PTT, LLC v. GIMMIE GAMES et al

Filing 423

ORDER & OPINION OF THE SPECIAL MASTER; It is the opinion of the Special Master that Defendants shall make their source code available for inspection by H50 within 30 days of the date of this Order; etc. Signed by Special Master Dennis M. Cavanaugh, U.S.D.J.(Ret) on 3/27/2019. (sms)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

Case No.: 2:13-CV-07161-JMV-MF
HIGH 5 GAMES, LLC, a Delaware Limited
Liability Company, Vlda P]]’, LLC,
PlaintiWCounterclaim Defendant,

ORDER & OPINION OF THE SPECIAL
MASTER

vs.
DANIEL MARKS, an individual; JOSEPH
MASCI, an individual; BRIAN KAVANAGH,
an individual; MARKS STUDiOS, LLC, an
entity dfb/a GIMME GAMES; ARISTOCRAT
TECHNOLOGIES, INC., an entity;
ARISTOCRAT TECHNOLOGIES
AUSTRALIA PlY LIMITED, an entity;
ARISTOCRAT LEISURE LIMITED, an
entity; PRODUCT MADNESS, NC., an
entity; GRANT BOLLING, an individual;
JOHN SMITH(s) 1-7; and XYZ COMPANIES
1-7,
Defendants/Counterclaim Plaintiffs.

This matter comes before the Special Master upon Plaintiff High 5 Games, LLC’s
(“HSG”) 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
the opinion of the Special Master that H5G’s motion is Granted.

DISCUSSION
I. History of the Dispute
On 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 “[slource
code and executable code relating to the Parties’ respective technologies are properly
discoverable in this action.”
On December 8. 2017. 115G 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 wasconducted on December 19, 2017, January 2, January 3,
January 5, January 9, January 10, and January 11,2018.
According to H50, 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. HSG 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.
On 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 H50, 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.
H. Arguments of the Parties
High 5 Gunses

H5G argues that additional review of Defendants’ source code is necessary to prepare for
depositions and to determine the extent of Defendants’ improper use of HSG’s confidential
source code. H50 argues that Defendants are attempting to stymie its reliance on and access to
source code.
H5G asserts that source code is clearly relevant given that the Source Code Stipulation
admits that source code is properly discoverable. Thus H50 argues that the Source Code
Stipulation alone provides grounds for H5G to inspect Defendants’ source code. Howcvcr, 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 H50’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. 115G maintains
that there is no burden to Defendants since Defendants have already collected the source code.
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H5G argues that it needs access to Defendants’ source code to determine how
Defendants’ accused gamcs 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. H50
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. 1450 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 insisi 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.
H50 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 source code to
see how much material taken by Mr. Boiling was improperly used to create Defendants’ games.
H5G further asserts that Mr. Fagan is competent to review source code and serve as an
expert in this case. H5G states that it complied with the Source Code Stipulation by notifying
Defendants on December 8, 2017, of its intcnt to have Mr. Fagan review source code.
Defendants then had five business days to object, which they failed to do. H5G thus argues that
Defendants’ argument relating to Mr. Fagan is a red herring.

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Defendants

Defendants assert that they have already permitted Mr. Fagan to review source code for
28 days. Defendants argue that although the parties entered a Source Code Stipulation, that was
not a license for harassment and abuse by H5G. Defendants argue that they are merely seeking to
impose some reasonable limits on an exercise that they contend H5G has conceded is irrelevant.
Defendants maintain that source code is irrelevant. Defendants argue that none of the
claims in either H5G patent has anything to do with source code. Defendants further argue that
H5G’s trade secrct disclosures contain no source code. Defendants assert that the combination
sheets Defendants must submit to regulators for approval of their games disclose everything that
is relevant about the operation of Defendants’ games. Defendants also argue that to the extent
H5G believes source code is relevant to understanding the operation of Defendants’ games, H5G
has effectively conceded through over a year of silence in the face of direct proof to the contrary
that all relevant information is contained in the combination sheets. Defendants further argue that
even if there were something relevant in their source code, the 28 day long review sessions that
have already occurred are disproportionate to the needs of the case.
In addition, Defendants believe that Mr. Fagan lacks the requisite skill in the art of game
design to opine on the relevance of source code to understanding the parties’ games. Defendants
argue that they indicated that they would drop their objection to further source code review if
HSG would simply submit a statement from someone with at least “ordinary skill in the art of
game design” explaining why source code is relevant. Defendants argue that it is a simple matter
to see that Mr. Fagan professes no competence to opine on the issue of game design and that
H5G has been unable to offer a single statement from anyone who is competent to address the
issue explaining why 115G keeps demanding more and more source code.
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Defendants argue that as shown by Mr. Crevelt in his Declaration, “a person of ordinary
skill in the ad” “would know that the ‘vector.h’ file is simply a header (hence the extension .h)
that has no bearing on the operation of the game.” Defendants argue that H5G was free to submit
a statement from Mr. Fagan or any of its own game designers questioning the analysis of Mr.
Crevelt and that by failing to do so acquiesce in acknowledging Mr. Fagan’s lack of competence
and confirming it does not have a Rule 11 basis to demand any source code, much less the
additional source code review it now seeks after 28 prior days of review.
Defendants argue that they have now produced source code for 71 different games and
1150’s experts have already spent 28 days reviewing source code and yet remain unable to
identify anything material missing from the original production on December 8, 2016. Moreover,
Defendants argue that all the source codc possessed by Mr. Boiling responsive to H5G’s requests
was already produced to it directly as part of BoIling’s other emails and documents. Defendants
argue that they have produced all documents from Mr. Bolling responsive to H5G’s discovery
requests and have done likewise for the other former H50 employees who now work for Marks
Swdios.
Opinion
It is the opinion of the Special Master that Defendants shall make their source code
available for inspection by 115G.
It this matter, thc Source Code Stipulation governs the parties’ production of source code.
The Source Code Stipulation clearly indicates that source code is properly discoverable in this
action. Accordingly, by the act of agreeing to this stipulation the parties clearly conlirmed that
source code is relevant to the instant matter. Moreover, even if the parties had not entered the
Source Code Stipulation, the parties may obtain discovery on “any matter, not privileged, which
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is relevant to the subject matter involved in the pending action.” Fed.R.Civ.P. 26(b)(l).
Discoverable material is not limited to that which would be admissible at thai, but also includes
any non-privileged information that “appears reasonably calculated to lead to the discovery of
admissible evidence.” Jd. H5G has adequately demonstrated that the source code it seeks is
relevant to the subject matter of the action and may lead to admissible evidence. Caver v. City of
Trenton, 192 F.R.D. 154, 159 (D.N.J. 2000). Meanwhile, Defendants have failed to demonstrate
that the burden of the proposed discovery outweighs its likely benefit. Fed.R.Civ.P.
26(b)(2)(C)(3). The source code has already been collected by Defendants. H50 merely sceks
access to it. Accordingly, the Special Mastcr is at a loss as to how there could be any real burden
to Defendants if the material is already collected and H5G merely seeks to compel Defendants to
make that material accessible to 115G’s proposed expert, Mr. Fagan. The Special Master also
notes that the Source Code Stipulation does not place limits on the number of days a party has to
review source code.
With respect to Defendants’ assertion that Mr. Fagan lacks the requisite skill in the art of
game design to opine on the relevance of source code to understanding the parties’ games, the
Special Master will not entertain Defendants arguments. The Source Code Stipulation provides
that the party receiving a designating party’s expert’s information has five business days to
object in writing to its disclosure to the proposed expert for good cause. See Source Code
Stipulation Section I.E. On December 8, 2017, I-15G disclosed its source code expert, Mr. Fagan,
pursuant to Section I.E of the Source Code Stipulation. Defendants failed to object within five
business days of H5G’s disclosure.
Accordingly, it is the opinion of the Special Master that Defendants shall make their
source code available for inspection by H50 within 30 days of the date of this Order.
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[IS M. CAVANAUCH, U.S.D.J. (Ret.)
Di
Special Master

Date: 3/27/2019

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