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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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`Defendants.
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`
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` Case No.: 17CV183 CAB (BGS)
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`ORDER DENYING FINJAN’S
`MOTION TO COMPEL ESET TO
`SUPPLEMENT THEIR RESPONSE
`TO INTERROGATORY NO. 7
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`
`[ECF 231]
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`
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`Finjan, Inc. moves to compel ESET to supplement its response to Finjan’s
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`Interrogatory No. 7, (ECF 231), which asks ESET to identify the directories and
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`subdirectories of ESET’s produced source code corresponding to each of ESET’s accused
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`products. (Motion to Compel ESET to Supplement Their Response to Interrogatory No.
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`7 (“Mot.”) at 2.) ESET opposes providing any further response, arguing it has already
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`provided a sufficient explanation how to obtain this information in its initial and amended
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`interrogatory responses. (Opposition to Finjan’s Motion to Compel (“Opp’n”) [ECF
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`235].) For the reasons set forth below, Finjan’s motion is DENIED.
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`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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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 272 Filed 06/13/18 PageID.10848 Page 2 of 6
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`courts have broad discretion in permitting or denying discovery. Hallett v. Morgan, 296
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`F.3d 732, 751 (9th Cir. 2002); see also Facedouble, Inc. v. Face.com, No. 12cv1584
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`DMS (MDD), 2014 WL 585868, at *1 (S.D. Cal. Feb. 13, 2014).
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`Federal Rule of Civil Procedure 33 authorizes the use of interrogatories. “An
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`interrogatory may relate to any matter that may be inquired into under Rule 26(b).” Fed.
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`R. Civ. P. 33(a)(2). Furthermore, “[e]ach interrogatory must, to the extent it is not
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`objected to, be answered separately and fully in writing under oath.” Rule 33(b)(3).
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`I.
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`Parties’ Arguments
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`DISCUSSION
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`10
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`Finjan’s Interrogatory No. 7 states:
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`For the source code that You produced or made available for inspection or
`will produce and make available for inspection, identify the products that
`correspond to the source code including the name and version number of
`each product, the directories and subdirectories of the source code
`corresponding to each of the products, the last date the source code was
`modified for each of the products, and which portion, if any, of the code You
`contend is prior art to the Asserted Patents. (Mot. at 2 (emphasis added by
`Finjan))
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`
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`Finjan believes ESET should be required to produce a table identifying which of
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`the subdirectories1 located on the source code computers under three named directories
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`correspond2 to each of the accused products. Finjan characterizes ESET’s current
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`
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`1 There are many subdirectories under three directories that are at issue in this motion. A
`fourth directory is apparently not at issue because ESET has already identified which
`subdirectories in that directory correspond to the accused products. (Mot. at 4, n. 1.)
`2 The Court notes that what Finjan means by “correspond” in asking for “the directories
`and subdirectories of the source code corresponding to each of the products” is vague and
`unclear. Arguably, explaining that all of the products use a common set of modules in
`the modules subdirectory and all products are capable of running them tells Finjan that all
`those subdirectories “correspond” to each of the products. ESET’s answer, seemingly
`understanding what Finjan is actually seeking, attempts to explain under what
`circumstances the modules will actually run.
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`2
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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 272 Filed 06/13/18 PageID.10849 Page 3 of 6
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`responses as evasive and incomplete. More specifically, Finjan argues ESET’s
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`instructions on how to determine which subdirectories correspond to each product are
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`vague because they require Finjan to identify the major version number and then compare
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`it to a non-exhaustive list of exceptions and account for certain carve outs under which
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`portions of a module may be skipped. Finjan also takes issue with the vagueness of
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`ESET’s statement that “just because a module is loaded by a product does not mean the
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`module will ever be executed.” Additionally, Finjan argues that ESET’s direction that
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`“for any specific product, the exact list of modules the product loads can be determined
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`by searching for files whose filenames are ‘emxxx.dat’ or ‘emxxx.dll’ where the xxx is a
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`three-digit number” is insufficient because it is not clear how this information relates to
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`prior instructions and ESET’s response does not indicate what three-digit number should
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`be used to perform this search.3
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`ESET argues it has sufficiently responded to Interrogatory No. 7 by providing an
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`explanation how and when its modules are loaded by different accused products.4 In
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`short, ESET explains in its brief that it does not makes sense to identify what modules
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`correspond to products in a table because its modules are plug-and-play components used
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`in multiple accused products that run under certain circumstances, i.e. version number,
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`version of the Accused Instrumentality, platform. ESET argues its responses to
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`Interrogatory No. 7 provide a narrative explaining how to map each module with the
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`Accused Instrumentalities accounting for these factors. More specifically, ESET
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`emphasizes that its response explains that all the modules in a specified subdirectory are
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`3 Finjan additionally argues that even if it had the three-digit number, it could not perform
`the search because the source code had not been fully indexed. Regardless of whose fault
`that is, ESET’s Opposition indicates it is now fully indexed. (Opp’n at 9.)
`4 ESET provided both a First Response and Amended Response. (Mot., Ex. A (first); Ex.
`B (amended).) The First Response provided the instructions or mapping discussed in the
`parties’ arguments and the Amended Response adds a table consisting of the Accused
`Instrumentalities in one column and a corresponding Directory on Source Code
`Computer in a second column.
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`Case 3:17-cv-00183-CAB-BGS Document 272 Filed 06/13/18 PageID.10850 Page 4 of 6
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`capable of running with all versions of the Accused Instrumentalities with a major
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`version number greater than 3. ESET’s brief also expands on what a major version
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`number is and how to search for it. As to Finjan’s complaint that it is not clear what is
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`meant in stating that some portions of modules will be skipped, ESET notes that its
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`response explains that “some modules, as shown in the source code for those modules,
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`have certain functionality that may be skipped unless the product meets a certain required
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`minimum version number.” Again, in its brief, ESET expands upon this to explain that
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`when new functionality is added to newer versions of modules, only newer versions of
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`the Accused Instrumentalities can take advantage of the new functionality. As to the next
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`exception Finjan criticizes — “just because a module is loaded by a product does not
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`mean the module will ever be executed” — ESET provides, as an example when a
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`module might not be executed, when the end user chooses to disable a feature of the
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`Accused Instrumentality. And, as to the exceptions listed as to numerous modules, ESET
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`argues Finjan should be able to understand that certain modules only load with version
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`numbers at a certain number or higher and on certain platforms and follow that
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`explanation to determine when the modules are loaded by the Accused Instrumentalities.
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`ESET also argues that its instruction regarding searching for ‘emxxx.dat’ or ‘emxxx.dll’
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`files where the xxx is a three-digit number is a specific way for Finjan to confirm which
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`modules were loaded in any specific version of the Accused Instrumentalities. And, the
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`three digit number can be found in the source code. Finally, as to LiveGrid, ESET
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`explains that it features are separate and apart from any Accused Instrumentalities and it
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`is not possible for ESET, or anyone, to map it to the Accused Instrumentalities.
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`As to the burden on each party in following ESET’s road map, Finjan wants ESET
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`to do the work and create a table. Finjan argues that this should impose very little burden
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`on ESET because it has unfettered access to its source code and would be a great burden
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`on Finjan because it is only allowed to manually take notes when reviewing ESET’s
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`source code. ESET argues that it would take ESET as much time as Finjan to follow
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`ESET’s instructions to generate the mapping Finjan seeks and would require ESET to
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`Case 3:17-cv-00183-CAB-BGS Document 272 Filed 06/13/18 PageID.10851 Page 5 of 6
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`divert its engineers from their real work for ESET, essentially functioning as Finjan’s
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`experts. Additionally, ESET explains that the table that Finjan demands would not be
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`accurate or even makes sense to create because only certain portions of modules may be
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`executed with certain versions of the Accused Instrumentalities and the same module
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`may have segments of code that are restricted to different versions of Accused
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`Instrumentalities. And, finally, ESET argues there is no basis for Finjan to rely on
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`protective order restrictions — manually taking notes when reviewing source code — to
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`argue the burden on it is greater than it would be for ESET.
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`II. Analysis
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`The only case either party relies on in their briefing is Facedouble, Inc. v.
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`Face.com. 2014 WL 585868. The Facedouble court required a defendant to “provide a
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`guide or road map to its source code” to the plaintiff in response to an interrogatory
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`asking the defendant to describe the steps of its technology. Id. at *2. The defendant’s
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`initial response relied on Rule 33(d) and only provided its source code. Id.
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`Finjan relies on Facedouble to argue ESET must identify the source code
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`corresponding to the accused products to provide a road map to the source code. (Mot. at
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`3.) ESET argues it has already done what the Facedouble court required by providing
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`instructions for mapping the Accused Instrumentalities to specific directories and
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`explaining how the code is structured. (Opp’n at 6-7.) This, ESET argues, allows Finjan
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`to identify which modules correspond with the Accused Instrumentalities. (Id. at 7.)
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`The Court agrees that Facedouble is not exactly on point because Interrogatory No.
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`7 is not seeking an explanation how ESET’s products work or operate, but rather a table
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`mapping subdirectories to particular products. 2014 WL 585868, *2 (“interrogatory asks
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`Defendant to describe, in narrative form, the steps by which the accused technology
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`provides facial recognition”); see also Audatex N. Am. Inc. v. Mitchell Int’l, Inc., No.
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`13CV1523 BEN (BLM), 2014 WL 4961437, at *6 (interrogatory requested identification
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`“of documents, including relevant source code excerpts, that describe the operation of
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`certain identified features and functionalities of the accused products.”) However, as
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`Case 3:17-cv-00183-CAB-BGS Document 272 Filed 06/13/18 PageID.10852 Page 6 of 6
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`Finjan argues elsewhere in its brief, Finjan does need to understand ESET’s source code
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`to understand ESET’s products’ functionality.
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`ESET has provided significantly more than the defendant in Facedouble. The
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`defendant in Facedouble simply provided its source code. Facedouble, 2014 WL
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`585868, *2; see also Laserdynamics, Inc. v. Asus Computer Int’l., 2009 WL 153161, at
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`*2 (E.D. Tex. Jan. 21, 2009) (reliance on source code citations without narrative
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`description of functionality insufficient in response to interrogatory on functionality of
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`product). ESET has provided more than the defendant in Audatex. In Audatex, the
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`defendant provided the source code with files and file names in a system of folders with
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`names and some narrative responses describing the operation of the accused software, but
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`did not explain how the source code performed certain features and functions. Here,
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`ESET has provided its source code and a detailed explanation of the source code’s
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`organization and structure with directories and subdirectories. And critically, it has gone
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`many steps further by explaining when the Accused Instrumentalities will and will not
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`run the modules.
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`Based on the briefing, Finjan did not even attempt to follow the road map ESET
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`provided, but instead looked at it, found it was not in the simplified table format Finjan
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`preferred and demanded ESET do the work to create a table. The Court is not going to
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`require ESET to go that far. ESET is not required to provide more than the road map
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`already provided. The explanation provided sufficiently answers Finjan’s Interrogatory
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`No. 7. And specifically, as to LiveGrid, Finjan has not explained why it is entitled to a
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`road map of LiveGrid features when its components are not part of the Accused
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`Instrumentalities.
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`CONCLUSION
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`Finjan’s Motion to Compel is DENIED.
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`Dated: June 13, 2018
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`17CV183 CAB (BGS)
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