tivo's motion to compel source code

Case 2:11-mc-00201-LDD Document 1 Filed 07/22/11 of 16

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because they already have the code ready for production. TiVo requests oral argument

on this motion.

Respectfully submitted,

DILWORTH PAXSON LLP

By: /s/ Christopher H. Casey_____________ Christopher H. Casey, Esq. 1500 Market Street, Suite 3500E

Philadelphia, PA 19102-2101 (215) 575-7131

Dated: July 22, 2011 Attorneys for Plaintiff TiVo Inc.

Of Counsel: ROBINS, KAPLAN, MILLER & CIRESI L.L.P. Ronald J. Schutz [email protected] David P. Swenson [email protected] Michael A. Collyard [email protected] Andrea L. Gothing [email protected] 2800 LaSalle Plaza 800 LaSalle Avenue Minneapolis, MN 55402-2015 Telephone: (612) 349-8500 Facsimile: (612) 339-4181


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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF PENNSYLVANIA

TiVo Inc., a Delaware corporation,

Plaintiff, vs.

Verizon Communications Inc., et al.

Defendants.

Miscellaneous Case No. ______________ Pending in the United States District Court for the Eastern District of Texas as Civil Action No. 2:09-cv-257-DF TiVo’s Memorandum in Support of its Motion to Compel the Production of

Motorola Source Code

Introduction

This motion stems from a subpoena TiVo served on Motorola to produce source

code that is directly at issue in TiVo’s patent infringement case against Verizon in the

Eastern District of Texas. In that case, TiVo accuses Verizon of infringing TiVo’s patents

covering DVR functionality. Motorola manufactured and created part of the Verizon

DVR products and source code that TiVo accuses of infringement. None of that source

code is in Verizon’s possession, custody, or control so it all needs to be produced from

Motorola. TiVo’s motion should be granted for two basic reasons:

• The source code is highly relevant to Verizon’s infringement: Motorola doesn’t dispute this and previously agreed to produce all 29 versions of the source code that TiVo is requesting by July 1st.

• Motorola won’t suffer any burden in producing the code: In its own words,

“Motorola is prepared to produce all 29 versions for TiVo’s inspection “but is simply refusing to let TiVo review them.

TiVo was forced to bring this motion because—out of nowhere—Motorola now

refuses to produce this code. After many months of talking about producing this code,


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Motorola now claims that its production would be premature because TiVo and

Verizon should agree to treat a small handful of the software versions at issue as

representative of all the software versions that could be relevant to TiVo’s infringement

claims. But as TiVo explained to Motorola, TiVo tried to reach an agreement with

Verizon but as Motorola recognized, “those efforts have so far proved fruitless.”

Verizon doesn’t have access to Motorola’s code or any real knowledge about it so

Verizon can’t make representations that any versions of Motorola’s code are

representative of the other versions of the code.

Motorola, on the other hand, does have the ability to make those kinds of

representations. And although TiVo has asked Motorola—on multiple occasions—to do

so, Motorola blatantly refuses to talk with TiVo or respond to any of TiVo’s emails or

phone calls on this issue. The TiVo v. Verizon case is scheduled for trial in October so

TiVo had no choice but to bring this motion. TiVo therefore respectfully requests that its

motion be granted and Motorola be required to immediately produce the requested

source code.

Argument

I. Motorola’s source code is highly relevant to TiVo’s patent infringement claims against Verizon.

TiVo sued Verizon on patents related to DVR (digital video recording)

functionality.1 Specifically, TiVo accuses Verizon’s FiOS DVR products of patent

1 Declaration of Peter M. Routhier (“Routhier Decl.”) at ¶ 2.


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infringement.2 These DVR boxes bring television signals from Verizon’s FiOS service to

its subscribers’ TVs. They also provide the ability, among other things, to record and

pause live television—the types of functions covered by TiVo’s patents.

Motorola manufactured and created some of the Verizon DVR products that

TiVo accuses of infringement.3 Some of the accused functionality is executed, in part,

through Motorola software. This Motorola software is responsible for carrying out

certain functions that are the subject of TiVo’s infringement contentions in the Verizon

litigation (such as storing and retrieving multimedia data onto the boxes’ hard drives).

The Motorola source code is not in Verizon’s possession, custody, or control, so TiVo

can only get this code from Motorola and not Verizon.4

TiVo served Motorola with a subpoena to produce documents sufficient to show

the functionality of Verizon’s Motorola DVR boxes.5 Motorola ultimately agreed to

produce source code that would be sufficient to show this functionality.6 Motorola then

produced the two currently deployed versions of its source code for the Verizon DVR

boxes that Motorola manufactured and created.7 After Motorola produced the versions

2 Id.

3 Id. at ¶ 2.

4 Id. at ¶ 3.

5 Id. at ¶ 2, Ex. B.

6 Id. at ¶ 5, Ex. D.

7 Id.


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of its source code to TiVo, it explained that this code was sufficient to show the DVRs’

functionality, but later confirmed that the produced versions may not be representative

of all deployed versions of Motorola’s code.8 Motorola apparently has 29 other versions

of source code that were deployed in the marketplace. TiVo is requesting that Motorola

be compelled to produce all of those versions.

A. Motorola agrees that its source code is relevant.

Motorola doesn’t dispute that its source code is relevant to TiVo’s patent

infringement claims against Verizon. Quite the opposite, Motorola told TiVo in early

June that it was already collecting the code, and a few weeks later, Motorola confirmed

that it would produce all of its source code by July 1st.9 This alone is sufficient to

compel Motorola to produce its code.

B. Motorola’s declaratory judgment action against TiVo was stayed because Motorola’s source code is relevant. Even if Motorola hadn’t agreed that the source code was relevant, its actions

against TiVo confirm that it is relevant. On February 28, 2011, nearly a year and a half

after TiVo’s lawsuit against Verizon started, Motorola filed a declaratory judgment

action against TiVo. In that case Motorola seeks, among other things, judgment that it

does not infringe the TiVo patents that TiVo asserted against Verizon.10 The fact that

Motorola seeks declaratory judgment of non-infringement based on the same Verizon

8 Id.

9 Id. at ¶ 7, Ex. E.

10 See Motorola Mobility, Inc. v. TiVo Inc., Civ. No. 5:11-cv-53 (E.D. Tex. filed Feb. 28, 2011).


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DVRs that use the source code at dispute in this motion, confirms that Motorola’s code

is relevant to TiVo’s infringement claims against Verizon.

The Eastern District of Texas recently issued an order that further demonstrates

that Motorola’s source code is a relevant component of the underlying dispute between

TiVo and Verizon. There, the Eastern District stayed Motorola’s declaratory judgment

action because “[d]ecisions made in [TiVo’s lawsuit against Verizon] will likely

streamline or simplify certain issues involved in [Motorola’s declaratory judgment

action].”11 As the court explained:

Clearly, there is overlap of the legal issues before this Court in Motorola’s and Verizon’s claims for declaratory judgment relief . . . . There is also substantial overlap of some factual issues . . . . Contrary to Motorola’s argument, TiVo asserts questions of infringement in the [lawsuit against Verizon] are not limited to the software Verizon might add to [Motorola’s boxes]. ‘Rather TiVo’s infringement contentions turn largely on the operation of Motorola-supplied hardware and software components.’12

That court recognized the relevance of Motorola’s contribution to the Verizon DVRs.

And, by staying the case for efficiency purposes, the court assumed Motorola would

provide full discovery of its contribution to those DVRs in TiVo’s suit against Verizon.

C. Case law also holds that Motorola’s source code is relevant. Motorola can't deny that the 29 deployed versions of its source code are relevant

to TiVo’s patent infringement claims. Source code is routinely held to be relevant in

11 See id. at Order, Dkt. No. 34 at 9 (E.D. Tex. July 6, 2011).

12 Id. at 8.


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patent infringement cases like this one.13 And many courts have held that multiple

versions of source code, including past versions of code—like those at issue here—are

all relevant to patent disputes and must be produced.14 For example, federal district

courts in Delaware and New York have ordered the production of past versions of

source code even though some other versions had already been produced.15

The fact that Motorola is a third-party makes no difference—Motorola’s source

code is still relevant and must be produced. Third-party discovery is governed by the

same Rule 26(b)(1) relevancy standard as party discovery.16 As a result, federal courts

have explicitly found that third-party source code is relevant and needs to be produced

pursuant to a third-party subpoena.17 As the Northern District of California explained,

“[i]nasmuch as [third party] code bears upon the operation of [third party] chips that

13 See, e.g., Sensormatic Electronics Corp. v. WG Security Prods., Inc., No. 2:04-cv-

1672006 U.S. Dist. LEXIS 97108 (E.D. Tex. Feb. 9, 2006) (granting motion to compel source code in a patent infringement case).

14 E.g. Bigband Networks, Inc. v. Imagine Communications, Inc., 2010 U.S. Dist. LEXIS

72740 at *3-6 (D. Del. July 20, 2010); New York University v. E.piphany, Inc., No. 05-cv-1929, 2006 U.S. Dist. LEXIS 9157 at *16 (S.D.N.Y. Mar. 6, 2006).

15 Id.

16 Essex Insurance Co. v. RMJC, Inc., No. 01-4049, 2008 U.S. Dist. LEXIS 54036 at *3 (E.D. Pa. July 16, 2008) (“The scope of discovery under Rule 45, which governs the issuance of subpoenas. . . is subject to the contours of Rule 26(b)(1).”). Rule 26(b)(1)’s relevancy standard permits discovery that “appears reasonably calculated to lead to the discovery of admissible evidence.” Fed. R. Civ. P. 26(b)(1).

17 Negotiated Data Solutions LLC v. Dell, Inc., No. 09-80012, 2009 U.S. Dist. LEXIS

25026 at *7-8 (N.D. Cal. Mar. 17, 2009).


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allegedly provide some of the accused functions in [the defendant’s products], this

court finds that it is relevant within the broad standard for discovery under Fed. R. Civ.

P. 26.”18 The same rationale applies here. Because Motorola’s code provides some of the

accused functionality in Verizon’s DVRs, the requested code is relevant and must be

produced.

II. Motorola will not suffer any undue burden by producing the requested source code.

A. Motorola has already collected the 29 versions of source code and is simply refusing to let TiVo review them.

On July 1st, Motorola’s counsel told TiVo:

Motorola is prepared to produce all 29 versions for TiVo’s inspection on the source code review computer in our Boston office.19

Motorola cannot claim now that it will suffer any burden by making the source code

available for TiVo’s review. This representation should be dispositive of this issue.20

18 Id.

19 Routhier Decl. at ¶ 8, Ex. F.

20 To the extent that Motorola challenges TiVo’s subpoena on burden grounds, Motorola has the “heavy burden of establishing that compliance with the subpoena would be ‘unreasonable and oppressive.’” Composition Roofers Union v. Graveley Roofing Enterprises, Inc., 160 F.R.D. 70, 72 (E.D. Pa. 1995) (quoting Heat & Control, Inc. v. Hester Industries, Inc., 785 F.2d 1017, 1023 (Fed. Cir. 1986)). Motorola cannot meet this burden. Setting aside Motorola’s admission that it has the requested source code ready to go, TiVo and Motorola have already identified a location for the production of source code and ensured that all necessary security and technical features are in place. All Motorola has to do is hit the load button to copy those files onto the secure computer for TiVo’s review, and allow TiVo to review them. This certainly isn’t unreasonable or oppressive to Motorola—a gigantic multinational corporation with extensive resources. See In re Automotive Refinishing Paint Antitrust Litigation, 229 F.R.D. 482,


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But Motorola still refuses to produce the source code to TiVo. Motorola’s only

explanation for this is that the production would be premature because TiVo and

Verizon were trying to reach an agreement to treat a small handful of software versions

of Verizon’s DVRs as representative of all deployed versions.21 But as TiVo explained to

Motorola, the parties have been unable to reach an agreement like that and as Motorola

itself recognized, “those efforts have so far proved fruitless.”22

The reason for this is two-fold. First, Verizon won’t agree to a stipulation.

Second, Verizon doesn’t have enough knowledge about Motorola’s source code to be

able to do it. Verizon recently represented to TiVo that because it doesn’t have access to

Motorola’s source code in the normal course of its business, Verizon doesn’t have in-

depth knowledge about Motorola’s source code and can’t tell TiVo what, if any,

versions of Motorola source code would be representative of the deployed versions.23

But Motorola and TiVo don’t need Verizon’s participation to reach this type of an

agreement on Motorola’s source code. In an effort to make it even easier on Motorola,

TiVo has told Motorola many times that it would be willing to enter into an agreement

with Motorola to limit the versions of source code that Motorola would have to produce

if Motorola can identify the versions of code that are representative of Motorola’s

496 (E.D. Pa. 2005) (taking the size and resources of the subpoenaed party into consideration when determining whether it was unduly burdened).

21 Routhier Decl. at ¶ 8, Ex. F.

22 Id. at ¶ 13, Ex. J.

23 See id. at ¶ 3.


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deployed versions. But Motorola has refused to do this. TiVo has reached out to

Motorola many times in the last month to talk about this type of an agreement but

Motorola won’t respond to TiVo’s letters, emails or phone calls.24 There is nothing more

TiVo can do other than bring this motion to compel the versions of code that Motorola

promised to produce and is ready to produce.

B. TiVo has taken reasonable steps to avoid imposing any undue burden on Motorola.

Motorola can’t say with a straight face that TiVo hasn’t done this. TiVo has

worked very hard to reduce any purported burden or expense on Motorola to respond

to TiVo’s subpoena. When TiVo first subpoenaed Motorola it requested a production by

September 10, 2010, but it gave Motorola a number of extensions that ultimately

resulted in Motorola producing the currently deployed version of its source code in

March 2011.25 And after TiVo requested the other versions of source code in April, TiVo

again accommodated Motorola for several months to either make its production or to

reach an alternative agreement. TiVo's efforts here more than satisfy its obligation to

take reasonable steps to avoid undue burden or expense.

In fact, TiVo’s efforts actually went beyond the “reasonable steps” standard

because TiVo continued to try to work with Motorola to reach an agreement to limit the

number of source code versions that needed to be produced or reviewed even after

24 Id. at ¶ 9.

25 Id. at ¶ 4.


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Motorola agreed to produce all versions.26 But Motorola flat-out ignored TiVo’s

proposals and invitations to meet. For example, as soon as TiVo requested that the other

deployed versions of Motorola code be produced, it invited Motorola to talk about

reaching an agreement on representative versions. TiVo told Motorola that it would be

willing to talk about reaching this type of an agreement to reduce the number of source

code versions that needed to be produced. But Motorola ignored TiVo’s requests on

multiple occasions. TiVo sent numerous emails and left multiple voicemails that went

unanswered in May, June, and July of 2011.27 Motorola went so far as to not even show

up to a scheduled meet and confer on this subject.28 It is Motorola's own refusal to work

with TiVo in these efforts that necessitated this motion to compel.

Conclusion

Motorola has no basis to continue to refuse to produce the remaining 29 versions

of its deployed source code. There is no dispute that this source code is relevant to

TiVo's infringement claims against Verizon. More importantly, Motorola has agreed to

produce all 29 versions of its code and has it ready to be produced. TiVo therefore

respectfully requests that its motion be granted and Motorola be compelled to produce

26 Id. at ¶ 9.

27 Id. at ¶¶ 9-14.

28 Id. at ¶ 10.


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Certification of Counsel Pursuant to Local Rule 26.1(f)

I, Michael A. Collyard, certify that the parties attempted to resolve this dispute in

good faith, but were unable to do so after a reasonable effort.

Dated: July 22, 2011 /s/ Michael A. Collyard Michael A. Collyard


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Certificate of Service

I, Christopher H. Casey, hereby certify that I caused a true and correct copy of

TiVo’s Motion to Compel the Production of Motorola Source Code, and all supporting

documents, to be served this date upon all counsel of record in the above captioned

cases via electronic mail, and via U.S. mail to counsel for Motorola Mobility, Inc. as

follows:

Brian K. Erickson DLA Piper LLP

401 Congress Avenue, Suite 2500 Austin, TX 78701-3799

Dated: July 22, 2011 s/Christopher H. Casey Christopher H. Casey


UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA

TiVo Inc., a Delaware corporation,

Plaintiff, vs.

Verizon Communications Inc., et al.

Defendants.

Miscellaneous Case No. ______________ Pending in the United States District Court for the Eastern District of Texas as Civil Action No. 2:09-cv-257-DF

ORDER

AND NOW, this ___ day of ______________________, 2011, upon consideration of the

Motion of TiVo to Compel Motorola to Produce Source Code, it is hereby ORDERED AND

DECREED that:

1. The Motion is GRANTED.

2. Motorola is ordered to produce each and every deployed version of its source code, as requested by TiVo’s Motion, within seven days.

________________________________ J.


tivo's motion to compel source code

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