Case 3:17-cv-00183-CAB-BGS Document 819 Filed 10/06/20 PageID.39882 Page 1 of 4
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`FINJAN, INC.,
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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` Case No.: 17CV183 CAB (BGS)
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`ORDER:
`(1) SETTING DISCOVERY
`DEADLINES AS TO ’305 PATENT
`(2) TO FILE AMENDED JOINT
`DISCOVERY PLAN
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`[ECF 813]
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`Plaintiff,
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`v.
`ESET, LLC and ESET SPOL. S.R.O.,
`Defendants.
`
` A
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` stay as to the ‘305 Patent was granted on May 7, 2018 and lifted on July 23,
`2020. (ECF 251, 802.) The Order lifting the stay indicated that discovery as to the ’305
`Patent could proceed at that time. (Id.) When the parties contacted Judge Skomal’s
`Chambers regarding the potential need to toll discovery issues, the undersigned ordered
`the parties to meet and confer to identify what discovery was needed as to the ’305 Patent
`that was not cumulative or duplicative of discovery already completed and to file a joint
`discovery plan to complete discovery. (ECF 811.) The Court cautioned the parties that
`they must proceed diligently with any necessary updates to disclosures and contentions
`regarding the ’305 Patent. (Id.)
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`Case 3:17-cv-00183-CAB-BGS Document 819 Filed 10/06/20 PageID.39883 Page 2 of 4
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`The parties have submitted competing proposals that only address completion of
`written discovery and do not address expert discovery. (ECF 813 at 2 6.) Eset seeks a
`longer schedule than Finjan based on: Finjan not having updated the claims it intends to
`pursue (based on some previously asserted claims being declared invalid); Eset’s
`anticipated difficulties obtaining documents from overseas and subject to access
`restrictions in place as a result of Covid-19; and specifically as to source code,
`anticipated issues gaining physical access to servers with source code that is subject to
`strict protections. (ECF 813 at 4-9.) Finjan argues the more expedited schedule is
`appropriate because: significant work has already been done as to the ’305 Patent,
`including preliminary infringement and invalidity contentions; Eset should only need to
`supplement production of technical documents, and two months have already passed
`since the stay was lifted. (Id. at 2-3.)
`The Court ordered the parties to identify what additional discovery was needed as
`to the ’305 Patent and when it could be completed. The Court did not limit the order to
`written discovery or exclude expert discovery. Accordingly, unless the parties agree that
`depositions will not be required and there is no need for expert discovery as to the ’305
`Patent that has not been completed, the parties must file an updated joint discovery plan
`by October 9, 2020 that addresses completion of all discovery as to the ’305 patent.1
`The Court reminds the parties that they should have already completed much of the
`discovery as to the ’305 Patent prior to the issuance of the stay on May 7, 2018. Only a
`month and a half remained for substantial completion of document discovery when it was
`issued.2 (ECF 214 at 2; 251.) Anything that should have already been completed as to
`the ’305 Patent prior to the stay should be updated only as necessary and as expeditiously
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`1 The Court expects the completion of discovery as to this single patent will proceed on a
`more expedited basis than the discovery as to the other patents for which discovery is
`now complete. (See ECF 214 at 2 (setting case management schedule).)
`2 Fact discovery was to be completed by August 3, 2018.
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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 819 Filed 10/06/20 PageID.39884 Page 3 of 4
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`as possible if the parties have not already done so.3 This is not an opportunity to start
`over with discovery as to this patent, and while the typical sequencing may be
`appropriate, the timelines proposed should be much shorter given the work that has
`already been completed. Any request for a lengthier schedule based on Covid-19 or other
`geographic restrictions or limitations should be supported by a declaration from counsel
`or the party that describes the restriction and explains how the restriction makes earlier
`compliance impossible.4
`Although the Court finds much of the supplements and updates to discovery the
`parties have addressed should have been completed earlier, as to the deadline the parties
`have addressed, the Court orders as follows:
`
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`Deadline5
`October 19, 2020
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`November 9, 2020
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`Event related to the ’305 Patent
`Eset to complete supplemental responses to technical
`interrogatories
`Eset to provide:
`• Supplemental source code
`• Supplemental production of technical documents
`• Supplemental financial documents
`• Supplemental responses to financial interrogatories
`and interrogatory nos. 6, 10, and 12
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`3 It appears from the parties’ filing that they have been able reach agreement and
`complete some updates as the Court would expect. (ECF 813 at 5.) However, to the
`extent there are any remaining disputes concerning the sequencing of updates, the Court
`would expect the parties to follow the same course they did before the stay absent some
`good reason for a deviation.
`4 Eset did not err in warning the Court that issues may arise as a result of physical access
`to offices, particularly as to source code, and the Court recognizes there may be
`restrictions beyond counsel or a party’s control. However, given restrictions can change
`at any time and the need to move forward expeditiously, to deviate from the most
`efficient schedule possible, a declaration with more specificity is required.
`5 Based on the parties’ proposals, Finjan should have already provided updated accused
`products and asserted claims by September 30, 2020.
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`3
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`17CV183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 819 Filed 10/06/20 PageID.39885 Page 4 of 4
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`Finjan to provide:
`• Responses to Supplemental interrogatories, including,
`financial, prior art, and reduction to practice,
`specifically nos. 1, 2, 3, 8, 9, 10, 11, 12, 14, 15, 18,
`19, 21, 236
`Finjan to provide supplemental infringement contentions
`Last day to serve additional written discovery requests7
`Eset to provide:
`• Supplemental invalidity contentions
`• Supplemental election of prior art
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`November 18, 2020
`November 25, 2020
`December 14, 2020
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`IT IS SO ORDERED.
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`Dated: October 6, 2020
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`6 The Court lists the specific interrogatories as to Finjan and Eset to address Eset’s
`concern that Finjan’s proposal did not list the individual interrogatories and only required
`supplemental document productions and interrogatory responses “if necessary.” (ECF
`813 at 6). However, absent further information not presented here, neither party is
`required to update discovery responses other than confirming the prior response is still
`accurate, unless an update is necessary to accurately respond to the document request or
`interrogatory.
`7 In setting this deadline, the Court is not necessarily authorizing new discovery requests
`as a general matter or approving either party delaying discovery requests to this deadline.
`The Court recognizes fact discovery was ongoing when the case was stayed however, as
`would always be the case, the parties should initiate discovery as soon as possible and
`responsive discovery should not be cumulative of discovery already provided.
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`17CV183 CAB (BGS)
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