Important considerations for protective orders involving software expert witnesses

Virtually all patent, copyright, trade secret, and contract dispute matters involving software and source code have a protective order. A protective order is the court mandated set of rules and procedures that applies to those involved in litigation and is similar to a non-disclosure agreement that is commonly used in the software industry, but with the contempt power of the court to back it up.

The protective order generally applies to all of the parties involved in the litigation, including their counsel, and third parties that may produce or come into contact with confidential, proprietary, and similar materials as part of such litigation. Certain participants, such as expert witnesses and consultants, often must sign an acknowledgment to be bound by the terms of the court ordered restrictions in order to have access to confidential, proprietary, and similar materials as part of the litigation. The protective order spells out the handling protocols and restrictions for confidential and proprietary materials of the parties and others who produce materials and information related to the litigation. Most of the time, protective orders are drafted and negotiated between the counsel of both the plaintiff and defendant in consultation with their respective clients. In some instances, the court provides a protective order template and the parties must work within the general parameters of the court’s template.

Software-related disputes involving patents, copyrights, trade secrets, and contracts are prime examples of cases where a well-crafted protective order should be put in place. In such cases, it is typical that third-party software experts will be handling and reviewing the source code/materials, software applications, and related internal development documentation exchanged among competitors and/or adversaries. The protective order is what guides and controls access to these important materials by these third-party software expert witnesses, as well as the attorneys and parties. The protective order will also spell out how confidential and proprietary information should be returned or destroyed at the end of the litigation.

Having served as a software expert witness in over 40 litigation matters involving numerous plaintiffs and defendants, it is surprising how frequently problems pop up when some simple key guidelines are not followed during the protective order drafting/negotiation process. Here are the key guidelines that should be considered when drafting a protective order for a case involving software expert witnesses:

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First, it is important to involve all of the consultants and experts in the drafting and negotiating process

This sounds simple, but all too often critical issues crop up when the software experts are not consulted early and allowed to make suggestions. A qualified and experienced software expert witness should have sound advice for structuring reasonable and efficient methods and protocols for handling confidential and proprietary materials.

Additionally, with the strong push within courts across the country to use more real industry experts, it is important to craft protective order terms that are conducive to experts that are involved in ongoing commercial software development and innovation, and not purely academics. For example, while a protective order is similar to a non-disclosure agreement in the commercial setting, in some instances it broadly defines confidential or protected information based on the producing party’s designation, and does not account for the possibility that such information is not actually confidential information because it is in the public domain, or has been publically disclosed by the producing party, or was independently developed by the receiving party or another party. These categories of information are typically carved out of the confidentiality obligations under a commercial non-disclosure agreement so as not to unreasonably restrict a person’s ability to continue to work or operate his or her business. These common carve outs for defining confidential information should also be included within the protective order to create a regime similar to industry and to avoid a chilling effect on the participation of industry experts.

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Another best practice is to allow the software experts to help drive the specific software, source code, and related materials handling protocols

One thing that both plaintiffs and defendants can usually agree on is a desire to save money in litigation. All too often the confidential and proprietary information handling protocols are negotiated and agreed to by attorneys with a limited perspective on the nature and form factor of software and source code to be reviewed and analyzed by experts. Many procedural hurdles just run up the costs for everyone with only minimal protection benefit, if any. Common sense strategies can be established to all parties benefitting with the help of each side’s experts. A conference between opposing experts with the respective outside counsel is often a good forum for establishing reasonable protocols.

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Staff assistance by the software expert witness

Another important best practice for drafting protective orders is to account for staff assistance by the Software Expert Witness. In our experience, law firm and other service provider staff are often specifically mentioned and addressed in the designated party portion of a protective order, but expert witness staff is not included. We regularly work on large, complex cases that often involve many software applications and millions of lines of source code. We add value to our clients by utilizing our experienced software engineering staff to perform substantial portions of the deep source code review and other “grunt” work efforts. This is common expert witness practice to save cost and allow the testifying expert to focus on key aspects of the case. It is recommended that protective orders reflect this reality and allow for the efficient use of staff by a software expert without issue under the protective order.

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Acknowledgement exhibit page

Finally, a common problem we see with protective orders relates to the acknowledgement exhibit page that is usually signed by an expert agreeing to be bound by the terms of the protective order. While the protective order itself is often meticulously worked through by the parties, some protective orders have acknowledgement exhibits that go beyond “agreeing to be bound to the terms of the protective order” and add a much broader statement whereby the expert agrees to not disclose any information from the case. For example, a sentence could be added that says something like, “Expert agrees to be bound by the terms of this protective order and agrees to not disclose any designated information to any third-party.” This type of language could be interpreted to go beyond agreeing to the terms of the protective order which may have carve outs (described above) and limitations on what is protected and creates broad nondisclosure obligation, which in some instances may even be at odds with critical language in the body of the protective order.  At a minimum such language creates unnecessary ambiguity for software industry experts who are accustomed to having clarity on such important issues.  Therefore, keep the acknowledgement exhibits as a straightforward acknowledgement and agreement to be bound by the protective order and the court’s authority to avoid potential problems with your software expert witnesses.

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By taking these guidelines into consideration, counsel in a complex software litigation matter can create a protective order that safeguards the interests of the clients and allows a workable framework for practicing software industry experts to serve as expert witnesses. The involvement of such practicing software industry expert can be very valuable to the case and court’s ability to clearly understand the key technical and business elements of a software case.