Fortinet, Inc. v. Forescout Technologies, Inc.

Background

Forescout sought an order compelling Fortinet to provide additional testimony under Rule 30(b)(6), a procedure requiring an organization to designate a witness to testify about specified topics. Fortinet had designated William Cooper, an in-house attorney. During Cooper’s January 22, 2024 deposition, he declined to answer certain questions based on attorney-client privilege.

Topic 20

Topic 20 covered offers to sell or license Fortinet’s patents, including the circumstances of those offers, the people involved, their results, and related documentation. Forescout asked Cooper how Fortinet selected five patents that it sold to Palo Alto Networks, Inc. as part of a January 2020 agreement that also licensed patents to Palo Alto Networks. Fortinet did not argue that the question was outside Topic 20’s scope.

After reviewing Cooper’s declaration explaining the privilege claim, the court sustained Fortinet’s attorney-client privilege objection to that question.

Topics 35 and 36

Topics 35 and 36 concerned valuations, appraisals, pricing, relative patent values, rankings, and the relevance or importance of Fortinet’s patents and related patents. Forescout asked whether there had been a valuation of intellectual property acquired by Fortinet, and Cooper declined to answer based on privilege.

The court overruled the privilege objection to that question. It interpreted “valuation” in this context to mean financial valuation. The court found that Cooper’s declaration did not establish that any financial evaluations, if they existed, would reveal privileged information. The court also stated that Forescout was entitled to sworn deposition testimony and did not have to rely on statements made by counsel during the parties’ discussions.

Forescout also asked whether Fortinet had performed an invalidity analysis of the asserted patents before filing its patent-infringement complaint. The court sustained Fortinet’s privilege objection to that question. It reasoned that the broad phrase “invalidity analysis” could include legal analysis about patent validity and therefore could seek information about litigation strategy or legal advice. The court noted that Forescout had not shown that Fortinet had entirely blocked discovery about whether a patent search was conducted.

Disposition

The order states: “Fortinet’s motion to compel is GRANTED IN PART and DENIED IN PART as stated above.” The court therefore required additional sworn testimony concerning financial patent valuations, while upholding privilege objections to the questions about patent selection and a pre-filing invalidity analysis. Judge Thomas S. Hixson signed the order.