Case 3:17-cv-00183-CAB-BGS Document 339 Filed 10/04/18 PageID.12657 Page 1 of 4
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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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` Case No.: 17CV183 CAB (BGS)
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`ORDER ON DISCOVERY DISPUTES
`RE: FINJAN'S APPLIANCE AND
`ESET'S CURRENT PRODUCTS
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`Defendant.
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`This order addresses two discovery disputes currently pending before the Court,
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`Finjan’s Appliance and current versions of ESET’s Accused Products that Finjan
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`attempted to purchase (“Current Products”)1. Each has been raised by the parties,
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`discussed during a discovery conference, and briefed in a joint statement. (ECF 334.) The
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`Court rules as set forth below.
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`BACKGROUND
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`ESET requests Finjan’s Appliance be provided to it for non-destructive testing at a
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`location of ESET’s choice. Finjan has opposed providing it for any testing, arguing it is
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`irrelevant and has only be previously used as a trial demonstrative. The Court ordered
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`1 This was the scope of the dispute raised. It does not encompass anything more.
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`17CV183 CAB (BGS)
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`

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`Case 3:17-cv-00183-CAB-BGS Document 339 Filed 10/04/18 PageID.12658 Page 2 of 4
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`Finjan to provide it for testing, but also ordered the parties to meet and confer regarding
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`testing protocols. The parties were unable to agree to any protocols and also dispute the
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`location for testing, with Finjan insisting it be done at its counsel’s offices and ESET
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`insisting it be taken off site. Finjan agreed not to use it at trial in this case, but ESET still
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`wants to conduct non-destructive testing of it at a location of its choice.
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`As to Finjan’s access to current versions of ESET’s Accused Products, ESET
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`argues they are irrelevant because the patents-in-suit expired before the Current Products
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`were released so they cannot infringe. Having requested and been denied operational
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`samples of the prior Accused Products within the patent term, Finjan seeks ESET’s
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`Current Products. ESET asserts the earlier versions no longer exist. Thus, Finjan requests
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`ESET’s Current Products, as they are most similar to the versions used during the term of
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`the patents.
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`DISCUSSION
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`The Federal Rules of Civil Procedure provide that “[p]arties may obtain discovery
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`regarding any non-privileged matter that is relevant to any party’s claim or defense and
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`proportional to the needs of the case, considering the importance of the issues at stake in
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`the action, the amount in controversy, the parties’ relative access to relevant information,
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`the parties’ resources, the importance of the discovery in resolving the issues, and
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`whether the burden or expense of the proposed discovery outweighs its likely benefit.”
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`Fed. R. Civ. P. 26(b)(1). However, Federal Rule of Civil Procedure 26(b)(2)(C) instructs
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`courts that discovery must be limited where the party seeking the discovery “has had
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`ample opportunity to obtain the information by discovery in the action,” where the
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`discovery is “unreasonably cumulative or duplicative,” where the discovery is obtainable
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`in a less burdensome way, or where the discovery is outside the scope of Rule 26.
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`Flowrider Surf, Ltd. v. Pacific Surf Designs, Inc., No. 15cv1879-BEN (BLM), 2016 WL
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`6522808 at *10 (S.D. Cal. Nov. 3, 2016).
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`///
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`///
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`2
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`17CV183 CAB (BGS)
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`

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`Case 3:17-cv-00183-CAB-BGS Document 339 Filed 10/04/18 PageID.12659 Page 3 of 4
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`I.
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`Finjan’s Appliance
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`ESET argues the Appliance is relevant because it is marked with multiple patents
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`that are associated with this case, Finjan has used it at trial to help explain the Vital
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`Security product it contains, and Finjan will rely on the industry praise for Vital Security
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`and distinctiveness of it in this case. Finjan argues the Appliance is irrelevant because it
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`will not rely on it at trial in this case, it is not an operational sample because Finjan
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`purchased it from a third party, it is not authentic as a Vital Security product because,
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`again, it was purchased from a third party, and ESET has the source code for Vital
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`Security, making this unnecessary.
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`The Appliance has been used in prior trials and, although the relevance is not great,
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`particularly when Finjan has stipulated it will not use it at trial in this case, the Court
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`finds the burden on Finjan is minimal. While Finjan argues that ESET could obtain its
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`Appliance from a third party just as Finjan did, obtaining the Appliance from a third party
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`may be less reliable than getting the Appliance Finjan already has in its possession and
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`has relied on, at least as a demonstrative, in prior trials.2 Further, there is no less
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`burdensome way to obtain this information. Obtaining an Appliance from a third party
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`could be burdensome for ESET, but obtaining the Appliance from Finjan directly places
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`almost no burden on Finjan. Because the testing of the Appliance will be non-destructive,
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`there is no burden on Finjan. Finjan must produce the Appliance to ESET for non-
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`destructive testing.
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`II. ESET’s Current Products
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`Finjan seeks access to ESET’s Current Products. As there are no earlier operational
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`versions available, Finjan wants the Current Products essentially in lieu of the older
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`2 In addressing this dispute, the Court makes no finding or determination as to the
`authenticity of the Appliance for evidentiary purposes. It appears that point is very much
`in dispute even as to the Appliance Finjan has because it was purchased from a third
`party and has only been used as a demonstrative.
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`3
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`17CV183 CAB (BGS)
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`

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`Case 3:17-cv-00183-CAB-BGS Document 339 Filed 10/04/18 PageID.12660 Page 4 of 4
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`version even though they post-date the term of the patents. This would be fairly clear cut
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`if operational versions of the Accused Products were available and the Current Products
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`were completely independent from the prior versions. However, since ESET has
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`represented that there are no prior operational versions available and it is not clear the
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`new versions are sufficiently distinct from the prior versions, it presents a closer question.
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`Although the relevancy is partially dependent on how different the Current
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`Products are from prior version, the Court finds they are at least somewhat relevant,
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`particularly given there are no operational versions of the Accused Products from the
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`patent term available. While the Current Products would be duplicative and unnecessary
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`if those were available, the lack of those versions leave little other option for operational
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`samples. Additionally, the availability of the source code for the Accused Products does
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`not entirely negate the value of any operational version of the products. The relevancy
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`may not be great, but the burden on ESET is minimal. ESET’s concern that Finjan may
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`be motivated to review its Current Products for purposes of future litigation is noted, but
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`speculative. And, given Finjan has agreed to purchase the Current Products at its own
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`cost, there is little burden and no expense to ESET.
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`CONCLUSION
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`For the foregoing reasons, this Court orders Finjan to provide the Appliance to
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`ESET for non-destructive testing by October 10, 2018 and ESET provide Finjan its
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`Current Products, at Finjan’s expense, by October 10, 2018.
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`IT IS SO ORDERED.
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`Dated: October 4, 2018
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`17CV183 CAB (BGS)
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