Case 4:18-cv-07229-YGR Document 131 Filed 11/05/20 Page 1 of 7
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`November 5, 2020
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`
`VIA ELECTRONIC FILING
`
`Honorable Thomas S. Hixon
`U.S. District Court, Northern District of California
`Oakland Courthouse
`Courtroom G – 15th Floor
`450 Golden Gate Avenue
`San Francisco, CA 94102
`
`Re:
`
`
`
`Joint Discovery Statement
`Finjan, Inc. v. Qualys Inc., Case No. 4:18-cv-07229-YGR
`
`
`Dear Magistrate Judge Hixson:
`
`
`Pursuant to the Court’s November 4, 2020 Order (D129), the parties submit the following
`joint statement regarding Plaintiff Finjan, Inc.’s (“Finjan”) request for an order compelling
`Defendant Qualys Inc. (“Qualys”) to provide access to its source code review computer. The
`parties attest that they met and conferred on this issue by teleconference on October 29, 2020.1
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`
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`Respectfully submitted,
`
`/s/ Jason W. Wolff
`Jason W. Wolff (State Bar No. 215819)
`FISH & RICHARDSON P.C.
`
`Attorneys for Plaintiff
`Finjan, Inc.
`
`
`/s/ Ryan R. Smith
`Ryan R. Smith (State Bar No. 229323)
`WILSON SONSINI GOODRICH & ROSATI P.C.
`
`Attorneys for Defendant
`Qualys Inc.
`
`
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`
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`1 Due to the COVID-19 pandemic, the parties met and conferred by teleconference in order to
`satisfy the in-person meet and confer requirement for discovery dispute resolution under the
`Court’s Standing Order.
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`Case 4:18-cv-07229-YGR Document 131 Filed 11/05/20 Page 2 of 7
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`Finjan’s Position
`
`Finjan seeks continued access to the source code review computer that Qualys made
`available for inspection to satisfy this Court’s Patent Local Rules. See Qualys Patent L.R. 3-3, 3-
`4 Disclosures at 93 (“Qualys is in the process of making its source code available for inspection
`to show the operation of the Accused Instrumentalities (as defined above). Qualys does so
`according to the provisions of the Protective Order governing the production of source code.”).
`To be clear, any further review by Finjan’s experts will be focused only on the infringement
`theories an instrumentalities identified in Finjan’s Patent L.R. infringement contentions and, if
`necessary, any arguments made by Qualys’s experts that rely on source code.
`
`Opening expert reports are due on December 1, 2020. Finjan’s experts require access to
`Qualys’s source code to analyze the code in the format it is kept in the ordinary course of
`business (i.e., electronically), along with the change log information regarding the releases of
`each accused product, which Qualys has relied upon under Rule 33(d) to identify release dates of
`the accused products. Currently, Finjan’s experts can only review paper copies of source code
`excerpts, which means they cannot use the software tools on the source code review computer to
`confirm, among other things, the relationships between source code functions in their native
`environment or the metadata of the corresponding source code files.
`
`Source code review is expert discovery. As explained in TQ Delta, LLC v. 2Wire, Inc., it
`is logical for a party to undertake source code review during expert discovery. Civ. Action No.
`13-1835-RGA, 2019 WL 1529952, at *2 (D. Del., April. 9, 2019); see also REC Software USA,
`Inc. v. Bamboo Sols. Corp., No. C11-0554JLR, 2012 WL 3527891, at *4 (W.D. Wash. Aug. 15,
`2012) (denying motion to strike in part because source code was provided for inspection during
`expert discovery); Cvent, Inc. v. RainFocus, Inc., No. 217CV00230RJSDBP, 2019 WL 7837157,
`at *3 (D. Utah Apr. 4, 2019) (confirming that access to source code must be provided “for the
`remainder of the fact and expert discovery period”).
`
`In fact, source code made available for inspection, like any other document produced in
`discovery, should remain available to the receiving party through trial. See Juniper Networks,
`Inc. v. Bahattab, No. CV 07-1771 (PLF)(AK), 2008 WL 11403235, at *3 (D.D.C. Nov. 12,
`2008) (denying motion for a protective order that would have terminated access to source code
`review computers after expert discovery and instead providing “24-hour access to the source
`code … through the close of trial”); see also Baxter Int’l, Inc. v. Carefusion Corp., 2017 WL
`2773077, at §C.7 (N.D. Ill. Feb. 24, 2017) (Joint Status Report confirming that source code
`would be available for inspection “throughout fact and expert discovery, and that … the code
`[would be made] available for Baxter’s use at trial.”).
`
`Not surprisingly, numerous protective orders expressly require source code review
`computers be made available for inspection through trial and at least until the close of expert
`discovery. See, e.g., Apple Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2012 WL
`10817203, at *7 (N.D. Cal. Jan. 30, 2012) (“The Confidential Source Code Computer shall be
`made available … at least until the close of expert discovery.”); Enfish LLC v. Microsoft Corp.,
`No. 2:12-cv-07360-AG-MRW, D.I. 107 (C.D. Cal. Oct. 7, 2013) (“Each Producing Party shall
`make source code available for inspection … until expert discovery … concludes.”); Walker
`Digital, LLC v. Google, Inc., 1:11-cv-00309-SLR, D.I. 153 at 13 (D. Del. Sept. 5, 2012) (“The
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`Case 4:18-cv-07229-YGR Document 131 Filed 11/05/20 Page 3 of 7
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`Receiving Party may inspect the source code as many times or days as reasonably necessary for
`preparation of its case until … the close of expert discovery.”); In the Matter of Certain Elec.
`Devices, USITC Inv. No. 337-TA-771, 2011 WL 2355097 at *2 (June 13, 2011) (“Confidential
`Source Code Computer shall be made available … until the close of expert discovery.”)
`
`If Qualys wanted to terminate access to the source code at the close of fact discovery,
`Qualys should have requested a corresponding protective order. It did not. Accordingly, the
`Protective Order here states only that: “source code produced in discovery shall be made
`available for inspection.” D34 at ¶9(c). There is no provision terminating Finjan’s access to the
`source code at the close of fact discovery. And no rule or order required Finjan to schedule its
`experts’ access to the source code review computer prior to expert discovery or required Finjan’s
`experts to complete their review of the source code prior to expert discovery. And again, Finjan
`understands its analysis is bound by its PLR infringement contentions.
`
`Furthermore, Qualys’s interrogatory responses direct Finjan to Qualys’s source code
`review computer to determine:
`
`(1) the identity of all releases or versions of the accused products; and
`
`(2) the identity of the accused products that correspond to the source code including the
`name and version number, the directories and subdirectories of the source code, and the
`last date the source code was modified.
`
`See, e.g., 10/1/2020 Resp. to Interrogatory Nos. 1-6 at pp. 8-9 (“Qualys has made the source
`code for each accused product available to Finjan for inspection…. The answer to this
`interrogatory may be obtained through such an inspection.”). Determining this information,
`however, is a task for Finjan’s experts (i.e., it is expert discovery).
`
`Moreover, Qualys’s supplemental interrogatory responses, which were served on October
`1, 2020 (the same day Qualys apparently terminated Finjan’s access to the source code), make
`arguments that Qualys’s source code does not practice limitations of the asserted claims. See
`10/1/2020 Resp. to Interrogatory Nos. 12-19 at pp. 6-27. They also direct Finjan to source code
`print outs as well as Qualys’s invalidity contentions, which rely on Qualys’s source code. See
`10/1/2020 Resp. to Interrogatory Nos. 1-7 at pp. 6-7, 9. Finjan’s experts require access to the
`source code review computer to analyze Qualys’s belated arguments and to confirm whether
`Qualys’s newly cited source code affects their opinions. Finjan’s experts may also require
`access to the source code review computer when preparing rebuttal expert reports.
`
`Finally, it is unfair for Qualys and/or its experts to have access to the code during expert
`discovery and trial, when Finjan and its experts do not have access. See Qualys 10/1/2020 Resp.
`to Interrogatory Nos. 12-19 at 27 (“Through expert reports and testimony, Qualys may rely upon
`any part of the source code repository made available for inspection.”) (emphasis added). While
`Qualys has intimated that its experts will not have continued access to the source code (a
`commitment it does not make below), it has not said what code they already possess, nor
`represented that its counsel or its own engineers will not have continued access to the code.
`
`During the Nov. 4, 2020 teleconference with the Court regarding this issue, Qualys
`complained that Finjan did identify any specific discovery requests, which accused products the
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`Case 4:18-cv-07229-YGR Document 131 Filed 11/05/20 Page 4 of 7
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`experts would inspect, and why further inspection is required. The first two arguments miss the
`point. Finjan is not moving to compel further responses to discovery or to review source code
`for a sub-set of accused products. It is not asking to print new source code. Finjan is simply
`seeking access to the source code review computer that Qualys previously made available for
`inspection to comply with its Patent L.R. 3-4(a) disclosures. With respect to the third argument,
`as previously explained, inspection is required because reviewing Qualys’s source code in its
`native environment is the most practical and logical way for Finjan’s experts to perform their
`expert analyses and to finish their reports.
`
`Qualys’s argument that all expert review of source code must have been complete prior to
`expert discovery is unreasonable; particularly in view of Qualys’s belated discovery responses.
`It is also unreasonable because Qualys objected to the disclosure of its source code to Finjan’s
`expert (an issue that was not resolved until Aug. 27, 2020 (D95)). Qualys did not make its
`witnesses available for depositions regarding the source code until mid-Sept. 2020. And we all
`were in the midst of a global pandemic that severely interrupted business as usual during fact
`discovery. Furthermore, Qualys’s argument is inconsistent with: (i) the provision of separate
`fact and expert discovery deadlines in the procedural schedule; and (ii) the express statement in
`the Protective Order that: “The Receiving Party may request paper copies of limited portions of
`source code that are reasonably necessary for the preparation of … expert reports.” D34 at ¶9(d).
`
`Thus, Finjan respectfully requests the Court compel Qualys to provide access to its
`source code review computer for the remainder of this case.
`
`Qualys’s Position
`
`Requests for inspection are the subject of fact discovery, not expert discovery. In Ruiz-
`Bueno v. Scott, the court denied a request for an expert to conduct a site inspection during expert
`discovery because expert discovery “is devoted to the exchange of expert reports and information
`about those reports, including the required Rule 26(a)(2) disclosures and depositions of the
`experts”, while “site visits are fact discovery … and must be requested during the fact discovery
`period.” No. 2:12-cv-0809, 2014 WL 576400, at *4 (S.D. Ohio Feb. 12, 2014). The Ruiz-Bueno
`court reasoned that “[i]t would make little sense to have separate cutoff dates for fact and expert
`discovery if discovery of any information which might form the basis for expert opinions could be
`deferred to the ‘expert discovery’ phase.” Id. at 3. Similarly, in Cover v. Windsor Surry Co., the
`plaintiff made an inspection request where the response was not due until after the fact discovery
`cut-off, but still during expert discovery. Although Judge Orrick did not address whether the
`inspection request could be considered expert discovery, he held that plaintiff had made an
`“untimely request for inspection” reasoning that “[Plaintiff] had many months to file this request
`for inspection” and denied the motion to extend fact discovery because it “would prejudice
`defendants and would further extend and disrupt the case schedule.” Case No. 14-CV-05262-
`WHO, 2016 WL 8231158, at *4 (N.D. Cal. Dec. 19, 2016); see also, Alaska Community Action
`on Toxics v. Aurora Energy Services, LLC, Case No. 3:09-cv-00255-TMB, 2012 WL 12537417,
`at *3 (D. Alaska April 4, 2012) (denying plaintiff’s request for site inspection a week before the
`close of fact discovery because plaintiff never sought an extension of fact discovery).
`
`For similar reasons, access to raw data for expert testing constitutes fact discovery, not
`expert discovery. See Gore v. 3M Co., No. 5:16-cv-716-BR, 2017 WL 5076021, at *2 (E.D. N.C.
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`Case 4:18-cv-07229-YGR Document 131 Filed 11/05/20 Page 5 of 7
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`Nov. 2, 2017) (holding that defendant’s motion to compel production of raw pathology samples
`for expert testing was a request for fact discovery rather than expert discovery because “the
`pathology slides constitute facts upon which experts may base their opinions at trial, and are
`therefore distinct from the expert opinions themselves.”); see also Arkansas Game and Fish Com’n
`v. U.S., 74 Fed. Cl. 426, 430 (2006) (in denying the request for data, the court reasoned that “[t]he
`unevaluated data from the piezometers, however, would not be expert ‘opinions . . .’ even though
`the results of testing by the piezometers might well become ‘data or other information considered
`by the [expert] in forming the opinions. . . or facts known . . . by an expert.’”).
`
`More generally, expert discovery is typically limited to discovery of expert witnesses, not
`fact gathering by expert witness. See Shell Petroleum, Inc. v. U.S., 46 Fed. Cl. (2000) (“Shell has
`propounded discovery requests, after the time for serving discovery about facts has expired. The
`discovery requests are requests that seek ‘factual,’ not ‘opinion’ and not ‘expert’-- information.”);
`Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., Case No. 15 C 1067, 2018 WL 6725873, at *3
`(N.D. Ill. Dec. 21, 2018) (excluding expert testimony that repackaged a fact witness as an expert
`witness because it “end-run[s] the requirements of Rule 26(a)(2), as well as the separation of fact
`discovery (completed earlier) and expert discovery”); Henry v. Quicken Loans Inc., No. 04-40346,
`2008 WL 4735228, at *6 (E.D. Mich. Oct 15, 2008) (“Defendants cannot use an expert to develop
`facts after the close of fact discovery when those same facts could have been developed by
`attorneys during fact discovery.”); ParkerVision, Inc. v. Qualcomm Inc., Case No. 3:11-cv-719,
`2013 WL 3771226 *5 (M.D. Fl. July 17, 2013) (denying motion to compel in expert discovery
`period for expert reports and transcripts because plaintiff “knew, or should have known, the
`information it now seeks may fall within the broader parameters of Rule 26(b)(1), but not the more
`limited scope of expert discovery.”).
`
`None of Finjan’s cited cases hold that an inspection request constitutes expert discovery.
`Rather, they involve scenarios where parties had agreed to inspections or where a court had
`specifically ordered an inspection. See TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA,
`2019 WL 1529952, at *2 (D. Del., April. 9, 2019) (noting that the source code was made available
`for inspection during expert discovery); REC Software USA, Inc. v. Bamboo Sols. Corp., No. C11-
`0554JLR, 2012 WL 3527891, at *4 (W.D. Wash. Aug. 15, 2012) (denying a motion to strike source
`code as prior art because the source code was made available for inspection during expert
`discovery); Cvent, Inc. v. RainFocus, Inc., No. 217CV00230RJSDBP, 2019 WL 7837157, at *3
`(D. Utah Apr. 4, 2019) (holding that Plaintiff was entitled to have access to source code for the
`remainder of fact and expert discovery period because Defendant had failed to comply with the
`previously issued court order to provide access to its source code.); Juniper Networks, Inc. v.
`Bahattab, No. CV 07-1771 (PLF)(AK), 2008 WL 11403235, at *3 (D.D.C. Nov. 12, 2008)
`(holding that Defendant was permitted access to the source code throughout discovery and trial
`because the parties were unable to agree on the terms of the protective order); Baxter Int’l, Inc. v.
`Carefusion Corp., 2017 WL 2773077, at §C.7 (N.D. Ill. Feb. 24, 2017) (joint status report
`indicating parties’ agreement for source code access throughout fact and expert discovery).
`
`Finjan points-out that some protective orders require making source code review computers
`available for inspection during (or after) the close of expert discovery. That, however, cuts against
`Finjan’s position. If the inspection of another party’s property was truly expert discovery, there
`would be no need for those protective orders to specifically require that inspection requests be
`made during expert discovery. Here, the parties did not agree to such a provision.
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`Case 4:18-cv-07229-YGR Document 131 Filed 11/05/20 Page 6 of 7
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`Finjan also points-out that Qualys made its source code available for inspection pursuant
`to Patent Local Rule 3-4. The timing of that disclosure (59-days after the Case Management
`Conference) confirms that source code inspection is fact discovery, not expert discovery. Indeed,
`the Patent Local Rules exist to take the place of discovery requests that the parties “would likely
`have propounded had the patent local rules not provided for streamlined discovery.” Theranos,
`Inc. v. Fuisz Pharma LLC, No. 11-cv-05236-YGR, 2012 WL 6000798 at *2 (N.D. Cal., Nov. 30,
`2012). The parties’ litigation conduct bolsters this conclusion. Finjan made no fewer than 16
`inspection requests totaling over 100 hours during fact discovery. Qualys permitted inspection in
`response to each request; two of these visits were during the pandemic in 2020. See D.I. 126-7,
`126-8, 126-9, 126-10, 126-11. Finjan requested over 400 pages of the source code be printed and
`produced during fact discovery. Qualys produced the requested files, which Finjan’s experts
`continue to have access to. Neither party ever suggested that source code inspections constituted
`premature expert discovery.
`
`Although not responsive to whether an inspection request is fact discovery or expert
`discovery, Finjan devotes much of its brief to blaming Qualys for its own lack of diligence.
`Finjan’s assertions are unfounded. Qualys did not cite “new source code” on October 1. In fact,
`Qualys has not identified any source code other than the paper print-outs which the experts already
`have in their possession.2 Finjan also points to Qualys’s October 1, 2020 supplemental
`interrogatory responses to suggest that Qualys referred Finjan to the source code computer. But
`Finjan did not quote from the supplement made on that date, and instead deceptively quotes from
`Qualys’s First Supplemental Responses served December 10, 2019. See Ex. A at 6, 8. Finjan also
`argues that Qualys’s supplemental responses refer to its invalidity contentions; Yet, Qualys served
`its invalidity contentions on June 21, 2019. Qualys also timely produced the change logs in
`advance of fact depositions. Suffice it to say, the “new” information that allegedly spurred Finjan’s
`desire for additional source code inspection had been known for many months. Finjan also asserts
`that it would be inequitable for Qualys’s experts to access Qualys’s source code repository while
`denying that same access to Finjan’s experts. However, Qualys has already certified that none of
`its experts have accessed Qualys’s source code repository since the close of fact discovery and
`Qualys agrees that it will not provide any of its experts such access.
`
`Finally, allowing Finjan’s experts continued access to the source code during expert
`discovery would highly prejudice Qualys. Qualys relied on Finjan’s identification of source code
`print-outs in preparing its 30(b)(6) witnesses, responding to written discovery, and developing its
`non-infringement defenses. Finjan should not be permitted to circumvent the fact discovery
`deadline by allowing its experts to search for additional source code files that will appear for the
`first time in an opening expert report, especially given the 30-day turnaround time for Qualys’s
`rebuttal reports.
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`
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`2 Qualys sent Finjan a letter on July 23, 2020, identifying deficiencies in Finjan’s response to
`Interrogatory No. 7 including that Finjan failed to identify any source code for two of the accused
`products. See Ex. B. Finjan was thus put on notice over two months prior to the close of fact
`discovery that Qualys had concerns about the completeness of its source code identification, yet
`did not conduct further source code inspections nor did it amend its response to the interrogatory.
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`Case 4:18-cv-07229-YGR Document 131 Filed 11/05/20 Page 7 of 7
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`In accordance with Civil Local Rule 5-1(i)(3), I attest that concurrence in the filing of this
`document has been obtained from any other signatory to this document.
`
`ATTESTATION
`
`/s/ Jason W. Wolff
`Jason W. Wolff
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