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Network Protection Sciences, LLC v. Fortinet

April 24, 2013


The United States District Court for the Northern District of California presents its compliments to the appropriate judicial authority of Canada, and requests judicial assistance 3 to obtain evidence to be used in a civil proceeding before this Court in the above-captioned 4 matter. A trial on this matter is scheduled to commence on September 30, 2013, in San 5

Francisco, State of California, United States of America. 6 This Court requests the assistance described herein as necessary in the interests of 7 justice. The assistance requested is that the appropriate judicial authority of the Ontario 8 Superior Court of Justice, or such other Court as may be applicable, compel the appearance 9 of the individual identified below to appear for an oral deposition and to produce documents. 10 A.Name of Witness

Rod Adkins, 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 13 '601 Patent") brought by Plaintiff Network Protection Sciences LLC ("NPS") against 15 Defendant Fortinet Inc. ("Fortinet"). (Eastern District of Texas Docket No. 1). The matter 16 was transferred from the Eastern District of Texas to this Court under Title 28, Section 17 1404(a), of the United States Code on March 6, 2012, and is now pending in this Court 18 before the undersigned United States District Court Judge. (See Docket No. 123). 19 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 21 this case pursuant to Title 28, Sections 1331 and 1338, of the United States Code. 22

C.The Relevant Facts and Witnesses

Defendant Fortinet's defenses in this action include an assertion that the '601 Patent 25 is invalid in light of prior art. In particular, Fortinet contends inter alia that a computer 26 network firewall product from Border Network Technologies, Inc. ("BNTi"), a company located in Ontario, Canada, which was subsequently acquired by WatchGuard Technologies, is prior art to and invalidates the '601 patent. This firewall product was known as the JANUS Firewall Server, and later as BorderWare (the "JANUS/BorderWare Prior Art 2 Product"). 3

Fortinet has identified non-party witnesses believed to have information relevant to 4 the allegedly invalidating JANUS/BorderWare Prior Art Product prior art. Mr. Adkins is 5 among those witnesses, and is located in the Province of Ontario, Canada. In particular, 6

Fortinet contends that Mr. Adkins was the Director of Marketing for BNTi and "confirms that 7 the [JANUS/BorderWare Prior Art Product] has been available in both the U.S. and Canada" 8 since February 1994. Fortinet further contends that Mr. Adkins made additional postings to 9 the Great Circle Firewall electronic bulletin board, a moderated electronic forum focused 10 specifically on firewall technology about the JANUS/BorderWare Prior Art Product prior art, 11 including technical details "such as changes to the kernel" of the operating system to 12

JANUS/BorderWare Prior Art Product and regarding the availability of the 13

JANUS/BorderWare Prior Art Product in 1994. 14

These assertions by Defendant Fortinet, if true, may impact the enforceability of the '601 Patent and may serve as a defense to the pending claim against Fortinet for infringement 16 thereof.

D.Basis for the Issuance of These Letters Rogatory

These letters have been issued based upon the following criteria:

1.The discovery requested is relevant. The evidence sought by the letters rogatory is necessary for trial and intended to be 2 adduced at trial, if admissible. This required evidence is relevant to the American proceeding 23 in that it is anticipated to have bearing on a central defense -- invalidity of the patent at issue -- 24 to the Plaintiff's primary cause of action for patent infringement.

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

The Ontario Court may properly authorize the witness to provide the responsive 5 evidence, if any, pursuant to Section 60 of the Ontario Evidence Act and consistent with Rule 6

31.10 of the Rules of Civil Procedure. 7

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.

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

11 be taken in a foreign country "under a letter of request, whether or not captioned a 'letter 12 rogatory.'" This Court has the inherent authority to issue letters rogatory. See United States 13

v. Reagan, 453 F.2d 165, 172 (6th Cir. 1971); United States v. Staples, 256 F.2d 290, 292 14

(9th Cir. 1958). Under governing United States law, a letter rogatory can also include 15 requests for the production of documents. See Reagan, 453 F.2d at 168 (affirming district 16 court's issuance of letters rogatory seeking documents relating to an investigation conducted 17 by German authorities). 18

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

States Federal Rule of Civil Procedure, Rule 28(b), in light of the scope of discovery 20 provided for by the Federal Rules of Civil Procedure. See Evanston Ins. Co. v. OEA, Inc., 21

No. CIV S-02-1505 DFL PAN, 2006 WL 1652315 at* 2 (E.D. Cal. June 13, 1990) (stating 22 that Rule 28(b) "must be read together" with Rule 26(c) in determining whether to issue letter 23 rogatory); see also DBMS Consultants Ltd. v. Computer Assocs. Int'l, Inc., 131 F.R.D. 367, 24 369-70 (D. Mass. ...

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