                 IN THE UNITED STATES COURT OF FEDERAL CLAIMS
                                   No. 15-501C

                                       (Filed: June 16, 2017)

                                     (NOT TO BE PUBLISHED)

                                               )
 3RD EYE SURVEILLANCE, LLC and                 )
 DISCOVERY PATENTS, LLC,                       )
                                               )
                       Plaintiffs,             )
                                               )
        v.                                     )
                                               )
 UNITED STATES,                                )
                                               )
                       Defendant,              )
                                               )
        and                                    )
                                               )
 ELBIT SYSTEMS OF AMERICA, LLC,                )
 GENERAL DYNAMICS ONE SOURCE                   )
 LLC, NORTHROP GRUMMAN                         )
 SYSTEMS CORPORATION, TYCO                     )
 INTEGRATED SECURITY LLC, and                  )
 VIDSYS, INC.,                                 )
                                               )
                Defendant-Intervenors.         )
                                               )

                                             ORDER

      Pending before the court is plaintiffs’ motion to compel the government to produce
documents and overrule objections (“Pls.’ Mot. to Compel Def.”), ECF No. 126.

        Plaintiffs first seek to compel the government to produce source code for potentially
infringing systems. As discussed at the hearing held on June 14, 2017, the production of source
code was not contemplated by the scheduling order setting out the parameters of a first round of
fact discovery for the purposes of identifying potentially infringing systems, identifying proper
third-party defendants, formulating plaintiffs’ preliminary infringement contentions, and
preparing for claim construction. Source code is not necessary at this preliminary stage of
discovery, and thus plaintiffs’ motion is denied in this regard.

        Documents respecting potentially infringing systems that do not encompass source code
are discoverable by plaintiffs, however, because they are relevant to plaintiffs’ development of
preliminary infringement contentions and are within the scope of initial fact discovery as set out
in the scheduling order. Nevertheless, plaintiffs’ requests for production in this regard are
unduly broad and burdensome to the government because they seek production of documents for
all potentially infringing systems used by the government at government-run airports,
courthouses, and government buildings. See Def.’s Opp’n to Pls.’ Mot. to Compel (“Def.’s
Opp’n”) at 10, ECF No. 134. Outside their requests for production, plaintiffs have proffered to
government counsel via e-mail a “temporar[y]” list of locations that contain potentially
infringing systems for which the government should produce documents, including three
airports, three federal courthouses, and three government buildings. See Def.’s Mot. to Compel
at 4, ECF No. 124. Plaintiffs have also identified in their reply brief three specific systems that
are potentially infringing, including a border patrol surveillance system developed and
manufactured by General Dynamics, software produced by Vidsys and used in multiple
government buildings, and an airport security monitoring system produced by Hitachi Data
Systems Federal. See Pls.’ Reply to Def.’s Resp. to Pls.’ Mot. to Compel Def. (“Pls.’ Reply”) at
5-10, ECF No. 138. The court determines that these locations and systems sufficiently narrow
the scope of production at this early stage of discovery, so plaintiffs’ motion to compel is granted
in this regard.

         Plaintiffs also seek production of documents, communications, and contracts between and
among the government and defendant-intervenors that are related to the patents-in-suit, this
litigation, and the inter partes review proceedings before the U.S. Patent and Trademark Office.
Pls.’ Mot. to Compel. Def. at 6-7. The government alleges that these documents are privileged,
but has not produced a privilege log. See Def.’s Opp’n at 7-8. Neither the government nor
defendant-intervenors have represented to the court that they have a joint defense agreement that
would render privileged defense-related communications between and among these parties and
their attorneys. Therefore, these documents are discoverable by plaintiffs unless the government
can make a claim of privilege and produce a privilege log pursuant to Rule 26(b)(5)(A) of the
Rules of the Court of Federal Claims (“RCFC”).

        Finally, plaintiffs seek production of documents and source code regarding potentially
infringing systems used to monitor U.S. embassies. Infringement claims based at U.S. embassies
are outside the jurisdiction of this court, however, because they “aris[e] in a foreign country”
within the meaning of 28 U.S.C. § 1498(c). See Leonardo v. United States, 55 Fed. Cl. 344, 354
(2003) (interpreting 28 U.S.C. § 1498(c) analogously to identical language in the Federal Tort
Claims Act (“FTCA”), and explaining that “U.S. courts do not possess jurisdiction under the
FTCA [and therefore under § 1498(c)] to hear a claim based on an incident that took place at a
government facility, even an embassy, abroad”). Therefore, as the court does not have
jurisdiction over these claims, plaintiffs’ discovery of information related to systems located at
U.S. embassies is improper.

        In sum, plaintiffs’ motion is GRANTED IN PART and DENIED IN PART. The court
will not compel the government to produce source code prior to plaintiffs’ submission of
preliminary infringement contentions, nor shall the court compel the government to produce
documents related to security systems at U.S. embassies located in foreign countries. The court
also defers consideration of plaintiffs’ motion with regard to whether systems installed prior to
February 12, 2013 are within the scope of potentially infringing systems in this case, pending the



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submission of supplemental briefing by the parties on the assignment-related issues that arise in
that connection.

        Plaintiffs are ordered to reconfigure their requests for production that do not request
source code so that they are limited to the systems identified in plaintiffs’ e-mail of February 8,
2017 to government counsel, and in plaintiffs’ reply to their motion to compel the government.
Plaintiffs shall submit their rewritten requests for production to government counsel on or before
June 23, 2017, and the government shall respond on or before July 24, 2017. The government is
also ordered to respond to plaintiffs’ requests for production regarding communications between
and among the government and defendant-intervenors on or before July 24, 2017. To the extent
it can claim that any of these documents are privileged, the government is ordered to produce a
privilege log pursuant to RCFC 26(b)(5)(A).

       It is so ORDERED.
                                              s/ Charles F. Lettow
                                              Charles F. Lettow
                                              Judge




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