Case 3:17-cv-00183-CAB-BGS Document 833 Filed 11/23/20 PageID.39925 Page 1 of 7
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`NICOLA A. PISANO, CA Bar No. 151282
` NicolaPisano@eversheds-sutherland.com
`JOSE L. PATIÑO, CA Bar No. 149568
`
`JosePatino@eversheds-sutherland.com
`JUSTIN E. GRAY, CA Bar No. 282452
`
`JustinGray@eversheds-sutherland.com
`SCOTT A. PENNER, CA Bar No. 253716
` ScottPenner@eversheds-sutherland.com
`EVERSHEDS SUTHERLAND (US) LLP
`12255 EL CAMINO REAL, SUITE 100
`SAN DIEGO, CALIFORNIA 92130
`TELEPHONE:
`858.252.6502
`FACSIMILE:
`858.252.6503
`Attorneys for Defendants and Counter-Plaintiffs
`ESET, LLC and ESET, SPOL. S.R.O.
`
`FINJAN, INC.,
`
`Plaintiff,
`
`v.
`ESET, LLC, et al.,
`Defendants.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
` Case No. 3:17-cv-0183-CAB-BGS
`MOTION FOR ADDITIONAL
`DISCOVERY AND ISSUANCE OF
`LETTER OF REQUEST
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`Judge: Hon. Bernard G. Skomal
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`AND RELATED COUNTERCLAIMS.
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`Case 3:17-cv-00183-CAB-BGS Document 833 Filed 11/23/20 PageID.39926 Page 2 of 7
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`Pursuant to Fed. R. Civ. P. 28(b)(2)(A), Defendants ESET, spol. s.r.o. and ESET,
`LLC (collectively, “ESET”) make this application to the Court to permit a second
`deposition of Shlomo Touboul on topics that were previously stayed, as well as for
`issuance of a Letter of Request, in the form attached as Exhibit A. The Letter of Request
`is to be issued pursuant to the Hague Convention on the Taking of Evidence Abroad in
`Civil and Commercial Matters (the “Hague Convention”). The letter seeks the
`assistance of the Israeli Center Authority for The Hague Evidence Convention to compel
`the deposition of Mr. Touboul, who is living in Israel and is a named inventor on one or
`more of the patents asserted in this action.1 The deposition will take place at a mutually
`agreeable location in Israel to provide testimony under oath concerning matters in this
`case.2
`I.
`BACKGROUND
`On May 7, 2018, this Court stayed discovery as to U.S. Patent No. 7,975,305 (“the
`’305 patent”). On July 23, 2018, Mr. Touboul was deposed in this action. In view of the
`stay, ESET did not question Mr. Touboul regarding the ’305 patent. Following ESET’s
`examination, Finjan introduced the ’305 patent as an exhibit. ESET objected to the
`exhibit – and each of the following questions regarding the ’305 patent – as being
`outside the scope of the direct examination and in violation of the Court’s order for the
`stay.3 ESET did not join Finjan in violating the Court’s order by questioning the witness
`about the ’305 patent.
`Also, in view of the stay, ESET had not yet served amended invalidity contentions
`to address newly asserted claims of the ’305 patent, nor had ESET consulted its expert to
`address potential issues to be explored during deposition of the inventors of the ’305
`patent. ESET also did not invest additional time or effort in preparing to take Mr.
`
`1 Following a number of meet-and-confer sessions, the parties agreed to avoid Hague
`service for Moshe Rubin, another witness living in Israel, and are working cooperatively
`to schedule his deposition.
` 2 To the extent the Israeli authorities permit, and the parties can agree on a time, date,
`and method, ESET is also amenable to a remote deposition of Mr. Touboul.
` 3 July 23, 2018 Deposition of Shlomo Touboul, page 432, lines 15, to page 435, line 22.
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`Case 3:17-cv-00183-CAB-BGS Document 833 Filed 11/23/20 PageID.39927 Page 3 of 7
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`Touboul’s deposition relating to ’305 patent. Now that the stay is lifted and discovery is
`open as to the ’305 patent, ESET seeks to depose Mr. Touboul on discrete topics
`concerning the ’305 patent.
`This dispute arose on November 10, 2020, when Finjan’s counsel refused service
`for Mr. Touboul and stated they would oppose ESET’s request to examine him on topics
`that were previously stayed. Specifically, as part of the meet and confer process, counsel
`for Finjan stated that while Finjan’s counsel previously represented Mr. Touboul, they
`refused to accept service stating that he was no longer represented by Finjan’s counsel.
`Thus, in order to serve Mr. Touboul, who lives in Israel, ESET must use the Hague
`Convention. Also, despite no longer representing Mr. Touboul, counsel for Finjan stated
`that Finjan would oppose this request because Mr. Touboul had already been deposed,
`notwithstanding that he had not been questioned about the ’305 patent nor was counsel
`for ESET required to make such inquiries in light of the stay.
`II. LEGAL STANDARD
`Leave of court or a stipulation of the parties is required if the deponent has already
`been deposed once in the case. Fed. R. Civ. P. 30(a)(2)(A)(ii). “The Federal Rules of
`Civil Procedure treat service under the Hague Convention as the primary means of
`serving a defendant located in a country which … is a signatory to the Hague
`Convention.” Wright v. Old Gringo Inc., No. 17-cv-1996-BAS-NLS, 2018 U.S. Dist.
`LEXIS 125491, at *3
`(S.D. Cal. July 26, 2018)
`(citing Volkswagenwerk
`Aktiengesellschaft v. Schlunk, 468 U.S. 694, 706 (1988)).
`III. ARGUMENT
`Leave to depose Mr. Touboul regarding discrete topics concerning the ’305 patent
`is especially appropriate where, as here, discovery regarding the ’305 patent was stayed
`at the time of Mr. Touboul’s first deposition. Indeed, during the June 14, 2018 status
`conference, this Court expressly acknowledged that ESET was not required to pursue
`that discovery:
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`Case 3:17-cv-00183-CAB-BGS Document 833 Filed 11/23/20 PageID.39928 Page 4 of 7
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`Okay. Basically the Court’s position on this and the order is
`that to the extent the parties wish to jointly pursue discovery on
`the ’305 for economic and efficiency reasons, particularly with
`regard to international discovery, the stay is lifted for that
`purpose. It doesn’t require that you do the discovery. And
`if there’s an objection to discovery that is being sought in that
`scope and you don’t want to do it and the other side does, you
`can come back to me on that as opposed to the magistrate judge
`since it’s my order, and I’ll decide whether or not it’s
`appropriate.
`June 14, 2018 Hearing Transcript at 9:20-10:4 (emphasis added); see also May 7, 2018
`Order, D.I. 251 at 4 (“As to the ’305 patent, any other pending and further proceeding
`related to the ’305 patent are STAYED until the issuance of the Board’s decision.”).
`Thus, regardless of whether Finjan chose to ignore the stay and question Mr. Touboul
`following ESET’s examination, the order staying discovery as to the ’305 patent
`remained in place and ESET was under no obligation to question the witness regarding
`the stayed ’305 patent. See Coleman v. Newsom, No. 2:90-cv-0520 KJM DB P, 2020
`U.S. Dist. LEXIS 107238, at *14 (E.D. Cal. June 17, 2020) (recognizing the
`“unremarkable proposition that any party bound by a court order may not act unilaterally
`in violation of that order but, instead, must seek relief from the court that issued the
`order.”). Indeed, “[d]isregard of [a court] order would undermine the court’s ability to
`control its docket … and reward the indolent and the cavalier.” Johnson v. Mammoth
`Recreations, Inc., 975 F.2d 604, 610 (9th Cir. 1992). Finjan now seeks to be rewarded
`for its cavalier attitude toward the Court’s stay order by seeking to preclude ESET from
`now properly questioning Mr. Touboul about the ’305 patent. Such attempts “would
`undermine the court’s ability to control its docket” and are improper. Id.
`The purpose of the stay was to allow the parties to avoid incurring additional cost
`associated with discovery concerning the ’305 patent. Accordingly, when the stay
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`Case 3:17-cv-00183-CAB-BGS Document 833 Filed 11/23/20 PageID.39929 Page 5 of 7
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`issued, counsel for ESET, ESET’s experts, and ESET itself stopped such work. Left
`uncompleted at that time was ESET’s amended invalidity contentions, analysis of the
`newly asserted claims (including analysis of priority dates, whether there was
`specification support for the newly asserted claims, and whether any aspect of the newly
`asserted claims were obvious in light of the prior art, all matters that would be relevant
`to an inventor deposition), and any discussions with its expert regarding the scope of any
`inventor deposition relating to the ’305 patent. In light of the stay, when Mr. Touboul
`was deposed in this action, ESET did not question him regarding the ’305 patent.
`Indeed, for ESET to have invested additional time or effort in preparing to take Mr.
`Touboul’s deposition relating to ’305 patent would have defeated the purpose of the
`stay. Instead, now that discovery is open as to the ’305 patent, it is appropriate to depose
`Mr. Touboul on issues limited to the ’305 patent despite his prior deposition regarding
`other topics. Cypress Semiconductor Corp. v. GSI Tech., Inc., No. 13-cv-02013-JST,
`2014 U.S. Dist. LEXIS 142858, at *8 (N.D. Cal. Oct. 7, 2014) (noting that when a
`partial stay is granted to a subset of patents in a multi-patent infringement action, “there
`is a risk of duplicative discovery because all of the patents subject to a potential stay
`overlap,” and “[s]o long as the case proceeds in part and is stayed in part, the parties risk
`duplication as a result of overlapping patents, witnesses, and issues”); Doe v. Indyke, No.
`20cv00484 (JGK) (DF), 2020 U.S. Dist. LEXIS 168258, at *18 (S.D.N.Y. Sept. 14,
`2020) (“a partial stay could lead to duplicative depositions, as, once the partial stay is
`lifted, [defendant] would be entitled to question any witnesses (including Plaintiff) who
`may have already been deposed during the pendency of the partial stay”) (emphasis
`added); Peck Ormsby Constr. Co. v. City of Rigby, No. CIV. 1:10-545 WBS, 2012 U.S.
`Dist. LEXIS 36178, at *18-19 (D. Idaho Mar. 15, 2012) (recognizing that “[d]uplicative
`discovery efforts are extremely likely” in the event of a partial stay); Quad/Tech, Inc. v.
`Q.I. Press Controls B.V., No. 09-2561, 2010 U.S. Dist. LEXIS 147548, at *2 n.1 (E.D.
`Pa. June 9, 2010) (“The parties may very well have to re-depose certain witnesses after
`the stay on Count I is lifted.”); Trs. of the Plumbers & Pipefitters Nat’l Pension Fund v.
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`Case 3:17-cv-00183-CAB-BGS Document 833 Filed 11/23/20 PageID.39930 Page 6 of 7
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`Transworld Mech., Inc., 886 F. Supp. 1134, 1141 (S.D.N.Y. 1995) (recognizing that “a
`partial stay could lead to duplicative discovery efforts” including re-deposing witnesses).
`Good cause exists for a witness to be re-deposed when, as here, the witness is a
`first-hand source of information for which there was not ample opportunity to obtain that
`discovery. See FCC v. Mizuho Medy Co., No. 07cv189 JAH (NLS), 2009 U.S. Dist.
`LEXIS 135856 (S.D. Cal. Sept. 24, 2009); see also Ahdom v. Lopez, No. 1:09-cv-01874-
`AWI-BAM (PC), 2015 U.S. Dist. LEXIS 163890, at *4 (E.D. Cal. Dec. 7, 2015) (leave
`for a second deposition of a witness granted because the defendant “seeks to depose
`Plaintiff on matters specifically pertaining to him that were not addressed in the previous
`deposition,” and therefore “this second deposition will neither be cumulative nor overly
`burdensome”).
`Moreover, it is appropriate for the Court to issue a Letter of Request pursuant to
`the Hague Convention permitting ESET to take the deposition of Mr. Touboul because
`he is a non-party living in Israel. See In re Trans-Pac. Passenger Air Transp. Antitrust
`Litig., No. C-07-05634 CRB (DMR), 2013 U.S. Dist. LEXIS 179129, at *16 (N.D. Cal.
`Dec. 20, 2013) (“If the witness is located in another country, the party seeking the
`deposition must utilize the procedures of the Hague Convention or other applicable
`treaty.”); Cascade Yarns, Inc. v. Knitting Fever, Inc., No. C10-861 RSM, 2014 U.S.
`Dist. LEXIS 8285, at *6 (W.D. Wash. Jan. 16, 2014) (“Use of Hague Convention
`procedures is particularly relevant where, as here, discovery is sought from a non-party
`in a foreign jurisdiction.”). Because this will be Mr. Touboul’s second deposition, ESET
`has limited the scope of the discovery in the Letter of Request to those topics relating to
`the ’305 patent, as set forth in Exhibit A.
`IV. CONCLUSION
`ESET respectfully requests that the Court permit ESET to depose Mr. Touboul on
`the limited scope of topics concerning the ’305 patent and issue the corresponding Letter
`of Request in the form attached as Exhibit A.
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`Case 3:17-cv-00183-CAB-BGS Document 833 Filed 11/23/20 PageID.39931 Page 7 of 7
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`Dated: November 23, 2020
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`Respectfully submitted,
`EVERSHEDS SUTHERLAND (US) LLP
`
`
`
`
`/s/ Scott A. Penner
`NICOLA A. PISANO, CA Bar No. 151282
` NicolaPisano@eversheds-sutherland.com
`JOSE L. PATIÑO, CA Bar No. 149568
`
`JosePatino@eversheds-sutherland.com
`JUSTIN E. GRAY, CA Bar No. 282452
`
`JustinGray@eversheds-sutherland.com
`SCOTT A. PENNER, CA Bar No. 253716
` ScottPenner@eversheds-sutherland.com
`12255 EL CAMINO REAL, SUITE 100
`SAN DIEGO, CALIFORNIA 92130
`TELEPHONE:
`858.252.6502
`FACSIMILE:
`858.252.6503
`Attorneys for Defendants and Counter-Plaintiffs
`ESET, LLC and ESET, SPOL. S.R.O.
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