Case 3:17-cv-00183-CAB-BGS Document 300 Filed 07/26/18 PageID.11260 Page 1 of 24
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`PAUL ANDRE (SBN 196585)
`NICOLA A. PISANO, CA Bar No. 151282
`pandre@kramerlevin.com
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` npisano@foley.com
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`
`
`LISA KOBIALKA (SBN 191404)
`
`JOSE L. PATIÑO, CA Bar No. 149568
`lkobialka@kramerlevin.com
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`jpatino@foley.com
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`
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`JAMES HANNAH (SBN 237978)
`
`JUSTIN E. GRAY, CA Bar No. 282452
`jhannah@kramerlevin.com
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`
`jegray@foley.com
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`KRAMER LEVIN NAFTALIS
`
`SCOTT A. PENNER, CA Bar No. 253716
` & FRANKEL LLP
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`spenner@foley.com
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`
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`990 Marsh Road
`FOLEY & LARDNER LLP
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`
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`3579 VALLEY CENTRE DRIVE, SUITE 300 Menlo Park, CA 94025
`SAN DIEGO, CALIFORNIA 92130
`
`Telephone: (650) 752-1700
`TELEPHONE:
`858.847.6700
`
`
`Facsimile: (650) 752-1800
`FACSIMILE:
`858.792.6773
`
`
`
`Attorneys for Defendants and Counter-Plaintiffs Attorneys for Plaintiff
`ESET, LLC and ESET SPOL. S.R.O.
`FINJAN, INC.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`FINJAN, INC.,
`
`Plaintiff,
`
`v.
`ESET, LLC, et al.,
`Defendants.
`
`AND RELATED COUNTERCLAIMS.
`
`
`
`
`Case No. 3:17-cv-0183-CAB-BGS
`PUBLIC REDACTED VERSION
`JOINT STATEMENT ON DISCOVERY
`ISSUES REGARDING ESET’S FIRST
`SET OF INTERROGATORIES AND
`FOURTH SET OF REQUESTS FOR
`PRODUCTION
`
`Judge: Hon. Bernard G. Skomal
`CONTAINS HIGHLY CONFIDENTIAL –
`ATTORNEYS’ EYES ONLY
`INFORMATION
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`Case 3:17-cv-00183-CAB-BGS Document 300 Filed 07/26/18 PageID.11261 Page 2 of 24
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`I.
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`ESET’S STATEMENT
`A.
`INTERROGATORY NO. 4
`Interrogatory No. 4 seeks an identification of which elements of the asserted claims
`are not found in the prior art references disclosed in ESET’s invalidity contentions. In
`other words, this interrogatory seeks Finjan’s response to ESET’s patent invalidity
`contentions, and Finjan has refused to substantively respond. This interrogatory seeks
`standard information sought to contest Finjan’s response to ESET’s invalidity
`counterclaims. Indeed, this very Court has required patent plaintiffs to provide such
`information. See, e.g., SPH Am., LLC v. Research in Motion, Ltd., No. 3:13-cv-02323-
`CAB-KSC, 2016 WL 6305414, at *1-3 (S.D. Cal. Aug. 16, 2016). See also Amgen Inc.
`v. Sandoz Inc., No. 14-cv-04741-RS (MEJ), 2017 U.S. Dist. LEXIS 57013 (N.D. Cal.
`Apr. 13, 2017) (requiring plaintiff to respond to an interrogatory “[d]escrib[ing] in detail
`all of your bases for contending that each of the asserted claims of the Patents-in-suit is
`not invalid, including but not limited to complete rebuttal to Defendants’ Invalidity
`Contentions in this action”).
`What is more, Finjan admitted the propriety of such discovery by asking ESET, in
`Finjan’s Interrogatory No. 6, to identify which elements of the asserted claims are not
`practiced by the accused ESET products identified in Finjan’s infringement contentions
`(in other words, to provide ESET’s non-infringement contentions); that is, the flip-side of
`the validity discovery Finjan now seeks to stymie. ESET complied and is providing a
`comprehensive, substantive response to Finjan’s Interrogatory No. 6. Beyond improperly
`withholding evidence relevant to Finjan’s response to ESET’s counterclaims, it would be
`inequitable for Finjan to request and receive information from ESET concerning the
`infringement issues of this litigation, but be absolved from providing similar information
`to ESET concerning the invalidity issues.
`Finjan’s citation of the Apple case supports ESET’s contention that the requested
`information should be produced as it is not unduly burdensome, just as Magistrate Judge
`Major ruled in that case. It is also of no assistance to Finjan to claim producing the
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`requested validity information in chart format is too burdensome, when Finjan required
`ESET’s non-infringement positions in a similar format. For similar reasons, Finjan’s
`“compound” objection finds no footing as Finjan argued the non-infringement charts it
`requested constituted a single interrogatory. Further, there is nothing to Finjan’s stale
`argument that it lacked adequate notice of ESET’s invalidity positions given that Finjan
`failed to move to strike ESET’s invalidity contentions.
`B.
`INTERROGATORY NO. 6
`Interrogatory No. 6 seeks Finjan’s contentions regarding priority dates for the
`asserted claims, including a claim chart demonstrating why each asserted claim is entitled
`to claim the priority dates Finjan has asserted. Finjan has refused to provide this
`information. The Federal Circuit has long held that once a defendant comes forward with
`prior art dated after the priority date alleged by the plaintiff, it is then plaintiff’s burden of
`production to come forward with evidence that either (1) the prior art does not
`substantively invalidate the asserted claims; or (2) that the prior art is not really “prior
`art” because the asserted claim receives the benefit of an earlier priority date. Tech.
`Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). This burden of
`production on the plaintiff specifically includes disclosing why the written description of
`the earlier application supports each of the elements of the asserted claims. Id. Finjan
`cannot dispute that ESET has disclosed certain prior art references in ESET’s invalidity
`contentions for each asserted patent that post-date Finjan’s alleged priority dates. Finjan
`is thus now required to demonstrate the asserted claims are entitled to claim the benefit of
`Finjan’s earlier patent applications.
`While Finjan has disclosed, pursuant to Patent L.R. 3.1(f), the specific priority
`dates it claims each asserted patent is entitled to, ESET’s dispute with Finjan will turn on
`a claim-by-claim basis, not patent-by-patent. Additionally, Finjan should not be allowed
`to withhold its evidence and contentions on this issue and then cherry pick what it will
`feature in its expert report to oppose ESET’s asserted prior art. Preventing such trial-by-
`ambush is the very purpose of discovery and the holdings of Technology Licensing and
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`its progeny.
`C.
`INTERROGATORY NO. 11 AND REQUEST FOR PRODUCTION
`NOS. 157 AND 160
`Interrogatory No. 11 seeks, inter alia, “an explanation of the math underlying each
`of the [Finjan] licensing agreements.” Finjan responded to this interrogatory via Fed. R.
`Civ. P. 33(d) and pointed to the license agreements themselves. During the meet and
`confer process, ESET made clear that for this interrogatory, it is requesting that Finjan
`provide the underlying number of allegedly infringing units that are covered by any
`Finjan license agreement that is stated as a lump sum (e.g. $1,000,000) instead of a
`running royalty (e.g. 5% of revenue). Such a disclosure would “explain the math”
`underlying such lump sum license agreements (i.e. permit ESET’s damages expert to
`calculate a corresponding running royalty rate for that license). Request for Production
`Nos. 157 and 160 seek, inter alia, negotiations regarding Finjan’s prior licenses, and
`settlement negotiations in Finjan’s prior patent litigations that resulted in a license, which
`would include the records reflecting mathematical calculations needed to answer
`Interrogatory No. 11.
`The Federal Circuit has recognized that such documents are not protected by
`privilege and are relevant to a patent damages analysis. In re MSTG, Inc., 675 F.3d 1337
`(Fed. Cir. 2012). See also Multimedia Patent Trust v. Apple Inc., No. 10-CV-2618-H
`(KSC), 2012 U.S. Dist. LEXIS 191119, at *18 (S.D. Cal. Nov. 20, 2012) (“[t]he Court
`recognizes that settlement negotiations may be relevant to the determination of a
`reasonable royalty, in particular where a damages expert provides opinions based on
`information outside of the four corners of the relevant settlement agreements”). And
`Finjan’s lack of production has already been prejudicial to ESET. Finjan’s Rule 30(b)(6)
`deponent for licensing matters, Mr. John Garland, admitted during his deposition on July
`19, 2018, that
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`. See Declaration of Justin E. Gray in Support of ESET’s
`Portion of Joint Statement on Discovery Issues Regarding ESET’s First Set of
`Interrogatories and Fourth Set of Requests for Production (“Gray Decl.”) Ex. A at 14:13-
`20:16, 22:5-25:15, 96:23-102:12, 104:16-105:15.
`Finjan argues it is unnecessary to determine the underlying “math” for lump sum
`agreements, but forgets that it has asserted to ESET in its discovery responses that all of
`Finjan’s previous licenses and settlement agreements are comparable licenses to the
`patents-in-suit. The only way for ESET to test that is to have the underlying calculations
`and negotiation documents and information Finjan is withholding.
`D. REQUEST FOR PRODUCTION NOS. 151 AND 155
`Request for Production Nos. 151 and 155 seek documents relating to the sales,
`pricing, revenue, and marketing of products made by third-parties that Finjan contends
`are covered by one or more of the asserted patents in this case (i.e., sales and marketing
`documents concerning products of Finjan’s licensees). Finjan has refused to produce any
`responsive documents, arguing it is just as easy for ESET to obtain such material from
`third-parties. But ESET seeks, instead, responsive documents in Finjan’s possession,
`custody, or control. What Finjan knows, and permits, third-parties to assert regarding the
`sales and marketing of products covered by one or more of the asserted patents is directly
`relevant to damages, including whether the patented features are mentioned in any
`marketing materials and whether any of the patented features drive demand for the sales
`of the products. Additionally, responsive documents will shed light on whether any of
`Finjan’s prior licenses are comparable to that which would be obtained through a
`hypothetical negotiation in the damages analysis of this case (i.e., whether sales of
`licensed products generate $50,000 or $5 million in revenue may affect the comparability
`of that license). Coming from Finjan’s own files imparts the relevance, and makes
`compliance a simple matter of a search for the responsive materials.
`E. REQUEST FOR PRODUCTION NO. 163
`Request for Production No. 163 seeks documents sufficient to show how the
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`defendants in Finjan’s prior litigations concerning one or more of the asserted patents
`calculated damages. Finjan clearly has such documents (i.e. the defendants’ respective
`damages expert reports) in its possession, the documents are clearly relevant (i.e. they
`demonstrate a prior damages analysis of one or more of the asserted patents), and it
`would not be overly burdensome for Finjan to produce the documents. The defendants’
`trial testimony on damages only provides a very small, high-level piece of the overall
`analysis performed in Finjan’s prior litigations. The defendants’ respective damages
`expert reports would also provide analysis of relevant documents, including analysis of
`Finjan’s prior licenses, and would also disclose what non-infringing alternatives were
`considered in each case.
`Finjan has not challenged the relevance of these documents in its discussions with
`ESET and prior discussion with this Court on this issue, and has instead relied on an
`objection that such documents contain third-party confidential information that would
`need to be redacted. But Finjan has had this request for almost four months, since March
`28, 2018, affording ample time to appropriately redact, to the extent necessary, and
`provide appropriate notice to third-parties many weeks ago.
`F. REQUEST FOR PRODUCTION NOS. 166, 168, 169, AND 172-177
`Requests for Production Nos. 166, 168, 169, and 172-177 request trial testimony,
`deposition testimony, deposition exhibits, and expert reports from Finjan’s prior
`litigations concerning one or more of the asserted patents for five Finjan experts: Dr.
`Seth Nielsen, Dr. Eric Cole, Dr. Michael Mitzenmacher, Dr. Nenad Medvidovic, and Dr.
`Christine Meyer. Finjan has agreed to produce the trial testimony of each of these
`experts, but not their expert reports, deposition transcripts, or deposition exhibits. Since
`Finjan has already agreed to provide these experts’ respective trial testimony, Finjan
`cannot reasonably dispute the relevance of these experts’ reports or prior depositions.
`Indeed Finjan has recently disclosed Dr. Cole, Dr. Mitzenmacher, and Dr. Medvidovic as
`potential expert witnesses in Finjan’s case against ESET, so these experts’ prior opinions
`and testimony is undoubtedly relevant here. To the extent any of Finjan’s experts take
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`positions different from those taken, inter alia, by Finjan’s previous experts Dr. Nielsen
`or Dr. Meyer in Finjan’s prior litigations, ESET should be entitled to explore the reasons
`behind Finjan’s shifting positions. Finjan’s refusal to provide responsive documents
`amounts to litigation by ambush. While the accused products in Finjan’s prior litigations
`are of course not the exact same products at issue here, all the accused products in
`Finjan’s prior litigation concern anti-virus technology. To the extent Finjan’s experts
`take different positions in this case compared to the prior Finjan litigations, ESET is
`entitled to test the changing story and shifting positions.
`Finjan’s arguments with respect to the requested documents is nothing more than a
`complaint that redacting the requested documents would take too much work. However,
`as explained above, ESET has demonstrated significant need for these documents,
`especially with respect to the experts that Finjan has already disclosed in this case. It is
`not disproportionate to the needs of this case for Finjan to redact and produce the
`documents.
`G. REQUEST FOR PRODUCTION NO. 191
`Request for Production No. 191 seeks documents sufficient to show revenue
`generated by Finjan, Inc. from non-licensing sources from the year 2000 to the present,
`and the sources of such revenue. In response, Finjan agreed to produce documents
`relating to Finjan’s own products allegedly covered by one or more of the asserted
`patents, but did not agree to produce any other responsive documents. Responsive
`documents are relevant to damages, as analyzing Finjan’s licensing revenue compared to
`its non-licensing revenue would be able to demonstrate that Finjan largely depended on
`licenses for its revenue during the hypothetical negotiation relevant to this litigation.
`This analysis would also demonstrate that Finjan and ESET are not competitors in the
`marketplace, which is also relevant to damages. As a publicly-traded company, Finjan
`should have this information at the ready, or at least be able to provide the information in
`a spreadsheet, which should not be difficult to prepare. If Finjan in fact has no revenue
`from non-licensing sources for the period covered by this request, and thus has no
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`responsive documents, such a response would be acceptable as well.
`Finjan again refers ESET to publicly available documents filed with the SEC that
`do not provide the information sought. Because these are consolidated statements for
`Finjan Holdings, Inc. and its subsidiaries, the non-licensing revenue cannot be deduced.
`H. REQUEST FOR PRODUCTION NO. 193
`Request for Production No. 193 seeks documents sufficient to show all entities
`with a financial interest in this litigation. In response to this Request, Finjan pointed to
`its response to ESET’s Interrogatory No. 8, which simply identifies the entities that
`purportedly own Finjan, Inc. Responsive documents are relevant to this case, inter alia,
`to the credibility of any trial witness that has a financial interest in this litigation. ESET
`has the right to cross-examine Finjan’s trial witnesses’ motives and credibility, and
`without obtaining this information from Finjan, ESET is left in the dark. See, e.g.,
`Global BTG LLC v. Nat’l Air Cargo, Inc., No. 11-1657 JBV (JCGx), 2013 U.S. Dist.
`LEXIS 197244, at *20 (C.D. Cal. Sept. 5, 2013) (Fed. R. Evid. 607 permits the
`introduction of evidence to show bias to impeach any witness, and “[t]his includes
`evidence of a financial interest in the outcome of the case.”). ESET has learned recently
`from Finjan’s corporate deposition by Mr. Garland, and from Mr. Garland’s personal
`deposition, that
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`. See Gray
`Decl. Ex. A at 26:4-27:24, 93:15-95:6; Ex B at 11:7-12:17, 14:12-15:7, 35:8-36:18,
`44:13-47:4; 49:12-51:22. Yet, the
` negotiated by Mr.
`Garland has not been produced, nor has Mr. Garland’s
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`, and neither have the documents regarding
`, even though: all of Mr.
`
` Id. Ex. A at 24:15-18; see also id. at 22:20-
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`Garland’s
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`). Additionally, depending on the language
`21 (
`of any agreement providing a financial interest in this litigation, the agreement could also
`reveal a standing issue.
`Finjan contends there is nothing to produce, but the Garland deposition confirms
`there is plenty. ESET is not interested in any “certifications” by Finjan. ESET requires
`compliance by Finjan with the applicable discovery rules.
`I.
`REQUEST FOR PRODUCTION NOS. 197 AND 198
`Request for Production Nos. 197 and 198 seek documents sufficient to show the
`total number of products in the United States currently licensed to use any of the asserted
`patents, on both an annual basis as well as a total cumulative number. Such calculations
`are relevant to the damages analysis in this case as the number may demonstrate what
`portion of the overall anti-virus software market is licensed by Finjan’s asserted patents.
`ESET is not requesting that Finjan seek out this information from third-parties; instead
`ESET requests that to the extent Finjan has such information in its possession, custody, or
`control, the information be disclosed to ESET. Finjan’s claim that it “has no obligation
`to search” finds no support in the law. And if Finjan does not have this information in its
`possession, it can respond that it has no responsive documents.
`Finjan stands behind the notion that it does not have a handy “list” with the
`responsive information.
` These long-standing disputed requests seek documents
`“sufficient to” provide the relevant information. As a courtesy, ESET is willing to accept
`a list, but short of that, the underlying documents “sufficient to” show the requested
`information should be produced without delay.
`J.
`REQUEST FOR PRODUCTION NOS. 188-190
`Request for Production Nos. 188-190 seek documents relating to potential non-
`infringing alternatives to Finjan’s asserted patents. Non-infringing alternatives to the
`asserted patents are relevant to a damages analysis, as a potential licensee of a patent may
`not pay more for a license than it would take to implement a non-infringing alternative to
`the patent. See, e.g., Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1571-72 (Fed. Cir. 1996)
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`(defendant “would have been in a stronger position to negotiate for a lower royalty rate
`knowing it had a competitive noninfringing device ‘in the wings.’”); MobileMedia Ideas,
`LLC v. Apple Inc., 209 F. Supp. 3d 756, 766 (D. Del. 2016) (“The existence of a non-
`infringing alternative may be relevant to the determination of a royalty rate.”). Given that
`the asserted patents have been litigated numerous times by Finjan, prior defendants in
`those cases undoubtedly disclosed a number of non-infringing alternatives to the asserted
`patents. Producing documents disclosing such non-infringing alternatives would not be
`overly burdensome for Finjan, nor can Finjan legitimately argue that such documents are
`irrelevant. Indeed, information responsive to these Requests would be found in Finjan’s
`and the prior defendants’ trial testimony, expert reports, and expert depositions. And, if
`Finjan itself was aware of a non-infringing alternative to its asserted patents that no other
`defendants has yet uncovered (including ESET), failure to produce documents identifying
`such a non-infringing alternative would be nothing short of fraud.
`Finjan’s arguments as to relevancy are misplaced as non-infringing alternatives
`have long been explicitly part of a hypothetical negotiation analysis in patent cases, and
`as such, the requested documents are relevant. Nor does Finjan explain how a prior
`defendant’s identification of a non-infringing alternative to a patent asserted in this case
`constitutes that defendant’s confidential information.
`II.
`FINJAN’S STATEMENT
`Issue No. 1 (Interrogatory No. 4): Finjan adequately responded to Eset’s unduly
`burdensome and overreaching Interrogatory No. 4, which seeks Finjan’s validity
`positions in a chart format that describes “a substantive, particularized description of how
`and why” Eset’s asserted prior art does not disclose specific elements with citations to the
`specific portions of the asserted art and documents. Martinez Decl., Ex. 1. When Eset
`served this interrogatory, Eset had asserted at that time approximately 39 prior art
`references, and its invalidity contentions contained approximately 45 claim charts
`(excluding the ‘305 Patent) that contained no analysis.1 Thus, the interrogatory was
`
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`1 Eset’s supplemental invalidity charts, served on June 1, 2018 and after Finjan’s
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`improper as being compound with numerous multiple subparts. Just the charting request
`portion of the interrogatory contained three subparts. It is unduly burdensome to seek
`Finjan to provide numerous “rebuttal” charts and further to seek explanations that are the
`subject of expert opinions. Apple Inc. v. Wi-LAN Inc., 2018 WL 733740, at *5 (S.D. Cal.
`Feb. 6, 2018) (ordering supplement to validity interrogatory, but finding request for
`charts unduly burdensome). Interrogatories cannot be transformed into expert opinion
`disclosures, particularly where Eset bears of the burden by clear and convincing evidence
`of demonstrating anticipation and obviousness under 35 U.S.C. § 102 and 103. Id.
`Finjan will provide rebuttal expert opinions consistent with the Court’s schedule.
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`Eset cannot demand that Finjan respond to an interrogatory with details rebutting
`Eset’s contentions, when the interrogatory response is premised on details that Eset’s
`contentions did not provide. As noted in Finjan’s response to Interrogatory No. 4, Eset’s
`invalidity contentions and supplemental contentions contained charts that merely paste
`images and quotes from various references and were void of any analysis of how the
`images and quotes applied to the claim language. Martinez Decl., Ex. 1at 29-30. Thus,
`Eset’s limited disclosures did not give Finjan notice of Eset’s invalidity contentions, and
`certainly not the level of detail that would permit any further response to Interrogatory
`No. 4. See generally Martinez Decl., Ex. 4. Finjan’s response identified this issue in its
`interrogatory response. Id. citing Slot Speaker Techs., Inc. v. Apple, Inc., 2017 WL
`235049, at *5 (N.D. Cal. Jan. 19, 2017) (finding insufficient invalidity contentions that
`merely pasted quotes and/or images from prior art references). Because Eset did not
`include a “substantive, particularized description of how and why that element is not
`satisfied, including citation to specific portions of prior art” or the identification of
`supporting source code modules—all of which Eset seeks from Finjan in Interrogatory
`No. 4, Finjan could not provide a response that rebutted Eset’s contentions with such
`
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`Response to Interrogatory No. 4 was due, contain approximately 42 claims charts and 36
`different asserted prior art references. Eset also identified between approximately 80-130
`“Additional Prior Art” references per patent, with no explanation as to the purpose of
`these references. Martinez Decl., Ex. 3. Eset’s supplemental invalidity contentions
`suffered from the same limited disclosures. Martinez Decl., Ex. 4.
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`information. Finjan also responded that there was no disclosure of a reasonable
`motivation to combine prior art references and that Eset was “impermissibly relying on
`hindsight,” which directly rebuts Eset’s obviousness contentions under 35 U.S.C. § 103.
`Martinez Decl., Ex. 1 at 30.
`
`Moreover, Eset cannot shift its burden of proof of invalidity to Finjan by
`attempting to force Finjan to bear the burden of proving “validity.” As cited in Finjan’s
`response, Finjan’s issued patents have the presumption of validity granted to patents. It is
`unduly burdensome and there is nothing under the Federal Rules or Local Patent Rules,
`that requires Finjan to provide validity charts or the type of expert opinions explanations
`that Eset is seeking. Friskit, Inc. v. Real Networks, Inc., 2006 WL 1305218, at *2 (N.D.
`Cal. May 11, 2006) (“There is nothing in the Local Rules or Fed.R.Civ.P. that require
`[plaintiff] to provide a validity claim chart.”). Notwithstanding the objectionable nature
`of Eset’s interrogatory, Finjan provided a response based on the limited disclosures that
`Eset has made regarding its invalidity contentions. Eset’s asserted prior art references are
`either the subject of or cumulative of the numerous unsuccessful invalidity challenges
`before various District Courts, the Federal Circuit and the Patent Office. Thus, Finjan
`identified its positions it has on Eset’s asserted art. In its Interrogatory No. 4 response
`(which incorporates its response to Interrogatory No. 3), Finjan identified numerous inter
`partes reviews, district court cases and Federal Circuit decisions that all ultimately
`confirmed the validity of Finjan’s Asserted Patents. Martinez Decl., Ex.1at 19-27.
`Information regarding these validity decisions are public. Finjan also has and/or will
`produce(d) its expert reports regarding validity and validity contentions from prior
`actions involving Finjan’s Asserted Patents —which concern the same or cumulative art
`that Eset relies on here.2 Martinez Decl., ¶ 16 . Thus, Finjan provided its position
`regarding Eset’s prior art, despite not having details about Eset’s invalidity contentions,
`and identified documents that disclosed such information.
`
`
`2 In fact, Eset even incorporates by reference invalidity contentions and prior art served
`in prior litigations, as well as prior art from various IPRs, which Finjan produced in this
`case. Martinez Decl., Ex. 5, 6/1/18 Eset’s Third Am. Invalidity Contentions at 8.
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`SPH America, LLC v. Huawei Techs., Co. 3:13-cv-02323-CAB-KSC (S.D. Cal.
`Aug. 16, 2018), Dkt. No. 189, does not support Eset’s request for claim charts because
`Eset’s interrogatory here requests far more contention information than the factual
`information sought in SPH America. Compare Martinez Decl., Ex. 1, Eset Interrogatory
`No. 4 with SPH America, Dkt. No. 189 at 2 (interrogatory requesting on claim by claim
`basis “all facts and documents that support any [validity] contention” and identification
`of persons with knowledge)3. Finjan’s response here that cites specific factual
`information demonstrating the validity of the asserted claims satisfies this requirement.
`
`Finally, Eset cannot compare infringement and validity, which implicate different
`burdens of proof. Eset filed counterclaims for declaratory judgments of non-infringement
`of the asserted patents (see Dkt. No. 118 at 225-28) and therefore has the burden of proof
`of non-infringement, where Finjan did not assert a claim of validity. Further, Finjan’s
`asserted patents are presumed valid and Eset bears the burden of proof on invalidity.
`Such a presumption does not exist for infringement. As such, Courts distinguish between
`non-infringement and validity with respect to motions to compel. Courts have found that
`defendants, like Eset here, are in a unique position for infringement purposes as they
`possess the facts regarding the functionality of their own products, such that charting
`non-infringement is appropriate. This is unlike the validity context, where neither party
`has a better understanding of whether the prior art discloses all of the claim elements,
`such that validity contentions are unduly burdensome. Implicit Networks, Inc. v. Juniper
`Networks, Inc., 3:10-cv-4234, Dkt. No. 92 at 2 (N.D. Cal. June 6, 2012) (denying motion
`to compel response to interrogatory seeking validity contentions as unduly burdensome).
`Issue No. 2 (Interrogatory No. 6): Eset’s unduly burdensome and compound
`Interrogatory No. 6 similarly seeks to impose on Finjan a burden with respect to a priority
`date chart that far exceeds reasonable and appropriate discovery. Finjan provided a
`reasonable response to Interrogatory No. 6, specifically identifying the priority date for
`
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`3 Amgen Inc. v. Sandoz Inc., 2017 WL 1352052, at *3 (N.D. Cal. Apr. 13, 2017) (request
`for “every fact” re: validity unduly burdensome and or only “material” facts).
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`each asserted patent, document citations, and incorporates its infringement contentions
`that identify the relevant priority dates. Martinez Decl., Ex. 1 at 33-35. Charts would not
`lead to the discovery of admissible discovery, as Finjan has provided the relevant
`information regarding priority and Eset has had an opportunity to depose Finjan’s
`inventors. Indeed, this is why there is no requirement in the Patent Local Rules that
`Finjan provide the claim charts Eset is seeks. Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316, 1328 (Fed. Cir. 2008) does not support Eset’s position because it
`addresses which party bears the ultimate burden of proof to establish a disputed priority
`date, and says nothing to suggest that the claim charts Eset seeks are required for an
`interrogatory response. Id. Finjan provided the factual basis for the applicable priority
`date, and to the extent Eset wants more, that is the subject of expert opinion.
`Issue No. 3 (Interrogatory No. 11; RFP Nos. 157 and 160): Eset seeks in these
`