
Finally, Judge Burke denied plaintiff’s request that “the Court order that Defendants make available source code computers at the depositions of witnesses who testify about source code,” noting that “absence of any authority from IBM suggesting that this should be required.” Id. at 4.