Case 3:17-cv-05659-WHA Document 155 Filed 07/13/18 Page 1 of 3
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`REDACTED VERSION OF DOCUMENTS SOUGHT TO BE SEALED
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`July 13, 2018
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`District Judge William Alsup
`San Francisco Courthouse
`Courtroom 12 - 19th Floor
`450 Golden Gate Avenue
`San Francisco, CA 94102
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`Re:
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`FINJAN, INC. v. JUNIPER NETWORKS, INC., Case No.: 3:17-cv-05659-WHA
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`Dear Judge Alsup:
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`The Court should deny Juniper Networks, Inc.’s (“Juniper”) motion to compel production of the
`entirety of Mr. John Garland’s email1 to Finjan, Inc.’s (“Finjan”) in-house counsel because the redacted
`sections were prepared in anticipation of litigation. Mr. Garland, Finjan’s licensing director, had a call
`with Mr. Scott Coonan at Juniper about licensing Finjan’s patents. He explicitly testified that he did not
`rely on the email at issue to refresh his memory of the call, such that this Court’s Order and Federal
`Rule of Evidence 612(a)(2) do not apply. Fed. R. Evid. 612(a)(2); Garland Tr. 255:15-256:7. In fact, his
`testimony was that he had an independently clear and “bright” memory of the call, as Mr. Coonan
`was incredibly disrespectful in response to Mr. Garland’s good faith efforts to negotiate.2 As the call
`went badly, Mr. Garland sent an email regarding the call to Ms. Mar-Spinola, the Chief Intellectual
`Property Officer and Vice President of Legal Operations at Finjan,
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`Mr. Garland testified fully regarding the call without reference to or reliance on this email that
`he later sent to Finjan’s in-house counsel. Rule 612(a)(2) of the Federal Rules of Evidence only applies
`when the witness has reviewed a writing and it in fact refreshed his memory. Fed. R. Evid. 612(a)(2)
`(allowing production only if the witness used a writing to “refresh memory . . . before testifying, if the
`court decides that justice requires” it); Goldman v. United States, 316 U.S. 129, 132 (1942) (“[W]here a
`witness does not use his notes or memoranda in court, a party has no absolute right to have them
`produced…”). Mr. Garland answered questions regarding his call with Mr. Coonan amounting to
`approximately 11 pages of testimony, and he indicated that he had a bright memory of the call. In
`fact, he testified that “the reason I recall it is—is, you know, it was the strange call. . .” See Garland Tr.
`194:1-196:8; 211:19-219:20. When asked about any notes he may have taken, which was the email to
`Ms. Mar-Spinola, Mr. Garland confirmed he still had a “bright” memory of that call. Motion Ex. B, at
`221:16-224:14. Juniper’s counsel requested a recess for her to look at her notes. See id.252:4-12.
`Following the break, she asked further questions during her direct about the email. In response, Mr.
`Garland reiterated his earlier point that “[t]he call stands on its own . . . the call is a bright call that’s a
`unique call between two individuals with a dozen or plus years of experience in this industry. That was
`the point I was making…it’s like a lively exchange.” Garland Tr. 252:15-253:15; 212:6-215:4 (explaining
`numerous idiosyncrasies of the call); see also note 2. To ensure that the record was not muddled on
`this point, Finjan’s counsel asked a few redirect questions to clarify what he meant by saying that the
`call was “bright” and to confirm whether he relied on the email for his deposition testimony, as such a
`confirmation would definitively indicate whether Rule 612(a)(2) was triggered. Fed. Trade Comm’n v.
`Directv, Inc., No. 15-cv-01129-HSG (MEJ), 2015 WL 7775274, at *5 (N.D. Cal. Dec. 3, 2015) (holding that
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`1 Mr. Garland’s “notes” are his memorialization within an email sent to counsel in anticipation of
`litigation, since the licensing discussion failed, and as a request for legal advice. Garland Dec. ¶ 2; Ex.
`4.
`2 Mr. Garland’s recollection of the call, without reference to his email to Ms. Mar-Spinola, is of no
`surprise, given that during the call Mr. Coonan mocked Mr. Garland by suggesting that Finjan disclose
`its claim charts publicly, that Finjan’s engineers were unqualified to analyze a patent invented by
`another, and affirming that he would share information amongst all Finjan defendants. Garland Tr.
`212:6-220:4.
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`Case 3:17-cv-05659-WHA Document 155 Filed 07/13/18 Page 2 of 3
`District Judge Alsup
`July 13, 2013
`2
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`“there is no indication [the witness] used the summary to refresh her recollection, and Rule 612 applies
`only where a witness uses a writing to refresh memory”) (internal quotations and citations omitted). Mr.
`Garland confirmed that he had not used his email to Ms. Mar-Spinola to refresh his memory:
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`Q. Did you remember the details of your call with Mr. Coonan in November 2015 without
`looking at documents?
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`THE WITNESS: Yeah. This is a pretty unique call. I mean, I have testified to this.
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`Q. Okay. So –
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`THE WITNESS: Yeah. I mean, it’s – it’s, you know, I have been doing this for 25 years. It’s a
`unique call. It stands out.
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`Q. So you remembered the details of that call. Is that right?
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`THE WITNESS: Yeah.
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`Q. And did you need to review your notes to prepare for your deposition today to testify about
`the call?
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`THE WITNESS: No.
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`Garland Tr. 255:15-256:7.
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`Juniper’s counsel did additional redirect thereafter and asked whether Mr. Garland had
`discussed the substance of his testimony with his attorney during a break, to which he stated
`unequivocally “No.” Tr. 256:21-23. Thus, Mr. Garland’s testimony is that he did not, pursuant to the
`legal standard of Rule 612(a)(2), refresh his recollection from the email that he sent to Ms. Mar-Spinola
`regarding the phone call. Nor is there any support for an allegation that his testimony was based on
`improper communications about the substance of his testimony during a break. See Server Tech., Inc.
`v. Am. Power Conversion Corp., No. 3:06-CV-00698-LRH, 2011 WL 1447620, at *11 (D. Nev. Apr. 14, 2011)
`(holding that absent a showing of witness coaching, privileged document should not be disclosed
`even if it was in fact used to refresh recollection).
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`Despite having this testimony and not meeting and conferring with Finjan, Juniper still
`inexplicably moved to compel.3 If the Court disbelieves Mr. Garland’s express testimony as to his
`recollection and applies Rule 612(a)(2), the Rule gives the Court discretion to weigh the interests of
`justice, including weighing the “objective of full disclosure and ascertainment of the truth” against
`“the interest in maintaining the confidentiality of protected material” and any “substantial harm” that
`might occur to the non-disclosing party if disclosure were required. Fed. R. Evid. 612(a)(2); United
`States v. 22.80 Acres of Land, 107 F.R.D. 20, 26 (N.D. Cal. 1985) (weighing the interests of full disclosure,
`confidentiality, and substantial harm to one party). Thus, the Rule is intended to be flexible and
`“nothing in the Rule [should] be construed as barring the assertion of a privilege with respect to
`writings used by a witness to refresh his memory does not automatically cause a waiver of privilege.”
`Fed. R. Evid. 612, Committee Notes (1974). In fact, the automatic production of writings used for
`refreshment is disfavored because it presents a danger of “fishing expeditions.” Id. Here, Mr.
`Garland’s email contains work product information prepared for and communicated to an attorney,
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`3 The parties had a brief conversation in which Finjan informed Juniper’s counsel that it was an email
`to in-house counsel and would include it on the privilege log. The parties agreed that they would
`speak again after Finjan’s counsel was able to locate the final transcript and Juniper’s counsel
`represented that he would make a proposal the following week. Rather than follow the agreement,
`Juniper’s counsel simply sent emails demanding production and filed this motion, without ever
`attempting to meet and confer.
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`2
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`Case 3:17-cv-05659-WHA Document 155 Filed 07/13/18 Page 3 of 3
`District Judge Alsup
`July 13, 2013
`3
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`in anticipation of litigation, given the nature of the call. See Fed. R. Evid. 502. Mr. Garland and Mr.
`Coonan had actually discussed impending litigation between Finjan and Juniper during their call. Ex.
`2, at JNPR-FNJN 29011 00960591. Contrary to Juniper’s contentions, Finjan timely asserted this privilege,
`both at deposition and in a privilege log reflecting the email. Mot. Ex. B, at 221:18-222:18; Ex. 3. Finjan
`stands to suffer substantial harm if the Court orders disclosure of work product. Finjan’s efforts in
`anticipation of litigation should not be the subject of discovery, particularly where Finjan’s 30(b)(6) and
`the witness involved in the discussions with Juniper provided detailed testimony on what happened
`without reference to any work product. Moreover, Mr. Garland frequently engages in licensing
`discussions regarding the same patents, and permitting discovery into his requests for advice or
`thoughts in anticipation of litigation following licensing discussions will deter Finjan from attempting to
`negotiate with parties, as opposed to litigating. Thus, there is a strong interest in maintaining the
`confidentiality of Finjan’s work product.
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`Moreover, Juniper has no need for this information given the substantial testimony already
`provided, and there are no grounds to overcome Finjan’s interest in nondisclosure. First, Juniper
`already had the information it was seeking. Juniper belatedly produced a transcript of the call, as it
`turns out that Mr. Coonan had secretly recorded it,4 which Finjan did not learn until Juniper produced
`the transcript on June 28, 2018, well after Mr. Garland’s deposition and after it filed a summary
`judgment motion on the issue of notice for damages. See Dkt. No. 129 (Finjan’s Opp. to Juniper’s Mot.
`for Summary Judgment). Thus, Juniper has no actual interest in obtaining disclosure of the email, such
`that the disclosure of work product protected information is unwarranted. Here, work product
`protection does not “derogate from the search for the truth,” which alleviates the Court’s key concern
`in this analysis. 22.80 Acres, 107 F.R.D. at 22. Juniper has not identified, nor can it, any need for the
`redacted material, as it stated only a desire for a “summary of that call.” Mtn. Ex. D, at 1. This is
`insufficient to describe what it seeks that it cannot obtain from the transcript or from the material Finjan
`produced, other than the revelation of Finjan’s work product.
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`Second, Juniper has 11 pages of testimony from Mr. Garland from his independent memory of
`events, during which Juniper cross-examined Mr. Garland based on his memory. Thus, they do not—
`and cannot, since they have the transcript and the factual information from Mr. Garland’s email as
`well—contend that Mr. Garland’s email is necessary for cross-examination and the development of full
`testimony. Courts give less weight to the interest in disclosure when, as here, the witness adequately
`remembers the subject of his testimony and does not appear to be influenced by the reviewed
`document. See, e.g., In re Kellogg Brown & Root, Inc., 796 F.3d 137, 144 (D.C. Cir. 2015) (holding that
`even if the witness refreshed his recollection, the writing will not be disclosed unless it influenced the
`witness’s testimony); In re Rivastigmine Patent Litig. (MDL No. 1661), 486 F. Supp. 2d 241, 244 (S.D.N.Y.
`2007) (denying disclosure of privileged document where the witness had authored it, the accuracy of
`her memory was not of central concern, and it was unlikely that it influenced her testimony).
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`For the above reasons, the interests of justice weigh heavily in favor of nondisclosure. Even so,
`Finjan has in good faith produced a redacted copy of Mr. Garland’s email. Ex. 4. Juniper has failed to
`demonstrate its entitlement to the redacted portions of Mr. Garland’s email.
`Sincerely,
`/s/ James Hannah
`James Hannah
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`4 Unbeknownst to Mr. Garland, Mr. Coonan recorded the call in violation of California and federal
`laws prohibiting interception of communications without consent. See Cal. Pen. Code § 632; Kearney
`v. Salomon Smith Barney, Inc., 39 Cal. 4th 95, 128 (2006) (holding that California privacy laws apply
`when a party in a one-party consent state records a conversation with a party in California, where all
`parties must consent to recording); 18 U.S.C. §2511 (prohibiting interception of communications, even
`if one party consents, if the interception was for tortious purposes); Cal. Bus. & Prof. Code § 17200 et
`seq. (prohibiting any “unlawful, unfair, or fraudulent business act”).
`3
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