Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39979 Page 1 of 9
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`Juanita Brooks (SBN 75934) brooks@fr.com
`Roger A. Denning (SBN 228998) denning@fr.com
`Jason W. Wolff (SBN 215819) wolff@fr.com
`Michael A. Amon (SBN 226221) amon@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Tel: (858) 678-5070 / Fax: (858) 678-5099
`
`Lawrence Jarvis (pro hac vice)
`FISH & RICHARDSON P.C.
`1180 Peachtree St., NE
`21st Floor
`Atlanta, GA 30309
`Tel: (404) 891-5005 / Fax: (404) 892-5002
`
`Attorneys for Plaintiff Finjan, Inc.
`
`
`IN THE UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
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` Plaintiff,
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`v.
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`ESET, LLC and ESET SPOL. S.R.O.,
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`
`
`
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` Defendants.
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`
`
`
`Case No. 17-cv-0183 CAB (BGS)
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`FINJAN, INC.’S RESPONSE TO
`DEFENDANTS’ MOTION FOR
`ADDITIONAL DISCOVERY AND
`ISSUANCE OF LETTER OF
`REQUEST
`
`District Judge: Hon. Cathy Ann
`Bencivengo
`Magistrate Judge: Hon. Bernard G.
`Skomal
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`
`
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`FINJAN’S RESPONSE TO MOTION FOR
`ADDITIONAL DISCOVERY
`Case No. 17-cv-0183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39980 Page 2 of 9
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`I.
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`INTRODUCTION
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`Plaintiff Finjan, Inc. (“Plaintiff” or “Finjan”) opposes Defendants ESET, LLC
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`and ESET SPOL. S.R.O.’s (“Defendants” or “ESET”) Motion for Additional
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`Discovery and Issuance of Letter of Request. (D.I. 833) ESET fails to show good
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`cause exists for a costly, redundant, and unrestrained second deposition of nonparty
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`foreign witness, Mr. Shlomo Touboul, which is duplicative of ESET’s March 28,
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`2018 Subpoena to Produce Documents and July 23, 2018 deposition. Failing to show
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`good cause for why nonparty Touboul should sit for a second deposition in this case
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`or why Finjan should have to spend the resources of having to attend the same, Finjan
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`respectfully requests the motion be denied.
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`II. BACKGROUND
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`
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`On May 7, 2018, the Court stayed discovery as to U.S. Patent No. 7,975,305
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`(“the’305 Patent”), which was subject to review under Inter Partes Review (“IPR”).
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`(See D.I. 251) However, the Court expressly permitted limited discovery given
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`international nonparty inventor issues, and the Hague Convention. (See D.I. 277 at
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`6:22-10:6) The Court explained “it makes more sense to get an exclusion from the
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`Court to continue to pursue discovery, at least that limited discovery that is out of the
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`country so that if the patent is affirmed and comes back from the PTO, we’ll be more
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`ready to go rather than having to start from square one.” (D.I. 277 at 6:22-7:7) Thus,
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`the Court ordered “to the extent the parties wish to jointly pursue discovery on the
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`’305 for economic and efficiency reasons, particularly with regard to international
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`discovery, the stay is lifted for that purpose.” (D.I. 277 at 9:20-10:6) (emphasis
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`added)
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`On July 23, 2018, ESET deposed Mr. Touboul, founder of Finjan and a named
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`inventor on the ’305 Patent, in Tel Aviv, Israel.1 (See Exh. A) ESET questioned
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` 1
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` All exhibits are attached to the Decl. of Jason W. Wolff ISO Finjan’s Resp. to Mot.
`for Add’l Discovery, filed contemporaneously herewith.
`1
`FINJAN’S RESPONSE TO MOTION FOR
`ADDITIONAL DISCOVERY
`Case No. 17-cv-0183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39981 Page 3 of 9
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`Mr. Touboul about his July 6, 2018 document production, which he produced in
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`response to ESET’s March 28, 2018 subpoena duces tecum. (Exh. A at 89:3-95:3;
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`Exh. B) On November 10, 2020, ESET attempted to serve counsel for Finjan with a
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`second notice of subpoena and request for documents to Mr. Touboul. Mr. Touboul,
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`however, is not represented by counsel for Finjan and it cannot accept service on his
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`behalf. ESET subsequently filed its discovery motion on November 23, 2020.
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`Having already
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`incurred
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`the burden and expense of defending nonparty
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`Mr. Touboul’s deposition in Israel—which included the ability for ESET to question
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`Mr. Touboul regarding the ’305 Patent—Finjan opposes a second deposition.
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`III. LEGAL STANDARDS
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`A nonparty may be commanded by subpoena to testify at a deposition. Fed. R.
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`Civ. P. 45(a). Further, “a party must obtain leave of court, and the court must grant
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`leave to the extent consistent with Rule 26(b)(2),” if “the deponent has already been
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`deposed.” Fed. R. Civ. P. 30(a)(2)(A)(ii). “Unless otherwise stipulated or ordered by
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`the court, a deposition is limited to 1 day of 7 hours. The court must allow additional
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`time consistent with Rule 26(b)(2) if needed to fairly examine the deponent.” Fed. R.
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`Civ. P. 30(d)(1); see also Fed. R. Civ. P. 26(b)(2)(A) (“By order, the court may alter
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`the limits in these rules on . . . the length of depositions under Rule 30.”).
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`Moreover, “[a] party seeking a court order to extend the time of a deposition
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`must show good cause to justify such an order.” Evenchik v. Avis Rent A Car Sys.,
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`LLC, 2014 WL 12899139, at *2 (S.D. Cal. Mar. 28, 2014) (citing Stonebreaker v.
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`Guardian Life Ins. Co. of Am., 2012 U.S. Dist. LEXIS 13307, at *5 (S.D. Cal. Feb. 3,
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`2012)). Rule 30(d)(1)’s reference to Rule 26(b)(2) requires the Court to limit the use
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`of any discovery method if: “(i) the discovery is unreasonably cumulative or
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`duplicative, or can be obtained from another source that is more convenient, less
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`burdensome, or less expensive; (ii) the party seeking discovery has had ample
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`opportunity to obtain the information by discovery in the action; or (iii) the proposed
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`2
`FINJAN’S RESPONSE TO MOTION FOR
`ADDITIONAL DISCOVERY
`Case No. 17-cv-0183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39982 Page 4 of 9
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`discovery is outside the scope permitted by Rule 26(b)(1).” Fed. R. Civ. P. 26(b)(2).
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`IV. ARGUMENT
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`ESET has not met its burden to establish each of the three requirements under
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`Rule 26(b)(2) to take a second deposition of Mr. Touboul—a nonparty foreign
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`witness. After failing to reasonably manage the seven hours it was allowed under
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`Rule 30(d)(1), ESET seeks an unrestricted, second full day of deposition on topics
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`that were either covered or could have been covered in his first deposition.
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`First, Rule 26(b)(2) asks whether the discovery sought is “unreasonably
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`cumulative or duplicative.” Mr. Touboul was already deposed for a full seven hours.
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`Further, the subject matter of the examination described in ESET’s Letter of Request
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`is duplicative of topics covered in Mr. Touboul’s July 23, 2018 deposition. For
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`example, ESET seeks to examine Mr. Touboul about his “employment, business
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`relationship, and communications with Finjan; Finjan’s products; ESET’s products,
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`participation in Finjan litigation; corporate, financial, and marketing history of Finjan,
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`and the state of the art of computer security as of 2000.” (D.I. 833 Ex. A at 3 ¶ 5)
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`However, Mr. Touboul has already testified on this at his first deposition, where he
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`described in his role as founder, CEO, and board member of Finjan (Exh. A at 23:19-
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`21, 26:13-27:10, 39:14-40:17); the patents-in-suit (Exh. A at 165:21-172:11, 218:3-
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`223:5, 232:7-236:3); Finjan’s Surfin and Vital Security products (Exh. A at 28:1-
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`29:21, 44:7-45:10, 61:18-22, 65:17-68:9, 101:11-104:5, 277:11-279:2; 281:7-283:2,
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`286:13-288:4); ESET’s products, such as NOD32, NOD-iCE, and HMVS (Exh. A at
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`70:14-72:2); and the corporate, financial, and marketing history of Finjan (Exh. A at
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`34:18-36:22, 40:18-42:13, 46:21-50:7, 306:6-311:6). Moreover, ESET asked Mr.
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`Touboul about the ’780 Patent, grandparent to ’305 Patent, and about products
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`embodying the shared disclosure of the ’780 Patent. (Exh. A at 171:7-12, 179:7-
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`180:20; 181:10-186:16, 209:7-213:10) And ESET asked about prior art available in
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`the 2000 time period. (Exh. A at 323:3-329:14)
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`3
`FINJAN’S RESPONSE TO MOTION FOR
`ADDITIONAL DISCOVERY
`Case No. 17-cv-0183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39983 Page 5 of 9
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`Mr. Touboul testified about documents in his possession and produced in
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`response to the 2018 subpoena, which overlaps the requests in the new subpoena.
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`(Exh. A at 80:17-85:10; 89:3-95:3; compare Exh. B at 9-12 (Document Request Nos.
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`1-10, 12-13, 16, and 18) with D.I. 833 Ex. A at 3 ¶ 6) More discovery is duplicative
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`because Mr. Touboul and his then counsel confirmed his production was inclusive of
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`all relevant, responsive, and non-privileged documents regarding Finjan. (Exh. A at
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`84:22-85:10) ESET’s sought-after discovery is not limited in scope and covers topics
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`the Court, Finjan, and Mr. Touboul did not restrict ESET from covering in Mr.
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`Touboul’s first deposition. Thus, ESET fails to show the good cause required to
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`subject Mr. Touboul and Finjan to the expense of more discovery.
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`Second, ESET had “ample opportunity to obtain the information by discovery
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`in the action.” Fed. R. Civ. P. 26(b)(2). While ESET was not required to pursue
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`discovery on the ’305 patent, it was not prohibited either. Nonetheless, ESET deposed
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`Mr. Touboul on overlapping topics described above. Pursuant to the Court’s June 14
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`Order, ESET could have – but ultimately chose not to – pursue discovery on the ’305
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`Patent for efficiency and economic purposes. Indeed, Finjan warned ESET this would
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`be the appropriate opportunity to ask Mr. Touboul questions regarding the ’305
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`Patent. (See Exh. C) Nonetheless, ESET failed to pursue deposition testimony on the
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`’305 Patent, even after Mr. Touboul testified that he was prepared to do so. (See Exh.
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`A at 435:1-22) Instead, ESET objected to Finjan’s examination of Mr. Touboul, and
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`argued that Finjan’s questions violated the Court’s order for the stay.2 (See id. at
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`432:18-20) Moreover, while estoppel pursuant to 35 U.S.C. § 315(e) applies here,
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`ESET acknowledges it has not yet served amended invalidity contentions to address
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`the ’305 Patent; nor has it consulted with its expert to address potential issues to be
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` 2
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` Finjan did not violate the Court’s Order. (See D.I. 833 at 1) Finjan’s examination
`falls squarely within the Court’s goal of achieving efficiency by allowing limited
`discovery on the ’305 Patent. (See D.I. 277 at 8:17-24)
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`FINJAN’S RESPONSE TO MOTION FOR
`ADDITIONAL DISCOVERY
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`Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39984 Page 6 of 9
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`explored during the deposition of the inventors of the ’305 Patent, such as
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`Mr. Touboul. (D.I. 833 at 4)
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`Third, while a second deposition narrowly tailored to issues that could not have
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`been covered regarding the ’305 Patent would arguably be within the scope of Rule
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`26(b)(1), it is not proportional to the needs of the case. Finjan did not object to ESET
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`covering the ’305 Patent, and specially requested it do so. (See Exh. C) Not only did
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`it fail to budget its time, ESET decided to gamble on whether the Court might permit
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`a second full deposition on duplicative topics. This factor is thus outweighed by the
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`risk of a duplicative deposition, and ESET’s failure to take advantage of the
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`opportunity to take discovery when it had ample opportunity to do so.
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`Finally, Defendants’ cited case law is distinguishable. For example, in
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`Cypress, the court weighed factors to determine whether to grant a stay pending
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`review by the PTO. Cypress Semiconductor Corp. v. GSI Tech., Inc., 2014 U.S. Dist.
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`LEXIS 142858, at *8 (N.D. Cal. Oct. 7, 2014) (recognizing risk of duplicative
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`discovery when a case is stayed in part and involves overlapping patent technology).
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`Here, the Court recognized the same risk, and determined the most efficient route for
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`this litigation included limited discovery on the ’305 Patent. (D.I. 277 at 9) In
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`Quad/Tech., the district court denied plaintiff’s request to complete discovery
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`regarding certain claims of a case placed in suspense pending appeal. Quad/Tech,
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`Inc. v. Q.I. Press Controls B.V., 2010 U.S. Dist. LEXIS 147548, at *2 n.1 (E.D. Pa.
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`June 9, 2010) (holding overlap between patent and non-patent claims would force
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`defendants to bear expense of discovery before and after the Federal Circuit rendered
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`judgment on the appeal). In contrast, here, the Court’s Order aimed to achieve judicial
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`economy by lifting the stay on the ’305 Patent on a limited basis – allowing ESET to
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`take costly and time consuming international discovery of a nonparty whose
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`5
`FINJAN’S RESPONSE TO MOTION FOR
`ADDITIONAL DISCOVERY
`Case No. 17-cv-0183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39985 Page 7 of 9
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`testimony was relevant to multiple patents-in-suit.3
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`Given the opportunity ESET had and wasted to question Mr. Touboul regarding
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`the ’305 Patent during his first deposition in Israel, it should not force nonparty
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`Touboul to sit for or Finjan to devote the resources of attending a second, duplicative
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`deposition or to respond to additional document requests. This would not only tax
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`nonparty Touboul, but would prejudice Finjan while simultaneously rewarding ESET
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`for its inefficiency and gamesmanship.
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`Alternatively, to the extent the Court finds good cause for a second deposition,
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`ESET should be required to amend its Letter of Request to limit the number of
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`deposition hours, eliminate duplicative topics, and narrowly focus the topics to issues
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`that Court finds ESET could not have asked in the first deposition.4 ESET should
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`also be required to cover all costs for a reconvened deposition.
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`V. CONCLUSION
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`For the reasons given, Plaintiff respectfully requests that the Court deny
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`ESET’s motion.
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`DATED: November 30, 2020
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`Respectfully Submitted,
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`By:
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` /s/ Jason W. Wolff
`Juanita Brooks, brooks@fr.com
`Roger A. Denning, denning@fr.com
`Jason W. Wolff, wolff@fr.com
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`
`
` 3
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` ESET’s reliance on Doe v. Indyke, 2020 U.S. Dist. LEXIS 168258, at *18 (S.D.N.Y.
`Sep. 14, 2020) and Trs. of the Plumbers & Pipefitters Nat’l Pension Fund v.
`Transworld Mech., 886 F. Supp. 1134, 1141 (S.D.N.Y. 1995) is inapposite. In both
`cases, the district court concluded that a stay of a civil case, in its entirety, was
`appropriate until the conclusion of a parallel criminal prosecution. Id.
`4 Duplicative topics include: “employment, business relationship, and
`communications with Finjan regarding the ’305 patent; Finjan’s products as they
`relate to the ’305 patent; ESET’s products as they relate to the ’305 patent;
`participation in Finjan litigation involving the ’305 patent; corporate, financial, and
`marketing history of Finjan pertaining to the ’305 patent; and state of the art of
`computer security as of 2000 as it pertains to the ’305 patent.” (D.I. 833 Ex. A at 3)
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`FINJAN’S RESPONSE TO MOTION FOR
`ADDITIONAL DISCOVERY
`Case No. 17-cv-0183 CAB (BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39986 Page 8 of 9
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`Michael A. Amon, amon@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Tel: (858) 678-5070 / Fax: (858) 678-
`5099
`
`Lawrence Jarvis (pro hac vice)
`FISH & RICHARDSON P.C.
`1180 Peachtree St., NE, 21st Floor
`Atlanta, GA 30309
`Tel: (404) 891-5005/Fax: (404) 892-
`5002
`
`Attorneys for Plaintiff Finjan, Inc.
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`FINJAN’S RESPONSE TO MOTION FOR
`ADDITIONAL DISCOVERY
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`Case 3:17-cv-00183-CAB-BGS Document 834 Filed 11/30/20 PageID.39987 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and
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`foregoing document has been served on November 30, 2020, to all counsel of record
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`who are deemed to have consented to electronic service via the Court’s CM/ECF
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`system per Civil Local Rule 5.4. Any other counsel of record will be served by
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`electronic mail, facsimile and/or overnight delivery.
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`
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`/s/ Jason W. Wolff
`Jason W. Wolff
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`ADDITIONAL DISCOVERY
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