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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 taking of evidence abroad.

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

v. Reagan, 453 F.2d 165, 172 (6th Cir. 1971); United States v. Staples, 256 F.2d 290, 292 25

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 3 provided for by the Federal Rules of Civil Procedure. See Evanston Ins. Co. v. OEA, Inc., 4 No. CIV S-02-1505 DFL PAN, 2006 WL 1652315 at* 2 (E.D. Cal. June 13, 1990) (stating 5 that Rule 28(b) "must be read together" with Rule 26(c) in determining whether to issue letter 6 rogatory); see also DBMS Consultants Ltd. v. Computer Assocs. Int'l, Inc., 131 F.R.D. 367, 7 1978).

369-70 (D. Mass. 1990); B & L Drilling Elecs. v. Totco, 87 F.R.D. 543, 545 (W.D. Ok. 8

This Court has considered the Unopposed Administrative Motion for Issuance of

Letters Rogatory (the "Motion", Northern District of California Docket No. 192, including 11 the Declaration of Jill F. Kopeikin in support thereof, Docket No. 192-1), and has found that 12 the evidence requested is well within the scope of the discovery sanctioned by the Federal 13

Rules of Civil Procedure and would be permitted in this action. Accordingly, upon the 14

Motion and finding good cause therefore, this Court has granted the Motion and issued these 15 letters. S 16

18 rogatory properly issued by an authorized Canadian court. 19 20

25 worked on and has knowledge of the conception and reduction to practice of a product that 26 constitutes prior art that would invalidate the patent-in-suit. In particular, Fortinet contends 27 that that Mr. Mackintosh will testify at trial that he and other BTNi engineers conceived of 28


This Court has the authority to reciprocate by granting enforcement of letters

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

Mr. Mackintosh 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. MacKintosh, the idea for the firewall product, that he personally developed a proof of concept for it within 2 weeks, and that he and another engineer named Steven Lamb immediately began outlining 3 the concept and writing the underlying source code for the software. 4 be unfair to require NPS to proceed to trial without the evidence, and obtaining the evidence 12 would not entail unreasonable expense or unfairness to the non-party. Permitting such 13 discovery will not infringe on Canadian sovereignty and justice demands the examination.

18 non-party witnesses may be required to provide oral testimony at deposition and to produce 19 documents in the possession, custody or under the control of the witness the subject of 20 discovery seeking evidence insofar as the evidence constitutes non-privileged matter that is 21 relevant to any party's claim or defense. 22

23 reduction to practice, implementation, adoption and publication of information about the 24

Janus/BorderWare Prior Art Product. The related requests for documents, as set forth below, 25 are specifically calculated to obtain such evidence. An additional request seeks discovery of 26 communications with Fortinet (including its counsel or representatives) concerning the '601 27

Patent or this lawsuit, which is warranted insofar as Fortinet identified this witness in its 28 invalidity contentions as one who "will testify" at trial.

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

Defendant Fortinet has specifically indicated that it intends to introduce testimony

from Mr. Mackintosh at trial concerning the conception and reduction to practice of the

Janus/BorderWare Prior Art Product, upon which Fortinet will rely to argue that the '601

Patent is invalid. To the extent this evidence may be used for the purposes of pre-trial

discovery in this civil matter, the discovery should nonetheless be permitted because it would

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,

NPS seeks testimony specifically relevant to this action, including the conception,

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

Insofar as the witness is a resident of Canada, this Court has no jurisdiction over and 4 cannot compel the witness to submit evidence. Nor does this Court have any authority to 5 order the taking of evidence in Canada. However, the Canadian court has the jurisdiction to 6 do so and pursuant to Section 60 of the Ontario Evidence Act and consistent with Rule 31.10 7 of the Rules of Civil Procedure may give the Letters Rogatory effect. See AstraZeneca v. 8

Wolman, [2009] O.J. No. 5344. 9

For the foregoing reasons, this Court hereby issues these letters rogatory authorizing

10 the taking of oral evidence from Glenn Mackintosh and the pursuit of the production of 11 documentary evidence in his custody and control as follows: 12


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 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.


Request No. 1: All documents relating to the conception, reduction to practice and

22 diligence in reduction to practice of the JANUS Firewall Server (the term "Janus Firewall 23

Server" includes the later known BorderWare), including in particular documents relating to 24 the proof of concept or the idea that, rather than creating a special dedicated piece of 25 hardware, one could take an ordinary personal computer and install software that would 26 turn it into a dedicated firewall. 27

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 sessions directly to the destination without considering or even being aware that the JANUS 2

Firewall Server was using a proxy method which made the JANUS' proxy operation 3 "transparent" to both the sender and receiver of the packets. 4 Request No. 3: All documents relating to the development of source code for or used 5 in or by the JANUS FireWall Server or modifications to the kernel of the operating systems 6 to disable IP forwarding. 7 Request No. 4: All documents relating to modifications to the BSDi Unix source 8 code to disable IP forwarding and route everything up to the application layer on the firewall, 9 to adapt existing Unix-based operating system and various readily available proxy processes 10 for common applications such as FTP, Telnet, HTTP, Gopher, and Ping, for example. 11 Request No. 5: All documents relating to posts to the Great Circle Firewall 12 electronic bulletin board describing the JANUS firewall development or the JANUS 13 FireWall Server product.14 Request No. 6: All prior art that may invalidate U.S. Patent No. 5,623,601 ("the '601 patent"). 16 Request No. 7: All communications between you, Glenn Mackintosh, and Fortinet, 17 including in particular, counsel for Fortinet or concerning conception or reduction to practice 18 of the JANUS Firewall Server or the '601 Patent. 19 For the foregoing reasons, these letters rogatory hereby issue.



United States District Court Judge


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