Processing All Things Federal Circuit
April 13, 2021 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (April 5-9): Failure to Authenticate Third-Party Source Code

Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

Last week was argument week, which sometimes means lots of Rule 36 affirmances and not a lot of precedential opinions.  Still, that didn’t stop the Court from issuing an interesting, and relatively rare, precedential decision on evidence admissibility.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions:  2

Non-precedential opinions:  5

Rule 36: 12

Longest pending case from argument:Wi-LAN Inc. v. Sharp Elecs. Corp., Nos. 20-1041, 20-1043 (120 days)

Shortest pending case from argument (non-Rule 36):INVT SPE LLC v. Apple Inc., No. 20-1881 (3 days)

Case of the week:Wi-LAN Inc. v. Sharp Elecs. Corp., Nos. 2020-1041 and 2020-1043 (Apr. 6, 2021)

Panel:  Judges Dyk, Taranto, and Stoll, with Judge Dyk writing the opinion.

You should read this case if: you have a case involving authentication of source code produced by a third party.

The Federal Circuit issued a precedential opinion last week that shows some of the limitations of trying to authenticate source code produced by third parties via a custodial declaration.

Wi-LAN asserted a patent for displaying interlaced video on a non-interlaced monitor against its competitors. But the competitors did not possess the source code for de-interlacing images in the accused products. That source code was in the hands of a third party, so Wi-LAN needed to find a way to get it to prove its infringement case.

Eventually, Wi-LAN sued the third party in a separate action and managed to procure the source code and purportedly authenticating declarations from the third party’s employees. But the district court found the source code inadmissible and granted summary judgment of non-infringement. Without the source code, Wi-LAN did not have a case.

The Federal Circuit affirmed. It agreed with Wi-LAN that declarations can serve as a proxy for trial testimony when deciding summary judgment motions. But “declarations cannot be used for this purpose unless the witness will be available to testify at trial.” When the district court asked Wi-LAN whether the declarants would testify at trial, Wi-LAN conceded they probably could not be forced to do so. “Wi-LAN thus did not establish that the declarants would be available to testify at trial and, as a result, the declarations could not be used as a substitute for trial testimony.”

Wi-LAN also argued that the declarations themselves are admissible as evidence because they are business records under Federal Rules of Evidence 803(6). Once admitted, the declarations could be used to authenticate the source code without trial testimony. The Federal Circuit disagreed. The third party produced the declarations in response to Wi-LAN’s suit against it. Thus, “the declarations were created and prepared for the purposes of litigation, placing them outside the scope of the exception.”

Nor did the declarations meet Rule 803(6)’s requirement of sufficient “trustworthiness.” The declarations stated that there were no material differences between the source code that was produced and any versions used since 2009. But the record showed that the third party contradicted this statement in the past. The third party “originally claimed that they could not produce one version of source code for all [system-on-chips] at issue in the case.” Further, Wi-LAN “failed to obtain change logs, file comparisons, or other evidence of code revisions that might clear up the inconsistencies in the code.” That evidence was enough to show a lack of trustworthiness in the declarations, precluding them from being admitted under Rule 803(6).

This opinion shows that a custodial declaration from a third party is not always enough to authenticate the accompanying productions. It will be interesting to see how parties use this case going forward to try and block harmful documents from being admitted into evidence.