1 – OPINION & ORDER

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

VESTA CORPORATION, 

No. 3:14-cv-01142-HZ

Plaintiff,

OPINION & ORDER

v.

AMDOCS MANAGEMENT 

LIMITED and AMDOCS, INC., 

Defendants.

Erick J. Haynie 

Daniel T. Keese 

Joanna T. Perini-Abbott

Joseph Mais

Stephen English

Julia E. Markley

Meredith M. Price

PERKINS COIE, LLP 

1120 NW Couch Street, 10th Floor 

Portland, OR 97209 

Karen B. Bloom

William K. Miller

PERKINS COIE, LLP

1201 Third Ave., Suite 4800

Seattle, WA 98101

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2 – OPINION & ORDER

Michael A. Oblon

PERKINS COIE, LLP

700 Thirteenth St. NW

Washington, DC 20005

Nathan R. Kassebaum

PERKINS COIE, LLP

2901 N. Central Ave., Suite 2000

Phoenix, AZ 85012

Andrew S. Ong

ORRICK, HERRINGTON & SUTCLIFFE LLP

1000 Marsh Road

Menlo Park, CA 94025

Clayton C. James

HOGAN LOVELLS US LLP

1601 Wewatta Street, Suite 900 

Denver, CO 80202

Scott Eads

Jason A. Wrubleski

SCHWABE, WILLIAMSON & WYATT

1211 SW 5th Ave., Suite 1600

Portland, OR 97204

Attorneys for Plaintiff

Andrew G. Klevorn 

Bruce G. Vanyo 

Yonaton M. Rosenzweig

Christina Lucen Costley

KATTEN MUCHIN ROSENMAN, LLP

2029 Century Park East, Suite 2600 

Los Angeles, CA 90067

Kristin J. Achterhof

Meegan I. Maczek

Richard H. Zelichov

KATTEN MUCHIN ROSENMAN, LLP

525 West Monroe Street

Chicago, IL 60661

///

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Joshua L. Ross 

Robert A. Shlachter

Timothy S. DeJong

Jennifer S. Wagner

STOLL STOLL BERNE LOKTING & SHLACHTER, PC

209 SW Oak Street, Fifth Floor 

Portland, OR 97204 

Attorneys for Defendants

HERNÁNDEZ, District Judge:

In this discovery dispute, Plaintiff Vesta Corporation seeks to compel Defendants 

Amdocs Management Limited and Amdocs, Inc. to produce source code responsive to Plaintiff’s 

Request for Production 37. The Court orders Defendants to produce the requested source code. 

BACKGROUND

Plaintiff Vesta, an electronic payments and fraud prevention technology company, has 

sued Defendants Amdocs Management Limited and Amdocs, Inc. (collectively, “Defendants”), 

telephone billing software and services companies, for breach of contract and misappropriation 

of trade secrets. Third Am. Compl. (“TAC”) Intro, ECF 222. Specifically, Plaintiff alleges that in 

the course of jointly collaborating on marketing and the possibility of acquisition of Plaintiff by 

Defendants, Plaintiff shared “highly confidential and proprietary information,” which 

Defendants used and relied upon improperly to “create, price and sell a competing product in 

order to increase its profits.” Id.

On May 19, 2015, Plaintiff served Defendants its First Requests for Production of 

Documents and Things, which included Request for Production (“RFP”) 37:

A copy of the source code for the current and any previous version of Amdocs’s Payment 

Solution.

Perini-Abbott Decl. Ex. 1 at 10, ECF 359-1. The parties have engaged in multiple conversations 

and email exchanges over the past year and a half regarding various issues related to discovery 

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requests, including Plaintiff’s RFP 37. Most recently, the Court discussed the issue with the 

parties during a November 29, 2016, informal discovery conference. Hr’g Tr., Nov. 29, 2016, 

ECF 343. The Court ordered the parties to formally brief the issue, including a discussion 

regarding how the parties’ Stipulated Protective Order should be modified if the Court orders

Defendants to respond to RFP 37. Id. at 80:6-16.

STANDARD

Federal Rule of Civil Procedure 26(b)(1) provides in relevant part:

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any 

party's claim or defense and proportional to the needs of the case, considering the 

importance of the issues at stake in the action, the amount in controversy, the parties' 

relative access to relevant information, the parties' resources, the importance of the 

discovery in resolving the issues, and whether the burden or expense of the proposed 

discovery outweighs its likely benefit. Information within this scope of discovery need 

not be admissible in evidence to be discoverable.

Fed. R. Civ. P. 26(b)(1). 

DISCUSSION

The parties disagree about whether Defendants’ source code is relevant and proportional 

to the needs of this case. The Court agrees with Plaintiff and, thus, orders Defendants to produce 

their source code.

I. Relevance and Necessity

Plaintiff alleges that Defendants misappropriated Confidential Solutions Methods and 

“us[ed] that information to develop, market, price and sell a competing payment solutions 

platform.” TAC ¶ 90. Plaintiff alleges that, in the course of joint collaborations and potential 

acquisition talks, Plaintiff shared with Defendants confidential source code, application 

programming interface specifications for tokenization and payment card information compliance, 

detailed diagrams showing the sequence of various payment solution operations, and confidential 

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text-to-pay methods. Perini-Abbott Decl. Ex. 9 at 4-5, 7-11, ECF 359-9. While Plaintiff does not 

allege that Defendants had direct access to Plaintiff’s source code, Plaintiff contends that 

Defendants’ source code will reveal the extent to which Defendants incorporated Plaintiff’s trade 

secrets in creating its own Enterprise Payment Product (“EPP”). According to Plaintiff, the 

source code will reveal unique information not contained in documents Defendants have 

produced thus far, such as comments and revision histories that identify its authors, the dates 

revisions were made, and the programmers’ thought processes.

Defendants respond that the source code Plaintiff seeks is a trade secret and that Plaintiff 

has failed to show that disclosure is relevant and necessary to the prosecution of its case. See

Hartley Pen. Co. v. United States District Court for S.D. Cal., 287 F.2d 324, 330–31 (9th Cir. 

1961); telSPACE, LLC v. Coast to Coast Cellular, Inc., No. 2:13-CV-01477 RSM, 2014 WL 

4364851, at *4–5 (W.D. Wash. Sept. 3, 2014)(“With respect to material in which the disclosing 

party claims a trade secret, the burden thus shifts to the party seeking disclosure to show that it is 

warranted.”). Defendants argue that Plaintiff did not share source code with Defendants and, 

thus, Defendants could not have copied Plaintiff’s source code. Defendants also argue that 

Plaintiff must make a prima facie showing that the information it purportedly disclosed to 

Defendants is an actual trade secret such that it would justify its RFP 37. Defendants’ arguments 

are unavailing.

Plaintiff does not have prove that Defendants accessed and copied Plaintiff’s source code 

in order for Defendants’ source code to be relevant to show the extent to which Defendants 

implemented Plaintiff’s confidential trade secrets in creating their EPP. In other words, 

Defendants may have stolen Plaintiff’s trade secrets even if Defendants’ source code is not 

identical to Plaintiff’s source code. As the court in the Eastern District of Texas has explained, 

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“one need not make an exact or nearly exact copy of an algorithm or a compilation of 

information to be liable for trade secret misappropriation in connection with the misappropriation 

of the essence of the algorithm. Nor does each of the steps of a process that is protected as a 

trade secret have to be novel or previously unknown.” Versata Software, Inc. v. Internet Brands, 

Inc., 902 F. Supp. 2d 841, 852 (E.D. Tex. 2012), aff'd, 550 F. App'x 897 (Fed. Cir. 2014) (citing 

Restatement of Torts § 757, cmt. b (1939) and E.I. DuPont de Nemours & Co. v. Christopher,

431 F.2d 1012, 1014 (5th Cir. 1970)). “The value of the trade secret comes from the fact that 

competitors do not possess the information embodied in the trade secret, which gives the holder a 

potential business advantage.” Id. Even if Defendants’ source code differs from Plaintiff’s source 

code, it may assist Plaintiff in proving its case and, thus, is relevant. See, e.g., Integrated Cash 

Mgmt. Servs., Inc. v. Digital Transactions, Inc., 732 F. Supp. 370, 377-78 (S.D.N.Y. 1989), aff'd,

920 F.2d 171 (2d Cir. 1990) (granting preliminary injunction for trade secret misappropriation 

where programs had “many similarities in the structure, functionality, organization, and logic 

flow” even though “no direct copying [of source code] occurred”). 

Furthermore, Defendants fail to cite any law supporting their argument that, before 

Defendants are required to comply with RFP 37, Plaintiff must make a prima facie showing that

the material it provided to Defendants constitutes trade secrets. Defendants acknowledge that this 

Court has already ruled that Plaintiff has identified its trade secrets with sufficient particularity

for discovery to proceed. See Order, May 24, 2016, ECF 249 (“The Court has reviewed 

Plaintiff's Amended Response to Defendants' Interrogatory No. 16 and concludes that it 

identifies, with reasonable particularity, the trade secrets which Plaintiff contends it disclosed to 

Defendants. Accordingly, the protective order entered on November 30, 2105 141 is lifted.”). 

Nevertheless, Defendants ask this Court to decide at this juncture whether or not Plaintiff’s 

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purported trade secrets are, in fact, trade secrets. This Court has already ruled that Plaintiff has 

sufficiently identified its trade secrets to overcome a motion to dismiss. Vesta Corp. v. Amdocs 

Mgmt. Ltd., 80 F. Supp. 3d 1152, 1165 (D. Or. 2015). Defendants will have additional 

opportunities to challenge Plaintiff’s trade secrets at summary judgment or at trial. Id.; see also

Kaib's Roving R.PH. Agency, Inc., 237 Or. App. at 103–04, 239 P.3d 247 (“The question of 

whether certain information constitutes a trade secret ordinarily is best resolved by a fact finder 

after full presentation of evidence from each side.”). The Court does not have to decide at this 

point whether the allegedly stolen information is a trade secret.

The cases cited by Defendants are distinguishable. In telSPACE, LLC, the court denied 

the plaintiff’s motion to compel the defendant’s source code because plaintiff sought such 

material on the basis of its pleadings alone. 2014 WL 4364851, at *4–5 (W.D. Wash. Sept. 3, 

2014). The court explained that “as a bulwark against potential abuses of the discovery process” 

the plaintiff had to “provide sufficient specificity for its copyright and trade secret claims” before 

the court would order the defendants to disclose any trade secrets. Id. at *5. However, the court 

suggested that disclosure of the defendant’s source code would be required if the plaintiff could 

show “either the source code is relevant in its entirety or narrow its request to seek disclosure of 

only those original, protectable aspects of its Software.” Id. The two other cases relied upon by 

Defendants addressed whether the defendants were required to provide additional source code 

beyond their initial disclosures. See In re Apple & AT&TM Antitrust Litig., No. C07-05152 JW 

PVT, 2010 WL 1240295 (N.D. Cal Mar. 26, 2010); Synopsys, Inc. v. Nassda Corp., No. C 01-

2519 SI, 2002 WL 32749138 (N.D. Cal. Sept. 16, 2002). The defendants in those cases did not 

assert that they had no obligation to provide any source code, as Defendants here claim. In 

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addition, in both cases the plaintiffs failed to establish that additional source code was relevant 

and necessary. Id.

Here, as discussed above, Plaintiff has identified its trade secrets with sufficient 

particularity for discovery to proceed. Further, the disclosure of Defendants’ source code, as 

narrowed by the criteria discussed below, is relevant and necessary to the prosecution of 

Plaintiff’s claim. 

II. Proportionality

The Court finds that Plaintiff’s discovery request is proportional to the needs of the case. 

Defendants do not persuade the Court that the burden or expense of proposed discovery 

outweighs its likely benefit, given the significant resources of the parties and the high amount of 

damages alleged by Plaintiff.1

However, this Court expects Plaintiff to honor its commitment to “work in good faith to 

narrow its request to only the source code modules necessary to the case.” Pl.’s Mot. 3, ECF 358. 

Plaintiff is entitled only to the source code for the modules that relate to the trade secrets Plaintiff 

identified in its answer to Interrogatory 16. Id. at 8.

In addition, to the extent that Defendants interpret Plaintiff’s request to require 

Defendants to share source code that pre-existed anything Plaintiff purports to have shared with 

Defendants, the Court agrees that Defendants are not required to provide such source code. That 

source code could not have been based on, in whole or in part, any alleged trade secrets of 

Plaintiff. Allowing that limitation of Defendants’ obligation to disclose its source code addresses 

 1 While Defendants contend in Opposition to Plaintiff’s Motion to Compel that Plaintiff’s damages are 

less than $10 million, Plaintiff states in its Motion to Compel that the amount in controversy exceeds 

$100,000,000 and the current operative pleading states that damages are $270,340,752. Compare Pl.’s 

Mot. Compel 8, ECF 358; Defs.’ Opp. 9, ECF 372; TAC ¶ 92, ECF 222.

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9 – OPINION & ORDER

any lingering concern about proportionality and, thus, Defendants are otherwise obligated to 

comply with Plaintiff’s Motion to Compel.

III. Amendments to Stipulated Protective Order 

As discussed above, the Court directed the parties to include in their briefs any arguments 

about the need to modify the parties’ Stipulated Protective Order. Defendants write in their 

Opposition:

To the extent the Court determines that Vesta’s Motion should be granted, the current 

protective order should be modified to include a few more restrictions. First, anybody 

who is going to be provided access to the source code must affirm that he or she is not 

doing and will not do any work for the Amdocs’s competitors identified on 

AML00291102-00291103 now and for a period of two years after the person last reviews 

the source code. Second, nobody should be permitted to request printing of any 

continuous block of source code exceeding 15 printed pages and may not request more 

than a total of 1000 printed pages of source code. Third, any pages of printed source code 

can only be stored at offices of outside counsel, technical advisor, or the Court and must 

be transmitted between any such sites by hand (and not placed in checked luggage, mail, 

or FedEx). 

Defs.’ Opp. 11 fn. 5, ECF 372. Plaintiff agrees to the proposed restrictions and has submitted to 

the Court a revised form of protective order that incorporates each of the restrictions Defendants 

request. See Haynie Decl. Ex. 1, ECF 380-1. The Court finds the modifications to be reasonable 

and orders Plaintiff to submit a Modified Stipulated Protective Order to the Court for signature 

within 3 days of the issuance of this Opinion & Order. 

///

///

///

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10 – OPINION & ORDER

CONCLUSION

Plaintiff’s Motion to Compel Production of Source Code [358] is granted. Defendants are 

ordered to respond to Plaintiff’s RFP 37, consistent with this Opinion & Order, within 30 days of 

the date below. 

IT IS SO ORDERED.

Dated this ____________day of ________________________, 2017.

________________________________________________

MARCO A. HERNÁNDEZ

United States District Judge

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