i 

UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

DIRTT Environmental Solutions, Ltd., and ) 

 ) 

DIRTT Environmental Solutions, Inc., ) 

 ) Case No. 20-cv-4637 

 ) 

 v. ) Hon. Steven C. Seeger 

 ) Hon. Magistrate Judge Gabriel A. Fuentes 

Falkbuilt, Ltd., ) 

 ) 

 

PLAINTIFFS' MEMORANDUM IN SUPPORT OF THEIR MOTION TO COMPEL 

AND FOR PROTECTIVE ORDER 

 

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TABLE OF CONTENTS 

I. INTRODUCTION ...............................................................................................................1

II. BACKGROUND .................................................................................................................1

III. DEFENDANT'S FAILURE TO COMPLY WITH LOCAL PATENT RULE 2.1 .............4

IV. DIRTT'S MOTION FOR A PROTECTIVE ORDER THAT ALLOWS FOR REMOTE 

ACCESS REVIEW OF SOURCE CODE ...........................................................................6

V. CONCLUSION ....................................................................................................................7

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I. INTRODUCTION 

Plaintiffs DIRTT Environmental Services, Ltd. and DIRTT Environmental Services, Inc. 

("DIRTT" or "Plaintiffs") seek to compel Defendant Falkbuilt Ltd. ("Falkbuilt" or "Defendant") 

to comply with its obligations under the Initial Disclosure requirements of the Local Patent Rules 

("LPR") for the U.S. District Court for the Northern District of Illinois. This is Plaintiffs' renewed 

motion seeking an order to compel production of the sought-after discovery. See Dkt. No. 26 

(Plaintiffs' original Motion to Compel). Following the Court's denial of that motion without 

prejudice, Plaintiffs' redoubled their efforts to find a way to obtain the basic information provided 

by LPR 2.1—that is, production of documents providing a basic understanding of the Accused 

Product ("documents sufficient to show the operation and construction of all aspects or elements 

of each accused apparatus, product, device, component, process, method or other instrumentality 

identified with specificity in the pleading of the party asserting patent infringement"). LPR 2.1. 

Plaintiffs have sought and engaged in numerous teleconferences with counsel for Defendant, 

waited patiently when Defendant's counsel claimed to be unavailable or claimed the need to 

consult further with his client, and exchanged countless emails, and are still left without the first 

basic step in discovery provided by the Local Patent Rules. It is clear at this point that the soughtafter discovery will never arrive without the Court's assistance. It is also clear that evasive 

discovery responses will continue unless addressed by the Court. 

II. BACKGROUND 

DIRTT filed its original Complaint alleging Falkbuilt's Echo Dome system infringes U.S. 

Pat. No. 10,467,814 ("the '814 patent") on August 6, 2020. Dkt. No. 1. DIRTT filed its First 

Amended Complaint, which alleges that Falkbuilt's Echo Dome system infringes both the '814 

patent and U.S. Pat. No. 10,783,284 ("the '284 patent") (together "the Asserted Patents"), on 

November 13, 2020. 

Falkbuilt served its Initial Disclosures under the Local Patent Rules for the '814 patent on 

Nov. 6, 2020 and the '284 patent on Dec. 11, 2020. Ex. A, '814 Initial Disclosures; Ex. B, '284 

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Initial Disclosures. While Falkbuilt promptly served several thousand pages of documents 

supporting its invalidity allegations, Falkbuilt did not produce any documents, whether "sufficient 

to show the operation and construction of all aspects or elements" of the Echo Dome system or 

otherwise, with its Initial Disclosures. Instead, Falkbuilt indicated it would make certain, 

unspecified, source code "related to" the Echo Dome app (and, DIRTT would eventually learn, 

only the app) available for inspection only after DIRTT agreed to a Stipulation Regarding 

Inspection of Source code that only allowed for in-person review. Ex. A, '814 Initial Disclosures; 

Ex. B, '284 Initial Disclosures; Ex. C, Email Summaries of Meet and Confers. 

DIRTT objected to (1) the attempt to substitute source code instead of conventional 

documents describing the operation and construction of Falkbuilt's system, (2) an inspection 

procedure that did not allow its out-of-town experts to review the source code due to travel 

restrictions in place due to the COVID-19 pandemic, and (3) the improper conditioning of review 

of materials allegedly provided under LPR 2.1 on provisions beyond the default Protective Order 

in place via operation of the Local Patent Rules. Ex. C, Email Summaries of Meet and Confers. 

As noted by DIRTT at every turn, the Local Patent Rules specifically prohibit conditioning making 

initial disclosures on a desire for a more restrictive protective order. Id. The only purported 

compromise offered by counsel for Falkbuilt on the requirement for in-person review was that 

counsel for Falkbuilt would personally travel with the source code laptops to the location of 

DIRTT's experts. Id. This was unworkable for several reasons. First, it fails to take into account 

any quarantine requirements in the states where DIRTT's experts are located. Additionally, it still 

requires physical contact between Falkbuilt's attorney and DIRTT's experts. And finally, it would 

place DIRTT at the mercy of Falkbuilt's counsel and his schedule. Id. Additionally, DIRTT 

objected that inspection of the source code would not meet Falkbuilt's LPR 2.1 requirements. Id. 

After the Court denied DIRTT's previous motion to compel on this issue without prejudice and 

required DIRTT to continue to meet and confer with Falkbuilt regarding this issue, the parties met 

and conferred five (5) additional times on this issue. During the parties' discussions DIRTT 

repeatedly asked Falkbuilt for information regarding the source code it was allegedly providing as 

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well as the availability of alternative documents or information that might meet Falkbuilt's LPR 

2.1 requirements. For example, DIRTT requested that Falkbuilt facilitate an inspection of the 

application itself (something that cannot be done without Falkbuilt's assistance because the 

application requires a meeting code). Id. Falkbuilt refused this request. Indeed, Falkbuilt 

continues to refuse to provide anything beyond offer an inspection of source code. Id. As 

discussed above, and as argued by DIRTT since Falkbuilt first offered inspection of source code, 

the source code allegedly provided by Falkbuilt is not "sufficient to show the operation and 

construction of all aspects or elements" of the Echo Dome system because raw source code does 

not provide a reviewer the operation of the application itself. 

The parties met and conferred regarding Falkbuilt's failure to comply with LPR 2.1 and the 

need for a Protective Order governing source code review that allows for remote inspections on 

November 10, 2020;1 December 3, 2020; December 10, 2020; December 17, 2020; January 25, 

2021; and February 1, 2021. During this time, DIRTT identified, at its own expense (an additional 

expense to its previously identified out-of-town experts), Chicago area source code consultants 

who could inspect the source code offered for inspection by Falkbuilt to at least determine the 

basic understanding of what was being provided—something Falkbuilt's counsel would not 

divulge in meet and confers. These consultants determined that the source code offered for 

inspection by Falkbuilt did not show "all aspects or elements" of the Echo Dome system because 

the source code offered for inspection calls or otherwise communicates with additional software 

or source code that was not made available. In order to do this basic review, Falkbuilt insisted that 

DIRTT sign a Stipulation allowing only in person review of the source code with the agreement 

that they would continue to work toward a Protective Order that would allow for remote 

inspections. Ex. C, Email Summaries of Meet and Confers. DIRTT also included Document 

Requests seeking information on the operation and construction of the Echo Dome system in their 

1

 The parties' November 10, 2020 meet and confer was discussed in DIRTT's first motion to compel 

on this issue. 

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First Set of Document Requests served on December 21, 2020. Despite agreeing to produce at 

least some documents responsive to these requests, as of the date of this motion Falkbuilt has 

produced no such documents. 

III. DEFENDANT'S FAILURE TO COMPLY WITH LOCAL PATENT RULE 2.1 

Local Patent Rule 2.1(b)(1) states "[a] party opposing a claim of patent infringement shall 

produce or make available . . . for inspection and copying, along with its Initial Disclosures (1) 

documents sufficient to show the operation and construction of all aspects or elements of each 

accused apparatus, product, device, component, process, method or other instrumentality 

identified with specificity in the pleading of the party asserting patent infringement." LPR 

2.1(b)(1). DIRTT, the party asserting patent infringement in this matter, identified Falkbuilt's 

"'Echo Dome system" as the infringing apparatus, product, device, component, process, method or 

other instrumentality for both the '814 and '284 patents. Dkt. No. 25 at ¶¶ 36-40. DIRTT also 

provided a link to a video describing the Echo Dome system's operation and articles from Falkbuilt 

itself describing the Echo Dome system as Exhibits to the Amended Complaint. Dkt. No. 25 at 

Exs. B, E, & H. Thus, Falkbuilt was required, pursuant to LPR 2.1, to produce or make available 

documents sufficient to show the operation and construction of all aspects of the Echo Dome 

system. It has failed to do so. 

To date, Falkbuilt has only made the source code for the application portion of the Echo 

Dome system available for inspection to DIRT, rather than producing any documents that describe 

the operation and construction of the Echo Dome system.2 See Exs. A & B, Falkbuilt Initial 

Disclosures; Ex. C, Email Summaries of Meet and Confers. However, even the source code 

2

 Notably, Falkbuilt has continued to condition DIRTT's review of this source code on an 

impractical and prejudicial in-person only review of the source code. However, even if DIRTT 

had the ability to allow its preferred experts to review the source code provided by Falkbuilt 

remotely, the inspection of that source code would not fulfill the requirements of LPR 2.1. 

However, the issue of appropriate means of source code inspection remains relevant because it has 

been exhaustively addressed by the parties and is the subject of Rule 34 discovery requests 

regarding which the parties are currently conferring. 

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provided was only for the app or client-side part of the Echo Dome system. As shown in the video 

in Plaintiff's complaint, the app is only part of the system. Moreover, source code is not a 

reasonable way to ascertain the functionality of the system. It would be far more reasonable for 

Falkbuilt to produce internal documents, (as the rule contemplates) that describe the construction 

and functionality of the Echo Dome system. Without the ability to see the system in operation (a 

request also made by DIRTT which Falkbuilt refused) source code alone does not "describe the 

construction and functionality" of the Echo Dome system. 

 Thus, Falkbuilt has not made all of the aspects or elements of the Echo Dome system are 

available for inspection. Moreover, inspection of source code, even all of the source code used by 

the Echo Dome system, is not likely to meet Falkbuilt's LPR 2.1 disclosures because raw source 

code, in and of itself, does not allow for an inspector to determine the operation of software or an 

application. During the parties' meet and confers regarding this issue, Falkbuilt has consistently 

attempted to shift the burden in identifying documents in its care, custody, or control that would 

meet the requirements of LPR 2.1 to DIRTT by insisting that DIRTT identify those documents 

with specificity. Ex. C, Email Summaries of Meet and Confers. However, LPR 2.1 does not 

require the Plaintiff to identify for the Defendant what documents would meet the Defendant's 

LPR 2.1 requirements—indeed, such a requirement would be unworkable and likely impossible, 

because the documents are, by definition, not known to Plaintiff. 

The parties have met and conferred by telephone regarding this issue six (6) separate times 

in the past few months. Ex. C, Email Summaries of Meet and Confers. Falkbuilt has refused to 

supplement its Initial Disclosures to meet its LPR 2.1 requirements and continues to only offer 

inspection of the Echo Dome application source code. Id. Falkbuilt's insistence that DIRTT 

identify documents for it to produce or make available for inspection is unreasonable, prejudicial, 

and not contemplated by the Local Patent Rules. Based on its previous efforts, and Falkbuilt's 

failure to address DIRTT's concerns at all, DIRTT submits that additional efforts to meet and 

confer on this issue will be futile. DIRTT therefore respectfully requests that this Court order 

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Falkbuilt to produce documents sufficient to who the operation and construction of all aspects or 

elements of the Echo Dome system, as described in DIRTT's Amended Complaint. 

IV. DIRTT'S MOTION FOR A PROTECTIVE ORDER THAT ALLOWS FOR 

REMOTE ACCESS REVIEW OF SOURCE CODE 

DIRTT also requests the Court enter the attached Protective Order Regarding Review of 

Source Code that allows for remote access to review source code in this matter. Ex. D, Proposed 

Protective Order. After at least six meet and confers regarding this topic, the parties have failed 

to make any progress. Indeed, Falkbuilt has uniformly refused to accept, provide revisions to, or 

provide a separate proposed Protective Order regarding review of source code. Ex. C, Email 

Summaries of Meet and Confers. Although Falkbuilt claims its refusal is due to "security 

concerns," it refuses to delineate those concerns or provide a suggested Protective Order that would 

address those concerns. Instead, it insists DIRTT must provide a proposed Protective Order that 

addresses its ambiguous, unspecified security concerns. Although DIRTT was able to inform the 

Court that the parties' discussions on this issue were productive on December 3, 2020, absolutely 

no progress has been made since that time despite five (5) meet and confers regarding the issue. 

Ex. C, Email Summaries of Meet and Confers; Dkt. No. 37. 

Indeed, due to the utter failure of any progress on this issue (despite the Court's 

acknowledgement that an in-person only review of source code was likely untenable in global 

pandemic), DIRTT agreed to sign an interim stipulation allowing only in-person only review of 

the source code in order to at least obtain some information regarding the Accused Product from 

Falkbuilt, with the agreement of Falkbuilt that, despite signing the Stipulation, the parties would 

continue to negotiate toward a Protective Order that allowed for remote source code inspection.3 

Ex. C, Email Summaries of Meet and Confers. However, DIRTT had to make considerable and 

otherwise unnecessary efforts to locate consultants in the Chicago area who had the expertise to 

review source code, availability to conduct the review, and the willingness to sit in an enclosed 

3

 As discussed above, Falkbuilt has not made available information sufficient to show the operation 

and construction of the Echo Dome system accused of infringement.

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space for an extended period of time. Although DIRTT was able to locate two consultants who 

met these requirements, it is prejudicial to DIRTT to not allow it to use the consultants and experts 

of its choice, particularly where they would otherwise be eligible to provide their expertise to 

DIRTT absent the pandemic. Indeed, although the Chicago area consultants are qualified to review 

source code, DIRTT would prefer to use other consultants and/or experts it has already identified 

outside of the Chicago area who have a greater level of experience with virtual reality systems. 

DIRTT is and will continue to be prejudiced by Falkbuilt's refusal to even consider a remote 

access protocol, particularly in light of Falkbuilt's failure to follow-through on its previous 

agreement to do so. DIRTT respectfully requests that the Court enter the Protective Order 

Regarding Review of Source Code that allows for remote review of the source code and that will 

take the place of the parties' interim Stipulation. 

V. CONCLUSION 

For the foregoing reasons, DIRTT respectfully requests that the Court (1) compel Falkbuilt 

to comply with its LPR 2.1 requirements and (2) enter DIRTT's proposed Protective Order 

Regarding Review of Source Code. 

March 5, 2021 Respectfully Submitted, 

 By: /s/Rubén Castillo 

Attorneys for Plaintiffs 

Rubén Castillo 

Timothy K. Sendek 

Robyn M. Bowland 

Akerman LLP 

71 S. Wacker Drive, 47th Floor 

(312) 634-5700 

ruben.castillo@akerman.com 

tim.sendek@akerman.com 

robyn.bowland@akerman.com 

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