In the United States Court of Federal Claims
SCIENCE APPLICATIONS INTERNATIONAL CORP.,
Plaintiff,
v.
THE UNITED STATES, No. 17-cv-825 Defendant, Filed Under Seal: September 8, 2022 and Publication: September 15, 20221 MICROSOFT CORPORATION,
Intervenor-Defendant,
and
L3 TECHNOLOGIES, INC.,
Third-Party Defendant.
Gwendolyn Tawresey, Troutman Pepper Hamilton Sanders LLP, Washington, District of Columbia for Plaintiff. With her on the briefs is William D. Belanger, Troutman Pepper Hamilton Sanders LLP, Washington, District of Columbia. Thomas L. Halkowski, Fish & Richardson P.C., Washington, District of Columbia for Intervenor- Defendant. With him on the briefs are Ahmed J. Davis, and Kenton W. Freeman, Jr., Fish & Richardson P.C., Washington, District of Columbia.
1 This Memorandum and Order was filed under seal in accordance with the Protective Order entered in this case (ECF No. 34) and was publicly reissued after incorporating all redactions proposed by the parties. (ECF No. 317.) The sealed and public versions of this Memorandum and Order are identical, except for the addition of the publication date and this footnote. MEMORANDUM AND ORDER Plaintiff Science Applications International Corporation (Plaintiff or SAIC) accuses
Defendant the United States (Government or Defendant) of infringing Plaintiff’s patent, which
relates to heads-up displays, “by entering into contracts with Plaintiff's competitors for the
manufacture and subsequent use of night vision goggle weapon systems with specialized heads up
displays that allegedly use Plaintiff's patented technology.” Sci. Applications Int'l Corp. v. United
States, 148 Fed. Cl. 268, 269 (2020); see also Complaint (ECF No. 1) (Compl.) ¶¶ 2, 37.
Intervenor-Defendant Microsoft Corporation (Microsoft) is a contractor that provides such
products to the Government. See Microsoft Corporation’s Unopposed Motions to: Intervene
Pursuant to Rule 24 and Modify Schedule (ECF No. 59). The parties agree that Microsoft’s source
code relating to the Rapid Target Acquisition (RTA) feature is key evidence that may establish
whether Microsoft’s product infringes Plaintiff’s patent. See Transcript of December 9, 2021
Hearing (ECF No. 238) (Dec. 9, 2021 Tr.) at 7:3-11, 22:5-14, 40:5-7. Unsurprisingly, issues
concerning this source code have caused conflict throughout discovery.
Pending before the Court is Plaintiff’s Motion for Costs and Sanctions Under Rule 37 (ECF
No. 272) (Pl.’s Mot.). Plaintiff alleges that Microsoft produced deficient code in September 2021
and provided inaccurate responses to Plaintiff’s interrogatories. Id. at 5-6.2 Plaintiff asserts that
it relied on these purportedly deficient discovery responses in crafting its January 6, 2021
supplemental infringement contentions. Id. Subsequently, Microsoft revised its interrogatory
responses several times and, in March 2022, produced additional source code, even after certifying
on September 18, 2021, that it had “substantially completed” its source code and document
production. Id. at 6. Plaintiff states that Microsoft’s 2022 production and interrogatory revisions
2 Citations throughout this Memorandum and Order refer to the ECF-assigned page numbers, which do not always correspond to the pagination within the document.
2 necessitated a second source code review, for which Plaintiff now moves for reimbursement. Id.
at 6-7. Plaintiff further seeks to prevent Microsoft “from relying on documents and source code
produced after SAIC’s January 6, 2021 supplemental contentions to support its non-infringement
arguments.” Id. at 7. Microsoft opposes on the grounds that it “timely produced substantially all
of the relevant code,” and that the source code it produced in March 2022 is “ancillary code.”
Microsoft’s Opposition to Plaintiff’s Rule 37 Motion (ECF No. 279) (MSFT’s Response) at 4-5.
For the reasons explained below, Plaintiff’s Motion for Costs and Sanctions Under Rule 37 is
DENIED.
BACKGROUND
Familiarity with prior proceedings in this action is presumed. See, e.g., Sci. Applications
Int'l Corp. v. United States, 135 Fed. Cl. 661 (2018); Sci. Applications Int'l Corp. v. United States,
154 Fed. Cl. 594 (2021); Sci. Applications Int'l Corp. v. United States, 156 Fed. Cl. 486 (2021);
Sci. Applications Int'l Corp. v. United States, No. 17-cv-825, 2022 WL 3147518 (Fed. Cl. July 28,
2018). Relevant here, Plaintiff alleges that “Microsoft is providing systems to the Government,
with the Government’s authorization and consent,” that infringe one or more claims of U.S. Patent
No. 9,229,230 (the ’230 patent). Pl.’s Mot. at 7. The ’230 patent is directed to a method and
system for video image registration in a heads-up display. See Pl.’s Mot., Exhibit 3 (ECF No. 273)
(’230 patent) at Abstract. The following claim elements are common to all of the’230 patent’s
claims:3
(a) receive video images from the first video source and from the second video source,
(b) receive motion data indicative of motion of the first and second video sources,
3 Independent claims 15 and 29 — method and computer-readable medium claims, respectively — rephrase operations (a)-(e) using gerunds. See ’230 patent at 26:27-47 (Claim 15), 28:16-38 (Claim 29).
3 (c) identify, based on the received motion data, a part of a first video source image that potentially represents a portion of the external environment represented in a part of a second video source image;
(d) evaluate, based on a comparison of data from the first and second video source images, the identification performed in operation (c); and
(e) display at least a portion of the first video source image and at least a portion of the second video source image such that the second video source image portion overlays a corresponding region of the first video source image portion, wherein the corresponding region represents a portion of the external environment represented in the second video source portion.
’230 patent at 24:25-51 (Claim 1); see also id. at 26:27-30:42 (Claims 15-41).
I. Plaintiff’s Discovery Requests
The present dispute centers on one request for production and two interrogatories. See Pl.’s
Mot. at 7-8. On February 19, 2021, Plaintiff served Request for Production 51 on Microsoft,
seeking the following:
Source Code sufficient to demonstrate
MSFT’s Response, Exhibit E (ECF No. 279-7) (Ex. E) at 3; see Pl.’s Mot. at 7 n.1.
At the same time, Plaintiff “served interrogatories asking Microsoft to identify what source
code is used by the accused Rapid Target Acquisition (‘RTA’) feature (No. 13) and to provide a
list of all source code that has been produced and state whether that code has been on a device
delivered to the Government (No. 14).” Pl.’s Mot. at 7-8. Interrogatory 13 states, “[f]or each
Accused Product, including past and planned versions of Accused products, identify what Source
Code is compiled, linked, and loaded on that Accused Product when the Rapid Target Acquisition
(‘RTA’) feature is used.” Pl.’s Mot., Exhibit 11 (ECF No. 272-10) (Ex. 11) at 3. Relatedly,
Interrogatory 14 states, “[f]or each Accused Product, including past and planned versions of
4 Accused Products, identify what Source Code has been produced in response to any Request for
Production served in this case and indicate whether that code has been compiled on a device
delivered to the Government.” Id. at 4.
On May 28, 2021, Plaintiff then committed to providing supplemental infringement
contentions to Microsoft 90 days after Microsoft certifies “that it has substantially completed
production (source code and non-source code) for that prototype/product.” Plaintiff’s Motion to
Move Agreed-On Contentions Date and Compel Discovery Under Court of Federal Claims Rules
26 and 30 (Pl.’s Mot. to Move Contentions Date) (ECF No. 230), Exhibit 1 (ECF No. 230-1) at 3.
II. Microsoft’s Initial Production and Responses
On September 18, 2021, Microsoft produced the first set of source code for two of the
accused products in this case, the and prototypes. See Pl.’s Mot. to Move Contentions
Date at 2; Pl.’s Mot. to Move Contentions Date, Exhibit 2 (ECF No. 230-2) at 44. This production
included “the repository of code responsible for implementing the RTA feature.” MSFT’s
Response, Exhibit A (ECF No. 279-1) (Ex. A) ¶ 2. On September 27, 2021, Microsoft served
supplemental responses to Plaintiff’s Interrogatories 13-14. See Ex. 11 at 4-6. Microsoft answered
Interrogatory 13 by referencing its answer for Interrogatory 14. Id. at 4. In response to Plaintiff’s
Interrogatory 14, Microsoft stated, inter alia:
Microsoft has produced for inspection source code for software corresponding to the and prototype versions of Microsoft’s , which include the source code directories identified in MSFT-0019467-MSFT-00194731 and MSFT-00194623-MSFT-00194678, respectively. The source code produced for inspection can be compiled, when put in the proper environment, and can then be loaded on to a device to allow the and prototype versions to function, including to perform a prototype version of the Rapid Target Acquisition function. Microsoft further indicates that the source code for the software corresponding to the and prototype version of Microsoft’s has been compiled and delivered on a device to the Government.
Id. at 6.
5 III. The Parties’ Subsequent Discovery Correspondence
Plaintiff quickly challenged the sufficiency of Microsoft’s responses and productions. See,
e.g., Pl.’s Mot., Exhibit 1 (ECF No. 272-1) (Ex. 1); Pl.’s Mot., Exhibit 2 (272-2) (Ex. 2). First, on
September 30, 2021, Plaintiff’s counsel emailed Microsoft’s counsel seeking more definite
responses to Plaintiff’s Interrogatories 13 and 14. Ex. 2 at 3. Microsoft stood by its September
18, 2021 certification of substantial completion of document production, including its production
of source code. Id. at 2. Specifically, Microsoft reiterated that the code directories identified in
its response to Interrogatory 14 “correspond to the software for the and prototype
versions of Microsoft’s , and accordingly, reflect what Source Code is compiled,
liked [sic], and loaded on each Accused Product when the Rapid Target Acquisition feature is
used.” Id. (internal quotations omitted).
Subsequently, after reviewing Microsoft’s produced source code, Plaintiff raised more
detailed objections to the adequacy of Microsoft’s production. See Ex. 1 at 5-6. According to
Plaintiff’s source code expert, Microsoft’s September 2021 code production lacked several crucial
files. See Pl.’s Mot., Exhibit 10 (ECF No. 272-9) (Ex. 10). Plaintiff alleged that the produced
code lacked files necessary to determine whether the accused products receive from
various data sources:
The September 2021 code production included source code files for two versions of the accused device – and . For each version, Microsoft produced the files and , which can . But Microsoft did not produce the corresponding files responsible for . Without these corresponding files, certain interfaces within these files appeared to be inactive or not used. As a result, it was unclear exactly what type of .
Id. ¶ 6(a) (emphasis in original). It further alleged that the produced code lacked files necessary
for :
6 Microsoft’s September 2021 code production for and did not contain the . Instead, Microsoft only produced
.
. . Microsoft produced technical documents in March 2022 confirming that .
Id. ¶ 6(d) (emphases in original).
Plaintiff explained these perceived deficiencies, as well as a few more, in a November 1,
2021 email to Microsoft. See Ex. 1 at 5-6. Specifically, Plaintiff raised six perceived shortcomings
in Microsoft’s production: (1) the produced files did not appear to use ; (2) the
code appeared to be
; (3) the produced code allowed for
; (4) the produced code could
; (5) the production lacked the code that causes
; and (6) the production lacked the ,
which was referenced in the produced source code. Id.
Two weeks later, Microsoft sent an email to Plaintiff addressing these concerns. See id. at
4. Microsoft’s counsel again confirmed “that the source code produced by Microsoft for inspection
includes . . . the code for the RTA function that is compiled, linked, and/or loaded on the two
prototypes, and .” Id. Microsoft also disclosed for the first time “that the produced code
also includes prototype that included a
.” Id. It further explained that the code used to invoke the RTA feature
“is outside the RTA feature and . . . would require production of essentially the entire source code
for the , which would entail production of a vast amount of code that has nothing to
7 do with the RTA feature.” Id. Similarly, Microsoft took issue with the request for the code to
. Id. Finally, Microsoft
clarified that
.” Id.
Plaintiff then flew its experts back to Microsoft’s offices to reanalyze the produced code.
See Pl.’s Mot. to Move Contentions Date at 4; Ex. 1 at 3. Plaintiff’s experts again concluded “that
the produced code is currently configured to use .” Pl.’s
Mot. to Move Contentions Date at 4. When pressed on this perceived defect, Microsoft again
stated that it “stands by its representations . . . that the source code provided for inspection allows
for both .” Pl.’s Mot., Exhibit 7 (ECF No. 272-6) (Ex. 7) at 8.
Microsoft then explained it would not provide “detailed technical information . . . regarding how
the source code functions” through emails between counsel. Id. Instead, it explained that “such
detailed analysis of the specifics of the lines of code involved and how the various files relate to
one another to perform various steps to implement the accused RTA function is, of
course, more suitably addressed via discovery, such as expert analysis of the code.” Id.
IV. SAIC’s Motion for Extension of Time to Supplement Infringement Contentions
On November 24, 2021, the day after Plaintiff’s experts reviewed Microsoft’s source code
for a second time, Plaintiff filed a letter brief seeking additional time to serve the supplemental
infringement contentions it had agreed to serve on Microsoft. See Pl.’s Mot. to Move Contentions
Date. Plaintiff explained that although it had originally agreed to serve supplemental infringement
contentions 90 days after Microsoft certified substantial completion of document production,
which had already occurred, it should not be required to serve updated infringement contentions
because it had “discovered material deficiencies in Microsoft’s production, calling into question
8 both Microsoft’s certification and the methodology that Microsoft has used to search for and
produce documents in this case.” Id. at 2. Specifically, Plaintiff argued that Microsoft (1) failed
to produce relevant software development kits (SDKs) in its initial disclosures, even after Plaintiff
specifically asked for the SDKs; (2) refused to produce documents describing algorithms
referenced in previously produced materials or state that it did not have such additional documents;
and (3) refused to update its discovery responses, specifically to Plaintiff’s Interrogatories 13 and
14, to state which source code is actually run on the accused devices that had been delivered to the
Government. Id. at 2-4. Plaintiff concluded by averring “that the code produced is not the code
that has been used for .” Id. at 4.
Microsoft responded by explaining “that the code produced is the actual code used in the
two accused prototypes.” Letter to Honorable Eleni M. Roumel from Thomas L. Halkowski
Regarding Discovery Dispute (ECF No. 234) at 3. It also explained that its discovery response as
to which code the prototypes use “clarifies that the code could not be compiled on the production
laptop, but that it can be compiled, when put in the proper environment, and can then be loaded to
allow the two accused prototypes to perform the allegedly infringing RTA function.” Id. (internal
quotations omitted). Notwithstanding its contention that it had responded completely to Plaintiff’s
requests, Microsoft committed to supplementing its responses to Plaintiff’s Interrogatories 13 and
14, as Plaintiff had requested. Id. Microsoft further stated that it had located additional SDK
materials and that it would be producing those documents. Id. at 4. Regarding algorithm
documentation, Microsoft explained that documentation is continuously generated as development
on the prototypes proceeds and that it anticipated “providing another general supplement to its
document production early next year.” Id.
9 On December 9, 2021, at a hearing on Plaintiff’s motion for additional time to serve
supplemental infringement contentions, Microsoft again reiterated its position that the code it
produced was what Plaintiff requested: “I’ve confirmed with SAIC in writing that this is the actual
source code that’s in the product — the prototype that went to the Government.” Dec. 9, 2021 Tr.
at 26:23-25. During the hearing, this Court asked Microsoft whether it understood that Plaintiff’s
complaint entailed its inability to see “ of how the product work[s].” Id. at 27:17-
18. Microsoft confirmed that it understood Plaintiff’s complaint and had produced the information
Plaintiff sought:
That’s my understanding of their argument, but as we’ve explained, . . . I’ve consulted with the engineers at Microsoft and I’ve confirmed for SAIC, as we did, I think, in our interrogatory, . . . this is the source code. It allows for both , and that’s not unusual, particularly in a code type form, to have that dual capability because you want to be able to check things and work out some issues by allowing . But we have confirmed . . . that this source code is the stuff that went into the device that went to the Government, the prototype that works on . It couldn’t be any more clear. . . . But our point is we’ve produced it. And, in fact, as I mentioned before, we have a real -- at least in my view, an incentive to produce and make sure they’ve got the best information because what we get back in contentions is only going to be as good as the information we give them. And so we’re trying to give them the best information we’ve got, most up to date information we’ve got.
Id. at 27:23-29:5.
This Court also urged Microsoft to provide more certainty on when it planned to
supplement its responses to Plaintiff’s Interrogatories 13 and 14. Id. at 29:9-11. Microsoft
represented to this Court that it would update its responses within 30 days of the hearing. See id.
at 30:6-8.
After considering the parties’ briefing and arguments, this Court denied in part Plaintiff’s
Motion for an Extension of Time to Serve Its Infringement Contentions. Id. at 46:11-13; Order
Denying in Part Plaintiff’s Motion for Extension of Time to Supplement Infringement Contentions
and Compel Discovery (ECF No. 235) (Order on Mot. for Extension of Time). The Court further
10 noted that “the time has come for . . . some initial infringement contentions.” Dec. 9, 2021 Tr. at
46:14-16. It also explained that Plaintiff could move to amend those contentions with new
evidence as Microsoft supplemented its discovery responses and made additional productions. Id.
at 47:24-48:12. While this Court did not grant Plaintiff’s broad request for an extension of time
based on deficiencies in Microsoft’s discovery responses and productions, it did grant a short
extension, until January 6, 2022, for Plaintiff to obtain source code printouts from Microsoft. Id.
at 51:12-52:4; Order on Mot. for Extension of Time.
V. Post-Hearing Supplemental Discovery Responses and Productions
Following the December 9, 2021 hearing, the parties continued negotiating over source
code printouts. See MSFT’s Response, Exhibit G (ECF No. 279-9). While Microsoft continued
to take a narrow view of the source code to which it believed Plaintiff was entitled as “reasonably
necessary,” it eventually agreed to move discussions forward by identifying the source code files
most relevant to the accused RTA functionality. Id. at 2.
Then, on January 12, 2022, Plaintiff pressed Microsoft for additional information regarding
its source code productions and its prior statements regarding its substantial completion of
document production. See Ex. 7 at 2-3. Plaintiff requested Microsoft identify the that
Microsoft had told this Court were present in the previously produced source code. Id. at 2.
Plaintiff also asked for the identification of the engineer whom Microsoft’s counsel referenced
when stating to the Court that Microsoft had confirmed the produced source code was the
. Id. Microsoft’s counsel refused to answer those questions during the parties’ meet and
confer. Id.; see also Pl.’s Mot., Exhibit 8 (ECF No. 272-7). Microsoft agreed only to provide the
requested information after Plaintiff served an interrogatory, and even then, requested an extension
11 of time to put together a substantive response to support the representations it made to this Court.
See Pl.’s Mot., Exhibit 9 (ECF No. 272-8).
Meanwhile, on January 28, 2022, Microsoft finally supplemented its responses to
Plaintiff’s Interrogatories 13 and 14. See Ex. 11. As with its initial response, Microsoft responded
to Interrogatory 13 by incorporating its answer to Interrogatory 14. Id. Microsoft offered the
following new information for Interrogatory 14:
As SAIC was advised via November 16, 2021, correspondence: (i) the code produced for inspection (see source code directories identified in MSFT- 00194679–MSFT-00194731 and MSFT-00194623–MSFT-00194678) includes, but is not limited to, the code for the that is compiled, linked and executed on the two prototypes, and , that have been delivered to the Government; and (ii) the produced source code includes
. Among the within the files produced for inspection to SAIC is As SAIC was also advised, via December 15, 2021, correspondence, the bulk of the source code concerning the algorithms for the prototype RTA function is located within:
A list of the on the prototype as of December 2021 to implement the are identified in MSFTsc-0000230-MSFT-SC-0000234. A list of the
on the prototype delivered to the government are identified in MSFT- SC-0000235-MSFT-SC-0000239. A list of the on the prototype delivered to the government are identified in MSFT-SC-0000240-MSFT- SC-0000244.
Id. at 6-7.
Plaintiff again raised objections to Microsoft, requested production of additional source
code, including a list of for the already-produced RTA code, and requested
supplemental responses to Plaintiff’s Interrogatories 13 and 14. See Pl.’s Mot., Exhibit 4 (ECF
No. 272-3). Microsoft promptly began assembling a list of for Plaintiff. Ex. A ¶ 15.
While Plaintiff waited for further code supplements, Microsoft responded to Plaintiff’s
12 Interrogatory 20, which Microsoft had originally suggested Plaintiff interpose to learn the technical
basis for Microsoft’s representations that the originally produced code could accept . See
MSFT’s Response, Exhibit M (ECF No. 279-15). As Microsoft explained in its February 21, 2022
response to Interrogatory 20:
When the RTA functionality is implemented in
In particular the functions
Id. at 2.
Next, in March of 2022, Microsoft made a second source code production. See Ex. 10 ¶ 6;
Ex. A ¶¶ 11-12. This new code included files responsible for . Ex. 10
¶¶ 6(b), (e). The parties disagree on whether this supplemental code was necessary for determining
the type of the core RTA code and the type of
the core RTA code. Compare Ex. 10 ¶ 6(a) (declaring that Microsoft’s source code produced
in September 2021 lacked certain files, making it “unclear exactly what type of
”), with Ex. A ¶ 10 (“Because input data and output data needs to be of the same type to
reliably test or debug the code, a person knowledgeable about code would have understood, from
a review of the along with the remainder of the code produced in September
13 2021, the type of the core RTA code and
the RTA code.”).
On April 1, 2022, nearly two months after Plaintiff’s objection to Microsoft’s second
supplemental response to Interrogatory 14, Microsoft served its third updated response to
Plaintiff’s Interrogatory 14:
In response to the Requests for Production served in this case and certain requests from SAIC for additional code, Microsoft further supplements its prior responses to this interrogatory to state it has produced for inspection source code for software corresponding to the and a more current prototype version of Microsoft’s – as detailed in MSFTSC-0000362-894. A list of the on the more current prototype to implement the are identified in MSFT-SC-0000355-361. A list of the on the prototype delivered to the government are identified in MSFT-SC-0000895- 900. A list of the on the prototype delivered to the government are identified in MSFT-SC-0000901-907.
Ex. 11 at 7.
APPLICABLE LEGAL STANDARDS
Under the Rules of the United States Court of Federal Claims (RCFC or Rule(s)), a party
“who has responded to an interrogatory [or] a request for production . . . must supplement or correct
its disclosure or response . . . in a timely manner if the party learns that in some material respect
the disclosure or response is incomplete or incorrect.” RCFC 26(e)(1)(A). Supplemental
responses and disclosures are unnecessary when the additional or corrective information has
“otherwise been made known to the other parties during the discovery process or in writing.” Id.
“The duty to supplement is a continuing duty, and no additional interrogatories by the requesting
party are required to obtain the supplemental information — rather, the other party has an
affirmative duty to amend a prior response if it is materially incomplete or incorrect.” Zoltek Corp.
v. United States, 71 Fed. Cl. 160, 164 (2006). This Court evaluates a party’s compliance with its
14 duty to supplement under Rule 26 by analyzing: “(1) whether there was a prior response; (2)
whether the response became materially incorrect or incomplete; (3) whether the [party] knew that
the response was incomplete; and (4) whether the corrective information was otherwise made
known to [the movant] through the discovery process or in writing.” Id.
Failure to comply with the duty to supplement may result in sanctions. See Securiforce
Int’l Am., LLC v. United States, 127 Fed. Cl. 386, 402 (2016) (“[I]f a party fails to supplement its
discovery responses in accordance with RCFC 26(e), including the party's previous responses to
requests for admissions and interrogatories, the court may order that party to pay the reasonable
expenses, including attorney's fees, caused by the failure.”). Rule 37 states:
If a party fails to provide information or identify a witness as required by RCFC 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless. In addition to or instead of this sanction, the court . . . may order payment of the reasonable expenses, including attorney’s fees, caused by the failure.
RCFC 37(c)(1).
The violating party bears the burden “to prove that the violation was justified or harmless.”
Zoltek, 71 Fed. Cl. at 167. Courts consider several factors to determine if a party deserves
sanctions: “(1) the importance of the information withheld; (2) the prejudice or surprise to the party
against whom the evidence is offered; (3) the likelihood of disruption of the trial; (4) the possibility
of curing the prejudice; (5) the explanation for the failure to disclose; and (6) the presence of bad
faith or willfulness in not disclosing the evidence.” Id. at 168. The moving party generally need
not demonstrate the non-movant’s bad faith. See id. (declining to impose a bad faith requirement
for Rule 37 motions, “instead choosing to subsume it into the justification requirement in analyzing
the explanation for the party's failure to disclose”); Securiforce, 127 Fed. Cl. at 396 (noting that
15 although Rule 37 does not explicitly impose a bad faith requirement, harsh sanctions such as “de
facto dismissal” necessitate a showing of bad faith).
DISCUSSION
Plaintiff asks this Court to sanction “Microsoft [for] making statements to SAIC and to the
Court that Microsoft knew or should have known were false.” Pl.’s Mot. at 7. Specifically, SAIC
urges this Court to order Microsoft “to reimburse SAIC for the costs and fees incurred in analyzing
incorrect and incomplete source code and preparing supplemental contentions.” Id. In addition or
in the alternative, SAIC seeks an order prohibiting Microsoft “from relying on documents and
source code produced after SAIC’s January 6, 2021 supplemental contentions to support its non-
infringement arguments.” Id. Plaintiff’s requests stem from several responses to Plaintiff’s
discovery requests, including: (i) Microsoft’s production of additional code in March 2022 after
Microsoft had stated in September 2021 that it had substantially completed production of the core
RTA code; and (ii) Microsoft’s responses to Plaintiff’s Interrogatories 13 and 14, which
purportedly “are wrong all the way through April of 2022 because they state that all of the source
code produced in this case is used by the accused feature.” Id. at 17-18. In both contexts, however,
the record does not indicate that Microsoft engaged in deception “or other egregious conduct
worthy of sanctions.” Securiforce, 127 Fed. Cl. at 407. Accordingly, the Court declines to impose
the sanctions Plaintiff seeks.
I. Microsoft’s Source Code Production Does Not Warrant Sanctions
According to Plaintiff, “there is no reasonable dispute that Microsoft withheld crucial
information after it told SAIC that it had ‘substantially completed’ production and even after SAIC
identified the specific information being withheld.” Pl.’s Mot. at 16. Specifically, Plaintiff alleges
that Microsoft “withheld code [that] is directly relevant to asserted claim
16 elements, which require, inter alia, ‘receiv[ing] video images from a first’ and second ‘video
source’ and ‘display[ing] at least a portion of the first video source image and at least a portion of
the second video source image.’” Id. at 16-17 (quoting ’230 patent at Claim 1).
Plaintiff contends that Microsoft’s failure to produce the code in
September 2021 prejudiced SAIC by necessitating a second code review and forcing Plaintiff “to
re-do a substantial proportion of its code review and . . . re-do parts of its infringement contentions
to address the issues that SAIC raised months ago.” Id. at 17-18. This prejudice, Plaintiff argues,
is uncurable because Plaintiff “has already incurred the expense of reviewing the wrong source
code based on Microsoft’s misrepresentations and has no choice but to do another round of review
now that the correct code has been produced.” Id. at 18. Finally, Plaintiff argues that Microsoft’s
failure to produce the live input and output code in September 2021 is unjustifiable, as evidenced
by Microsoft’s March 25, 2022 email characterizing more recent code request (i.e., not the requests
leading to the September 2021 code production) as seeking “the code for displaying the output
from the RTA algorithm.” Id. at 20 (quoting Pl.’s Mot., Exhibit 5 (ECF No. 272-4)). In addition
to the costs it seeks for a second code review, Plaintiff urges this Court preclude Microsoft from
relying on the source code “to support its non-infringement arguments.” Id. at 21.
This Court finds both requests inappropriate. Microsoft adequately produced source code
responsive to Plaintiff’s Request for Production 51, and Microsoft did not have a duty under Rule
26 to supplement that production. Furthermore, even if this Court had determined that such duties
under Rule 26 were triggered in this case, Microsoft’s conduct does not warrant sanctions under
Rule 37.
17 a. Microsoft Did Not Have a Duty to Supplement the Source Code It Produced in Response to Request for Production 51
A party is not obligated to “supplement or correct its disclosure or response” to a discovery
request unless “the party learns that in some material respect the disclosure or response is
incomplete or incorrect.” RCFC 26(e)(1)(A); see also Zoltek, 71 Fed. Cl. at 164 (explaining that
the party from whom discovery is sought “has an affirmative duty to amend a prior response if it
is materially incomplete or incorrect”). Request for Production No. 51, seemingly at issue here,4
requests Microsoft produce “Source Code sufficient to demonstrate
Ex. E at 3. The source code Microsoft produced in September 2021 sufficiently demonstrates how
the RTA feature works. See Ex. A ¶¶ 2-3. SAIC’s own expert — notwithstanding some
uncertainty about the acceptance of — understood from the code produced in
September 2021 that the algorithm had ; he just did not know “exactly
what type” of data was inputted. Ex. 10 ¶ 6(a). Although the asserted claims do not include
limitations regarding the , it was possible to determine from the
produced in September 2021 the . Ex.
A ¶ 10. Plaintiff therefore received “Source Code sufficient to demonstrate
.” Ex. E at
4 Plaintiff’s Motion discusses how Plaintiff “served detailed and specific Requests for Production of source code on Microsoft on February 19, 2021.” Pl.’s Mot. at 7. It then offers as an example Request for Production No. 51. Id. at n.1. As Plaintiff does not cite any other Request for Production, the Court assumes that Plaintiff’s discussions of purportedly deficient source code production all relate Microsoft’s compliance with Request for Production No. 51. See generally Pl.’s Mot.
18 3. As Plaintiff has not demonstrated that Microsoft’s September 2021 source code production was
“materially incorrect or incomplete,” Microsoft was not obligated under Rule 26 to supplement its
source code production. Zoltek, 71 Fed. Cl. at 164.
b. Even if Circumstances Had Obligated Microsoft to Supplement Its Source Code Production Under Rule 26, the Record Does Not Support Awarding Sanctions
“The decision whether to impose discovery sanctions rests within the sound discretion of
the trial court.” AG–Innovations, Inc. v. United States, 82 Fed. Cl. 69, 79 (2008) (quoting Ingalls
Shipbuilding, Inc. v. United States, 857 F.2d 1448, 1450 (Fed. Cir. 1988)). If this Court had held
that Microsoft violated Rule 26, Microsoft would have been required to “prove that the violation
was justified or harmless” to avoid sanctions. Zoltek, 71 Fed. Cl. at 167. Factors relevant to
harmlessness include “(1) the importance of the information withheld; (2) the prejudice or surprise
to the party against whom the evidence is offered; (3) the likelihood of disruption of the trial; [and]
(4) the possibility of curing the prejudice.” Id. at 168. Here, the information purportedly withheld
is ancillary code upstream and downstream of the disputed RTA function, not the crucial RTA
code. See Ex. A ¶¶ 10-13. Further minimizing the importance of this ancillary code is the fact
that it is possible to determine the existence of from the produced RTA code.
Id. ¶ 10. Furthermore, this Court made clear that it would permit Plaintiff to amend its
infringement contentions if it uncovered additional evidence after the deadline for serving
infringement contentions. See Dec. 9, 2021 Tr. at 47:24-48:1 (“My ruling today does not preclude
the possibility that SAIC may later supplement its contentions again if new evidence emerges.”).
Thus, Plaintiff was not prejudiced by the delay between Microsoft’s initial source code production
and its production of ancillary source code. Finally, any prejudice to Plaintiff was cured when
Microsoft produced the upstream and downstream code. See Ex. 10 ¶ 6; Ex. A ¶¶ 11-12. Based
on these facts, Rule 37 sanctions against Microsoft would be inappropriate even if this Court
19 believed — which it does not — that Microsoft was obligated to supplement its response to
Request for Production 51 with the ancillary code produced in March 2022.
II. Microsoft’s Responses to Interrogatories 13 and 14 Do Not Warrant Sanctions
Plaintiff’s request for sanctions based on Microsoft’s responses to Interrogatories 13 and
14 is based on the premise Microsoft inaccurately represented “that all of the source code produced
in this case is used by the accused feature.” Pl.’s Mot. at 17. Specifically, Plaintiff faults Microsoft
for originally stating in its responses to Interrogatories 13 and 14 that all files produced on the
source code computer are also run on the Accused Products when the RTA feature is used despite
that the code produced in September 2021 allegedly only showed
Id. at 8. Plaintiff contends that Microsoft should have told Plaintiff that some
lines of the code produced in September 2021 were . See id. at 17 (“SAIC
should have had an accurate response to Interrogatory Nos. 13 and 14 when it started its source
code review so that it would know what source code is relevant.”). In other words, Plaintiff objects
to Microsoft’s discovery responses because they purportedly make the absolute statement “that all
of the source code produced in this case is used by the accused feature” and that “Microsoft did
not even attempt to correct this responses [sic] until April [2022].” Id.
Plaintiff does not specifically allege how Microsoft’s purportedly deficient interrogatory
responses prejudiced it; it again relies on the cost and additional time necessary to perform a second
code review and update its infringement contentions. Id. at 17-18. There is no possibility for
Microsoft to cure this prejudice, Plaintiff argues, because Plaintiff “SAIC has already served its
supplemental contentions” and fact discovery is at hand. Id. at 19. Plaintiff argues that “[t]here is
likewise no justification for Microsoft’s failure to respond to Interrogatories 13 and 14 with
complete and correct information.” Id. at 20. Plaintiff points to several alleged concessions by
20 Microsoft to demonstrate that Microsoft’s initial responses to Interrogatories 13 and 14 were
knowingly false: (1) responding to the two interrogatories with the same file list was incorrect, and
(2) the review computer actually included . Id. Thus, Plaintiff argues, Microsoft
should have corrected its interrogatory responses before SAIC began its code review. Id. at 21.
This Court disagrees that Microsoft’s responses warrant sanctions. Microsoft truthfully
stated in its initial responses to Interrogatories 13 and 14 that “[t]he source code produced for
inspection can be compiled, when put in the proper environment, and can then be loaded on to a
device to allow the and prototype versions to function, including to perform a prototype
version of the Rapid Target Acquisition function.” Ex. 11 at 6; Ex. A ¶ 3. Microsoft produced the
code that was compiled for use in the and prototypes provided to the Government; that
code also happens to include some . Ex. A ¶¶ 2-5.
The — which “is commonly known to exist within code repositories –
particularly in code being developed for prototypes, as new versions are often built upon the code
of prior versions” — did not prejudice Plaintiff. Id. ¶ 5. SAIC was aware from the outset that a
portion of the produced code included , and Microsoft confirmed this fact when
Plaintiff raised the issue during discovery. See Dec. 9, 2021 Tr. at 27:23-28:16. Similarly,
Microsoft immediately advised SAIC of the presence of on November 16, 2021,
after it had promptly investigated SAIC’s mistaken assertion that Microsoft had only produced
, stating: “Please be advised that the produced code also includes
from the prototype that included a .”
MSFT’s Response, Exhibit B (ECF No. 279-4) at 2-3. Given (i) the was produced
along with the functioning Rapid Target Acquisition code, and (ii) it is possible to distinguish the
from the of the compiled code, any imprecision in Microsoft’s initial
21 response to Plaintiff’s Interrogatories 13 and 14 was “justified or harmless.” Zoltek, 71 Fed. Cl.
at 167. Accordingly, sanctions are inappropriate under Rule 37.
CONCLUSION
For the reasons explained above, Plaintiff’s Motion for Costs and Sanctions Under Rule 37
(ECF No. 272) is DENIED. The parties are directed to CONFER and FILE a NOTICE by
September 15, 2022, attaching a proposed public version of this Sealed Memorandum and Order,
with any competition-sensitive or otherwise protected information redacted.
IT IS SO ORDERED.
Eleni M. Roumel ELENI M. ROUMEL Judge
September 8, 2022 Washington, D.C.