Case 3:17-cv-05659-WHA Document 110-12 Filed 06/15/18 Page 1 of 4
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`Exhibit 11
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`Case 3:17-cv-05659-WHA Document 110-12 Filed 06/15/18 Page 2 of 4
`Case 4:14-cv-02998-HSG Document 285 Filed 09/27/17 Page 1 of 3
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
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`Plaintiff,
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`v.
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`SYMANTEC CORP.,
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`Case No. 14-cv-02998-HSG
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`ORDER DENYING DEFENDANT’S
`MOTION TO AMEND ITS ANSWER TO
`ADD INEQUITABLE CONDUCT
`AFFIRMATIVE DEFENSE
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`Defendant.
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`Re: Dkt. No. 242
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`On August 18, 2017, Defendant Symantec Corp. filed a motion to amend its answer to add
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`an affirmative defense of inequitable conduct. Dkt. No. 242 (“Mot.”). The motion is opposed by
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`Plaintiff Finjan, Inc. Dkt. No. 261. The motion is now fully briefed and is pending before the
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`Court.1
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`The party seeking to amend a pleading after expiration of the deadline set by the pretrial
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`scheduling order “must satisfy the ‘good cause’ standard of Federal Rule of Civil Procedure
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`16(b)(4), which provides that ‘[a] schedule may be modified only for good cause and with the
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`judge’s consent,’ rather than the liberal standard of Federal Rule of Civil Procedure 15(a).” In re
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`W. States Wholesale Nat. Gas Antitrust Litig., 715 F.3d 716, 737 (9th Cir. 2013) (brackets in
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`original), aff’d d sub nom. Oneok, Inc. v. Learjet, Inc., 135 S. Ct. 1591 (2015). The Ninth Circuit
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`has held that:
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`Rule 16(b)’s “good cause” standard primarily considers the
`diligence of the party seeking the amendment. The district court
`may modify the pretrial schedule if it cannot reasonably be met
`despite the diligence of the party seeking the extension. . . .
`Although the existence or degree of prejudice to the party opposing
`the modification might supply additional reasons to deny a motion,
`the focus of the inquiry is upon the moving party’s reasons for
`seeking modification. If that party is not diligent, the inquiry should
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`1 The Court finds this matter appropriate for disposition without oral argument and the matter is
`deemed submitted. See Civil L.R. 7-1(b).
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`Case 3:17-cv-05659-WHA Document 110-12 Filed 06/15/18 Page 3 of 4
`Case 4:14-cv-02998-HSG Document 285 Filed 09/27/17 Page 2 of 3
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`end.
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`Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992) (quotation marks and
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`citation omitted). If “good cause” for amendment is found under Rule 16(b), then the Court
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`should deny leave to amend “only if such amendment would be futile.” Heath v. Google Inc., No.
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`15-CV-01824-BLF, 2016 WL 4070135, at *2 (N.D. Cal. July 29, 2016) (quotation marks
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`omitted); see also Kisaka v. Univ of S. Cal., No. CV 11-01942 BRO (MANx), 2013 WL
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`12203018, at *2–3 (C.D. Cal. Nov. 20, 2013) (assessing motion for leave to amend under Rule
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`16(b) and holding that even if the Court were to find diligence and lack of prejudice, amendment
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`would nonetheless be futile).
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`Here, Defendant has not satisfied the “good cause” standard of Rule 16(b). Defendant
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`seeks to assert an inequitable conduct defense based on an allegedly false declaration that Mr.
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`Shlomo Touboul filed with the United States Patent and Trademark Office. Mot. at 1. Plaintiff
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`produced that declaration to Defendant on December 3, 2014. Kastens Decl., Dkt. No. 261-1 ¶ 2
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`& Ex. 1 at 12–14. Defendant claims not to have been on notice regarding the alleged falsity of the
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`declaration until it received Plaintiff’s fourth supplemental response to Defendant’s Interrogatory
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`No. 1 on July 26, 2017. Mot. at 3–4. However, the relevant language in that response is identical
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`to language in Plaintiff’s response to Interrogatory No. 1, which Plaintiff served on Defendant on
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`December 4, 2014. Compare Cassidy Decl., Dkt. No. 242-1 ¶ 11 & Ex. I at 12 (“Yigal Edery,
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`Nimrod Vered, David Kroll, and Shlomo Touboul were involved with, and may have knowledge
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`related to the conception and reduction to practice of the ‘494 patent.”) with Kastens Decl. ¶ 8 &
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`Ex. 6 at 9 (same). The Court is not persuaded by Defendant’s argument that it was not on notice
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`regarding the alleged falsity of the declaration until Plaintiff narrowed the asserted claims of the
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`’494 patent. See Mot. at 4. Thus, as early as December 4, 2014, Defendant had sufficient
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`information to investigate its theory. Despite this, Defendant never deposed Mr. Touboul. See
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`Kastens Decl. ¶ 7. And while Defendant argues that it “asked [Plaintiff] a number of times about
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`the invention story for the ‘494 patent during discovery in this case,” it only cites communications
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`made on or after May 10, 2017. See Mot. at 3–5. This delay of approximately 2.5 years
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`demonstrates lack of diligence, even considering an intervening stay lasting approximately ten
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`United States District Court
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`Case 3:17-cv-05659-WHA Document 110-12 Filed 06/15/18 Page 4 of 4
`Case 4:14-cv-02998-HSG Document 285 Filed 09/27/17 Page 3 of 3
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`months.2 Since Defendant has not been diligent, the inquiry ends. See Johnson, 975 F.2d at 609. 3
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`For the foregoing reasons, the Court DENIES Defendant’s motion.
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`IT IS SO ORDERED.
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`Dated:
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`______________________________________
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`HAYWOOD S. GILLIAM, JR.
`United States District Judge
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`2 The stay was entered on October 9, 2015, Dkt. No. 117, and lifted on August 1, 2016, Dkt. No.
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`3 The Court thus does not need to determine whether the Touboul declaration was false as
`Defendant alleges.
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`Northern District of California
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`United States District Court
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`9/27/2017
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