Yeda Research and Development Company Ltd. v. iCAD, Inc.

Background

The court had previously entered a protective order under Federal Rule of Civil Procedure 26(c). The parties submitted a stipulated first amendment seeking to change the source-code review procedure. According to the order, the COVID-19 global pandemic prevented the parties and their experts from conducting the review in person at counsel’s offices, and the parties sought a remote-review process because of the pandemic and travel-related health concerns.

Amended source-code review process

The amendment limits access to highly confidential information and highly confidential source code to people identified in the protective order, including approved experts and consultants who satisfy the order’s notice, objection, and confidentiality requirements. The producing party must maintain the source code on a secure computer at its primary outside counsel’s office or another mutually agreed location, subject to third-party confidentiality obligations.

An approved source-code reviewer may receive a password-protected review computer configured not to recognize input/output devices such as USB drives, portable hard drives, or smartphones. The producing party generally need not provide more than two review computers. The reviewer may connect remotely through a virtual private network or a similarly protected encrypted connection, together with two-factor authentication. The connection is available for up to five business days during normal business hours after 48 hours’ written notice, with additional access available by agreement until discovery closes. Only one reviewer may connect at a time, and the producing party may visually monitor the review through an internal camera to prevent unauthorized recording, copying, or transmission.

Confidentiality and use restrictions

The amendment prohibits disclosure of the source code except as authorized by the protective order and limits its use to investigating the claims and defenses in this case. Reviewers and other authorized persons may not use information learned from the source code in another dispute or proceeding. Authorized counsel and experts may take notes in a Microsoft Word document, but may not copy source code into those notes unless the parties agree. The notes must be treated as highly confidential source code.

The order generally prohibits copying, emailing, transmitting, uploading, downloading, photographing, or otherwise duplicating the source code. It permits limited paper copies for court filings, pleadings, expert reports, depositions, or trial, subject to the order’s restrictions. Without the producing party’s prior written approval, the receiving party may not print more than 75 pages in total during the action. Additional pages require a showing of good cause and may be challenged as irrelevant or disproportionate.

The amendment also bars certain authorized persons from filing and prosecuting patents in the same technology field on behalf of the receiving party for two years after final termination of the action. Experts who receive source code must agree not to engage in software development work directly or indirectly intended for commercial purposes relating to diagnostic imaging for two years after issuance of a final, non-appealable decision resolving all issues in the case.

Ruling

The court entered the stipulated first amendment to the protective order, modifying Section 4’s source-code disclosure and review provisions. Judge Kevin Nathaniel Fox signed the order on November 4, 2020.