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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
` Case No.: 17CV183 CAB (BGS)
`
`ORDER GRANTING IN PART AND
`DENYING IN PART MOTION FOR
`ADDITIONAL DISCOVERY AND
`ISSUANCE OF LETTER OF
`REQUEST
`
`[ECF 833]
`
`Plaintiff,
`
`FINJAN, INC.,
`
`v.
`ESET, LLC and ESET SPOL. S.R.O.,
`Defendants.
`
`
`I.
`
`INTRODUCTION
`Defendants Eset, spol. s.r.o. and Eset, LLC (“Eset”) has filed this motion to permit
`a second deposition of Shlomo Touboul. (ECF 833.) Mr. Touboul’s first deposition
`occurred when the case was stayed as to one of the six patents asserted in this case, U.S.
`Patent No. 7,975,305 (“’305 Patent”). (Id. at 2.1) Eset now seeks a second deposition to
`depose him regarding the ’305 Patent. (Id. at 3-5.) Eset also seeks issuance of a Letter of
`Request pursuant to the Hague Convention because Mr. Touboul is in Israel. (Id., Ex. A.)
`Finjan is opposed to a second deposition. (ECF 834.) Finjan argues Eset should have
`
`
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`1 Unless otherwise noted, all citations are to electronically generated CM/ECF pagination.
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`questioned Mr. Touboul regarding the ’305 Patent during the first deposition and Finjan
`should not have to expend additional resources attending another deposition of Mr.
`Touboul. (Id. at 4.) Finjan additionally argues that the topics are duplicative, Eset
`already used its allotted seven hours of deposition time, and a second full deposition on
`duplicative topics is not proportional to the needs of the case. (Id. at 4-7.)
`II. DISCUSSION
`Parties’ Positions
`A.
`Eset seeks leave to depose Mr. Touboul a second time under Federal Rule of Civil
`Procedure 30(a)(2)(A)(ii), which Eset acknowledges requires either the stipulation of the
`parties or leave of court. (ECF 833 at 3.) Eset argues that it should be permitted to
`depose Mr. Touboul a second time because the case was stayed as to the ’305 Patent
`when he was initially deposed and Eset did not depose him regarding the ’305 Patent at
`his initial deposition. (Id. at 2, 4-6.) Eset explains that when the case was stayed as to
`the ’305 Patent it stopped working on the case as to the ’305 Patent, having not served its
`amended invalidity contentions to address new asserted claims of the ’305 Patent or
`consulting its expert regarding the ’305 Patent. (Id. at 5.) Eset argues that the additional
`time and effort it would have had to invest in preparing to depose Mr. Touboul on the
`’305 Patent would have defeated the purpose of the stay – to avoid the expense of
`litigating the ’305 Patent when that might ultimately be unnecessary. (Id.) Eset argues
`that regardless of Finjan’s questioning of Mr. Touboul in violation of the stay,2 Eset did
`not question him on the ’305 Patent because of the stay. (Id. at 4.) Eset, anticipating one
`of Finjan’s challenges to the second deposition, also quotes from the transcript of a status
`conference in which the assigned district judge specifically indicated that although the
`parties could jointly agree to pursue ’305 discovery for efficiency reasons despite the
`
`
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`2 Eset indicates that it objected to Finjan’s questioning of Mr. Touboul on the ’305 Patent
`as being beyond the scope of Eset’s direct examination and in violation of the stay. (ECF
`833 at 2.)
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`2
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`stay, “[i]t doesn’t require that you do the discovery.” (Id. at 3-4 (quoting June 14, 2018
`Hearing Transcript [ECF 277 at 9:24-25).)
`Finjan first argues that some of the topics identified for the second deposition are
`duplicative of topics Mr. Touboul testified to at his initial deposition, including about his
`employment, relationship and communications with Finjan, Finjan’s products, Eset’s
`products, participation in Finjan litigation, the history of Finjan, and the state of the art in
`computer security as of 2009. (ECF 834 at 4 (citing ECF 833, Ex. A ¶ 5).) Finjan then
`proceeds to identify where these topics were already testified to. (Id. at 4.) Finjan also
`argues Eset is now seeking documents that overlap with documents requested in the prior
`subpoena to Mr. Touboul. (Id. at 5.) Finjan acknowledges that “Eset was not required to
`pursue discovery on the ’305 Patent” when Mr. Touboul was deposed, but seems to argue
`a second deposition should be denied because Eset could have deposed him on the stayed
`’305 Patent for the sake of efficiency, but declined to. (Id.) Finjan’s argument regarding
`proportionality is similar. (Id. at 6.) Finjan acknowledges a second deposition that is
`narrowly tailored could be within the scope of Rule 26(b)(1), but argues it is not
`proportional to the needs of the case because Eset could have questioned Mr. Touboul on
`the stayed ’305 Patent at his initial deposition and failed to budget the deposition time
`appropriately. (Id. at 4, 6.) In the alternative to prohibiting the deposition entirely,
`Finjan asks the Court require Eset to amend the Letter of Request to limit the length of
`the deposition, eliminate duplicative topics, and narrow the topics to those Eset could not
`have asked in the first deposition. (Id. at 7.)
`Legal Standards
`B.
`Under Federal Rule of Civil Procedure 30(a)(2)(A)(ii), “[a] party must obtain leave
`of court, and the court must grant leave to the extent consistent with Rule 26(b)(1) and (2):
`(A) if the parties have not stipulated to the deposition and: . . . (ii) the deponent has already
`been deposed in the case.” Many courts have applied a good cause standard to the taking
`of a second deposition even though it is not stated in Rule 30(a)(2), however they disagree
`as to which party must show good cause. Kleppinger v. Texas Dep’t of Transp., 283 F.R.D.
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`330, 335 n.7 (S.D. Tex. 2012) (“[T]his Court notes that other district courts have utilized a
`‘good cause’ standard when making such determinations pursuant
`to Rule
`30(a)(2)(A)(ii).”) (collecting cases); Clark v. Penn Square Mall Ltd. P’ship, 2013 WL
`139778, * 1 (W.D. Okla. Jan. 10, 2013) (Explaining “[s]ome courts require parties to show
`good cause before they can conduct a second deposition” and “[o]ther courts require a
`showing of good cause to prevent–rather than allow–the second deposition,” but finding
`“[e]ither way, a good cause standard would involve disregard of Rule 30(a)(2)(A)(ii) when
`its terms mandate leave for a second deposition); Jade Trading, LLC v. United States, 64
`Fed. Cl. 85, 86 (2005) (“Some courts have opined that leave to conduct a second deposition
`should ordinarily be granted, and that the party opposing the second deposition must
`demonstrate good cause why the second deposition should not be taken.”) (citing Judicial
`Watch, Inc. v. United States DOC, 34 F. Supp 2d 47, 54–55 (D.D.C.1998); Plaisance v.
`Beef Connection Steakhouse, 1998 WL 214740 (E.D. La. April 30, 1998)); see also
`Entrata, Inc. v. Yardi Sys., Inc., Case No. 2:15-cv-102 CW, 2018 WL 6171890, *2 (D.
`Utah, Nov. 26, 2018) (Noting the good cause standard is not in Rule 30(a)(2), some courts
`required a showing of good cause to take a second deposition, and some courts require a
`showing of good cause to prevent a second deposition). The Court need not address the
`variation in courts’ standards here because, as discussed below, Eset has shown good cause
`to conduct a second deposition as limited by the Court to conform with Rule 26(b)(2).
`Rule 30(d)(1) provides that “[u]nless otherwise stipulated or ordered by the court, a
`deposition is limited to one day of 7 hours.” However, “[t]he court must allow additional
`time consistent with Rule 26(b)(1) and (2) if needed to fairly examine the deponent or if
`the deponent, another person, or any other circumstance impedes or delays the
`examination.” “The party seeking a court order to extend the examination [beyond the
`presumptive seven hours of actual deposition time], or otherwise alter the limitations, is
`expected to show good cause to justify such an order.” Rule 30, Adv. Comm. Notes to
`2000 amend.
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`Rule 26(b)(1) provides that “[p]arties may obtain discovery regarding any non-
`privileged matter that is relevant to any party’s claim or defense and proportional to the
`needs of the case, considering the importance of the issues at stake in the action, the amount
`in controversy, the parties’ relative access to relevant information, the parties’ resources,
`the importance of the discovery in resolving the issues, and whether the burden or expense
`of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1).
`Rule 26(b)(2)(C) also requires the court, on motion or on its own, to limit the
`frequency or extent of discovery otherwise allowed by the rules if it determines that “(i)
`the discovery sought is unreasonably cumulative or duplicative, or can be obtained from
`some other source that is more convenient, less burdensome, or less expensive; (ii) the
`party seeking discovery has had ample opportunity to obtain the information by discovery
`in the action; or (iii) the proposed discovery is outside the scope permitted by Rule
`26(b)(1).” Fed. R. Civ. P. 26(b)(2)(C)(i)-(iii).
`C. Analysis
`As limited by the parties’ briefing,3 the primary issues are whether the testimony
`sought should be denied or limited under Rule 26(b)(2) as “unreasonably cumulative or
`duplicative,” if Eset “has had ample opportunity to obtain the information by discovery in
`the action,” and if the discovery sought it proportional to the needs of the case. Rule
`26(b)(1) and (2).
`///
`///
`///
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`3 The Court is not addressing unbriefed issues and nothing in this Order should be
`interpreted as such. For example, as the Court explains below, proportionality is raised
`but most of the factors are not addressed and the parties do not raise relevancy. Given
`Finjan’s brief acknowledges that Mr. Touboul is the founder of Finjan and a named
`inventor on the ’305 Patent (ECF 834 at 2), the Court can conclude that the relevancy of
`his testimony is not in dispute, at least for purposes of this Motion.
`5
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`Cumulative or Duplicative
`1.
`The Court finds that the proposed “Subject of Examination”4 as reflected in Eset’s
`request to depose Mr. Touboul, includes topics that are duplicative of topics previously
`covered but also includes topics specific to the ’305 Patent that Eset did not previously
`pursue, and was not required to pursue at the time of the initial deposition because of the
`stay. (ECF 833, Ex. A ¶ 5.)
`As Finjan points out in their briefing, Eset previously deposed Mr. Touboul
`regarding his “employment, business relationship, and communications with Finjan;
`Finjan’s products; Eset’s products; participation in Finjan litigation; corporate, financial,
`and marketing history of Finjan; and state of the art computer security as of 2000.” (ECF
`833 (citing ECF 833, Ex. A ¶ 5 (describing topics for deposition).) However, nothing in
`the record reflects that Eset deposed Mr. Touboul regarding the other topics also included
`in this section, “the alleged conception, development, reduction to practice, protection,
`validity, enforceability, and infringement of the ’305 Patent.” (Id.) Additionally, the
`Court recognizes that there might be questions to ask specific to the ’305 Patent that
`relate to the broader topics of ¶ 5 noted above. The deposition Eset seeks covers material
`specific to the ’305 Patent that has not previously been covered, but it also includes topics
`Mr. Touboul was previously deposed on. The inclusion of topics he was previously
`deposed on creates the potential it will be unreasonably duplicative.
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`4 It states in full:
`The examination of Shlomo Touboul will concern at least: the alleged
`conception, development, reduction to practice, protection, validity,
`enforceability, and infringement of the ’305 Patent; employment, business
`relationship, and communications with Finjan; Finjan’s products; ESET’s
`products; participation in Finjan litigation; corporate, financial, and
`marketing history of Finjan; and state of the art of computer security as of
`2000.
`(ECF 833, Ex. A ¶ 5.)
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`6
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`As to the document production, the Court agrees that Mr. Touboul should not be
`required to produce additional documents for his second deposition. The prior subpoena
`included documents related to the ’305 Patent and the deposition testimony cited by
`Finjan reflects his searches did not exclude the ’305 Patent.5 (ECF 834-3, Ex. B at 1
`(definitions section includes ’305 Patent within Patents-in-Suit), 9-12 (document requests
`relying on that definition); ECF 833, Ex. A ¶ 6 (documents to be produced for second
`deposition).) This is not an opportunity to revisit previous requests by asking for some of
`the same documents again or to revisit any issues with the prior productions.
`Additionally, eliminating this duplicative document production relieves Mr. Touboul of
`the burden of conducting an additional search for documents when that search was
`previously conducted and documents produced. As explained below, this is also
`significant in the Court’ proportionality analysis. However, this does not mean Eset is
`precluded from questioning Mr. Touboul regarding previously produced documents
`specific to the ’305 Patent. As discussed below, because Eset has not yet deposed Mr.
`Touboul on the ’305 Patent, it may question him on it, including documents related to the
`’305 Patent subject to the limitations imposed by the Court.
`Accordingly, to avoid a deposition that is unreasonably cumulative or duplicative
`in violation of Rule 26(b)(2), the Court requires Eset to narrow the scope of the topics of
`the deposition to those specific to the ’305 Patent. The portion of the Subject of
`Examination, identified above that is specific to the ’305 Patent need not be altered,
`however, the broader topics that have already been covered more generally in Mr.
`Touboul’s prior deposition, must be eliminated or narrowed to those topics as they relate
`to the ’305 Patent. And, the Court expects the questioning will strictly address only the
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`5 This conclusion presumes that Finjan’s counsel did not previously withhold or has since
`produced any documents related to the ’305 Patent that Mr. Touboul provided from his
`searches. Mr. Touboul testified that he provided everything he located in his searches to
`Finjan’s counsel.
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`’305 Patent. This is not an opportunity to revisit topics previously covered or clarify
`prior testimony with further questioning.
`2. Opportunity to Obtain the Information by Discovery in the Action
`Finjan attempts to preclude Eset from deposing Mr. Touboul regarding the ’305
`Patent under Rule 26(b)(2)(C) because Eset could have joined Finjan in questioning him
`on the ’305 during his initial deposition. Finjan points to it having deposed him and
`Finjan telling Eset at the deposition that it should also question him on the ’305 Patent at
`that time. Although Rule 26(b)(2)(C)(ii) limits discovery when a party has “had an
`opportunity to obtain the information,” Finjan accurately acknowledges that Eset was not
`required to depose him on the ’305 Patent during his first deposition because of the stay.
`The parties agree that Eset was not required to seek ’305 discovery from Mr.
`Touboul regarding the ’305 Patent at his initial deposition because the case was stayed.
`(ECF 833 (Eset’s Motion; ECF 834 (Finjan’s Opp’n) at 5 (“While Eset was not required
`to pursue discovery on the ’305 patent, it was not prohibited either.”).) And, the Court’s
`own review of the transcript of a status hearing that both parties rely on reflects as much.
`(ECF 277 at 9:20-10:6.) The parties were allowed to pursue discovery on ’305 “to the
`extent the parties wish to jointly pursue discovery on the ’305 for economic and
`efficiency reasons.” (Id. at 10:22-24 (emphasis added).) To the extent the voluntary
`nature of that was not clear, it was followed by “It doesn’t require that you do the
`discovery.” (Id. at 10:24-25.6) The Court cannot now find Eset is precluded from
`deposing Mr. Touboul regarding the ’305 Patent under Rule 26(b)(2) because it “had
`ample opportunity to obtain the information by discovery in the action” at his initial
`deposition. To do so would be the equivalent of requiring Eset to depose Mr. Touboul
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`6 This is consistent with the court’s prior statement that “I’m not going to force the
`defendants to take discovery” (ECF 277 at 8:17-18) and Eset’s lack of objection “as long
`as the order of the Court is clear we don’t have to pursue that discovery . . .” (Id. at 9:15-
`19.)
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`regarding the ’305 Patent at his initial deposition. However, Eset was not required to
`expend resources preparing to question Mr. Touboul or to actually question him
`regarding the ’305 Patent when initially deposed. The option was available if the parties
`jointly wanted to, but it was not required. In this respect, a second deposition limited to
`the ’305 Patent is not precluded under Rule 26(b)(2)(C)(ii).
`However, Eset has had the opportunity to depose him on everything else.
`Accordingly, the Court finds the same restrictions imposed above to avoid duplicative or
`cumulative discovery are similarly justified to comply with Rule 26(b)(2)(C)(ii)’s
`prohibition on discovery a party has had ample opportunity to obtain.
`3. Length of Second Deposition and Proportionality
`Finjan argues that a second deposition is not proportional to the needs of the case,
`but addresses only the final factor, whether the burden outweighs its benefit. Finjan
`argues the burden and expense of a potentially duplicative deposition outweighs the
`benefit of it. (ECF 834 at 6.) In the same section of the Opposition, Finjan also argues
`Eset failed to budget its deposition time or to take advantage of the opportunity to depose
`Mr. Touboul on the’305 Patent when it could have and instead gambled on obtaining a
`full deposition on duplicative topics. (ECF 834 at 6.) Although note entirely clear, the
`Court construes this argument and Finjan’s assertion that Eset failed to manage the seven
`hours it was allowed in a different section, (id. at 4) as an assertion that the second
`deposition of Mr. Touboul will exceed the presumptive seven-hour limit in Rule 30(d).
`However, Finjan has not indicated how long Mr. Touboul was actually deposed.
`Additionally, Finjan asks that if the Court allows a second deposition that the deposition
`should be limited in length, although it does not specify a length. (Id. at 7.) Eset did not
`address this issue as it was only raised in Finjan’s Opposition.
`The Court finds Eset may exceed the presumptive seven-hour limit, assuming the
`second deposition will do so, but only for a maximum of two hours. Eset has not
`deposed Mr. Touboul on one of the patents-in-suit because the case was stayed as to it at
`the initial deposition. Eset has shown good cause for a brief deposition that complies
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`with the limitations set forth above to comply with Rule 26(b)(1) and (2) – strictly
`narrowed to the’305 Patent without an additional document production. See Rule
`30(d)(1) (“The court must allow additional time consistent with Rule 26(b)(1) and (2) if
`needed to fairly examine the deponent or if the deponent, another person, or any other
`circumstance impedes or delays the examination.”) The Court finds that with a narrowed
`deposition covering only one patent and not revisiting any topics previously covered in
`the initial deposition, the deposition should be short. This time limit also significantly
`limits the burden imposed by the deposition on Mr. Touboul and Finjan for purposes of
`the burden in assessing proportionality.
`4. Cost Shifting
`At the conclusion of its Opposition, when Finjan argues for limits on the
`deposition if it goes forward, Finjan states “ESET should also be required to cover all
`costs for a reconvened deposition.” (ECF 834 at 7.) There is no further explanation for
`what costs Finjan is seeking or the basis for it. Accordingly, this unsupported or
`explained request is denied.
`III. CONCLUSION
`The Court GRANTS in part and DENIES in part Eset Motion as set forth above.
`The Court will allow a second deposition of Mr. Touboul, but as limited by this Order.
`Eset must modify the Letter of Request previously submitted to conform to the
`limitations in this Order and resubmit it for approval by the Court within 10 days.
`IT IS SO ORDERED.
`Dated: December 16, 2020
`
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