LETTERS OF REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE (LETTERS ROGATORY)-- STEVEN LAMB
The United States District Court for the Northern District of California presents its 2 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
Steven Lamb, 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 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
Fortinet's defenses in this action include an assertion that the '601 Patent is invalid in light of prior art. In particular, Fortinet contends inter alia that a computer network firewall product from Border Network Technologies, Inc. ("BTNi"), 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, 2 and later as BorderWare (the "JANUS/BorderWare Prior Art 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. Lamb is 5 among those witnesses, and is located in the Province of Ontario, Canada. In its pre-trial 6 contentions concerning the alleged invalidity of the patent-in-suit Fortinet asserted that Mr. 7 Lamb was involved in the creation of the JANUS/BorderWare Prior Art Product and is 8 believed to have information pertinent to the conception and reduction to practice of the 9
JANUS/BorderWare Prior Art Product that Fortinet contends invalidates the patent-in-suit. 10
In particular, Fortinet contends that Mr. Lamb and other Border Network engineers conceived 11 of the idea for the firewall product, that along with another witness (Glenn Mackintosh) he 12 personally outlined the concept for the JANUS/BorderWare Prior Art Product and wrote the 13 underlying source code for the software used in the product. Fortinet specifically contends 14 that Mr. Lamb has knowledge that the May 1994 version of the source code for the 15
JANUS/BorderWare Prior Art Product contained specific kernel modifications and proxy 16 code that enabled the firewall to operate in a manner that Fortinet contends anticipates and/or 17 renders obvious the inventions claims by the '601 Patent. Fortinet further contends that Mr. Lamb and others contributed posts to an electronic bulletin board concerning firewall 19 technology that disclosed information concerning the JANUS/BorderWare Prior Art Product 20 21 in 1994.
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 thereof.
D.Basis for the Issuance of These Letters Rogatory
These letters have been issued based upon the ...