Case 4:23-cv-01147-ALM Document 60 Filed 11/12/24 Page 1 of 4 PageID #: 2574
`
`United States District Court
`EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`§
`§
`§
`§
`§
`
`
`
`Civil Action No. 4:23-CV-1147
`Judge Mazzant
`
`
`§§§
`
`R2 SOLUTIONS LLC,
`Plaintiff,
`
`v.
`
`DATABRICKS, INC.,
`Defendant.
`
`
`
`
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`Pending before the Court is the parties’ Joint Motion for Entry of Disputed Protective
`
`Order (Dkt. #52). Having considered the Motion and the relevant pleadings, the Court finds that
`
`the Motion should be GRANTED in part.
`
`BACKGROUND
`
`This case arises out of an alleged patent infringement by Defendant on U.S. Patent No.
`
`8,190,610 (the “’610 Patent”), disclosing a method for improving MapReduce programming
`
`methodology by independently processing map data on at least two related but possibly
`
`heterogenous datasets (Dkt. #1 at p. 1; ’610 Patent, Abstract). The parties agreed on all aspects of
`
`the Protective Order but one provision regarding the tools that will be available on the source code
`
`review computer (Dkt. #52 at p. 1). Specifically, the parties dispute whether Plaintiff should not
`
`only be able to review source code in native electronic format but also compile and execute the
`
`code (Dkt. #52 at p. 4).
`
`LEGAL STANDARD
`
`Under Federal Rule of Civil Procedure 26(c), the Court “may, for good cause, issue an
`
`order to protect a party or person from annoyance, embarrassment, oppression, or undue burden
`
`
`
`
`
`

`

`Case 4:23-cv-01147-ALM Document 60 Filed 11/12/24 Page 2 of 4 PageID #: 2575
`
`or expense.” FED. R. CIV. P. 26(c)(1). The burden is upon the party seeking the protective order
`
`“to show the necessity of its issuance, which contemplates a particular and specific demonstration
`
`of fact as distinguished from stereotyped and conclusory statements.” In re Terra Int’l, 134 F.3d
`
`302, 306 (5th Cir. 1998) (internal quotation marks and citation omitted). Therefore, a protective
`
`order is warranted in those instances in which the party seeking it demonstrates good cause and a
`
`specific need for protection. See Laundry v. Air Line Pilots Ass’n, 901 F.2d 404, 435 (5th Cir. 1990).
`
`The Court has broad discretion in determining whether to grant a motion for protective order
`
`because it is “in the best position to weigh fairly the competing needs and interests of parties
`
`affected by discovery.” Seattle Times Co. v. Rhinehart, 467 U.S. 20, 36 (1984); see Harris v. Amoco
`
`Prod. Co., 768 F.2d 669, 684 (5th Cir. 1985).
`
`ANALYSIS
`
`As an initial matter, the Court grants all mutually agreed-upon provisions in the Protective
`
`Order (See Dkt. #52-1; Dkt. #52-2). As to the disputed provision regarding source code compilation
`
`and execution (See, e.g., Dkt. #52-1 at p. 9, ¶ 12(g)), the Court finds that Defendant need not
`
`provide software to compile and execute source code to meet its discovery obligation—source code
`
`in its electronic native format suffices. See GeoTag, Inc. v. Frontier Comm’ns Corp., No. 2:10-CV-
`
`569, 2013 WL 12134192, at *4 (E.D. Tex. Jan. 8, 2013) (“Generally, a party need not produce
`
`source code in any other format than electronic native form.”).
`
`Plaintiff contends that the Court should order Defendant to provide software capable of
`
`executing source code because compiling and executing the code would streamline Plaintiff’s
`
`review process (Dkt. #52 at p. 3). There is no risk in doing so, according to Plaintiff, because “any
`
`compiled/executed code would be confined to the stand-alone, non-networked computer just like
`
`
`
`2
`
`

`

`Case 4:23-cv-01147-ALM Document 60 Filed 11/12/24 Page 3 of 4 PageID #: 2576
`
`all of the un-compiled source code” (Dkt. #52 at p. 3). That Defendant has offered a customer-
`
`facing version of its platform to Plaintiff is insignificant because it does not allow Plaintiff to
`
`determine which code segments are responsible for a particular feature (Dkt. #52 at p. 4).
`
`In response, Defendant first asserts that it has no obligation to simplify Plaintiff’s source
`
`code review (Dkt. #52 at p. 5) (citing Gree, Inc. v. Supercell Oy., No. 2:19-CV-311-JRG-RSP, ECF
`
`No. 134 at 1–3 (E.D. Tex. Dec. 17, 2020)) (rejecting a request for the producing party to “build[]
`
`a game environment” for an executable file to run correctly). Defendant further contends that the
`
`Protective Order does not permit the loading of mock datasets for processing onto the non-
`
`networked review computer (Dkt. #52 at p. 6). Even if the Protective Order did, Defendant
`
`presents two concerns that allegedly warrant denying Plaintiff’s request to run executable code.
`
`First, executing the code would require producing “an incredibly voluminous amount of source
`
`code, which would span features, functionalities and other components of the Databricks platform
`
`that are completely irrelevant to any issue in this litigation” (Dkt. #52 at p. 6). Second, executing
`
`the code as it operates in the ordinary course of business “would require the computer to be
`
`connected to a larger environment, thereby creating a security risk” (Dkt. #52 at p. 7).
`
`The Court agrees with Defendant. While reviewing source code in its native electronic
`
`format is less convenient for Plaintiff, the burden of producing voluminous, irrelevant code
`
`coupled with the security risk in executing the code in an atypical network environment would
`
`unduly prejudice Defendant. This is especially true given that Defendant has offered to exceed its
`
`discovery obligations by providing a customer-facing application (Dkt. #52 at p. 7). This, of course,
`
`does not demonstrate source code operation to the same degree that a code-executing environment
`
`would, but it provides more insight to Plaintiff than the rules require without incurring a significant
`
`
`
`3
`
`

`

`Case 4:23-cv-01147-ALM Document 60 Filed 11/12/24 Page 4 of 4 PageID #: 2577
`
`burden or security threat to Defendant. Requiring more would demand further investment by
`
`Defendant with little guarantee that any additional information Plaintiff obtained would uniquely
`
`affect Plaintiff’s infringement theories in a way that native electronic code could not. In essence,
`
`the amount of information available for Plaintiff to review is the same irrespective of the source
`
`code’s executability; under Plaintiff’s preferred approach, however, Defendant would incur risk
`
`and expenses to reduce the effort necessary for Plaintiff to substantiate its infringement theory.
`
`Furthermore, the Protective Order does not even allow mock-data sets to be used (Dkt. #52 at
`
`p. 6). That is, even if Plaintiff had access to executable code, any effort to replicate the accused
`
`functionality as it operates in the real world would be futile because code without data is simply a
`
`set of instructions with nothing to instruct. Consequently, the Court adopts the mutually agreed-
`
`upon provisions of the Protective Order submitted by the parties and Defendant’s position on the
`
`disputed provision (Dkt. # 52-2 at p. 9, ¶ 12(g)).
`
`CONCLUSION
`
`
`
`It is therefore ORDERED that the parties’ Joint Motion for Entry of Disputed Protective
`
`Order (Dkt. #52) is hereby GRANTED in part. The Court will separately enter a Protective Order
`
`in this case.
`
`
`
`IT IS SO ORDERED.
`
`
`
`4
`
`