United States District Court, D. New Jersey
HIGH 5 GAMES, LLC, a Delaware Limited Liability Company, f/k/a PTT, LLC, Plaintiff/Counterclaim Defendant,
DANIEL MARKS, an individual; JOSEPH MASCI, an individual; BRIAN KAVANAGH, an individual; MARKS STUDIOS, LLC, an entity d/b/a GIMME GAMES; ARISTOCRAT TECHNOLOGIES, INC., an entity; ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LIMITED, an entity; ARISTOCRAT LEISURE LIMITED, an entity; PRODUCT MADNESS, INC., an entity; GRANT BOLLING, an individual; JOHN SMITH(s) 1-7; and XYZ COMPANIES 1-7, Defendants/Counterclaim Plaintiffs.
ORDER & OPINION OF THE SPECIAL MASTER
M. CAVANAUGH, U.S.D.J.
matter comes before the Special Master upon Plaintiff High 5
Games, LLC's ("H5G") motion to compel the
production of source code from defendants Daniel Marks,
Joseph Masci, Brain Kavanagh, Grant Boiling, Marks Studios,
LLC ("Marks Studios"), Aristocrat Technologies,
Inc. ("ATI"), Aristocrat Technologies Australia Pty
Ltd. ("ATA"), Aristocrat Leisure Limited
("ALL"), and Product Madness, Inc. ("Product
Madness")(collectively, "Defendants"). After
considering the submissions of the parties, based upon the
following, it is me opinion of the Special Master that
HSG's motion is Granted.
History of the Dispute
November 9, 2016, United States Magistrate Judge Mark Falk
signed the parties' Stipulation and Order Regarding
Source Code ("Source Code Stipulation"), which
governs the production of source code in this matter. The
Source Code Stipulation provides that "[s]ource code and
executable code relating to the Parties' respective
technologies are properly discoverable in this action."
December 8, 2017, H5G disclosed its source code expert,
Michael S. Fagan. Pursuant to Section I.E of the Source Code
Stipulation, Defendants then had five business days to object
to disclosure of their source code to Mr. Fagan. Defendants
did not object. Mr. Fagan, on behalf of H5G, then began
reviewing Defendants' source code, which included source
code for approximately 80 games. Review was conducted on
December 19, 2017, January 2, January 3, January 5, January
9, January 10, and January 11, 2018.
to H5G, Mr. Fagan identified certain deficiencies with
Defendants' source code production, including missing
source code files and directories. H5G asserts that Mr. Fagan
also generated an exception report, indicating files that
were missing from Defendants' source code production. In
light of these alleged deficiencies, on January 12, 2018, H5G
requested that Defendants produce missing source code files.
Thereafter, on January 26, 2018, Defendants advised that they
had "re-collected the source code." According to
H5G, Mr. Fagan then identified a relevant source code file,
vector.h, which was included in the re-collected source code
but that had not been previously produced. Because Defendants
had only produced recollected source code for one game, on
January 12, 2018, H5G requested updated source code
production for all other games at issue. On February 27,
2018, the parties conducted a meet and confer. On March 12,
2018, Defendants made available the additional source code.
January 25, 2019, H5G requested that Defendants' source
code be made available January 30 through February 1, 2019,
so that Mr. Fagan could conduct additional review. H5G
alleges that while Defendants did not deny its request,
Defendants did not confirm the requested review dates.
According to H5G, it then became apparent that Defendants
would not make the source code available thus it reached out
to the Special Master and filed the present motion to compel.
Arguments of the Parties
argues that additional review of Defendants' source code
is necessary to prepare for depositions and to determine the
extent of Defendants' improper use of H5G's
confidential source code. H5G argues that Defendants are
attempting to stymie its reliance on and access to source
asserts that source code is clearly relevant given that the
Source Code Stipulation admits that source code is properly
discoverable. Thus H5G argues that the Source Code
Stipulation alone provides grounds for H5G to inspect
Defendants' source code. However, H5G also points to the
broad and liberal discovery permitted under the Federal Rules
of Civil Procedure and argues that source code is reasonably
calculated to lead to the discovery of admissible information
because source code will assist in determining how
Aristocrat's games operate in H5G's patent
infringement claim. H5G further argues that source code will
show the extent of Defendants' improper use of its trade
secrets and confidential materials. H5G maintains mat there
is no burden to Defendants since Defendants have already
collected the source code.
argues that it needs access to Defendants' source code to
determine how Defendants' accused games operate with
relation to its patent claims. H5G claims that analysis of
source code is prominently cited within the infringement
contentions for the '852 patent. H5G further argues that
while its claims do not require source code to infringe, they
certainly anticipate that source code is one manner to
determine how "instructions stored on a memory" is
executed by a processor, as claimed. H5G argues that
Defendants' assertion, that game sheets are the only
relevant evidence necessary for this case, is untrue as game
sheets do not address a claim element that Defendants insist
must be addressed in claim construction-replacing the
reserved symbol. H5G asserts that unlike game sheets, review
of Defendants' source code shows precisely how this
purported insertion is performed and whether it infringes
inasmuch as it involved replacement.
also argues that source code plays a critical evidentiary
role in H5G's trade secret and breach of contract claims.
H5G argues that documents produced by Mr. Boiling show that
he took documents containing source code authored by H5G and
improperly used it as a basis for creating Defendants'
now-accused games. H5G argues it is imperative to review