Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37909 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`SAN DIEGO DIVISION
`
`FINJAN, INC., a Delaware Corporation,
`
`
`Plaintiff,
`
`v.
`
`
`
`
`ESET, LLC, a California Limited
`Liability Corporation, and ESET SPOL.
`S.R.O., a Slovak Republic Corporation,
`
`
`Defendants.
`ESET, LLC, a California Limited
`Liability Corporation, and ESET SPOL.
`S.R.O., a Slovak Republic Corporation,
`
`
`Counterclaim-Plaintiffs,
`
`Case No. 3:17-cv-00183-CAB-BGS
`
`PRETRIAL ORDER
`
`Trial Date: March 9, 2020
`Time: 8:30 a.m.
`Courtroom: 4C
`
`
`
`
`
`v.
`
`
`
`FINJAN, INC., a Delaware Corporation,
`
`
`
`Counterclaim-Defendant.
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`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
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`

`

`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37910 Page 2 of 21
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`Following pretrial proceedings pursuant to Fed. R. Civ. P. 16 and Civil Local
`
`Rule 16.1.f.6, IT IS SO ORDERED:
`
`NATURE OF THE CASE
`
`This is an action for patent infringement. The patents at issue are U.S. Patent
`
`Nos. 6,154,844 (the “’844 Patent”), 6,804,780 (the “’780 Patent”), 8,079,086 (the “’086
`
`Patent”), 9,189,621 (the “’621 Patent”), and 9,219,755 (the “’755 Patent”) (collectively,
`
`the Asserted Patents). The Asserted Patents generally relate to the field of cyber
`
`security, and more specifically to defending against cyber security attacks. Plaintiff
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`Finjan, Inc. (hereinafter, “Finjan”) owns the Asserted Patents and alleges that certain of
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`Defendants ESET, LLC’s and ESET spol. s.r.o.’s (collectively, “ESET”) products
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`infringed claims 1, 7, 11, 15, and 16 of the ’844 Patent, claims 9, 13, and 18 of the ’780
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`Patent, claims 1-2, 9, 10, 24, and 42 of the ’086 Patent, claims 1, 5-7, 10-11, and 13-14
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`of the ’621 Patent, and claims 3 and 5-8 of the ’755 Patent (the “Asserted Claims”).
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`Finjan has the burden of proving that the accused products infringed these claims by a
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`preponderance of the evidence.
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`ESET denies that the accused products infringed any of the Asserted Claims.
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`ESET also alleges that all of the Asserted Claims are invalid. ESET has the burden of
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`proving that the Asserted Claims are invalid by clear and convincing evidence.
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`CAUSES OF ACTION
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`I.
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`Finjan’s Causes of Action
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`Finjan filed its Complaint [Doc. No. 1] on July 1, 2016 originally alleging
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`thirteen counts of patent infringement, including:
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`• Count 1: Direct Infringement of the ’844 Patent pursuant to
`35 U.S.C. § 271(a);
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`• Count 2: Induced Infringement of the ’844 Patent pursuant to
`35 U.S.C. § 271(b);
`
`PRETRIAL ORDER
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`
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`1
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`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37911 Page 3 of 21
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`• Count 3: Direct Infringement of the ’780 Patent pursuant to
`35 U.S.C. § 271(a);
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`• Count 4: Induced Infringement of the ’780 Patent pursuant to
`35 U.S.C. § 271(b);
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`• Count 5: Direct Infringement of the ’305 Patent pursuant to
`35 U.S.C. § 271(a);1
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`• Count 6: Induced Infringement of the ’305 Patent pursuant to
`35 U.S.C. § 271(b);
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`• Count 7: Direct Infringement of the ’086 Patent pursuant to
`35 U.S.C. § 271(a);
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`• Count 8: Induced Infringement of the ’086 Patent pursuant to
`35 U.S.C. § 271(b);
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`• Count 9: Direct Infringement of the ’621 Patent pursuant to
`35 U.S.C. § 271(a);
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`• Count 10: Induced Infringement of the ’621 Patent pursuant to
`35 U.S.C. § 271(b);
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`• Count 12: Direct Infringement of the ’755 Patent pursuant to
`35 U.S.C. § 271(a);
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`• Count 13: Induced Infringement of the ’755 Patent pursuant to
`35 U.S.C. § 271(b).
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`Finjan alleges that the following ESET products infringe claims 1, 7, 11, 15, and
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`16 of the ’844 Patent directly (literally or under the doctrine of equivalents) (Count 1) or
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`by inducement (Count 2)2:
`
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`1 The ’305 Patent is currently stayed pending a final resolution on ESET’s inter partes
`review petition and will not be adjudicated in this trial. See Dkt. No. 447.
`2 ESET objects to Finjan’s claim that any ESET products infringe (present tense) the
`Asserted Patents, as all Asserted Patents have expired (and thus all claims for
`infringement should be in the past tense).
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`PRETRIAL ORDER
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`2
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`

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`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37912 Page 4 of 21
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`• The “’844 Cloud Products” which collectively include LiveGrid
`Reputation System, LiveGrid Feedback System, ThreatSense.Net,
`Cloud Malware Protection System (“CMPS”), Enterprise Cloud
`Malware Protection System (“ECMPS”), LiveGrid Cloud, ESET
`Dynamic Threat Defense (“EDTD”), and Threat Intelligence;3
`
`• The “’844 Gateway Products” which collectively include the ESET
`Small Business Security Pack products, ESET Mail Security for
`Linux/BSD, ESET Mail Security for Kerio, ESET Gateway Security
`for Linux/BSD, and ESET Gateway Security for Kerio and ESET
`Security for Virtual Environment, and ESET Virtualization Security
`(per Host, per Processor and per VM).
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`Finjan alleges that the following ESET products infringe claims 9, 13, and 18 of
`
`the ’780 Patent directly (literally or under the doctrine of equivalents) (Count 3) or
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`indirectly (Count 4), and claims 1, 2, 9, 10, 24, and 42 of the ’086 Patent directly
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`(literally or under the doctrine of equivalents) (Count 7) or by inducement (Count 8):
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`• The “’780/’086 Cloud Products” which collectively include
`LiveGrid Reputation System, LiveGrid Feedback System,
`ThreatSense.Net, Cloud Malware Protection System (“CMPS”),
`Enterprise Cloud Malware Protection System (“ECMPS”), LiveGrid
`Cloud, ESET Dynamic Threat Defense (“EDTD”), and Threat
`Intelligence;
`
`• The “’780/’086 Endpoint Products” which collectively include (N)
`ESET Multi-Device Security Pack, (N+N) ESET Multi-Device
`Security Pack, ESET NOD32 Antivirus, ESET Smart Security, ESET
`Internet Security, ESET Smart Security Premium, ESET Multi-Device
`Home Office, ESET Small Office Security Pack, ESET Small
`Business Security Pack, ESET Endpoint Antivirus for Windows,
`
`3 ESET objects to Finjan’s various groupings of ESET’s products in this portion of the
`Pretrial Order because (1) these backend services are not “products” and (2) some of
`these services, specifically ECMPS, EDTD, and Threat Intelligence were not released
`prior to expiration of the Asserted Patents. In addition, other listed “products” are not
`products but marketing bundles of other products. “ESET Multi-Device Home Office”
`is one such marketed bundle but does not consist of any actual products, instead it offers
`licenses to a number of other products that can be used.
`
`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
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`3
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`

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`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37913 Page 5 of 21
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`ESET Endpoint Security for Windows, ESET Cyber Security, ESET
`Cyber Security Pro, ESET Endpoint Antivirus for Mac OS X, ESET
`Endpoint Security for Mac OS X, ESET NOD32 Antivirus for Linux,
`and ESET Endpoint Antivirus for Linux, ESET Internet Security, and
`ESET Security for Virtual Environment;
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`• The “’780/’086 Server Products” which collectively include ESET
`Mail Security for Microsoft Exchange Server, ESET File Security for
`Microsoft Windows Server, ESET Security for Microsoft SharePoint
`Server, ESET Security for Virtual Environment, ESET Mail Security
`for IBM Domino, ESET Mail Security for Kerio, ESET Gateway
`Security for Kerio, ESET Gateway Security for Linux/BSD, ESET
`Mail Security for Linux/BSD, and ESET File Security for Linux/BSD.
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`Finjan alleges that the following ESET products infringe claims 1, 5-7, 10-11, and
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`13-14 of the ’621 Patent directly (literally or under the doctrine of equivalents) (Count
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`9) or by inducement (Count 10), and claims 3 and 5-8 of the ’755 Patent directly
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`(literally or under the doctrine of equivalents) (Count 12) or by inducement (Count 13):
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`• The “’621 Cloud Products”4 which collectively include all ESET
`products that operate on Windows, LiveGrid Reputation System,
`LiveGrid Feedback System, ThreatSense.Net, Cloud Malware
`Protection System, and Threat Intelligence;
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`• The “’621/’755 Endpoint Products” which collectively include all
`ESET products that operate on Windows, ESET Multi-Device
`Security, ESET NOD32 Antivirus, ESET Smart Security, ESET
`Internet Security, ESET Smart Security Premium, ESET Multi-Device
`Home Office, ESET Small Office Security Pack, ESET Small
`Business Security Pack, ESET Endpoint Antivirus for Windows,
`ESET Endpoint Security for Windows, ESET Cyber Security, ESET
`Cyber Security Pro, ESET Multi-Device Security, ESET Multi-
`Device Home Office, and ESET Security for Virtual Environment;
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`• The “’621/’755 Windows and Domino Server Products” which
`collectively all ESET products that operate on Windows, including
`ESET Mail Security for Microsoft Exchange Server, ESET File
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`4 The ’621 Cloud Products are not asserted against the ’755 Patent.
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`PRETRIAL ORDER
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`4
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`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37914 Page 6 of 21
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`Security for Microsoft Windows Server, ESET Security for Microsoft
`SharePoint Server, ESET Security for Virtual Environment and ESET
`Mail Security for IBM Domino.
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`As set forth in Finjan’s Complaint, Finjan seeks monetary and equitable relief.
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`Finjan is seeking a reasonable royalty for ESET’s infringement, and separately,
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`injunctive relief for future infringement.5 Finjan also seeks an accounting of past
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`damages for infringement up to the date of the payment, along with prejudgment and
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`post-judgement interest. Finjan also seeks a declaratory judgment that ESET infringes
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`all asserted claims and that each and every asserted claim is valid and enforceable.
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`Finjan’s Complaint originally identifies the following points of relief:
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`• an entry of judgment that ESET has directly infringed and is directly
`infringing the ’844 Patent, the ’780 Patent, the ’086 Patent, the ’621
`Patent, and the ’755 Patent, or inducing the infringement of the ’844
`Patent, the ’780 Patent, the ’086 Patent, the ’621 Patent, and the ’755
`Patent;
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`• a preliminary and permanent injunction against ESET and those in
`privity with ESET from infringing the asserted patents;
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`• an award of damages in the form of a reasonable royalty;
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`• a determination that ESET’s infringement has been willful, wanton,
`and deliberate and that Finjan is entitled to trebled damages on this
`basis;6
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`• a finding that this case is exceptional;
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`• as award of Finjan’s costs and reasonable attorneys’ fees permitted
`under 35 U.S.C. § 285;
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`5 Finjan is not seeking injunctive relief at trial because all of the Asserted Patents have
`expired.
`6 The Court dismissed Finjan’s willfulness claim in D.I. 720.
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`PRETRIAL ORDER
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`
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`5
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`

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`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37915 Page 7 of 21
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`• an accounting of ESET’s infringing sales and revenues, along with
`prejudgment and post-judgement interest from the first date of
`infringement to the present; and
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`• any further relief that the Court may deem proper and just.
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`II. Defendants’ Defenses and Causes of Action
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`ESET, LLC and ESET spol. s.r.o. each filed an Amended Answer and
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`Counterclaims to the Complaint. D.I. 142, 143. ESET has denied infringement of each
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`Asserted Claim and alleged that each Asserted Claim is invalid (including, but not
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`limited to, inventorship, utility, novelty, non-obviousness, enablement, definiteness, and
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`written description) and unenforceable. D.I. 142 at 22-29; D.I. 143 at 22-29. ESET has
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`also raised defenses of prosecution history estoppel, patent misuse, limitation of
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`damages and costs, no immediate or irreparable injury, no exceptional case, failure to
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`mark, no willful infringement, acquiescence, prosecution laches, and license. D.I. 142
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`at 22-29. ESET filed Counterclaims seeking declaratory judgment that the Asserted
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`Claims are invalid and were not infringed. D.I. 142 at 30-36; D.I. 143 at 30-37. ESET
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`also filed Counterclaims seeking declaratory judgment that each and every claim of the
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`’621, ’755, and ’086 patents are unenforceable due to prosecution laches. D.I. 142 at
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`37-39; D.I. 143 at 37-40. ESET also filed Counterclaims seeking declaratory judgment
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`that all of the Asserted Patents are unenforceable due to patent misuse. D.I. 142 at 39-
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`41; D.I. 143 at 40-41. ESET also filed Counterclaims seeking declaratory judgment that
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`the ’086, ’621, and ’755 patents are unenforceable due to inequitable conduct. D.I. 142
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`at 41-56; D.I. 143 at 41-56. ESET has the burden of proving that each Asserted Claim
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`is invalid or unenforceable by clear and convincing evidence. ESET seeks a judgment
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`that the Asserted Claims are invalid, not infringed, and unenforceable, in addition to
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`costs, expenses, and attorneys’ fees, a finding of exceptional case, and any other relief,
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`in law or equity, to which this Court finds ESET are entitled. D.I. 142 at 56; D.I. 143 at
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`56-57.
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`PRETRIAL ORDER
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`
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`6
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`

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`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37916 Page 8 of 21
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`WITNESS LIST
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`I.
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`Finjan’s Descriptions of Witnesses It Expects to Call
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`A. Witnesses expected to be called to testify at trial:
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`• Philip Hartstein. Mr. Hartstein is the Chief Executive Officer of
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`Finjan. He is expected to testify regarding Finjan, its business
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`operations, and its licensing practices.
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`• John Garland. Mr. Garland is the Director of Business Development
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`at Finjan. Mr. Garland expects to testify regarding Finjan’s business
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`and licensing efforts during the time with Finjan.
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`B.
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`Expert Witnesses expected to be called to testify live at trial:
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`• Dr. Harry Bims. Dr. Bims is an expert in the field of networking and
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`communications technology. He is expected to testify regarding his
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`background and qualification, general concepts relating to computer
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`networking, high-level web communication, web traffic, email and
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`high-level email communication, secure communications, routers and
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`low-level internet communication, computer network security, viruses
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`and malware, sandboxing, databases and additional tools that can be
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`used to aid the detection of security threats. In his testimony, Dr.
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`Bims will present a general tutorial of technology involved in this
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`case, including terms and concepts involved with the technology
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`discussed in the Asserted Patents. Dr. Bims may also provide a high-
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`level background regarding ESET’s products.
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`• Dr. Eric Cole. Dr. Cole is an expert in cyber security and technical
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`information security. Dr. Cole expects to offer testimony consistent
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`with his expert report including, his background and qualifications,
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`the claimed invention of the ‘844 Patent, ESET’s products, services
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`and technologies, including ESET’s accused Cloud and Gateway
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`PRETRIAL ORDER
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`
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`7
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`

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`Products. Dr. Cole will testify that the asserted claims of the ‘844
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`Patent are infringed by ESET’s Cloud and Gateway Products, and
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`about how ESET’s activities both in the U.S. and abroad constitute
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`infringement of the ‘844 Patent. Dr. Cole will also testify regarding
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`ESET’s lack of noninfringing alternatives or design arounds.
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`• Dr. Michael Mitzenmacher. Dr. Mitzenmacher is an expert in
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`computer science, networking, and network security. Dr.
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`Mitzenmacher expects to offer testimony consistent with his expert
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`report including, his background and qualifications, the technology
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`described in the ‘780 and ‘086 Patents, ESET’s products, services and
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`technologies, including ESET’s accused Cloud, Endpoint and Server
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`Products. Dr. Mitzenmacher will testify that the asserted claims of the
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`‘780 and ‘086 Patents are infringed by ESET’s Cloud, Endpoint and
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`Server Products, and about how ESET’s activities both in the U.S. and
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`abroad constitute infringement of the ‘780 and ‘086 Patents. Dr.
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`Mitzenmacher will also testify regarding ESET’s lack of
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`noninfringing alternatives or design arounds.
`
`• Dr. Nenad Medvidovic. Dr. Medvidovic is an expert in computer
`
`science, networking, and network security. He expects to offer
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`testimony consistent with his expert report including, his background
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`and qualifications, the technology described in the ‘621 and ‘755
`
`Patents, ESET’s products, services and technologies, including
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`ESET’s accused Cloud, Endpoint and Windows and Domino Server
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`Products. Dr. Medvidovic will testify that the asserted claims of the
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`‘621 Patent are infringed by ESET’s Cloud, Endpoint and Windows
`
`and Domino Server Products and the asserted claims of the ‘755
`
`Patent are infringed by ESET’s Endpoint and Windows and Domino
`
`8
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`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`

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`Server Products, and will testify about how ESET’s activities both in
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`the U.S. and abroad constitute infringement of the ‘621 and ‘755
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`Patents. Dr. Medvidovic will also testify regarding ESET’s lack of
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`noninfringing alternatives or design arounds.
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`• Mr. Kevin Arst. Mr. Arst is a Senior Managing Director of Ankura
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`Consulting Group LLC in Ann Arbor, MI, which is a professional
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`services firm focused on IP valuation, litigation consulting, IP strategy
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`and IP transactional services. Mr. Arst will offer testimony at trial
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`consistent with his expert report. He will testify regarding damages
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`owed to Finjan.
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`• Dr. Trent Jaeger. Dr. Jaeger is an expert in computer software,
`
`computer security, and network security. He expects to offer
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`testimony consistent with his expert report including, his background
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`and qualifications, the background of the ‘844, ‘780 and ‘086 Patents,
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`including the teachings of the patents, proceedings related to the
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`patents in district courts and before the Patent Office and relevant
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`prior art, relevant considerations concerning related patents, the
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`correct priority and conception dates for claims of the patents, and the
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`knowledge of a person of ordinary skill in the art at the time of the
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`inventions, which applies to the prior art asserted.
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`• Dr. Michael Goodrich. Dr. Goodrich is an expert in computer
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`science, information security, and computer networking. He expects
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`to offer testimony consistent with his expert report including, his
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`background and qualifications, the background of the ‘621 and ‘755
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`Patents, including the teachings of the patents, proceedings related to
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`the patents in district courts and before the Patent Office and relevant
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`prior art, relevant considerations concerning related patents, the
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`9
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`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37919 Page 11 of 21
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`correct priority and conception dates for claims of the patents, and the
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`knowledge of a person of ordinary skill in the art at the time of the
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`inventions, which applies to the prior art asserted.
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`• Dr. Alessandro Orso. Dr. Orso is an expert in computer science,
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`program analysis, and computer security. He expects to offer
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`testimony consistent with his expert report including, his background
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`and qualification, relevant secondary considerations of non-
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`obviousness of the Asserted Patents. Dr. Orso’s discussion of
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`secondary considerations will include: recognition of a problem, a
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`long felt need for the claimed invention, failed attempts by others,
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`praise by others and industry recognition, copying by others, licensing
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`of the patents and commercial success.
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`C. Witnesses Finjan reserves the right to call:
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`• David R. Kroll. Mr. Kroll is a former employee of Finjan and co-
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`inventor of the ‘086 Patent. Mr. Kroll expects to testify regarding the
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`work on developing new technologies, business, and engineering
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`efforts at Finjan during the time of his employment at Finjan.
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`• Shlomo Touboul. Mr. Touboul is the founder of Finjan. He will
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`testify regarding Finjan’s business, engineering, and technology
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`pursuits during his employment with Finjan.
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`• Albro, Alexandra. Finjan may call Ms. Albro by deposition to testify
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`regarding ESET, including its knowledge regarding ESET’s first
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`awareness of Finjan.
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`• Bono, Christopher. Finjan may call Mr. Bono by deposition to testify
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`regarding ESET’s products, services, and documentation.
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`10
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`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37920 Page 12 of 21
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`• Gabryszewski, Marcin. Finjan may call Mr. Gabryszewski by
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`deposition to testify regarding the functionality of Eset’s products and
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`services.
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`• Goretsky, Aryeh. Finjan may call Mr. Goretsky to testify by
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`deposition regarding security and virus research and his knowledge of
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`prior art.
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`• Janosik, Juraj. Finjan may call Mr. Janosik to testify by deposition
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`regarding his knowledge of ESET’s products and services.
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`• Kosinar, Peter. Finjan may call Mr. Kosinar to testify by deposition
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`regarding the development, design, and functionality of ESET’s
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`products, source code development, prior art analysis and
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`functionality and publication of prior art anti-virus software.
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`• Kovac, Peter. Finjan may call Mr. Kovac to testify by deposition
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`regarding the distribution and availability of prior art products.
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`• Kovacik, Michal. Finjan may call Mr. Kovacik to testify by
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`deposition regarding the development, design, and functionality of
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`ESET’s products and services.
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`• Krizan, Matej. Finjan may call Mr. Krizan to testify by deposition
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`regarding the development, design, and functionality of ESET’s
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`products and services.
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`• Luka, Pavel. Finjan may call Mr. Luka to testify by deposition
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`regarding general corporate knowledge of ESET, LLC and ESET
`
`spol. s.r.o.
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`• Malcho, Juraj. Finjan may call Mr. Malcho to testify by deposition
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`regarding the development, design, and functionality of ESET’s
`
`products and services.
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`11
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`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`

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`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37921 Page 13 of 21
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`• Marko, Richard. Finjan may call Mr. Marko to testify by deposition
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`regarding general corporate knowledge of ESET spol, s.r.o. and the
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`design, development, and publication of prior art anti-virus software.
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`• Michalakova, Jana. Finjan may call Mr. Michalakova to testify by
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`deposition regarding financial information associated with ESET’s
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`products and services.
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`• Pasko, Robert. Finjan may call Mr. Pasko to testify by deposition
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`regarding the development, design, and functionality of ESET’s
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`products and services.
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`• Paulen, Vladimir. Finjan may call Mr. Paulen to testify by deposition
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`regarding the development, design, and functionality of ESET’s
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`products and services.
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`• Simovic, Viliam. Finjan may call Mr. Simovic to testify by deposition
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`regarding the development, design, and functionality of ESET’s
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`products and services.
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`• Skora, Wojciech. Finjan may call Mr. Skora to testify by deposition
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`regarding the development, design, and functionality of ESET’s
`
`products and services.
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`• Somlo, Ivan. Finjan may call Mr. Skora to testify by deposition
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`regarding the development, design, and functionality of ESET’s
`
`products and services.
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`• Stapleton, Brett. Finjan may call Mr. Stapleton to testify by
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`deposition regarding the sales of ESET’s products.
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`• Sucansky, Patrik. Finjan may call Mr. Sucansky to testify by
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`deposition regarding the development, design, and functionality of
`
`ESET’s products and services.
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`12
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`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37922 Page 14 of 21
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`• Sustek, Juraj. Finjan may call Mr. Sustek to testify by deposition
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`regarding the development, design, and functionality of ESET’s
`
`products and services.
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`• Vrabec, Jan. Finjan may call Mr. Vrabec to testify by deposition
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`regarding competitive analysis.
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`• Vrana, Peter. Finjan may call Mr. Vrana to testify by deposition
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`regarding how ESET sells and markets its products and services.
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`• Wojcik, Mateusz. Finjan may call Mr. Wojcik to testify by
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`deposition regarding the development, design, and functionality of
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`ESET’s products and services.
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`11
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`II. ESET’s Descriptions of Witnesses It Expects to Call
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`A. Witnesses expected to be called to testify at trial:
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`• Marcin Gabryszewski. Mr. Gabryszewski is a Senior Developer at ESET
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`spol. He is expected to testify live concerning HIPS and Exploit Blocker.
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`• Juraj Janosik. Mr. Janosik is a Senior Software Engineer at ESET spol.
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`He is expected to testify live concerning automated sample processing by
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`CMPS, and automated analysis of certain files, creation of blacklist hashes,
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`and creation of signatures from log files.
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`• Peter Kosinar. Mr. Kosinar is a Technical Fellow at ESET spol. He is
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`expected to testify live concerning the development, design, and
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`functionality of the accused products, source code development, source
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`code collection efforts, functionality and publication of prior art ESET
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`software, and non-infringing alternatives to the Asserted Patents. Mr.
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`Kosinar is also expected to testify on the release date of Augur, ESET
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`Threat Intelligence, Enterprise Inspector, and ECMPS/EDTD.
`
`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`13
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`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37923 Page 15 of 21
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`• Peter Kovac. Mr. Kovac is expected to testify live concerning the
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`distribution and availability of prior art products, including HVMS and
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`NOD iCE.
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`• Juraj Malcho. Mr. Malcho is the Chief Technology Officer at ESET spol.
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`He is expected to testify live concerning the content of ESET marketing
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`documents, compartmentalization of R&D and software development at
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`ESET, and provide a general overview of ESET product components and
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`services.
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`• Richard Marko. Mr. Marko is the Chief Executive Officer at ESET spol.
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`He is expected to testify live concerning the founding and growth of ESET
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`during his tenure, recognition of ESET as an industry leader in anti-
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`malware and cybersecurity, and the design, development, and publication
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`of prior art anti-virus software.
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`• Wojciech Skora. Mr. Skora is a Software Engineer at ESET spol. He is
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`expected to testify live concerning the functionality of the Advanced
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`Heuristics features in ESET’s accused products. Mr. Skora is also
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`expected to testify about the release date of Augur.
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`• Patrick Sucansky. Mr. Sucansky is a Senior Software Engineer at ESET
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`spol. He is expected to testify live concerning the functionality of ESET
`
`LiveGrid Feedback System, CMPS, and LiveGrid Reputation System. Mr.
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`Sucanksy is also expected to testify regarding the release date of
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`ECMPS/EDTD.
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`• Mateusz Wojcik. Mr. Wojcik is a Senior Specialized Software Engineer
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`at ESET spol. He is expected to testify live concerning the functionality of
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`HIPS, Exploit Blocker (including Java Exploit Blocker) and Advanced
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`Memory Scanner features of ESET’s accused products.
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`14
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`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37924 Page 16 of 21
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`• Righard Zwienenberg. Mr. Zwienenberg is a consultant to ESET. He is
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`expected to testify live concerning prior art anti-virus software
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`development, distribution, functionality, and availability, including, but not
`
`limited to, Thunder Byte.
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`B.
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`Expert Witnesses expected to be called to testify live at trial:
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`• Thomas W. Britven. Mr. Britven is President of ASQ Consulting, which
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`is a professional services firm that provides a multitude of services
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`including litigation consulting, business strategy, infrastructure
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`development, investment banking, and private equity. Mr. Britven is
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`expected to testify, consistent with his expert report, concerning the amount
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`of damages due Finjan, if any, and to respond to the expert testimony of
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`Finjan’s expert, Mr. Kevin Arst, if any.
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`• Sylvia Hall-Ellis, Ph.D. Dr. Hall-Ellis is an Adjunct Professor in the
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`School of Information at San Jose State University. Dr. Hall-Ellis is
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`expected to testify, consistent with her expert report, concerning the public
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`availability of certain prior art documents.
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`• Eugene H. Spafford, Ph.D. Dr. Spafford is a Professor of Computer
`
`Science at Purdue University. Dr. Spafford is expected to testify,
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`consistent with his expert reports, concerning non-infringement of the
`
`Asserted Claims, non-infringing alternatives to the Asserted Patents,
`
`invalidity of the Asserted Claims, the knowledge of a person of ordinary
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`skill in the art at the time of the earliest claimed priority or filing dates of
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`each of the Asserted Patents, the state of the art and the existing technology
`
`at that time, the proper priority date for each of the claimed inventions, and
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`that ESET’s products are licensed under certain of the Asserted Patents
`
`based on Finjan’s license agreement with Microsoft Corporation.
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`15
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`PRETRIAL ORDER
`
`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 764 Filed 02/25/20 PageID.37925 Page 17 of 21
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`• Roger Thompson. Mr. Thompson is the Chief Executive Officer of TCSL
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`Research, which is dedicated to computer security at the firmware level.
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`Mr. Thompson is expected to testify, consistent with his expert report,
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`regarding commercial feasibility of Finjan products, as well as opinions
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`offered by Finjan’s experts, if any, regarding the alleged capabilities of
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`Finjan’s products and software to detect malware.
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`C. Witnesses ESET reserves the right to call:
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`• Yuval Ben-Itzhak. Mr. Ben-Itzhak is a na