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Network Protection Sciences, LLC v. Fortinet

April 24, 2013



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

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 The United States District Court for the Northern District of California presents its Francisco, State of California, United States of America. 6 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

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 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). 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 JANUS Firewall Server, and later as BorderWare (the "JANUS/BorderWare Prior Art 2 Product"). 3

4 the allegedly invalidating JANUS/BorderWare Prior Art Product. Mr. Mackintosh is among 5 those witnesses, and is located in the Province of Ontario, Canada. Based upon Fortinet's 6 contentions, Mr. Mackintosh is believed to have information pertinent to the conception and 7 reduction to practice of the JANUS/BorderWare Prior Art Product that Fortinet contends 8 invalidates the patent-in-suit. Fortinet contends that Mr. Mackintosh and other Border 9

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

Network engineers conceived of the idea for the firewall product, that he personally 10 developed a proof of concept for it within weeks, and that and another engineer named 11

Steven Lamb immediately began outlining the concept and writing the underlying source 12 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 15 specific kernel modifications and proxy code that enabled the firewall to operate in a manner 16 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 18 developed a proof of concept for [the JANUS/BorderWare Prior Art Product] within weeks" 19 and "that modification to the [source code for the JANUS/BorderWare Prior Art Product] 20 21 was very simple and only required changes to a few lines of code in a few modules and that most of the coding was adapting the existing Unix-based operating system and various readily available proxy processes for common applications." Fortinet further contends that Mr. Mackintosh and others contributed posts to an electronic bulletin board concerning firewall technology that disclosed information concerning the JANUS/BorderWare Prior Art Product 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 3 thereof. 4 adduced at trial, if admissible. This required evidence is relevant to the American proceeding 10 in that it is anticipated to have bearing on a central defense -- invalidity of the patent at issue -- 11 to the Plaintiff's primary cause of action for patent infringement. evidence, if any, pursuant to Section 60 of the Ontario Evidence Act and consistent with Rule 17 31.10 of the Rules of Civil Procedure. be taken in a foreign country "under a letter of request, whether or not captioned a 'letter 23 rogatory.'" This Court has the inherent authority to issue letters rogatory. See United States 24 (9th Cir. 1958). Under governing United States law, a letter rogatory can also include 26 requests for the production of documents. See Reagan, 453 F.2d at 168 (affirming district 27 court's issuance of letters rogatory seeking documents relating to an investigation conducted 28 by German authorities).

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.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

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 ...

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