Finjan, Inc. v. ESET, LLC et al

Filing 337

ORDER on Discovery Disputes Re: ESET's Interrogatories 4 and 6. Signed by Magistrate Judge Bernard G. Skomal on 10/3/2018.(anh)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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FINJAN, INC.,

Case No.: 17CV183 CAB (BGS)
Plaintiff,

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v.

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ORDER ON DISCOVERY DISPUTES
RE: ESET’S INTERROGATORIES 4
AND 6

ESET, LLC and ESET SPOL. S.R.O.,
Defendants.

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This Order addresses two discovery disputes currently pending before the Court,

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ESET’s Interrogatory Nos. 4 and 6 to Finjan. Each has been raised by the parties,

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discussed during a discovery conference, and briefed in joint statements. (ECF 300.)1

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The Court rules as set forth below as to each.

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There are additional discovery disputes raised in this joint statement that the Court will
address separately.
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17CV183 CAB (BGS)

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DISCUSSION
I.

Interrogatories 4 and 6
ESET seeks further responses to two of its contention interrogatories.

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Interrogatory No. 4 seeks very specific information in a chart regarding Finjan’s positions

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on ESET’s positions on invalidity of the patents-in-suit. Interrogatory No. 6 seeks a chart

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providing priority dates on a claim-by-claim basis with mapping of each claim element to

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the portions of the specification in support.

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The Federal Rules of Civil Procedure provide that “[p]arties may obtain discovery

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regarding any non-privileged matter that is relevant to any party’s claim or defense and

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proportional to the needs of the case, considering the importance of the issues at stake in

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the action, the amount in controversy, the parties’ relative access to relevant information,

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the parties’ resources, the importance of the discovery in resolving the issues, and

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whether the burden or expense of the proposed discovery outweighs its likely benefit.”

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Fed. R. Civ. P. 26(b)(1). District courts have broad discretion in determining what is

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relevant. Facedouble, Inc. v. Face.com, No. 12cv1584 DMS (MDD), 2014 WL 585868,

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at *1 (S.D. Cal. Feb. 13, 2014). And, the 2015 Amendments to Rule 26 made clear that

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“[r]elevancy alone is no longer sufficient—discovery must also be proportional to the

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needs of the case.” In re Bard IVC Filters Prods. Liability Litig., 317 F.R.D. 562, 564)

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D. Ariz. 2016). Limits on discovery may be issued where the “burden or expense

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outweighs the likely benefits.” Facedouble, Inc., 2014 WL 585868, at *1 (citing Fed. R.

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Civ. P. 26(b)). “The court’s responsibility, using all the information provided by the

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parties, is to consider these, [undue burden or expense and importance of information

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sought,] and all the other factors in reaching a case-specific determination of the

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appropriate scope of discovery.” Fed. R. Civ. P. 26 advisory committee’s notes.

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“An interrogatory may relate to any matter that may be inquired into under Rule

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26(b).” Fed. R. Civ. P. 33(a)(2). “Each interrogatory must, to the extent it is not objected

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to, be answered separately and fully in writing under oath.” Rule 33(b)(3).

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Interrogatories that seek an opposing party’s contentions on a topic within the scope of
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Rule 26(b) are permitted. Fed. R. Civ. P. 33(a)(2) (“An interrogatory is not objectionable

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merely because it asks for an opinion or contention that relates to fact or the application

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of law to fact.”) Contention interrogatories are generally distinguished by, as the name

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suggests, their request for an opposing party to state its position, or contention, on a

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particular point. See In re Grand Casinos Inc. Sec. Litig., 181 F.R.D. 615, 618 (D. Minn.

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1998). They may also ask the opposing party to identify the facts, law, or evidence

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supporting the party’s contention. Id. Among other reasons, contention interrogatories

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are used to “narrow the issues that will be addressed at trial and to enable the

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propounding party to determine the proof required to rebut the respondent’s position.”

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Former S’holders of Cardiospectra, Inc. v. Volcano Corp., Case No. 12-CV-1535-WHO,

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2013 WL 5513275, * 1 (N.D. Cal. 2013) (quoting Lexington Ins. Co. v. Commonwealth

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Ins. Co., C98-3477CRB (JCS), 1999 WL 33292943, *7 (N.D. Cal. Sept. 17, 1999)).

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They are often considered more appropriate after substantial discovery is completed. Id.

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at *2.
Interrogatory No. 4 – Invalidity Positions

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A.

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ESET’s Interrogatory No. 4 seeks Finjan’s contentions regarding ESET’s

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invalidity contentions. It broadly seeks “all legal and factual bases” for Finjan’s

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contention that a claim is valid and very specifically requests the answer in the form of a

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claim chart broken out by each claim element Finjan contends is not covered by the prior

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art identified by ESET, a particularized description of how and why it is not covered with

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citation to specific portions of prior art, and “all Documents and Things” in support. It

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requests the response include a complete explanation for any disagreements with ESET’s

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invalidity contentions.

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ESET argues the interrogatory is equivalent to a Finjan interrogatory seeking

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ESET’s position on which elements of the asserted claims were not practiced by ESET’s

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accused products and seeks the response in a similar chart format. In essence, ESET

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argues Finjan should have to provide the same level of detail explaining its position with

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regard to ESET’s invalidity contentions as Finjan demanded of ESET regarding its

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position on Finjan’s infringement contentions.

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Finjan has responded to the interrogatory, incorporating its response to

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Interrogatory No. 3 which includes citation of prior decisions of the Patent Office, district

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court, and Federal Circuit decisions addressing the validity of the patents-in-suit.

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Finjan’s response also indicates that it disagrees that any of the alleged prior art

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references invalidates any element of the asserted claims.2 Finjan argues the detail

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demanded and the chart format is unduly burdensome, seeks explanations that are the

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subject of expert opinions that will be provided later, and that it cannot provide a detailed

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response to ESET’s invalidity contentions when the underlying invalidity contentions

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ESET seeks a response to are not detailed enough to permit the response demanded.

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Finjan also argues the interrogatory is compound with numerous subparts and improperly

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shifts the burden of proof on validity to Finjan.

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As a threshold issue, Finjan argues that requiring it to explain why its patents are

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valid shifts the burden of proving invalidity, ESET’s burden, to Finjan. However,

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importantly “[t]he ultimate burden of invalidity . . . does not dictate the scope of

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discovery. SPH Am., LLC v. Research in Motion, Ltd., No. 13CV2320 CAB (KSC),

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2016 WL 6305414, at *2 (S.D. Aug. 15, 2016) (quoting Rule 26(b)(1) regarding scope of

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discovery). If ESET is able to present a prima facie case of invalidity, Finjan would need

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to present rebuttal evidence as to validity. Innovative Scuba Concepts, Inc. v. Feder

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Indus., 26 F.3d 1112, 1115 (Fed. Cir. 1994). To the extent ESET has set out its position

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on invalidity, it is essentially asking for Finjan’s rebuttal positions. That ESET always

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has the burden of proving invalidity, does not mean Finjan’s positions on validity are not

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relevant or potentially within the scope of permissible discovery. See Apple, Inc. v. Wi-

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LAN Inc., Case No. 14CV2235 DMS (BLM), 2018 WL 733740, at *5 (S.D. Cal. Feb. 6,

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The Court is not addressing any objections that haven not been specifically raised with
the Court.
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2018) (“not required to establish a prima facie case of invalidity before . . . seeking

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discovery on . . . validity contentions”). However, as noted above, relevance alone is not

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sufficient, the discovery sought must also be proportional to the needs of the case.

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Interrogatory No. 4 is overbroad. As the Court explained in a prior order on an

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interrogatory propounded by Finjan, asking the opposing party to “identify all legal and

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factual bases” and for “all documents and things in support” of a position is overly broad

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and unduly burdensome. (March 23, 2018 Order on Finjan’s Interrogatory No. 6 at 5.)

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In addition to the additional limitations set forth below, the Court narrows this

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interrogatory to only require Finjan to state the principal and material factual and legal

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bases for its positions. (Id.)

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As to whether the interrogatory is unduly burdensome based on the format and

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specificity required, the parties principally rely on two cases., SPH Am., LLC v. Research

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in Motion and Apple, Inc. v. Wi-LAN. SPH Am., LLC, 2016 WL 6305414, at *1-3; Apple,

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2018 WL 733740, at *5.3 However, the interrogatories in these cases did not request a

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response as detailed as that demanded by ESET here and, even though both courts

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required a complete response to less burdensome interrogatories, neither required a

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response in a chart. SPH Am., 2016 WL 6305414, at *1-2 (requiring complete

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explanation for any disagreements with defendant’s invalidity contentions, but not in a

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chart); Apple, 2018 WL 733740, *5 (requiring “comprehensive responses to these

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interrogatories, including the factual and legal bases for . . . validity contentions,” but

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denying claim charts for each asserted prior art reference for each asserted claim as

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unduly burdensome).4

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The parties cite other cases in their briefing on this interrogatory, but those cases
address different issues.
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Friskit v. Real Networks, also found a plaintiff was not required to produce and elementby-element validity claim chart, but relied primarily on the absence of a requirement for
it under the Patent Local Rules and the presumption of validity addressed above. No. C
03-5085 WWS (MEJ), 2006 WL 1305218, at *2 (N.D. Cal. May 11, 2006).
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The Court finds this interrogatory unduly burdensome both in terms of the format

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required as well as the specificity demanded, particularly given the response is in rebuttal

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to ESET’s invalidity contentions. The Court finds requiring this particular response in a

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chart unduly burdensome. Apple, 2018 WL 73374, at *5 (finding creation of claim charts

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for each of 63 asserted prior art references and for each asserted claim of six patents-in-

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suit). ESET’s only argument in support of this format is that Finjan requested ESET’s

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response regarding non-infringement in the same format. As discussed below,

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substantively, there is some difference between the two, but the point is well taken. In

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attempting to resolve the many discovery disputes that have arisen in this case, the

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burdensome nature of both parties’ discovery requests has become apparent. Although,

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there can be important distinctions and the Court must address the issues as they arise, the

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parties should be cautious in demanding more from each other than they would be willing

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to respond to themselves. That said, the chart format adds a layer of burden to an already

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very burdensome interrogatory without sufficient benefit to justify it.

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The information demanded is itself unduly burdensome. As noted above, in the

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cases the parties rely on, the courts were ordering parties to explain their disagreements

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with the opposing parties’ invalidity contentions or to provide comprehensive responses

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explaining the factual and legal bases for its validity contentions. Here, ESET is

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demanding a substantive and particularized explanation on an element-by-element basis

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with citation to specific portions of prior art and, as relevant, source code modules. Even

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if not in a chart, this level of detail is unduly burdensome. Additionally, the burden is

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exacerbated by ESET’s invalidity contentions, the basis for Finjan’s response. Rather

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than explaining why they are sufficient for purposes of Finjan’s response, ESET argues

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Finjan cannot raise the insufficiency of ESET’s invalidity contentions because it failed to

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timely move to strike them. However, the issue here is not the sufficiency of the

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invalidity contentions independently, an issue not raised by the parties or addressed by

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the Court. The issue is not even whether the invalidity contentions are clear enough that

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Finjan is capable of providing the very specific response ESET demands in response to
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them, itself questionable. The issue is whether responding to them, and specifically as

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ESET demands, is too burdensome given the benefit. Fed. R. Civ. P. 26(b)(1) (“whether

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the burden or expense of the proposed discovery outweighs its likely benefit.”). As

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discussed above, knowing Finjan’s positions on ESET’s invalidity positions is relevant

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for rebuttal purposes, however, the benefit of it is not great enough to justify responding

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with this level of detail and analysis when the underlying contentions lack a similar level

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of specificity or analysis of ESET’s positions that Finjan could respond to. The rebuttal

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to ESET’s positions on invalidity is necessarily limited by what it is rebutting.

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Finjan’s similar interrogatory to ESET as to non-infringement does not alter the

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Court’s conclusion that as propounded, Interrogatory No. 4 is unduly burdensome and

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overbroad. One of ESET’s primary arguments for compelling Finjan to respond to this

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interrogatory is that Finjan propounded a similar interrogatory on it with regard to its

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positions on infringement. Finjan argues that asking its positions regarding invalidity

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based on prior art (others’ products or technologies) identified by ESET, is not

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comparable to Finjan asking ESET’s position regarding infringement as to its own

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products or technologies. Although the Court recognizes the persuasiveness of an

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argument that that parties should not propound burdensome discovery unless they are not

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willing to respond to the same, ESET’s demands for Finjan’s positions on invalidity are

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not equivalent to Finjan’s demands from ESET regarding infringement. As one court

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explained, “unlike the non-infringement contentions . . . which hinge on . . . insight into

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and understanding of the functionality of its own products – neither side has a better

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understanding of how or whether prior art references and combinations asserted by . . .

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disclose each of the claim elements at issue here.” Implicit Networks, Inc. v. Juniper

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Networks, Inc., No. C 10-04234 SI, at 2 (N.D. Cal. June 6, 2012). Requiring Finjan to

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explain why claim elements are valid over all the prior art cited by ESET is more

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burdensome than ESET identifying why its own products do not infringe.

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The Court’s conclusion that this interrogatory is unduly burdensome as

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propounded does not mean no further response is required. As noted above, Finjan’s

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rebuttal positions on invalidity are relevant. Additionally, given the litigation history of

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Finjan’s patents, Finjan is likely to have some insight into the validity of its patents over

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prior art.

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Finjan has provided ESET some information by reference to numerous decisions

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on these patents in federal courts and before the Patent Office, presumably attempting to

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set forth its positions on the validity of the patents over prior art. However, it is not clear

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that Finjan has explained which of these decisions address which prior art cited by ESET

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or if Finjan has other principal and material factual and legal bases for its positions that

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the patents-in-suit are valid over the cited prior art other than the conclusions reached in

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these decisions. To the extent it has not, Finjan should provide ESET with any validity

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decisions that address the prior art cited by ESET for the patents-in-suit, indicating which

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decisions correspond to which cited prior art. Additionally, Finjan should attempt to

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explain the principal and material factual and legal bases for it position that the patents-

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in-suit are not invalid based on the prior art cited by ESET. It need not be in a chart or as

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detailed as the interrogatory demands. Rather, Finjan need only explain its rebuttal

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positions to the invalidity positions provided by ESET. The Court recognizes that the

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response will necessarily be limited depending on the specificity or vagueness of the

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underlying invalidity contentions.

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The response also is not required to include any analysis requiring an expert

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opinion. “[I]interrogatories are improper where they ask the respondent to provide expert

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opinion.” Amgen, 2017 1352052, at *2 (citing Montgomery v. Wal-Mart Stores, Inc.,

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2015WL 11233384, at *6 (S.D. Cal. July 17, 2015)); Amgen Inc. v. Sandoz, Inc., No. 14-

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cv-4741-RS (MEJ), 2017 WL 1352052, at *2(N.D. Cal. April13, 2017) (finding

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interrogatories not improper “to the extent they seek only facts, not how an expert would

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construe those facts.”). Neither party has explained why expert opinion would or would

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not be necessary to respond to this interrogatory. The Court is not going to speculate.
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Given the limited information, the Court can only indicate that to the extent Finjan can

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respond with factual information, “not how an expert would construe those facts,” and

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subject to the other limitations set by the Court above, it must. Amgen, 2017 WL

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1352052, at *2.

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Finjan shall supplement its response to Interrogatory No. 4, as set forth above, by
October 15, 2018.
Interrogatory No. 6 – Priority Dates Claim Chart

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B.

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In Interrogatory No. 6, ESET seeks all legal and factual bases and all documents

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and persons supporting Finjan’s contention the asserted claims are entitled to the priority

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dates identified in Finjan’s Amended Infringement Contentions. It specifically requires

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Finjan to provide a claim chart, based on the Court’s claim construction ruling, mapping

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each claim element of the asserted claims to the portion of the specification that supports

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that claim element and the priority date for each piece of support in the specification.

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Essentially, it requires Finjan to provide a claim-by-claim mapping of each asserted claim

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element to the portion of the specification that justifies the priority dates Finjan claims.

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ESET claims this information is relevant to its defense of invalidity based on

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anticipating prior art. ESET, relying on Technology Licensing Corp. v. Videotek, Inc.

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545 F.3d 1316, 1327 (Fed. Cir. 2008), argues that if it can meet its burden to come

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forward with evidence of prior art, Finjan will have to produce evidence that either the

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identified prior art does not invalidate the claim or that the prior art identified is not really

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prior art because the asserted claim is entitled to an earlier priority date. As to this

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second option, ESET argues Finjan will have to show why the written description of the

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earlier application supports each of the elements of the asserted claims. Hence, ESET

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claims it is entitled to a mapping of each claim element to the supporting portion of the

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specification, presumably in the earlier applications, to justify the priority date that

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precedes the prior art identified by ESET.

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Finjan does not dispute the burdens of proof set forth in Technology Licensing, but

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accurately points out that it says nothing about obtaining detailed claim charts on these

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issues via an interrogatory.5 Finjan does not argue priority dates are not relevant, but

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rather argues the interrogatory is unduly burdensome and compound, far exceeding

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reasonable and appropriate discovery. Additionally, Finjan points to everything it has

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already produced and the opportunities already provided to ESET to obtain relevant

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discovery on this point: priority dates for each asserted patent, document citations,

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infringement contentions that identify priority dates, and opportunities to depose Finjan’s

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inventors. Finjan also argues that to the extent ESET wants more, it is the subject of

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expert opinion and notes that there is no requirement under the Patent Local Rules to

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provide the claim charts ESET demands.

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As with Interrogatory No. 4, the Court must consider whether this interrogatory is

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proportional to the needs of the case. ESET has explained why the information it seeks is

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relevant to invalidity, but does not explain why such a detailed mapping is required, why

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the information has to be in this format, or explain why the information it has already

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obtained (other than priority dates by patent) are insufficient. ESET has explained why

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this information is relevant to invalidity, but being relevant is not the end of the inquiry.

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The Court must consider whether it is proportional to the needs of the case.

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Although this interrogatory is framed in terms of claim-by-claim priority dates, the

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request for mapping claim elements to particular portions of specifications, albeit to

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justify the associated priority dates, seems to make it more like some sort of written

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description contentions. And, although the Court does not find parties are absolutely

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precluded from seeking discovery in a chart format unless specified in the Patent Local

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Rules as Finjan seems to argue, the Court recognizes that demanding this level of

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specificity in a claim chart, particularly the mapping it demands, is a significant burden.

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Neither party cites any authority for obtaining or not obtaining this type of discovery.
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It, as with Interrogatory No. 4, is the type of “scorched earth,” “no stone unturned”

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(potentially numerous times) approach to discovery the changes to Rule 26 were intended

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to curb. See Roberts v Clark Cnty. Sch. Dist., 312 F.R.D. 594, 604 (D. Nev. 2016)

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(discussing the 2015 Amendments to Rule 26). Given the other avenues for discovering

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this information already provided and the burden imposed in responding to it, the Court

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finds no further response to the interrogatory is required.

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IT IS SO ORDERED.
Dated: October 3, 2018

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