Synopsys, Inc. v. Atoptech, Inc.
| Decision Date | 16 March 2015 |
| Docket Number | No. C-13-02965-MMC (DMR),C-13-02965-MMC (DMR) |
| Court | U.S. District Court — Northern District of California |
| Parties | SYNOPSYS, INC., Plaintiff(s), v. ATOPTECH, INC., Defendant(s). |
Before the court is a joint discovery letter filed by Plaintiff Synopsys, Inc. and Defendant ATopTech, Inc. [Docket No. 243.] The letter follows from an earlier discovery dispute between the parties regarding Synopsys' claim that ATopTech infringed copyrighted input and output formats in Synopsys's PrimeTime and GoldTime software. See Docket No. 193. The court held a hearing on the letter on March 12, 2015. For the reasons stated at the hearing and set forth below, the court orders ATopTech to produce a copy of its Aprisa and Apogee software programs ("the executables"), but not the underlying source code.
Synopsys is a company in the electronic design automation ("EDA") and semiconductor intellectual property industry. Am. Compl. [Docket No. 43] at ¶ 2. Synopsys "develops, manufactures, sells and licenses products and services that enable designers to create, model andverify complex integrated circuit designs." Id. Synopsys owns a tool called PrimeTime that "provides customers with a trusted solution for timing sign-off, a required verification step before manufacturing" a digital circuit. Id. at ¶ 3. The PrimeTime software includes hundreds of proprietary input and output formats, including proprietary commands, variables, and parameters. Id. at ¶ 19.
In June 2011, Synopsys sued a company called Extreme DA Corporation, which owned software called GoldTime. Id. at ¶ 22. Synopsys alleged that GoldTime copied the proprietary PrimeTime input and output formats. In October 2011, Synopsys acquired Extreme DA and now owns all rights to GoldTime. Id. at ¶ 24.
ATopTech is an EDA company that develops tools for the physical design of integrated circuits. Id. at ¶ 4. ATopTech makes a "place and route" tool know as Aprisa that can "talk to" the PrimeTime tool. Id. at ¶ 3; Docket No. 188 at 2-3. Aprisa and PrimeTime are thus complementary programs that interoperate with each other to perform different steps in the process of designing integrated circuits. Letter at 6. In June 2010, ATopTech licensed GoldTime from Extreme DA. Am. Compl. at ¶ 31. When Synopsys acquired Extreme DA in October 2011, Synopsys also acquired Extreme DA's rights under its license agreement with ATopTech. Synopsys extended the license agreement three times. Id. at ¶ 31.
Synopsys now contends that ATopTech's products, including Aprisa, copy PrimeTime and GoldTime input and output formats. Id. at ¶¶ 9, 35. Synopsys also contends that ATopTech improperly accessed SolvNet—Synopsys' password-protected website that hosts software, user guides, and support documentation—to download proprietary information about the operation of PrimeTime and other Synopsys software. Id. at ¶ 41.
In the Amended Complaint, Synopsys brings claims for (1) federal copyright infringement, (2) patent infringement, (3) breach of contract and (4) breach of the implied covenant of good faith and fair dealing. Id.
This discovery letter is a continuation of the same dispute raised in the parties' earlier discovery letters. See Docket No. 133, 154, 193. In the earlier letters, Synopsys sought a wideswath of information regarding the design and development of certain ATopTech products, source code for those products, and documents related to the input and output formats for those products. In an order dated August 28, 2014, this court ordered phased discovery, and instructed ATopTech to produce certain discovery responsive to Synopsys' requests. Docket No. 166. In response, ATopTech produced unredacted copies of user guides and manuals for several versions of its Aprisa and Apogee products (, the "Aprisa/Apogee Parameter Guide" and "Aprisa/Apogee Reference Manual"). Synopsys claims that this production revealed "over 500 instances of copying of Synopsys' input/output formats"1 (although ATopTech disputes both Synopsys' definition of "copying" and the way that Synopsys counted instances of copying). See Docket No. 193.
Subsequent to ATopTech's production of this documentation, Synopsys repeated its request for source code and executable files for ATopTech's Aprisa and Apogee products. See Docket No. 193. At the February 12, 2015 hearing, the court heard argument on this matter and ordered the parties to meet and confer further regarding specific issues. The parties did so, but were unable to resolve their disputes without judicial intervention. The instant letter followed.
Federal Rule of Civil Procedure 26 provides that a party may obtain discovery "regarding any nonprivileged matter that is relevant to any party's claim or defense." Fed. R. Civ. P. 26(b)(1). "Relevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." Fed. R. Civ. P. 26(b)(1). A court "must limit the frequency or extent of discovery otherwise allowed by [the Federal] rules" if "(i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive; (ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or (iii) the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, theamount in controversy, the parties' resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues." Fed. R. Civ. P. 26(b)(2)(C). The court may, for good cause, issue an order to protect a party or person from undue burden or expense by "requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way." Fed. R. Civ. P. 26(c)(1)(G).
Synopsys seeks executables and source code for all versions of Aprisa and Apogee. ATopTech claims that this material contains extremely sensitive information, production of which (to the dominant competitor in the industry) could cause permanent harm to ATopTech.
As described above, ATopTech has already produced the user documentation and manuals for Aprisa and Apogee, and Synopsys has identified what it alleges to be copied input and output formats in those documents. At the hearing, ATopTech's counsel confirmed that the discovery produced to date contains all of the input formats for its Aprisa and Apogee software, and ATopTech could provide an attestation under oath to that effect. Accordingly, the court orders that by March 16, 2015, ATopTech shall produce an attestation under oath that the discovery produced to date contains all input formats for its Aprisa and Apogee software.
Synopsys argues that "[o]nly through using ATopTech's executable programs . . . will Synopsys have the ability to uncover authorized uses of Synopsys' output formats." Letter at 2. Specifically, Synopsys intends to run ATopTech's software programs (by running the executable files) to generate examples of output reports, some of which Synopsys believes will be formatted in a way that copies Synopsys' copyrighted works. At the hearing, ATopTech's counsel conceded that the user documentation and manuals for Aprisa and Apogee do not capture all of output formats forthose products, and that the software itself would. Accordingly, ATopTech shall produce to Synopsys a copy of the executable files for Aprisa and Apogee by March 16, 2015.2
Synopsys also seeks the source code for the Aprisa and Apogee products. ATopTech's confidential source code contains sensitive proprietary information that is not commercially available, and Synopsys' arguments for the relevance and discoverability of the source code must be balanced against the risk of harm to ATopTech that may result from the disclosure of its source code to its main competitor. Synopsys has done a poor job of articulating the relevance of the source code to the copyright cause of action, especially where the information contained in the source code is cumulative of information already available to Synopsys.3
Synopsys contends that the source code will show that the software itself (rather than just the user documentation and the manuals for the software) includes the allegedly copied input and output formats. See Letter at 1-2. But this argument lacks substance, for Synopsys asserts, but does not explain, why the source code is the "single most relevant evidence" bearing on copyright infringement. Id. Furthermore, with ATopTech's production of the software programs themselves, Synopsys will have what it needs to show that the allegedly copied input and output formats appear in the software.
Synopsys further contends that the source code is relevant to the issue of damages. The remedy for copyright infringement is either actual damages and infringer profits, or statutory damages. For the former, 17 U.S.C. § 504(b). A copyright owner may also elect to recover "statutory damages for all infringement involved in the action, with respect to any one work" instead of actual damages and profits. 17 U.S.C. § 504(c)(1).
Synopsys has not yet elected the type of damages it...
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