Network Protection Sciences, LLC v. Juniper Networks, Inc. et al

Filing 195

ORDER GRANTING MOTION FOR ISSUANCE OF LETTERS ROGATORY by Hon. William Alsup granting 192 Motion for Issuance of Letters Rogatory. (Attachments: # 1 Appendix Alsop, # 2 Appendix Adkins, # 3 Appendix Lamb, # 4 Appendix Elguindi, # 5 Appendix Flint, # 6 Appendix Zachariassen, # 7 Appendix Mackintosh)(whalc1, COURT STAFF) (Filed on 4/24/2013)

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FMICHAEL CUKOR (NY Bar No. 3935889)
GIBBONS P.C.
One Pennsylvania Plaza, 37th Floor
New York, New York 10119-3701
Tel: [phone]
Fax: [phone]
Email: [e-mail]
VINCENT E. MCGEARY (NJ Bar No. 041681991)
GIBBONS P.C.
One Gateway Center
Newark, NJ 07102-5310
Tel: [phone]
Fax: [phone]
[e-mail]
JILL F. KOPEIKIN (CA Bar No. 160792)
VALERIE M. WAGNER (CA Bar No. 173146)
GCA LAW PARTNERS LLP
1891 Landings Drive
Mountain View, CA 94043
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
Attorneys for Plaintiff
Network Protection Sciences, LLC

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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NETWORK PROTECTION SCIENCES,
LLC
Plaintiff,
vs.

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No. 3:12-CV-01106-WHA
LETTERS OF REQUEST FOR
INTERNATIONAL JUDICIAL
ASSISTANCE (LETTERS
ROGATORY)– GLENN
MACKINTOSH

FORTINET, INC.
Defendants.

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GCA Law Partners LLP
1891 Landings Drive
Mountain View, CA 94043
[phone]

LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE– GLENN
MACKINTOSH; CASE NO. 3:12-CV-01106-WHA

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The United States District Court for the Northern District of California presents its

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compliments to the appropriate judicial authority of Canada, and requests judicial assistance

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to obtain evidence to be used in a civil proceeding before this Court in the above-captioned

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matter. A trial on this matter is scheduled to commence on September 30, 2013, in San

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Francisco, State of California, United States of America.

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This Court requests the assistance described herein as necessary in the interests of

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justice. The assistance requested is that the appropriate judicial authority of the Ontario

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Superior Court of Justice, or such other Court as may be applicable, compel the appearance

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of the individual identified below to appear for an oral deposition and to produce documents.

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A.

Name of Witness

Glenn Mackintosh, resident of Toronto, Ontario, Canada.
B.

Nature of the Action and This Court’s Jurisdiction

This matter is an action for infringement of United States Patent No. 5,623,601 (“the
‘601 Patent”) brought by Plaintiff Network Protection Sciences LLC (“NPS”) against
Defendant Fortinet Inc. (“Fortinet”). (Eastern District of Texas Docket No. 1). The matter
was transferred from the Eastern District of Texas to this Court under Title 28, Section

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1404(a), of the United States Code on March 6, 2012, and is now pending in this Court
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before the undersigned United States District Court Judge. (See Docket No. 123).
As a patent infringement matter, this case arises under the patent laws of the United
States, Title 35 of the United States Code. This Court has subject matter jurisdiction over
this case pursuant to Title 28, Sections 1331 and 1338, of the United States Code.
C.

The Relevant Facts and Witnesses

Defendant Fortinet’s defenses in this action include an assertion that the ‘601 Patent

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network firewall product from Border Network Technologies, Inc. (“BTNi”), a company

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located in Ontario, Canada, which was subsequently acquired by WatchGuard Technologies,

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GCA Law Partners LLP
1891 Landings Drive
Mountain View, CA 94043
[phone]

is invalid in light of prior art. In particular, Fortinet contends inter alia that a computer

is prior art to and invalidates the ‘601 patent. This firewall product was known as the

LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE– GLENN
MACKINTOSH; CASE NO. 3:12-CV-01106-WHA

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JANUS Firewall Server, and later as BorderWare (the “JANUS/BorderWare Prior Art

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Product”).

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Fortinet has identified non-party witnesses believed to have information relevant to

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the allegedly invalidating JANUS/BorderWare Prior Art Product. Mr. Mackintosh is among

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those witnesses, and is located in the Province of Ontario, Canada. Based upon Fortinet’s

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contentions, Mr. Mackintosh is believed to have information pertinent to the conception and

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reduction to practice of the JANUS/BorderWare Prior Art Product that Fortinet contends

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invalidates the patent-in-suit. Fortinet contends that Mr. Mackintosh and other Border

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Network engineers conceived of the idea for the firewall product, that he personally

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developed a proof of concept for it within weeks, and that and another engineer named
Steven Lamb immediately began outlining the concept and writing the underlying source
code for the software.
Fortinet specifically contends that Mr. Mackintosh will explain at trial that the May
1994 version of the source code for the JANUS/BorderWare Prior Art Product contained

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specific kernel modifications and proxy code that enabled the firewall to operate in a manner
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that Fortinet contends anticipates and/or renders obvious the inventions claims by the ’601
Patent. In particular, Fortinet contends that Mr. Mackintosh “will testify” at trial that: “he
developed a proof of concept for [the JANUS/BorderWare Prior Art Product] within weeks”
and “that modification to the [source code for the JANUS/BorderWare Prior Art Product]
was very simple and only required changes to a few lines of code in a few modules and that

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most of the coding was adapting the existing Unix-based operating system and various

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readily available proxy processes for common applications.” Fortinet further contends that

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Mr. Mackintosh and others contributed posts to an electronic bulletin board concerning

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firewall technology that disclosed information concerning the JANUS/BorderWare Prior Art

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Product in 1994.

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GCA Law Partners LLP
1891 Landings Drive
Mountain View, CA 94043
[phone]

LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE– GLENN
MACKINTOSH; CASE NO. 3:12-CV-01106-WHA

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These assertions by Defendant Fortinet, if true, may impact the enforceability of the

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‘601 Patent and may serve as a defense to the pending claim against Fortinet for infringement

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thereof.

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D.

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These letters have been issued based upon the following criteria:

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Basis for the Issuance of These Letters Rogatory

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The discovery requested is relevant.

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The evidence sought by the letters rogatory is necessary for trial and intended to be

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adduced at trial, if admissible. This required evidence is relevant to the American proceeding

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in that it is anticipated to have bearing on a central defense – invalidity of the patent at issue –

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to the Plaintiff’s primary cause of action for patent infringement.

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2.

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The discovery requested does not violate the laws of civil
procedure of the Canadian court, particularly as they concern
third parties.

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The Ontario Court may properly authorize the witness to provide the responsive

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evidence, if any, pursuant to Section 60 of the Ontario Evidence Act and consistent with Rule

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31.10 of the Rules of Civil Procedure.

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3.

This Court is a Court of law before which the captioned matter
is pending and has the power under its enabling statues and
rules to direct the taking of evidence abroad.

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Pursuant to United States Federal Rule of Civil Procedure 28(b)(2), a deposition may

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rogatory.’” This Court has the inherent authority to issue letters rogatory. See United States

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v. Reagan, 453 F.2d 165, 172 (6th Cir. 1971); United States v. Staples, 256 F.2d 290, 292

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(9th Cir. 1958). Under governing United States law, a letter rogatory can also include

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requests for the production of documents. See Reagan, 453 F.2d at 168 (affirming district

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court’s issuance of letters rogatory seeking documents relating to an investigation conducted

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GCA Law Partners LLP
1891 Landings Drive
Mountain View, CA 94043
[phone]

be taken in a foreign country “under a letter of request, whether or not captioned a ‘letter

by German authorities).

LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE– GLENN
MACKINTOSH; CASE NO. 3:12-CV-01106-WHA

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A court’s decision whether to issue a letter rogatory requires an application of United

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States Federal Rule of Civil Procedure, Rule 28(b), in light of the scope of discovery

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provided for by the Federal Rules of Civil Procedure. See Evanston Ins. Co. v. OEA, Inc.,

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No. CIV S-02-1505 DFL PAN, 2006 WL 1652315 at* 2 (E.D. Cal. June 13, 1990) (stating

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that Rule 28(b) “must be read together” with Rule 26(c) in determining whether to issue letter

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rogatory); see also DBMS Consultants Ltd. v. Computer Assocs. Int’l, Inc., 131 F.R.D. 367,

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369-70 (D. Mass. 1990); B & L Drilling Elecs. v. Totco, 87 F.R.D. 543, 545 (W.D. Ok.

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1978).

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This Court has considered the Unopposed Administrative Motion for Issuance of
Letters Rogatory (the “Motion”, Northern District of California Docket No. 192, including
the Declaration of Jill F. Kopeikin in support thereof, Docket No. 192-1), and has found that
the evidence requested is well within the scope of the discovery sanctioned by the Federal
Rules of Civil Procedure and would be permitted in this action. Accordingly, upon the
Motion and finding good cause therefore, this Court has granted the Motion and issued these

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letters. S
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4.

Reciprocity.

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This Court has the authority to reciprocate by granting enforcement of letters
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rogatory properly issued by an authorized Canadian court.
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5.

The witness from whom the American court desires testimony
resides within the Canadian Court's jurisdiction.

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Mr. Mackintosh is an individual residing in Toronto, Ontario, Canada.
6.

The order sought is needed in the interest of justice.

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GCA Law Partners LLP
1891 Landings Drive
Mountain View, CA 94043
[phone]

As discussed above, Defendant Fortinet contends that the witness, Mr. MacKintosh,
worked on and has knowledge of the conception and reduction to practice of a product that
constitutes prior art that would invalidate the patent-in-suit. In particular, Fortinet contends
that that Mr. Mackintosh will testify at trial that he and other BTNi engineers conceived of

LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE– GLENN
MACKINTOSH; CASE NO. 3:12-CV-01106-WHA

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the idea for the firewall product, that he personally developed a proof of concept for it within

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weeks, and that he and another engineer named Steven Lamb immediately began outlining

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the concept and writing the underlying source code for the software.

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The evidence sought will be used at trial if admissible.

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Defendant Fortinet has specifically indicated that it intends to introduce testimony

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from Mr. Mackintosh at trial concerning the conception and reduction to practice of the

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Janus/BorderWare Prior Art Product, upon which Fortinet will rely to argue that the ‘601

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Patent is invalid. To the extent this evidence may be used for the purposes of pre-trial

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discovery in this civil matter, the discovery should nonetheless be permitted because it would

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be unfair to require NPS to proceed to trial without the evidence, and obtaining the evidence

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would not entail unreasonable expense or unfairness to the non-party. Permitting such

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discovery will not infringe on Canadian sovereignty and justice demands the examination.

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8.

The witness is not required to undergo a broader form of
inquiry than he would if he were subject to discovery in the
United States.

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Under the Rules 26, 28 and 34 of the United States Federal Rules of Civil Procedure,

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non-party witnesses may be required to provide oral testimony at deposition and to produce

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documents in the possession, custody or under the control of the witness the subject of

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discovery seeking evidence insofar as the evidence constitutes non-privileged matter that is

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relevant to any party's claim or defense.

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NPS seeks testimony specifically relevant to this action, including the conception,

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reduction to practice, implementation, adoption and publication of information about the

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Janus/BorderWare Prior Art Product. The related requests for documents, as set forth below,

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are specifically calculated to obtain such evidence. An additional request seeks discovery of

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communications with Fortinet (including its counsel or representatives) concerning the ‘601

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Patent or this lawsuit, which is warranted insofar as Fortinet identified this witness in its

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GCA Law Partners LLP
1891 Landings Drive
Mountain View, CA 94043
[phone]

invalidity contentions as one who “will testify” at trial.
LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE– GLENN
MACKINTOSH; CASE NO. 3:12-CV-01106-WHA

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9.

The evidence cannot be secured except by the intervention of the
Canadian courts.

Insofar as the witness is a resident of Canada, this Court has no jurisdiction over and
cannot compel the witness to submit evidence. Nor does this Court have any authority to
order the taking of evidence in Canada. However, the Canadian court has the jurisdiction to
do so and pursuant to Section 60 of the Ontario Evidence Act and consistent with Rule 31.10
of the Rules of Civil Procedure may give the Letters Rogatory effect. See AstraZeneca v.

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Wolman, [2009] O.J. No. 5344.
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For the foregoing reasons, this Court hereby issues these letters rogatory authorizing
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the taking of oral evidence from Glenn Mackintosh and the pursuit of the production of
documentary evidence in his custody and control as follows:
TESTIMONY

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If acceptable to the governing Canadian authority, (1) Each of the witnesses shall be

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required to sit for deposition for no longer than seven (7) total hours, and both the Plaintiff

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and the Defendant will be limited to 50% of that hourly total; and

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(2) Counsel for Plaintiff and Defendant shall conduct themselves consistent with the

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Federal Rules of Civil Procedure of the United States, as well as any Local Rules and

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Standing Orders governing the above-captioned case.

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REQUESTS FOR PRODUCTION OF DOCUMENTS
Request No. 1: All documents relating to the conception, reduction to practice and

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diligence in reduction to practice of the JANUS Firewall Server (the term “Janus Firewall

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Server” includes the later known BorderWare), including in particular documents relating to

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the proof of concept or the idea that, rather than creating a special dedicated piece of

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hardware, one could take an ordinary personal computer and install software that would

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turn it into a dedicated firewall.

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GCA Law Partners LLP
1891 Landings Drive
Mountain View, CA 94043
[phone]

Request No. 2: All documents relating to the development of the JANUS Firewall
Server to be “transparent,” such that the users could simply address their communication

LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE– GLENN
MACKINTOSH; CASE NO. 3:12-CV-01106-WHA

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sessions directly to the destination without considering or even being aware that the JANUS

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Firewall Server was using a proxy method which made the JANUS’ proxy operation

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“transparent” to both the sender and receiver of the packets.

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Request No. 3: All documents relating to the development of source code for or used

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in or by the JANUS FireWall Server or modifications to the kernel of the operating systems

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to disable IP forwarding.

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Request No. 4: All documents relating to modifications to the BSDi Unix source

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code to disable IP forwarding and route everything up to the application layer on the firewall,

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to adapt existing Unix-based operating system and various readily available proxy processes

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for common applications such as FTP, Telnet, HTTP, Gopher, and Ping, for example.
Request No. 5: All documents relating to posts to the Great Circle Firewall

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electronic bulletin board describing the JANUS firewall development or the JANUS

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FireWall Server product.

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Request No. 6: All prior art that may invalidate U.S. Patent No. 5,623,601 (“the
‘601 patent”).
Request No. 7: All communications between you, Glenn Mackintosh, and Fortinet,
including in particular, counsel for Fortinet or concerning conception or reduction to practice
of the JANUS Firewall Server or the ‘601 Patent.
For the foregoing reasons, these letters rogatory hereby issue.
IT IS SO ORDERED
This order is without prejudice to possible objections by the respondent that the discovery requests
Dated:
_____________________________
are overbroad and burdensome, which objections will be heard in due course by the Canadian
courts.
United States District Court Judge

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Date: April 23, 2013.

_______________________________
William Alsup
United States District Judge

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GCA Law Partners LLP
1891 Landings Drive
Mountain View, CA 94043
[phone]

LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE– GLENN
MACKINTOSH; CASE NO. 3:12-CV-01106-WHA

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