United States: Electronic Discovery & Information Governance - Tip Of The Month: Discovery Of Source Code--Fashioning A Protective Order

Last Updated: January 4 2016
Article by Kim A. Leffert and Graham M. Buccigross

Keywords:Source Code, computer, analytic tools


A technology company is involved in patent litigation that will require the production of source code. The general counsel wants a protective order that will protect the source code to the maximum extent possible.

Production of Source Code

In patent, trade secret and copyright litigation where computer-related software is accused or otherwise relevant, the parties must engage in the discovery of source code. Source code is the set of instructions for how a computer program operates, written in human-readable language. Source code is typically complex, very lengthy (sometimes reaching several million lines of programming), and requires expert review, analysis and explanation. Companies whose software is integral to their products and services protect their source code zealously, considering it to be among their most confidential information. As a result, they will not make it available for discovery without the entry of a suitable protective order.

In December 2015, the Sedona Conference, a nonprofit research and educational institute whose mission is to study and advance law and policy regarding electronic discovery, intellectual property rights, antitrust law and complex litigation, published a "Commentary on Patent Litigation Best Practices: Case Management Issues from the Judicial Perspective Chapter." Best Practice 19 in this Commentary focuses on the discovery of source code. It states: "The court should require the parties to address in the Rule 26 joint discovery plan how and where they believe any computer source code production should be made available to the parties and experts." The Commentary suggests that discovery in patent litigation cannot begin in earnest until there is a protective order regarding how, when and where source code will be produced. As a result, the Sedona Conference recommends that the court require that before the first case management and scheduling conference, the parties should set forth in their Rule 26 joint discovery plan exactly how and where they believe any source code should be produced. This way the court can resolve issues before any undue delay or expense is incurred.

Because source code is guarded so closely, the producing party typically provides it for inspection rather than producing copies of the source code. Typically, only outside counsel for the inspecting party and pre-approved experts can inspect code. Further, inspection typically takes place on a stand-alone (i.e., non-networked) computer.

Protective Order Issues

When preparing a protective order governing the production of source code, areas of consideration include the following:

  • Use of analytic tools. A source code expert will typically need to use analytic/forensic tools to search the source code (e.g., Grep). To avoid disputes, the protective order should address whether this is permitted and, if so, which tools are permitted. The inspecting party may further wish to specify that such tools be loaded onto the review computer before inspection begins.
  • Place. Inspection typically occurs at the offices of the producing party's litigation counsel. However, some parties insist that inspection take place at a certified escrow facility (e.g., Iron Mountain). If inspection is to take place at an escrow facility, the protective order should specify who will cover the escrow fees.
  • Timing. Source code inspection is typically conducted during the producing party's counsel's normal operating hours and after a specified minimum amount of notice.
  • Copying. Some producing parties insist that the access ports and other functionality on the inspection computer be disabled in order to prevent unauthorized copying. Inspecting personnel may also be prohibited from bringing memory devices into the inspection room. Further, some protective orders specify how notes may be recorded.
  • Printing. There are invariably restrictions on the overall amount of source code that can be printed. These restrictions are typically based on the quantity of pages and the overall proportion of source code. A carefully written protective order also specifies that review of the source code in the first instance is to occur via the stand-alone computer, rather than by printing out the code en masse. The inspecting party may wish to specify that it will have access to the printed pages at the same time it is inspecting the electronic code.
  • Experts. The producing party typically requires that the inspecting party's expert(s) be pre-approved by the producing party after the inspecting party has produced information sufficient to allow the producing party to determine whether the potential expert has a potential conflict. There are usually presumptive limitations on the number of experts allowed to inspect the source code.
  • Production. Once the source code is printed, the producing party is typically given a few days to produce the printed copies to the inspecting party. The printed pages are often endorsed with a special source code designation defined in the protective order.
  • Review and access to printed production. The inspecting party is generally prohibited from keeping an electronic copy of the source code and may be required to log access to the printed copies. Provisions should be made so that a copy can be delivered to the inspecting party's expert for further review, and for court filings. Further, the parties may wish to specify who may be shown the printed production at deposition, and whether the source code may be disclosed to mock juries.
  • Prosecution bar. Protective orders in patent cases invariably contain a "prosecution bar," which forbids the attorneys who review the code from prosecuting patent applications related to the technology at issue for a specified amount of time. For further guidance, see the Sedona Conference Commentary on Patent Litigation Best Practices: Case Management Issues from the Judicial Perspective Chapter, Best Practice 20.
  • Unauthorized disclosure. The protective order should address what steps must be taken should there be an unauthorized disclosure.

Note that some courts have developed model protective orders that govern discovery until a specifically tailored protective order can be entered. See N.D. Cal., Stipulated Protective Order for Litigation Involving Patents, Highly Sensitive Confidential Information and/or Trade Secrets (2014), available at http://www.cand.uscourts.gov/model-protective-orders.


Protective orders relating to the production of source code frequently contain specific provisions not necessarily found in many protective orders. It can be most efficient for the parties to negotiate the protective order prior to the initial case management conference, so they can present any disputes to the court at that time. To avoid disputes over an entered protective order, consider a protective order that is as specific as reasonably possible.

Originally published on December 2015

Visit us at mayerbrown.com

Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe – Brussels LLP, both limited liability partnerships established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.

© Copyright 2016. The Mayer Brown Practices. All rights reserved.

This Mayer Brown article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions