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Network Protection Sciences, LLC v. Fortinet


April 24, 2013



GCA Law Partners LLP 1891 Landings Drive FLINT; CASE NO. 3:12-CV-01106-WHA Mountain View, CA 94043 (650)428-3900

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 Francisco, State of California, United States of America. 6

This Court requests the assistance described herein as necessary in the interests of justice. The assistance requested is that the appropriate judicial authority of the Ontario 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.

A.Name of Witness

Andrew Flint, 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 16 was transferred from the Eastern District of Texas to this Court under Title 28, Section 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).

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.

C. The Relevant Facts and Witnesses

Defendant 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 GCA Law Partners LLP 1891 Landings Drive FLINT; CASE NO. 3:12-CV-01106-WHA Mountain View, CA 94043 (650)428-3900 JANUS Firewall Server, and later as BorderWare (the "JANUS/BorderWare Prior Art 2 Product"). 3

Ontario, Canada. In particular, Fortinet contends 6 that Mr. Flint has information pertinent to the conception and reduction to practice of the 7 JANUS/BorderWare Prior Art Product that Fortinet contends invalidates the patent-in-suit. 8 Fortinet has asserted that Mr. Flint has knowledge that the prior art for the 9 JANUS/BorderWare Prior Art Product was made publicly available by no later than July 13, 10 1994 and that it was not abandoned, suppressed or concealed. Fortinet has further asserted 11 that Mr. Flint was a participant in the installation of the JANUS/BorderWare Prior Art 12 Product along with another non-party witness (Omaya Elguindi) at two companies in the 13 spring of 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. 17

Fortinet has identified non-party witnesses believed to have information relevant to 4 the allegedly invalidating JANUS/BorderWare Prior Art Product. Mr. Flint is among those 5 witnesses, and is located in the Province of

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 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 evidence, if any, pursuant to Section 60 of the Ontario Evidence Act and consistent with Rule 31.10 of the Rules of Civil Procedure.

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 be taken in a foreign country "under a letter of request, whether or not captioned a 'letter 9 rogatory.'" This Court has the inherent authority to issue letters rogatory. See United States 10 v. Reagan, 453 F.2d 165, 172 (6th Cir. 1971); United States v. Staples, 256 F.2d 290, 292 11 (9th Cir. 1958). Under governing United States law, a letter rogatory can also include 12 requests for the production of documents. See Reagan, 453 F.2d at 168 (affirming district 13 court's issuance of letters rogatory seeking documents relating to an investigation conducted 14 by German authorities). 15

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 17 provided for by the Federal Rules of Civil Procedure. See Evanston Ins. Co. v. OEA, Inc., 18 No. CIV S-02-1505 DFL PAN, 2006 WL 1652315 at* 2 (E.D. Cal. June 13, 1990) (stating 19 that Rule 28(b) "must be read together" with Rule 26(c) in determining whether to issue letter 20 rogatory); see also DBMS Consultants Ltd. v. Computer Assocs. Int'l, Inc., 131 F.R.D. 367, 369-70 (D. Mass. 1990); B & L Drilling Elecs. v. Totco, 87 F.R.D. 543, 545 (W.D. Ok. 22 1978).

This Court has considered the Unopposed Administrative Motion for Issuance of Letters Rogatory (the "Motion", Northern District of California Docket No. 192, including 25 26 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 (Docket No.192) 2 and issued these letters. 3 4.Reciprocity.

This Court has the authority to reciprocate by granting enforcement of letters rogatory properly issued by an authorized Canadian court. 6

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

Mr. Flint is an individual residing in Toronto, Ontario, Canada.

6.The order sought is needed in the interest of justice.

As discussed above, Defendant Fortinet contends that the witness, Mr. Flint, has 12 knowledge of the conception and reduction to practice of a product that constitutes prior art 13 that allegedly would invalidate the patent-in-suit. Fortinet contends Mr. Flint has 14 knowledge that the JANUS/BorderWare Prior Art Product was made publicly available by no 15 later than July 13, 1994 and that it was not abandoned, suppressed or concealed. Fortinet has 16 further asserted that Mr. Flint was involved in the installation of the JANUS/BorderWare 17

Prior Art Product at two companies in the spring of 1994. 18

7.The evidence sought will be used at trial if admissible.

Defendant Fortinet has been asked whether it will, and has reserved the right to, introduce testimony from Mr. Flint at trial concerning the conception and reduction to practice of the Janus/BorderWare Prior Art Product, upon which Fortinet will rely to argue 23 that the '601 Patent is invalid. To the extent this evidence may be used for the purposes of 24 pre-trial discovery in this civil matter, the discovery should nonetheless be permitted because 25 it would be unfair to require NPS to proceed to trial without the evidence, and obtaining the 26 evidence would not entail unreasonable expense or unfairness to the non-party. Permitting 27 such discovery will not infringe on Canadian sovereignty and justice demands the 28 examination.

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.

Under the Rules 26, 28 and 34 of the United States Federal Rules of Civil Procedure, non-party witnesses may be required to provide oral testimony at deposition and to produce 6 documents in the possession, custody or under the control of the witness the subject of 7 discovery seeking evidence insofar as the evidence constitutes non-privileged matter that is 8 relevant to any party's claim or defense. 9

NPS seeks testimony specifically relevant to this action, including the conception, 10 reduction to practice, implementation, adoption and publication of information about the 11 Janus/BorderWare Prior Art Product. The related requests for documents, as set forth below, 12 are specifically calculated to obtain such evidence. An additional request seeks discovery of 13 communications with Fortinet (including its counsel or representatives) concerning the '601 14 Patent or this lawsuit, which is warranted insofar as Fortinet identified this witness in its 15 invalidity contentions as one who may testify at trial.

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

cannot compel the witness to submit evidence. Nor does this Court have any authority to Insofar as the witness is a resident of Canada, this Court has no jurisdiction over and 21 order the taking of evidence in Canada. However, the Canadian court has the jurisdiction to 22 do so and pursuant to Section 60 of the Ontario Evidence Act and consistent with Rule 31.10 23 of the Rules of Civil Procedure may give the Letters Rogatory effect. See AstraZeneca v. 24 Wolman, [2009] O.J. No. 5344.

For the foregoing reasons, this Court hereby issues these letters rogatory authorizing the taking of oral evidence from Andrew Flint and the pursuit of the production of 27 documentary evidence in his custody and control as follows:


If acceptable to the governing Canadian authority, (1) Each of the witnesses shall be required to sit for deposition for no longer than seven (7) total hours, and both the Plaintiff 3 and the Defendant will be limited to 50% of that hourly total; and (2) Counsel for Plaintiff and Defendant shall conduct themselves consistent with the Federal Rules of Civil Procedure of the United States, as well as any Local Rules and Standing Orders governing the above-captioned case. 7

Request No. 1: All documents relating to the conception, reduction to practice and diligence in reduction to practice of the JANUS Firewall Server (the term "Janus Firewall Server" includes the later known BorderWare), including in particular documents relating to 11 the proof of concept or the idea that, rather than creating a special dedicated piece of 12 hardware, one could take an ordinary personal computer and install software that would 13 turn it into a dedicated firewall. 14

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 16 sessions directly to the destination without considering or even being aware that the JANUS 17 Firewall Server was using a proxy method which made the JANUS' proxy operation "transparent" to both the sender and receiver of the packets.

Request No. 3: All documents relating to the development of source code for or used 20 in or by the JANUS FireWall Server or modifications to the kernel of the operating systems 21 to disable IP forwarding.

Request No. 4: All documents relating to modifications to the BSDi Unix source code to disable IP forwarding and route everything up to the application layer on the firewall, 24 to adapt existing Unix-based operating system and various readily available proxy processes 25 for common applications such as FTP, Telnet, HTTP, Gopher, and Ping, for example. 26 27 28 quest No. 5: All documents relating to posts to the Great Circle Firewall 2 electronic bulletin board describing the JANUS firewall development or the JANUS 3 FireWall Server product.4 equest No. 6: All prior art that may invalidate U.S. Patent No. 5,623,601 ("the '601 patent"). 6

Request No. 7: All communications between you, Andrew Flint, and Fortinet, including in particular, counsel for Fortinet or concerning conception or reduction to practice 8 of the JANUS Firewall Server or the '601 Patent.

For the foregoing reasons, these letters rogatory hereby issue.


Dated: United States District Court Judge


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