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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
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`v.
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`Plaintiff,
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`ESET, LLC and ESET SPOL. S.R.O.,
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`
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` Case No.: 17CV183 CAB (BGS)
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`ORDER ON DISCOVERY DISPUTE
`REGARDING INTERROGATORY
`NO. 6
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`Defendants.
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`[ECF 215]
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`Plaintiff Finjan, Inc. (“Finjan”) seeks to compel further responses to Finjan’s
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`Interrogatory No. 6 (“ROG 6”) which seeks ESET, LLC and ESET spol. S.R.O.’s
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`(“ESET”) noninfringement contentions. (Joint Statement on Discovery Issue Relating to
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`ESETs Response to Finjan’s Interrogatory No. 6, ECF 215 at 1-31.) ESET opposes
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`providing any further response. (Id. at 4-6.) For the reasons set forth below, Finjan’s
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`request is GRANTED in part and DENIED in part.
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`
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`1 The Court references the CM/ECF pagination. ECF 215 corresponds to the parties’
`Joint Statement and ECF 215-1 corresponds to Exhibit A, ESET’s Response to Plaintiff’s
`Second Set of Interrogatories.
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`17CV183 CAB (BGS)
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`

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`Case 3:17-cv-00183-CAB-BGS Document 239 Filed 03/23/18 PageID.10665 Page 2 of 8
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`I.
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`BACKGROUND
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`ROG 6 states:
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`Separately for each Asserted Claim of the Asserted Patents, identify all legal
`and factual bases for your contention that ESET does not infringe such claim,
`including a chart that identifies each claim element that ESET contends is not
`satisfied by the Accused Instrumentality(ies) for that claim, and a substantive,
`particularized description of how and why that element is not satisfied,
`including citation to specific components and functions of the Accused
`Instrumentality(ies) and all documents and things in support of your position,
`including source code modules.
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`(ECF No. 215-1 at 8.)
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`ESET responded without waiving its general and specific objections. (ECF No.
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`215-1 at 8.) As to each patent-in-suit it provided a chart which listed in italics the
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`limitations the accused instrumentalities do not infringe. (Id. at 10-20.) As to some of
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`the patents-in-suit ESET also provided a brief explanation as to how the products do not
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`infringe the asserted claims. For example, “it does not practice the claimed methods”
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`(ECF 215-1 at 11, 15); “its products only function downstream of the web server” (id. at
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`11); “[it] does not provide ‘memory storing a first rule set’” (id.); “it does not provide the
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`‘network interface’ component of the system” (id. at 14); “its products do not modify
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`Downloadables to append any information to the end of the Downloadable, nor do any of
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`the products generate a Downloadable Security Profile” (id. at 16); “it does not supply at
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`least the ‘processor,’ ‘memory,’ ‘operating system probes,’ or ‘interrupter.” (Id. at 18.)
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`II. DISCUSSION
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`Finjan argues that ESET’s response is insufficient. As to ESET’s chart, Finjan
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`seeks explanation why any element is not met since Finjan’s infringement contentions
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`explain how that element is in fact met. (ECF No. 215 at 2.) Finjan cites to various
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`districts’ local patent rules and decisions applying them that require detailed explanations
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`in support of noninfringement contentions. (Id. at 3 nn. 1-4.) As to the additional
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`descriptions ESET set forth as to some of the patents-in-suit, (detailed above), Finjan
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`complains that ESET does not tie these short descriptions to claim elements nor does
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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 239 Filed 03/23/18 PageID.10666 Page 3 of 8
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`ESET provide any support for its position. (Id.) Finjan claims prejudice for this
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`conclusory response in that it is not on fair notice of ESET’s noninfringement
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`contentions, and it cannot focus its discovery efforts and develop its case. (Id. at 4.)
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`ESET argues the ROG goes beyond the permitted 25 interrogatories, is premature,
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`and overly burdensome. (ECF No. 215 at 5.) Further, it asserts that its response is
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`sufficient, identifying the specific elements missing from the claims, and has explained
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`why those elements are missing. (Id.) ESET contends it cannot prove a negative. (Id. at
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`It is not possible for it to identify specific source code and documents to prove what
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`ESET’s code does not do. (Id. at 7.)
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`A. Legal Standards
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`In general, the Federal Rules of Civil Procedure provide that “parties may obtain
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`discovery regarding any non-privileged matter that is relevant to any party’s claim or
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`defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). District
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`courts have broad discretion in determining what is relevant regarding discovery.
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`Facedouble, Inc. v. Face.com, No. 12cv1584 DMS (MDD), 2014 WL 585868, at *1
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`(S.D. Cal. Feb. 13, 2014). Limits on discovery may be issued where the “burden or
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`expense outweighs the likely benefits.” Id. (citing Fed. R. Civ. P. 26(b)).
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`“An interrogatory may relate to any matter that may be inquired into under Rule
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`26(b).” Fed. R. Civ. P. 33(a)(2). Furthermore, “[e]ach interrogatory must, to the extent it
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`is not objected to, be answered separately and fully in writing under oath.” Rule
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`33(b)(3). In certain circumstances the responding party has the option to answer the
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`interrogatory by specifying responsive records and making those available to the
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`interrogating party. Rule 33(d).
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`Contention interrogatories are distinct from interrogatories seeking the
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`identification of witnesses or documents related to allegations. In re Grand Casinos Inc.
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`Sec. Litig., 181 F.R.D. 615, 618 (D. Minn. 1998). Contention interrogatories may ask
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`another party to state all the facts on which it bases its contentions. Id. Further, a
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`contention interrogatory is appropriate during the early phases of discovery where
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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 239 Filed 03/23/18 PageID.10667 Page 4 of 8
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`answering them would “‘contribute meaningfully’ to (1) clarifying the issues of the case;
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`(2) narrowing the scope of the dispute; (3) setting up early settlement discussion; or (4)
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`exposing a substantial basis for a motion under Rule 11 or Rule 56.” HTC Corp. v. Tech.
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`Props. Ltd., No. C08-00882, 2011 WL 97787, at *2 (N.D. Cal. Jan. 12, 2011) (quoting In
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`re Convergent Techs. Sec.Litig., 108 F.R.D. 328, 338-39 (N.D. Cal. 1985)). “A non-
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`infringement contention interrogatory is appropriate where plaintiff has provided its
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`infringement contentions with corresponding claim charts, thereby allowing defendant to
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`respond.” Audatex N. Am. Inc. v. Mitchell Int’l, Inc., No. 13cv1523 BEN (BLM), 2014
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`WL 4961437, at *3 (S.D. Cal. Oct. 3, 2014); see also Facedouble, Inc. 2014 WL 585868,
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`at *2.
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`B. Analysis
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`1. Waiver of Objections
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`In its response to ROG 6, ESET objected generally and specifically, alleging in
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`part that it was premature and well beyond the twenty-five limit for interrogatories. (ECF
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`No. 215-1 at 8-9.) However, ESET then responded “subject to and without waiving”
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`these objections. (Id. at 9.) This language is typically referred to as a conditional
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`response.
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`Written responses to requests for production of documents must be unconditional,
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`and may not reserve the right to raise objections in the future. Language such as “without
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`waiving objections” preserves nothing. Consumer Elecs. Ass’n v. Compras and Buys
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`Magazine, Inc., No. 08-21085-CIV, 2008 WL 4327253, at *3 (S.D. Fl. Sept. 18, 2008).
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`Objections preceding such language are deemed waived, and the response to the
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`discovery request stands. Estridge v. Target Corp., No. 11-61490-CIV, 2012 WL
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`527051, at *2 (S.D. Fla. Feb. 16, 2012). Notwithstanding, if the response puts the
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`requesting party on notice that the responding party is withholding certain documents,
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`that objection is preserved so long as the requesting party is not left guessing as to what
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`documents are being withheld. Sprint Commc’ns Co., v. Comcast Cable Commc’ns,
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`LLC, Nos 11-2684, 2685, 2686 –JWL, 2014 WL 1569963, at *3 (D. Kan. April 18,
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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 239 Filed 03/23/18 PageID.10668 Page 5 of 8
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`2014). In such a case the objection is not waived. Instead, the proper procedure is to
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`challenge the objection by bringing a motion to compel and requiring the responding
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`party to defend the merits of its response.
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`The Court finds that ESET’s objections based on prematurity and excessive
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`interrogatories waived. However, it finds ESET’s response to ROG 6 has preserved its
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`objections as to overly broad and unduly burdensome.
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`2. Whether the Scope of Interrogatory 6 is Overly Broad and
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`Burdensome; and Whether Supplemental Responses are Necessary
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`As an initial matter, the Court notes that ROG 6 asks ESET to “identify all
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`legal and factual bases,” as well as citations to all documents and things in
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`support” of its position. (ECF 215-1 at 8 (emphasis added).) The Court finds this
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`request is overly broad and unduly burdensome. An interrogatory may reasonably
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`ask for the material and principal facts which support a contention. However, to
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`require all facts, applications of law, all documents and things “would too often
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`require a laborious, time consuming analysis.” IBP, Inc. v. Mercantile Bank of
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`Topeka, 179 F.R.D. 316, 321 (D. Kan. 1998). The burden to answer then
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`outweighs its benefit. Id. The request’s excessively burdensome nature becomes
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`especially clear when considering Finjan’s stated purpose for asking it: to be given
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`fair notice of ESET’s noninfringement contentions and to be able to focus its
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`discovery efforts. (ECF No. 215 at 4.) Satisfying these purposes does not
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`however, require ESET to reply with the entire body of legal and factual evidence
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`in its possession. Therefore, the Court narrows this interrogatory to require ESET
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`to state the principal and material factual and legal bases for asserting its non-
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`infringement contentions, including identifying the principal and material evidence
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`upon which it relies. See e.g. High Point SARL v. Sprint Nextel Corp., No. 09-
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`2269, 2011 WL 197875, at *2 (D. Kan. Jan. 20, 2011) (citing Anderson v. UPS,
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`Inc., No. 09-2526, 2010 WL 4822564, at *6 (D. Kan. Nov. 22, 2010)).
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`Case 3:17-cv-00183-CAB-BGS Document 239 Filed 03/23/18 PageID.10669 Page 6 of 8
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`Applying this narrower interrogatory to ESET’s response to ROG 6, the
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`Court find ESET needs to supplement its response. ESET’s chart lists the elements
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`missing from the accused instrumentalities without further explanation as to how
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`they do not infringe the particular element. Various jurisdictions have found that a
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`“recit[ation of the] various claim terms and . . . unexplained denials of
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`infringement” is not a sufficient response to a non-infringement contention. G.
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`Vincent, Ltd. v. Dux Area, Inc., No. C09-383, 2009 WL 5125387, at *1 (W.D.
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`Wash. Dec. 18, 2009); see also Emcore Corp. v. Optimum Corp., No. 06-1202,
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`2007 WL 852557, at *2 (W.D. Pa. Mar. 16, 2007). The Court concurs with these
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`courts, and finds that ESET’s merely listing the missing elements is not an
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`adequate response.
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`ESET asserts that its chart explains why the elements are not present in the
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`Accused Instrumentalities by listing the missing elements in italics. (ECF No. 215
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`at 5.) ESET contends that Finjan’s request does not ask ESET to explain why any
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`element is not met, based on Finjan’s infringement contentions. (Id. n.5.)
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`Interrogatory Number 6 states:
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`Separately for each Asserted Claim of the Asserted Patents, identify all legal
`and factual bases for your contention that ESET does not infringe such claim,
`including a chart that identifies each claim element that ESET contends is not
`satisfied by the Accused Instrumentality(ies) for that claim, and a substantive,
`particularized description of how and why that element is not satisfied,
`including citation to specific components and functions of the Accused
`Instrumentality(ies) and all documents and things in support of your position,
`including source code modules.
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`(ECF No. 215-1 at 8 (emphasis added).)
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`It is clear that ROG 6 is requesting ESET to answer “how” and “why” each
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`element is not satisfied. And the Court’s narrowing of the interrogatory does not modify
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`ESET’s obligation to respond accordingly.
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`ESET asserts that “Finjan’s contention interrogatory seeks the impossible by
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`asking ESET to prove a negative.” (ECF No. 215 at 5.) ESET argues that Finjan is
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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 239 Filed 03/23/18 PageID.10670 Page 7 of 8
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`seeking proof of “where in the ESET documents and source code the missing elements
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`are not described.” (ECF No. 215 at 5.) Finjan argues it is not asking ESET to prove a
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`negative, but rather to explain why any element is not met based on Finjan’s infringement
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`contentions showing how that element is in fact met. (Id. at 4.) Accordingly, the Court
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`finds that to the extent that Finjan has in fact shown how that element is met, ESET is to
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`supplement its chart in accordance with this order by stating the principal and material
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`factual and legal bases for asserting its non-infringement contentions, including
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`identifying the principal and material evidence upon which it relies.
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`As regards source code, pursuant to Audatex, if a party seeks to support its non-
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`infringement arguments with source code, it must “provide citations to the appropriate
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`sections of the code.” Audatex, 2014 WL 4961437, at *4. Such citations are used as a
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`guide for the opposing party, and could be in the form of a narrative, index, or table of
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`contents, etc. Facedouble, Inc. 2014 WL 585868, at *2. Therefore, if any of ESET’s
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`non-infringement arguments are supported by certain aspects of its source code, it must
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`provide citations to the appropriate sections thereof. If, on the other hand, ESET does not
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`intend to rely on its source code to argue noninfringement, it should so state in its
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`supplemental response.
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`ESET also claims that it has satisfied Finjan’s request by incorporating Section 1.A
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`of its Invalidity Contentions which provides explanations as to how it does not infringe.
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`(ECF No. 215 at 6.) ESET also points to its particularized descriptions of how and why
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`the elements are not satisfied.2 (Id. at 5.) Finjan in turn argues that these purported
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`2 ESET has asserted numerous reasons for non-infringement, including: invalidity (ECF
`No. 215-1 at 10, 12, 13, 14, 17, & 18); “it does not practice the claimed methods” (id. at
`11 & 15); “its products only function downstream of the web server” (id. at 11); “[it]
`does not provide ‘memory storing a first rule set’” (id.); “it does not provide the ‘network
`interface’ component of the system” (id. at 14); “its products do not modify
`Downloadables to append any information to the end of the Downloadable, nor do any of
`the products generate a Downloadable Security Profile” (id. at 16); “it does not supply at
`least the ‘processor,’ ‘memory,’ ‘operating system probes,’ or ‘interrupter” (id. at 18.)
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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 239 Filed 03/23/18 PageID.10671 Page 8 of 8
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`“descriptions” do no more than briefly state for certain patents (but not all) that its
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`products do not perform certain functions without tying these statements to claim
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`elements or providing any support. (Id. at 2.)
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`Pursuant to this Order, the Court makes no determination as to whether ESET’s
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`incorporation of Section 1.A of its Invalidity Contentions as well as its particularized
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`descriptions satisfactorily fill in the missing information in ESET’s chart. The Court
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`concurs that “[i]t is not the role of the judge to state what constitutes specific reasons and
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`relevant distinctions. Rather, it is my role to determine if [Defendant] has complied with
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`the spirit of the rule.” Emcore Corp. v. Optimum Corp., No. 06-1202, 2007 WL 852557,
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`at *2 (W.D. Pa. Mar. 16, 2007). ESET will have to supplement its chart so that it
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`complies with this Court’s order.
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`III. CONCLUSION
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`Therefore, for the reasons stated above, the Court grants Finjan’s request in part,
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`and orders ESET to supplement their response to Plaintiff’s Interrogatory Number 6 in
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`accordance with this Order.
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`IT IS SO ORDERED.
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`Dated: March 23, 2018
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`17CV183 CAB (BGS)
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