Prothonotary Tabib’s recent decision in Guest Tek Interactive Entertainment v Nomadix considers a number of discovery-related issues that arose in the context of this action pursuing claims of infringement of four patents related to the plaintiff’s business, described by Court as “providing systems and methods that allow their clients (such as hotels and conference centres) to offer, regulate and manage internet access by guests to their venues”.
Shortly prior to the date set for discovery the defendant had produced software source code to the plaintiff under a “Counsels’ Eyes Only” (“CEO”) designation. This occurred following a Case Management Conference and despite the late production and limited access to these documents, discoveries proceeded.
Following discovery, the plaintiff moved for a further and better affidavit of documents, for an order permitting its external expert (a former employee) access to the defendant’s source code and related relief. The specific issues that arose were:
- Is the source code relevant?
- If the source code is relevant, should the Defendant be relieved of its obligation to produce it to the Plaintiff?
- Should access to source code, if it needs to be produced, and other similarly sensitive technical documents already produced as CEO, be restricted to outside counsel for the Plaintiff and experts other than Mr. McMillan?
- Should the Defendant be required to produce an affidavit of documents sworn to by an employee of the Defendant other than Mr. McCreevy?
- Should the Plaintiff be at liberty to conduct discovery of the Defendant on documents for which CEO designation has been removed by agreement or order of the Court as part of the follow-up round of discovery?
The Court noted that while extensive affidavit evidence had been filed, no cross-examinations had been conducted. This did not however lead the Court to accept the evidence as true. The Court also noted that while some of the affidavits included opinions, there was no expert evidence before as none of the affiants had sought to be qualified as an expert under Rule 52.2 of the Federal Courts Rules. Accordingly, to the extent opinions were given, the Court gave them very little weight.
Relevance of source code
The Court noted that it was common ground that the object code for the software was relevant, but not readable by humans. In the face of assertions by the defendant that the source code was not “necessary”, the Court also took note of the fact that the defendant’s affiant had admitted that at least in respect of one of the patents-in-suit it would be “helpful” to have the source code. The Court wrote:
…even the mere helpfulness of a document for understanding the central issue in dispute is a sufficient basis to establish its relevance for the purposes of a party’s documentary disclosure obligations.
…[t]he concept of relevance, for the purpose of documentary discovery under the Federal Courts Rules is quite different from and much wider than the concept of necessity.
The Court observed that the parties to this action were litigating in what the Court called “mirror proceedings” in the United States (not involving US equivalent patents, but patents involving some of the same functionalities as are in issue in this action). In the US litigation, the parties had agreed that the plaintiff should produce its source code to the defendant.
In considering the request for an order for production of source code, the Court observed:
…What makes source code so relevant in this litigation is that it contains the human-readable version of the object code, one of the most relevant documents in this litigation.
 What makes source code so special, and must be vigorously protected, are the additional features it contains and that are not reflected in the object code, such as the programming structure and programmer’s comments. As mentioned above, these features are likely sufficiently relevant to justify their production.
The Court held that the source code ought to be disclosed and produced and rejected the defendant’s request only the relevant parts of the source code should be ordered to be produced, rather than the entire document.
Relief from disclosure
Recognizing that it has the discretion to grant relief from disclosure, the Court refused to exercise that discretion in the defendant’s favour. In so ruling, the Court noted that the evidence failed to demonstrate that the source code lacked probative value and rejected the claims construction advanced by one of the defendant’s affiants (to the effect that the claims were directed to the result obtained, rather than how that result was obtained).
The Court clearly acknowledged the “highly confidential” nature of the source code and accepted that it should be provided “the very highest level of protection.” After discussing the protective measures in place in the US “mirror litigation”, the Court permitted disclosure on a CEO basis. Interestingly, in-house counsel for the plaintiff was excluded, on the basis that his  “…level of technical proficiency would not allow him to give meaningful input or instructions to external counsel in respect of source code.”
The defendant also objected to permitting the plaintiff’s external expert, a former employee, having access to its source code. This objection was dismissed because the evidence established that the consultant had no ongoing involvement in the plaintiff’s software development activities.
Replacing the affiant of the affidavit of documents
This request for relief was dismissed and the defendant was simply ordered to produce a further and better affidavit of documents.
As further production was ordered the Court quite sensibly directed that the plaintiff was entitled to further discovery, including on the late produced CEO designated technical documents. In so doing, the Court noted that the plaintiff had earlier chosen to postpone discovery on these issues until the defendant’s obligation to produce source code had been ruled upon.
A copy of the decision may be found here.