Case 4:18-cv-07229-YGR Document 140 Filed 11/10/20 Page 1 of 6
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, LLC,
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`Plaintiff,
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`v.
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`QUALYS INC.,
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`Case No. 18-cv-07229-YGR (TSH)
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`DISCOVERY ORDER
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`Re: Dkt. Nos. 131, 136, 139
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`Defendant.
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`The parties have filed a joint discovery letter brief at ECF No. 131 concerning whether
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`Finjan may have continued access to Qualys’s source code in electronic format on the review
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`computer on which Qualys had made the code available until October 1, 2020. Finjan wants this
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`access so that its experts may continue to review the source code in preparing their expert reports.
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`At ECF No. 78, the parties stipulated to, and the Court ordered, the current case schedule.
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`Fact discovery closed on October 1, 2020. Opening expert reports are due December 1, 2020,
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`which by design was two months after the close of fact discovery. Rebuttal expert reports are due
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`six weeks after the opening reports. And the close of expert discovery is March 5, 2021, which is
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`one month after the rebuttal reports are due. Therefore, since fact discovery is closed, the Court
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`must decide whether Finjan’s continued access to Qualys’s source code constitutes fact discovery
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`or expert discovery. If it is the former, Finjan is no longer entitled to it and, indeed, the letter brief
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`itself is untimely. See Civil Local Rule 37-3 (deadline to move to compel on fact discovery is
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`seven days after fact discovery cutoff).
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`The question does not seem close. Inspecting your opponent’s materials or obtaining or
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`accessing data or information is fact discovery. It is explicitly governed by Federal Rule of Civil
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`Procedure 34. By contrast, expert discovery means the disclosures, information and depositions
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`Case 4:18-cv-07229-YGR Document 140 Filed 11/10/20 Page 2 of 6
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`referred to in Federal Rule of Civil Procedure 26(a)(2) and (b)(4). See Henry v. Quicken Loans
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`Inc., 2008 WL 4735228, at *6 (E.D. Mich. Oct. 15, 2008) (“[B]ased on the design of the Federal
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`Rules of Civil Procedure, there is an apparent presumption that data for an expert report should be
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`gathered during fact discovery and that the extended deadline for the expert report is provided to
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`give the expert time to thoroughly analyze the collected data.”); Ruiz-Bueno v. Scott, 2014 WL
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`576400, at *4 (S.D. Ohio Feb. 12, 2014) (“This Court knows exactly what it intended by setting
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`separate dates for the completion of fact and expert discovery. The latter type of discovery is
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`devoted to the exchange of expert reports and information about those reports, including the
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`required Rule 26(a)(2) disclosures and depositions of the experts.”); Sparton Corp. v. U.S., 77
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`Fed.Cl. 10, 14 (Ct. Fed. Claims 2007) (“[E]xpert opinions are to be distinguished from the facts
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`upon which they rely . . . [¶] The fact discovery addressed by RCFC 34(a) differs from the expert
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`discovery covered by RCFC 26, which provides that expert discovery will be carried out through
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`mandatory disclosure of the reports of experts expected to testify at trial, and through
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`interrogatories or depositions . . .”) (quoting Arkansas Game & Fish Comm’n v. U.S., 74 Fed.Cl.
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`426, 429-30 (2006)).
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`Just because you want access to materials for the purpose of enabling your expert to
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`conduct an analysis and write a report doesn’t mean you’re asking for expert discovery. The plain
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`language of Rule 26 makes clear that expert discovery means discovery of the expert, not by the
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`expert. See ParkerVision, Inc., v. Qualcomm Inc., 2013 WL 3771226, at *4 (M.D. Fl. July 17,
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`2013) (“[T]he expert discovery period in the Amended CMSO does not provide an extended
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`period of document discovery related to the disclosed experts; rather, it allows for an extended
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`period of time to exchange expert reports pertaining to the current litigation and to complete
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`expert depositions.”); see also, e.g., Gore v. 3M Company, 2017 WL 5076021, at *2 (E.D.N.C.
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`Nov. 3, 2017) (“[T]he pathology slides constitute facts upon which experts may base their
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`opinions at trial, and therefore are distinct from the expert opinions themselves. Accordingly, the
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`court finds the pathology slides were subject to the March 6, 2017 fact discovery deadline . . .”).
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`If the desire to obtain information so your expert can use it were enough to turn something
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`into expert discovery, then the fact discovery cutoff in patent infringement cases would be nearly
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`Case 4:18-cv-07229-YGR Document 140 Filed 11/10/20 Page 3 of 6
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`meaningless because almost all of the fact discovery is designed to support one or more expert
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`reports. See Ruiz-Bueno, 2014 WL 576400, at *3 (“[M]uch of the information produced during
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`‘fact discovery’ is used as a foundation for expert opinions. It would make little sense to have
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`separate cutoff dates for fact and expert discovery if discovery of any information which might
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`form the basis for expert opinions could be deferred to the ‘expert discovery’ phase; that phase,
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`which is usually much shorter than the fact discovery phase, would then turn out to be more
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`extensive, and it would be very difficult to determine when discovery was really concluded.”);
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`United States v. North East Medical Services, 2014 WL 7208627, at *5 (N.D. Cal. Dec. 17, 2014)
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`(“NEMS’s position elides the distinction between fact discovery and expert discovery. . .
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`. Documents that have a direct bearing on the factual disputes in the case are the subject of fact
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`discovery, which often (as here) concludes before expert discovery so that the parties may rely on
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`a complete factual record to inform their own experts and depose their opponents’ experts.”).
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` Finjan cites some cases in which source code was available for the expert to review after
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`the close of fact discovery, but in none of those cases did the court actually decide the issue
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`presented here, namely, whether access to source code was required after the close of fact
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`discovery. See TQ Delta, LLC v. 2Wire, Inc., 2019 WL 1529952, at *2 (D. Del. April 9, 2019)
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`(denying motion to strike supplemental expert report because the delay was due to the expert’s
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`unexpected inability to access source code for a period of time during expert discovery); REC
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`Software USA, Inc. v. Bamboo Solutions Corp., 2012 WL 3527891, at *4 (W.D. Wash. Aug. 15,
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`2012) (denying motion to strike references to Windows 3.0 source code in Microsoft’s expert
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`report because Microsoft diligently made the code available during expert discovery after learning
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`that it had mistakenly failed to provide it earlier). Those cases are therefore off point and do not
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`assist Finjan. The closest Finjan comes is Cvent, Inc. v. RainFocus, Inc., 2019 WL 7837157, at *3
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`(D. Utah April 4, 2019), in which the court ordered the defendant to make its source code
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`available “for the remainder of the fact and expert discovery period in this case up to an additional
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`100 hours of review,” but the decision contains no analysis of why access should be provided after
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`the close of fact discovery, rendering that case unhelpful as well.
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`Finjan cites Juniper Networks, Inc. v. Bahattab, 2008 WL 11403235, at *3 (D.D.C. Nov.
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`Case 4:18-cv-07229-YGR Document 140 Filed 11/10/20 Page 4 of 6
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`12, 2008), in which the court found “that there is good cause for Defendant to have 24-hour access
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`to the source code housed at the third-party site through the close of trial in this case. Because of
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`the volume of information to be analyzed, Defendant should be permitted to have full access to the
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`source code throughout discovery and trial.” (emphasis added). However, good cause is a
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`different thing entirely. It is the standard under Federal Rule of Civil Procedure 16(b)(4) for
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`modifying a scheduling order. Such a motion would have to be directed to Judge Gonzalez
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`Rogers. The undersigned is merely enforcing the existing scheduling order.
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`Finjan is correct that sometimes litigants agree to make source code available after fact
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`discovery. See Baxter Int’l, Inc. v. Carefusion Corp., 2017 WL 2773077, at § C.7 (N.D. Ill. Feb.
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`24, 2017) (Joint Status Report confirming that source code would be available for inspection
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`“throughout fact and expert discovery, and that … the code [would be made] available for
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`Baxter’s use at trial.”); Apple Inc. v. Samsung Elecs. Co., 2012 WL 10817203, at *7 (N.D. Cal.
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`Jan. 30, 2012) (stipulated protective order providing that “[t]he Confidential Source Code
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`Computer shall be made available … at least until the close of expert discovery.”); In the Matter of
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`Certain Elec. Devices, 2011 WL 2355097 at *2 (U.S.I.T.C. June 13, 2011) (joint motion to amend
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`a protective order, providing that “Confidential Source Code Computer shall be made available . .
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`. until the close of expert discovery.”). However, that does not help Finjan because here Qualys
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`did not agree.
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`Alternatively, Finjan argues that Qualys did agree to provide access to its source code
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`through the close of expert discovery in the stipulated protective order, ECF No. 34, which states
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`in paragraph 9(c): “Any source code produced in discovery shall be made available for inspection,
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`in a format allowing it to be reasonably reviewed and searched, during normal business hours or at
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`other mutually agreeable times, at an office of the Producing Party’s counsel or another mutually
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`agreed upon location.” (emphasis added). Finjan also points to paragraph 9(d), which states that
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`“[t]he Receiving Party may request paper copies of limited portions of source code that are
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`reasonably necessary for the preparation of court filings, pleadings, expert reports, or other papers,
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`or for deposition or trial . . .” However, Finjan’s argument is entirely circular. It assumes without
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`explanation that “produced in discovery” means expert discovery. And it assumes that a party’s
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`Case 4:18-cv-07229-YGR Document 140 Filed 11/10/20 Page 5 of 6
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`ability to request documents to use for expert reports or trial means that it may continue to request
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`documents through the close of expert discovery or potentially through trial. Both of those
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`assumptions are wrong. As explained above, inspection and evidence gathering are fact discovery.
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`Expert discovery means the expert disclosures and depositions provided for in Rule 26. There is
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`nothing in the protective order that is contrary to this.
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`Finjan also argues that on the last day of fact discovery (October 1, 2020), Qualys served
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`updated interrogatory responses that stated that Qualys has made the source code for each accused
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`product available for inspection, and the answer may be obtained through such an inspection.
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`Finjan argues that it is unfair for Qualys to tell Finjan on October 1 that the answer to an
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`interrogatory can be found by inspecting the source code and to simultaneously cutoff Finjan’s
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`access to the source code, thus preventing it from finding the answer to its interrogatory. And,
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`yes, if such a thing had happened, it would have been unfair, and Finjan’s remedy would have
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`been to file a timely motion to compel by October 8, 2020, which it did not do.
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`However, it didn’t happen. Finjan cites pages 8-9 of Qualys’s October 1 responses to
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`interrogatories 1-6 (ECF No. 131 at 3), and on page 9 Qualys does refer to the source code being
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`available for inspection. ECF No. 135-3. However, Qualys said that in its first supplemental
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`response to interrogatory 4 (see id.), which was actually served on December 10, 2019 (ECF No.
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`131-1). As is common when a litigant amends discovery responses, Qualys’s October 1, 2020
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`supplemental responses included all of the prior responses in addition to the new
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`supplementations. Qualys’s new supplementation on October 1 was the second supplemental
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`response to interrogatory 4, which did not tell Finjan it could find the answer to the interrogatory
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`in the source code made available for inspection. ECF No. 135-3. Accordingly, Finjan’s
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`argument that Qualys’s October 1, 2020 amended discovery responses told Finjan it could find the
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`answers in the source code available for inspection is a misrepresentation.
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`Finjan also says that Qualys’s October 1, 2020 amended interrogatory responses direct
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`Finjan to Qualys’s invalidity contentions, cite source code print-outs, and make arguments that
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`Qualys’s source code does not practice certain limitations of the asserted claims. That part, at
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`least, is true. But Finjan omits to mention that Qualys served its invalidity contentions on June 21,
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`Case 4:18-cv-07229-YGR Document 140 Filed 11/10/20 Page 6 of 6
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`2019 (ECF No. 136-1). Qualys also says that the source code print-outs had been previously
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`supplied to Finjan’s experts, and Finjan does not deny this. Finjan’s argument thus shrinks to the
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`assertion that the October 1, 2020 citation to the invalidity contentions and source code print-outs
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`is the event that first put Finjan on notice that those documents mattered, and that the non-
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`infringement arguments in the October 1 amended responses are new. That argument will not fly
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`with the invalidity contentions, given the role they play under this District’s Patent Local Rules.
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`As for the print-outs and the non-infringement arguments, if it’s really true that the October 1,
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`2020 amended responses were the first time Finjan was put on notice that those print-outs
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`mattered and were the first time Finjan heard those non-infringement arguments, it had seven days
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`to move to compel further access to the source code, see Civil Local Rule 37-3 – a deadline it did
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`not meet. Finjan missed that deadline by several weeks.1
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`Finally, Finjan complains that it would be unfair for Qualys’s experts to have access to the
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`source code during expert discovery and trial if Finjan’s experts did not. And, yes, that would be
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`unfair. However, Qualys states that it “has already certified that none of its experts have accessed
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`Qualys’s source code repository since the close of fact discovery and Qualys agrees that it will not
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`provide any of its experts such access.” ECF No. 131 at 6.
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`Accordingly, Finjan’s motion for continued access to Qualys’s source code is denied.
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`IT IS SO ORDERED.
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`Dated: November 10, 2020
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`THOMAS S. HIXSON
`United States Magistrate Judge
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`1 The parties agree that the first time Finjan requested continued access to Qualys’s source code on
`or after the October 1, 2020 fact discovery cutoff was October 18. ECF No. 139. By then it was
`already too late to move to compel.
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