Bergstrom v. Glacier Bay, Inc., No. 08 C 50078, Slip Op. (N.D. Ill. Jan. 22, 2010) (Mahoney, Mag. J.).

Judge Mahoney granted in part the parties’ cross-motions regarding production of defendant Glacier Bay’s source code, and denied Glacier Bay’s other discovery motions. Plaintiff Bergstrom sought production of the source code as an OCR’ed tiff document, consistent with other production in the case. Glacier Bay offered to provide supervised access to the code for an expert and one lawyer on a laptop during business hours. The Court held that Glacier Bay’s proposal was unnecessarily restrictive. It would have been unnecessarily burdensome to only allow Bergstrom’s expert access to the 23,500 pages of source code on only a laptop, and to only allow screenshots of selected portions of the code. The Court, therefore, ordered production of the source code in the case-standard OCR’ed tiff format. 

The Court also denied Glacier Bay’s request to prevent anyone involved in prosecuting Bergstrom’s patents from viewing the source code. The Court held such a blanket ban was unnecessary, but did exclude one attorney that had both prosecution and litigation duties for Bergstrom from viewing the software.

The Court also denied Glacier Bay’s motion to compel documents related to a failed settlement discussion between Bergstrom and a third party. The Court reasoned that while Fed. R. Evid. 408 was not an evidentiary rule, the spirit of Fed. R. Evid. 408 – protecting and promoting open settlement talks – counseled against production of the requested documents.

Finally, the Court denied Glacier Bay’s motion to compel answers to requests for admissions regarding whether Bergstrom provided certain alleged prior art to its patent prosecution counsel. Compelling those answers would have potentially compelled Bergstrom to breach its attorney-client privilege with patent prosecution counsel.