Two Discovery Issues Settled in the Western District of Texas and What It Means for Future Cases
Introduction
Vervain, LLC filed an IP lawsuit against Micron Technology, Inc. claiming patent infringement of its technology related to the Lifetime Mixed Level Non-Volatile Memory System. In this case, the plaintiff requested the court to prevent the defendant from unlawfully infringing or using the asserted patents. The case was filed under presiding Judge Alan D. Albright in the U.S. District Court in the Western District of Texas on May 10, 2021.
Case Overview
Judge Albright in April ruled on two discovery issues in the Vervain, LLC v. Micron Technology, Inc. case (6:21-cv-487). The first dispute was concerning Vervain’s petition for source code printouts to be satisfied, which Micron found the requests excessive. The second issue was to verify whether Vervain’s Infringement Contentions appropriately covered the products for which discovery was originally requested. Both these discoveries can greatly impact the patent case. Results for which will be exemplary for firms involved in similar future cases. Let us break down the case into sections.
Discovery Issue 1
Source Code Printout
This type of argument is commonly witnessed in software patent cases. There are Protective Orders that set the page limits for source code printouts, but they can allow the reviewing party to request additional pages by agreement with the producing party. However, in this case, counsel for Micron Technology denied additional printouts that were requested by attorneys for Vervain stating that over 1500 pages of code were excessive. The counsel maintained its stance even though the production included 10 products and around 160,000 files.
Dispute 1: It called out Vervain for requesting significantly more pages than normally used in citations or witness questions in a petition - 345 pages of prints for one product. Vervain explained that some of the print requests were born from deficiencies in document production, which necessitated requested documents found in the code production.
Dispute 2: Another argument Micron made was that the code was at risk of being exposed to the outside world, something both sides in these disputes should take seriously. The reviewing party will no doubt take great care with the code that is produced, but the idea that such a relatively small amount of code could lead to serious corporate espionage is impractical.
Resolution: Anyone that has spent time digging through source code in these types of productions, finding relevant portions among millions of lines of code, knows how little is covered in a printed page. In today’s world of software, there often are many layers of abstraction that can lead to dozens of files relevant for explanations for even short passages of code. In his Discovery Dispute Order, Judge Albright ordered Micron to produce the code promptly and Vervain to store it securely.
Discovery Issue 2
Infringement Contention
The second issue was whether an Infringement Contention that charted one type of product, in this case, a solid-state drive (SSD), could be leveraged into discovery for Micron products of other types. Typically, the type of memory used in SSDs uses some form of static or dynamic wear leveling, like in this case, to prevent some portions of the drive from dying prematurely.
Dispute 1: Vervain argued that the data movement mechanism used to extend the lifespan of flash products covered in the patent was similar, regardless of the type of flash that sat under it. They also stated observations from the source code so far gave a reliable basis to believe that the other Micron products they requested discovery for would be operating similarly.
Dispute 2: Micron insists that the chart only entitled Vervain to discover SSD products and that all the products accused did not even contain the elements required by the patent. For this situation, Judge Albright referenced guidance he provided in March for the IGT v Zynga case (W-21-CV-00331-ADA).
Resolution: That decision allowed IGT discovery for uncharted products based on them being “reasonably similar” to the charted products, turning down Zynga’s request that each of roughly 100 gaming systems needed to be charted before obtaining discovery. Thus, Judge Albright decided that Vervain had not shown that the products listed but uncharted were “reasonably similar”. He ordered Vervain to amend their Infringement Contentions using the previous guidance in less than a week.
Key Case Insights
The first takeaway from the decision is that, while the number of print requests for each case will be different, reviewing parties have significant leeway when making source code print requests. Specifically, when they are needed to support expert reports, depositions, or other valid work. Recognizing this can reduce the time spent arguing over what will be deemed “reasonable”.
The second issue gave some insight into the low, but still present, bar for uncharted products. Considering this is important when drafting initial Infringement Contentions because connecting the uncharted products to the exemplary products charted in the ICs could help avoid the huge burden of amending the Contentions in a tight timeframe. Doing this analysis also offers a good amount of time to check whether the same theory will hold true across the accused products.
On the production side, ICs should be evaluated before supplying source code and technical documents. Ensuring that the intentionally low bar is met can reduce the accused product list or at least force the requesting party to substantiate the products are “reasonably similar”.
Conclusion
In the final verdict, the court granted dismissal of Vervain’s infringement claim and ordered them to dismiss all the claims made against Micron without prejudice. The court also granted Vervain leave to file an amended complaint within two weeks. Failing to do so could mean Vervain’s disinterest in taking the case further, eventually leading to the case closure.
You can read the full decision here.