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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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`Case No.: 3: 17-cv-00183-CAB-BGS
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`v.
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`ESET, LLC, et al.,
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`Plaintiff,
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`Defendants.
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`ORDER ON ESET, LLC AND ESET
`SPOL. S.R.O.’S MOTION FOR
`REVIEW OF MAGISTRATE
`JUDGE’S OCTOBER 3, 2018
`ORDER
`[Doc. No. 355]
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`AND RELATED COUNTERCLAIMS.
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`Defendants ESET LLC and ESET SPOL. S.R.O (collectively “ESET”) object to the
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`Magistrate Judge’s ruling that Plaintiff Finjan need not provide its position on invalidity of
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`the patents in suit (Interrogatory No. 4), nor provide a chart with priority dates on a claim-
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`by-claim basis for the asserted patents (Interrogatory No. 6). [Doc. No. 355-1.] Defendants
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`filed their motion on the grounds that the rulings in the Order concerning ESET’s
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`Interrogatory Nos. 4 and 6 are clearly erroneous, arbitrary in light of the Magistrate Judge’s
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`previous rulings and significantly impact ESET’s preparation for its upcoming expert
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`report on invalidity. [Id.]
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`Case 3:17-cv-00183-CAB-BGS Document 393 Filed 11/21/18 PageID.14160 Page 2 of 7
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`District court review of magistrate judge orders on non-dispositive motions is
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`limited. A motion relating to discovery, such as the one here, is considered non-dispositive.
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`See 28 U.S.C. § 636(b)(1)(A). A district court judge may reconsider a magistrate judge’s
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`ruling on a non-dispositive motion only “where it has been shown that the magistrate’s
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`order is clearly erroneous or contrary to law.” 28 U.S.C. § 636(b)(1)(1); see also Fed. R.
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`Civ. P. 72(a). “A magistrate judge’s legal conclusions are reviewable de novo to determine
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`whether they are “contrary to law” and findings of fact are subject to the “clearly
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`erroneous” standard.” Meeks v. Nunez, Case No. 13cv973-GPC(BGS), 2016 WL 2586681,
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`*2 (S.D. Cal. May 4, 2016) (citing Perry v. Schwarzenegger, 268 F.R.D. 344, 348 (N.D.
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`Cal. Mar. 22, 2010)).
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`The court has wide latitude in controlling discovery. In re State of Arizona, 528 F.3d
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`652, 655 (9th Cir. 2008); Burlington N. & Santa Fe Ry. Co. v. U.S. Dist. Court for Dist. of
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`Mont., 408 F.3d 1142, 1147 (9th Cir. 2005). This includes broad discretion “to permit and
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`deny discovery, and [a court’s] decision to deny discovery will be not disturbed except
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`upon the clearest showing that denial of discovery results in actual and substantial prejudice
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`to the complaining litigant.” Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002) (quoting
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`Goehring v. Brophy, 94 F.3d 1294, 1305 (9th Cir. 1996)).
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`“The ‘clearly erroneous’ standard applies to the magistrate judge’s factual
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`determinations and discretionary decisions . . . .” Computer Econ., Inc. v. Gartner Grp.,
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`Inc., 50 F. Supp. 2d 980, 983 (S.D. Cal. May 25, 1999) (citations omitted). “Under this
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`standard, ‘the district court can overturn the magistrate judge’s ruling only if the district
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`court is left with the definite and firm conviction that a mistake has been made.’” Id.
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`(quoting Weeks v. Samsung Heavy Indus. Co., Ltd., 126 F.3d 926, 943 (7th Cir. 1997)); see
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`also Green v. Baca, 219 F.R.D. 485, 489 (C.D. Cal. Dec. 16, 2003) (citations omitted).
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`The “contrary to law” standard “allows independent, plenary review of purely legal
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`determinations by the Magistrate Judge.” Jadwin v. Cnty. of Kern, 767 F. Supp. 2d 1069,
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`1110 (E.D. Cal. Jan. 24, 2011) (citing FDIC v. Fidelity & Deposit Co. of Md, 196 F.R.D.
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`375, 378 (S.D. Cal. May 1, 2000); see also Computer Econ., 50 F. Supp. 2d at 983 n. 4;
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`Case 3:17-cv-00183-CAB-BGS Document 393 Filed 11/21/18 PageID.14161 Page 3 of 7
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`see also Green, 219 F.R.D., at 489. A magistrate judge’s order “is contrary to law when it
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`fails to apply or misapplies relevant statutes, case law, or rules of procedure.” Jadwin, 767
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`F. Supp. 2d at 1110-11 (quoting DeFazio v. Wallis, 459 F. Supp. 2d 159, 163 (E.D.N.Y
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`Oct. 17, 2006)) (internal quotation marks omitted).
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`On July 11, 2018, the parties contacted Magistrate Judge Skomal regarding
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`discovery disputes as to Finjan’s responses to ESET’s Interrogatories 4 and 6. [Doc. No.
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`285.] On July 26, 2018, the parties submitted a joint statement on a myriad of discovery
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`issues that included Interrogatories 4 and 6. [Doc. No. 300.] On October 3, 2018,
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`Magistrate Judge Skomal issued an order that addressed the two discovery disputes in
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`question. [Doc. No. 337.]
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`Separately for each asserted claim, and in reference to each claim chart in ESET’s
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`invalidity contentions, Interrogatory No. 4 asks Finjan to:
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`identify all legal and factual bases for [Finjan’s] contention that a claim is
`valid, including: (i) a chart that identifies each claim element that Finjan
`contends is not covered by Prior Art identified for that claim; (ii) a substantive,
`particularized description of how and why that element is not satisfied,
`including citation to specific portions of the Prior Art; and (iii) all Documents
`and Things” in support of [Finjan’s] position, including source code modules
`(if applicable). [Finjan’s] response should include a complete explanation for
`any disagreements [Finjan] have with the asserted invalidity of the Patents-
`In-Suit, as described in [ESET’s] Invalidity contentions.
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`[Doc. No. 355-4 at 12.]
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`Magistrate Judge Skomal found the “all legal and factual bases” and “all Documents
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`and Things” portion of the request to be overbroad and unduly burdensome and narrowed
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`the interrogatory so that Finjan was only required “to state the principal and material factual
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`and legal bases for its positions.”1 [Doc. No. 337 at 5.] Regarding the requested chart and
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`1 The order also notes that the court had explained to Finjan in a prior order that propounding
`interrogatories asking for “all legal factual bases” and “all documents and thing in support” of a position
`is an overly broad and unduly burdensome request. [Doc. No. 337 at 5.]
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`level of specificity format, Judge Skomal also found this to be unduly burdensome,
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`“particularly given the response is in rebuttal to ESET’s invalidity contentions” and noting
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`that “the chart format adds a layer of burden to an already very burdensome interrogatory
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`without sufficient benefit to justify it.” [Id. at 6.]
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`Regarding the portion of the order related to Interrogatory No. 4, Defendants are
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`objecting on the grounds the supplemental response it required Finjan to make was “so
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`vague as to be useless” and that the court disregarded the case law by focusing on the
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`requested chart format in ESET’s Interrogatory No. 4. Further ESET posits that
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`Interrogatory No. 4 “seeks Finjan’s substantive response to ESET’s patent invalidity
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`contentions” and that it is inequitable to require ESET to lay out its non-infringement
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`contentions in response to Finjan’s Interrogatory No. 6 while absolving Finjan from
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`providing similar information to it concerning invalidity. [Doc. No. 355-1 at 8.]
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`However, in denying the request, Magistrate Judge Skomal distinguished the request
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`from the cases the parties relied on, applied the standard set forth in Federal Rule of Civil
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`Procedure 26(b)(1), and concluded that the burden or expense of the proposed discovery
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`did not outweigh the likely benefit.2 In making this determination Judge Skomal was not
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`persuaded by ESET’s argument that Finjan should respond to Interrogatory 4 because
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`Finjan propounded a similar interrogatory on ESET with regard to ESET’s positions on
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`infringement, explaining that “[r]equiring Finjan to explain why claim elements are valid
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`over all prior art cited by ESET is more burdensome than ESET identifying why its own
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`products do not infringe.” [Doc. No. 337 at 7.] Furthermore, Judge Skomal did require
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`Finjan to supplement its responses by: (1) providing ESET with any validity decisions
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`before the Patent Office that address the prior art cited by ESET for that patents-in-suit,
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`2 Specifically, Magistrate Judge Skomal noted that “knowing Finjan’s position on ESET’s invalidity
`positions is relevant for rebuttal purposes, however, the benefit of it is not great enough to justify
`responding with this level of detail and analysis when the underlying contentions lack a similar level of
`specificity or analysis of ESET’s positions that Finjan could respond to. The rebuttal to ESET’s positions
`on invalidity is necessarily limited by what it is rebutting.” [Doc. No. 337 at 7.]
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`indicating which decisions correspond to which cited prior art; (2) attempting to explain
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`the principal and material factual and legal bases for its proposition that the patents-in-suit
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`are not invalid based on the prior art cited by ESET. [Doc. No. 337 at 8.]
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`In Interrogatory No. 6, ESET asks Finjan to:
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`describe in detail all legal and factual bases, including an identification of all
`Documents and Persons, supporting [Finjan’s] contention that each of the
`Asserted Claims is entitled to the priority date set forth in Plaintiff Finjan
`Inc.’s Amended Infringement Contentions Pursuant to Patent Local Rules 3-
`1 and 3-6 served on June 12, 2017 (or any future amendments thereto).
`[Finjan’s] response must include a claim chart, based on the Court’s claim
`construction ruling, showing each claim element mapped to the portion of the
`specification that provides the alleged support for the respective claim
`element and the priority date for each piece of support in the specification.
`[Finjan’s] answer should also explain why there is a difference, if any,
`between the priority dates, alleged in [Finjan’s] Infringement Contentions and
`the priority dates used before the Patent and Trademark Office in any post-
`grant proceedings.
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`[Doc. No. 355-4 at 13.]
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`Magistrate Judge Skomal summarized ESET’s request as essentially requiring
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`Finjan provide a claim-by-claim mapping of each asserted claim element to the portion of
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`the specification that justifies the priority dates Finjan claims. [Doc. No. 337 at 9.]
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`Because of the burden imposed in responding to the request and given that other avenues
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`for discovering the information had already been provided to ESET, Judge Skomal
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`determined that no further response to Interrogatory No. 6 was required. [Doc. No. 337 at
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`11.]
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`Regarding the portion of the order related to Interrogatory No. 6, Defendants are
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`objecting on the grounds that the complicated web of applications that resulted in the
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`asserted patents necessitates a more detailed explanation of the bases of the priority dates
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`of the claims. ESET concedes that Finjan has disclosed the specific priority dates it claims
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`each asserted patent is entitled to, but it asserts that “a proper substantive response requires
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`that Finjan respond on a claim-by-claim basis, not patent-by-patent. Even a claim-by-claim
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`analysis will require Finjan to identify on an element-by-element basis where in the alleged
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`priority document the written description support appears for each claim element.” [Doc.
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`No. 355-1 at 11.] Further, ESET argues that all it is seeking is Finjan’s factual
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`identification supporting its asserted claims and alleged priority dates.
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`In support of its position, Defendants assert that Magistrate Judge Skomal did not
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`perform an analysis to show how burdensome it would be for Finjan to provide the
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`requested information, positing that in reality its request would impose little burden on
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`Finjan because Finjan must have already performed the element-by-element analysis in
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`order to meet its Rule 11 obligations. Relatedly, ESET contends that Judge Skomal
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`erroneously relied on the fact that the parties had other avenues for discovery of the
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`information being sought in support of his denial of the request additional responses.
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`But, after consideration of both parties’ positions, Judge Skomal found that:
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`ESET has explained why the information it seeks is relevant to invalidity, but
`does not explain why such a detailed mapping is required, why the
`information has to be in this format or explain why the information is has
`already obtained (other than priority dates by patent) are insufficient. ESET
`has explained why this information is relevant to invalidity, but being relevant
`is not the end of the inquiry. The Court must consider whether it is
`proportional to the needs of the case.
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`Doc. No. 337 at 10.
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`Judge Skomal went on to evaluate the proportionality of the request and recognized
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`“that demanding this level of specificity in a claim chart, particularly the mapping it
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`demands, is a significant burden.” [Doc. No. 337 at 10-11.]
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`A review of the order demonstrates that Magistrate Judge Skomal had a thorough
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`understanding of the parties’ positions and discovery history, referenced specific
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`arguments made by the parties, and was familiar with, and in fact discusses, the relevant
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`case law. See generally, Doc 337. He found both requests to be the “the type of ‘scorched
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`earth, no stone unturned (potentially numerous times) approach to discovery the changes
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`to Rule 26 were intended to curb.” [Doc. No. 337 at 11] (internal quotation marks and
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`citation omitted).
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`Given the broad discretion of the court in conducting discovery, the rulings of
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`Magistrate Judge Skomal were not an abuse of discretion. Defendants have failed to show
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`that the discovery order was “clearly erroneous or contrary to law.” The Magistrate Judge’s
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`order was thorough and well-reasoned, and Defendants’ request that this Court order Finjan
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`to provide a full response to ESET’s Interrogatory Nos. 4 and 6 is therefore DENIED.
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`It is SO ORDERED.
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`Dated: November 21, 2018
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