Coronavirus concerns prompt discovery battle in patent case

The COVID-19 vampirus and its potential risks have sparked a discovery battle over whether Roku Inc. must allow experts at another company to view its source code remotely as part of a patent infringement lawsuit.

Ropes & Gray partners Andrew N. Thomases and Andrew T. Radsch, who represent Roku, asked a Northern District of California judge for a protective order to stop Canon from demanding remote review. Yar R. Chaikovsky, a Palo Alto-based Paul Hastings LLP partner who represents Canon, argued the matter should be decided in Texas, where the underlying lawsuit was filed.

On Thursday afternoon, U.S. Magistrate Judge Joseph C. Spero sided with Canon and transferred the case to U.S. District Judge J. Rodney Gilstrap of the Eastern District of Texas to avoid the possibility of conflicting rulings or disrupting the court's pretrial schedule.

So the unusual dispute will move to the Lone Star State, where Canon Inc. is demanding its attorneys and experts view the source code remotely due to the health risks of traveling to outside counsel's office to view it on a stand-alone computer under tight security.

The standard procedure, allowing Canon experts to view the source code at attorneys' offices, has been upended by coronavirus-related health concerns in a dispute stemming from a lawsuit Canon filed against TCL Electronics Holdings Ltd. TCL is a Hong Kong-based company that makes television sets including Roku digital media players that allow consumers to stream media content.

Los Gatos-based Roku is not a named defendant in the case. Canon Inc. v. TCL Electronics Holdings Ltd., 18-CV00546 (E.D. Tx., filed Dec. 27, 2018).

In a motion for a protective order filed in San Francisco earlier this month, Thomases, an East Palo Alto-based attorney, argued the company's proprietary source code would be compromised if it follows Canon's demand to place the code on a networked computer where counsel and outside experts can view it at home.

"This creates unwarranted and undue risk of a security breach, exposing Roku to incredible liability of loss, especially in light of the fact that Canon has demanded that Roku make available its full Roku OS source code," Thomasas wrote. Canon Inc. v. TCL Electronics Holdings Ltd., 20-MC80079 (N.D. Cal., filed May 4, 2020).

But Chaikovsky said it made more sense for Gilstrap to decide the issue in Texas, in part because he is more familiar with the underlying case.

The Canon expert who will testify about the source code has refused in-person review because his age and hypertension put him at a high risk for illness. "His review of Roku's code is crucial to Canon's case, and it should be done by remote means absent another solution or until the risk for infection lessens," Chaikovsky wrote.

Thomases and Chaivoksky declined comment.

Roku's motion drew support from Hulu LLC, which offers streaming content that is played on Roku media players, in an amicus brief.

"The industry standard of permitting source code review only on stand-alone non-internet connected computers is based on the established understanding that source code made available for inspection on a computer connected to the internet is more vulnerable to malicious access or hacking by unauthorized third parties," O'Melveny & Myers LLP partner Brett J. Williamson wrote for Hulu.

Ropes & Gray also represents TCL Electronics, and Spero cited the relationship between the two defendant companies in support of his Thursday decision, writing the transfer "will not impose a significant burden on Roku."