Case 3:17-cv-05659-WHA Document 530 Filed 06/14/19 Page 1 of 8
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`June 14, 2019
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`VIA ELECTRONIC FILING
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`Honorable Thomas S. Hixson
`U.S. District Court, Northern District of California
`San Francisco Courthouse
`Courtroom A – 15th Floor
`450 Golden Gate Avenue
`San Francisco, CA 94102
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`Re:
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`Joint Discovery Statement
`Finjan, Inc. v. Juniper Networks Inc., Case No. 3:17-cv-05659-WHA
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`Dear Magistrate Judge Hixson:
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`Pursuant to Judge Alsup’s Order referring any discovery disputes to this Court (Dkt. No.
`437), the parties submit the following joint statement regarding Plaintiff Finjan, Inc.’s (“Finjan”)
`motion to compel responses from Defendant Juniper Networks, Inc. (“Juniper”) to Finjan’s
`discovery requests related to financials and other damages-related discovery for the accused
`products in this case. The parties attest that they met and conferred by telephone on this issue on
`May 16, 2019 and March 29, 2019.1 See Ex. 1.
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`Respectfully submitted,
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`/s/ Yuridia Caire
`Yuridia Caire
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`Attorneys for Plaintiff
`Finjan, Inc.
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`/s/ Ingrid Petersen____
`Ingrid Petersen
`IRELL & MANELLA LLP
`Attorneys for Defendant
`Juniper Networks, Inc.
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`1 Counsel for Juniper is located outside of the Bay Area.
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`Case 3:17-cv-05659-WHA Document 530 Filed 06/14/19 Page 2 of 8
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`Finjan’s Position
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`Juniper has no legal basis to withhold relevant discovery regarding (1) updated sales and
`revenue information for its accused SRX devices and (2) sales of any products and services
`bundled with the accused products (“Convoyed/Derivative Sales”). Revenue information for
`accused products and for Convoyed/Derivative Sales are relevant because they are directly keyed
`to the Georgia-Pacific factors that are used for determining a reasonable royalty for damages. 35
`U.S.C. § 284 (patentee entitled to damages of no less than a reasonable royalty); Georgia-Pacific
`Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970) (non-exclusive list of
`factors relevant to a reasonable royalty, including profits made from infringing products and the
`value to the infringer of using infringing products to promote sales of other, non-patented
`products). Critically, Juniper previously produced this information and conceded that it was
`relevant during the first round of Judge Alsup’s patent showdown procedure, yet it inexplicably
`now refuses to update its production now that about one year later the parties are preparing for a
`second trial.
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`A.
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`Juniper May Not Arbitrarily Withhold Revenues for Some Accused Products
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`Juniper has no grounds to refuse to update revenue information2 for its accused SRX
`devices. Finjan accuses, inter alia, Juniper’s SRX devices used with Sky ATP, and the SRX
`devices by themselves, of infringement. During the first round of the patent showdown
`procedure, Juniper produced revenue information for the SRX devices that did not use Sky ATP.
`In doing so, Juniper conceded that these revenues are relevant—as it must, given that the SRX
`devices are independently accused of infringement.
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`Following completion of the first round of the showdown, Juniper also acknowledged the
`need to produce updated financial information for SRX devices with Sky ATP, since that
`information was produced before the parties’ first trial in early December 2018. Despite
`updating its production for SRX devices with Sky ATP, Juniper refuses for no reason to provide
`updated information for the SRX devices alone, even though it previously produced this exact
`information. Ex. 2 at 20-21 (Interrog. No. 16). It is baffling that Juniper seeks to force Finjan to
`use outdated revenue information for one of the accused products. Juniper cannot unilaterally
`decide what it deems to be relevant and only produce information helpful to it. Id. (using legal
`conclusions, such as the nature of the smallest salable unit, to redefine Finjan’s discovery);
`compare Fresenius Med. Care Holding Inc. v. Baxter Int'l, Inc., 224 F.R.D. 644, 653 (N.D. Cal.
`2004) (“disapprov[ing]” defendant’s attempt to unilaterally limit scope of interrogatory to what it
`considered relevant).
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`To produce the relevant information is no additional burden to Juniper, as it need only
`use its accounting systems to select the products for which it wishes to export revenue data. See
`Ex. 3 (Gupta 11/16/18 Dep. Tr.) at 44:24-45:8. Moreover, the amount of data needed to
`complete the production that Juniper already began before the December 2018 trial is marginal.
`Juniper has no basis to withhold revenues for an accused product that is squarely at issue in this
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`2 Specifically, Finjan requests the dates, revenues, customer identification numbers, and
`invoice/purchase order numbers for sales to customers that purchased the accused products and
`services.
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`2
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`Case 3:17-cv-05659-WHA Document 530 Filed 06/14/19 Page 3 of 8
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`case. In fact, Juniper claims that it can produce updated revenues for the SRX devices, but will
`only do so after the Court’s ruling on the order to show cause for the ‘154 Patent. However,
`Juniper’s continued delay prejudices Finjan because Finjan needs this information well in
`advance of the deadline for opening expert reports, which are currently due in mid-July.
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`B.
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`Juniper May Not Selectively Produce Certain Convoyed/Derivative Sales
`Data but Withhold the Rest
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`Juniper has attempted to further limit its production of revenue information in this case
`by only partially producing Convoyed/Derivative Sales information. See Ex. 4 (Request No. 31)
`at 105-109; Ex. 5 (Request No. 122) at 27-28 (only agreeing to produce sales data for some
`accused products). Convoyed/Derivative Sales fall under the Georgia-Pacific reasonable royalty
`analysis, which considers use of infringing products to promote sales of non-patented products or
`services. See, e.g. Georgia-Pacific, 318 F. Supp. at 1120 (Factor 6: effect of selling the patented
`invention in promoting sales of the infringer’s other non-patented products and the extent of any
`derivative or convoyed sales); see also Interactive Pictures Corp. v. Infinite Pictures, Inc., 274
`F.3d 1371, 1384-86 (Fed. Cir. 2001) (affirming award of damages which factored evidence of
`bundled and convoyed sales into the royalty base); see also Damages Contentions, p. 3, 15.
`Juniper’s claim that such information is somehow not relevant is thus contrary to law.
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`First, as with the revenue information cited above, Juniper already produced some
`information relating to Convoyed/Derivative Sales, and now refuses without reason to update its
`production. Specifically, this information, such as sales of power cords and other accessories
`sold in bundles with the accused products, was part of what Juniper claimed did not exist during
`discovery in 2018, yet suddenly produced as part of a 17,000 page spreadsheet mere days before
`Finjan’s expert reports were due. Since Juniper withheld this information, the Court granted
`Finjan leave to take an expedited deposition a few days before the start of trial. See Dkt. No.
`300, 12/4/18 Pretrial Hearing Tr. at 76:1-7. To prevent a repeat scenario, Finjan respectfully
`requests that Juniper be ordered to update its production for all Convoyed/Derivative Sales.
`Juniper falsely claims that it cannot produce this information because it does not track this data
`in the ordinary course of business and would need to create new documents. As mentioned
`above, Juniper already produced some of this data through 2017. Finjan now seeks the same
`revenue data for 2018 and 2019. Finjan is entitled to this updated information irrespective of
`whether RFP No. 31 specifically mentions revenues in the request.
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`Second, Juniper has selectively withheld data relating to some Convoyed/Derivative
`Sales which it has no basis to exclude. For example, Juniper should produce financial
`information reflecting sales of the customer support license which Juniper requires its customers
`purchase in order to use the “free” version of Sky ATP. Juniper has never produced such
`information, even though it cannot credibly claim that disseminating the free version of Sky ATP
`but requiring the purchase of a customer support license somehow does not promote sales of
`Juniper’s services. See Georgia-Pacific, 318 F. Supp. at 1120 (Factor 6: effect of selling the
`patented invention in promoting sales of the infringer’s other non-patented products and the
`extent of any derivative or convoyed sales). Finjan’s RFP No. 31 is sufficiently broad to cover
`this financial information because it seeks all products sold or bundled with the accused
`products, which would include financial data. Furthermore, Finjan’s RFP No. 122 specifically
`sought revenues for customer support licenses, which undoubtedly includes the customer support
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`Case 3:17-cv-05659-WHA Document 530 Filed 06/14/19 Page 4 of 8
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`license that must be purchased in conjunction with the “free” version of Sky ATP. Juniper’s
`argument that it has already provided revenues for Sky ATP licenses is misleading at best,
`because Juniper knows that this does not include these customer support revenue.
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`Further, Finjan is not making “broad demands” for irrelevant financial information, as
`Juniper suggests. These requests are relevant to Finjan’s damages case and are reasonably
`limited. As explained above, Finjan seeks updated revenue information for the products for
`which Juniper has previously provided. Finjan’s requests are also limited in that they only seek
`information from 2015 onward. For these reasons, Juniper’s reliance on Thought is misplaced.
`See Thought, Inc. v. Oracle Corp., No. 12-cv-05601-WHO, 2015 WL 2357685, at *1, *5 (N.D.
`Cal. May 15, 2015) (overly broad request for revenue information properly denied). This is a
`straightforward request and is not burdensome to Juniper. As Ms. Gupta testified, Juniper need
`only input a selection of products into its accounting systems to be able to create a spreadsheet of
`the relevant data. Ex. 3 (Gupta 11/16/18 Dep. Tr.) at 44:24-45:8. Thus, Juniper should be
`compelled to produce revenue information for any product or service which is used to promote,
`upsell, or is otherwise bundled with Juniper’s accused products and services, because all such
`information is minimally burdensome to produce yet is highly relevant to the Georgia-Pacific
`reasonable royalty analysis and highlights the value of the infringing products to Juniper.
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`Juniper’s Position
`Juniper should not be compelled to provide updated revenue data concerning the SRX
`because it is highly likely that the SRX will no longer even be an accused product once the Court
`issues its decision on its Order to Show Cause why judgment should not be entered in Juniper’s
`favor on the ’154 Patent. Moreover, Finjan is not entitled to revenue data concerning the alleged
`“convoyed sales” of non-accused products because such information does not fall within the
`scope of any Request for Production (“RFP”) identified by Finjan. Moreover, as Juniper does
`not track or correlate accessories or licenses to particular devices in the ordinary course of
`business, it simply does not maintain documents “sufficient to show” this information. Juniper
`cannot be forced to create new documents under the guise of a request to produce documents
`within Juniper’s possession, custody, or control (even ignoring the questionable relevance of the
`information Finjan seeks).
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`A.
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`Juniper Will Produce Updated Financial Data For SRX If The Court Does
`Not Grant Juniper Summary Judgment On The ’154 Patent.
`On June 6, Finjan filed a notice of claims to be tried at the October 2019 trial. Dkt. 516.
`In that notice, Finjan only identifies the standalone SRX as an accused product for the ’154
`Patent. Id.3 When Finjan moved for summary judgment on this patent, however, the Court not
`only denied Finjan’s motion, but also issued an order to show cause as to why judgment should
`not be entered in favor of Juniper on the ’154 Patent—thus removing the standalone SRX as an
`accused product in this case. Dkt. 459. The parties have submitted briefs on this issue, and the
`Court’s decision is pending. Given that this issue has been fully briefed and argued, there is no
`reason to force Juniper to go through the burden of obtaining, reviewing, and providing this data
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`3 Juniper previously produced revenue data for the SRX alone because Finjan originally accused the SRX
`alone of infringing all the patents-in-suit. It has since dropped its claims against the SRX alone, other than for the
`’154 Patent. Thus, it is irrelevant that Juniper previously produced SRX data.
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`Case 3:17-cv-05659-WHA Document 530 Filed 06/14/19 Page 5 of 8
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`at this time. See Barnes and Noble, Inc. v. LSI Corp., 2013 WL 131073, at *2 (N.D. Cal. 2013)
`(denying discovery of sales information for a non-accused product). If the Court elects not to
`dispose of the ’154 Patent, however, Juniper will provide updated financial data for the SRX
`within two weeks of the relevant Court Order.4
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`B.
`Finjan Is Not Entitled To Additional Discovery On SRX Accessories.
`Finjan separately argues that it is entitled to additional financial discovery on non-
`patented products because that information is supposedly relevant to convoyed sales. As a hook
`for this requested relief, Finjan seems to be alleging that Juniper’s responses to RFP Nos. 31 and
`122 are insufficient. The problem for Finjan, however, is that those requests do not even seek
`the revenue data for non-accused products that Finjan is now demanding.
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`Finjan first claims Juniper should be required to provide revenue information for “power
`cords” and “accessories.” But the only discovery request Finjan points to is RFP No. 31, which
`merely seeks “[d]ocuments, communications, or things sufficient to show any products or
`services sold, offered for sale, marketed, or bundled with each of the Accused Instrumentalities
`from the year 2012 to the present.” See Ex. 4 (Request No. 31) at 105-109. Juniper has already
`produced data sheets and marketing literature that are sufficient to show each product and/or
`service that could arguably be sold, marketed, or bundled with the accused products. Finjan does
`not—and cannot—dispute this fact. Instead, Finjan claims that RFP No. 31 also contains a sub
`silentio request for financial data. But there is nothing in RFP No. 31 that even mentions
`revenue or financial data, and it is black letter law that a party is not obligated to produce or
`create documents that do not fall within a properly propounded discovery request. See
`Genentech, Inc. v. Trustees of Univ. of Pa., 2011 WL 2443669, at *3 (N.D. Cal. June 16, 2011)
`(denying motion to compel “all” documents concerning studies or experiments where the request
`only sought documents “sufficient to describe” such studies or experiments).
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`Moreover, even if Finjan had requested this information (and it has not), courts in this
`District consistently hold that a patentee cannot make broad demands for financial data related to
`non-patented products under the guise of a purported relevance to convoyed sales. Indeed, in
`Thought, Inc. v. Oracle Corp., No. 12-CV-05601-WHO, 2015 WL 2357685, at *1, *4 (N.D. Cal.
`May 15, 2015), the court denied the plaintiff’s motion to compel production of financial
`information on non-accused products under a convoyed sales theory. The plaintiff had requested
`production of financial information regarding “application” and “database” software, but the
`patent was targeted at middleware products. Id. at *1. The court rejected the plaintiff’s
`argument that the defendant should produce this information because it relates to convoyed sales.
`Id. at *5. In particular, the court noted that the plaintiff had not “articulate[d] any theory of
`damages that involved specific Oracle database or application products,” and thus it was of
`“questionable relevance” that did not justify the burden on the defendant. Id. Here, Finjan’s
`requests are similarly broad, in that they are not limited to specific products or components.
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`4 In a footnote, Finjan requests the “customer identification numbers, and invoice/purchase order numbers”
`in addition to revenue and cost data. But the interrogatory that Finjan points to does not actually seek any customer
`information. Ex. 2 (Interrogatory No. 16 at 17). Thus, even if Juniper were ordered to provide SRX data, it should
`only be required to provide the information requested in the interrogatory (i.e., revenues, costs, price, and units).
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`Case 3:17-cv-05659-WHA Document 530 Filed 06/14/19 Page 6 of 8
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`Moreover, Finjan has not articulated any plausible theory for how Sky ATP—which is a cloud-
`based software service—could possible drive sales of power cords or other device accessories.
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`Finally, Juniper does not have documents that show the information Finjan seeks because
`Juniper does not track or correlate the sale of power cords or other accessories on a device basis
`(much less whether they correlate to an SRX that enabled a free or paid license to Sky ATP).
`Thus, in order to respond to this request, Juniper would need to try to create documents to show
`which spare part or power cord goes to a particular SRX device—a task that may not even be
`possible. And, as courts in this district have noted, “[a] party . . . is not required to create a
`document where none exists.” Ujhelyi v. Vilsack, 2014 WL 4983550, at *4 (N.D. Cal. Oct. 6,
`2014). The fact that Juniper was able to—and elected to—create documents that correlated SRX
`devices with certain other products before the last trial (documents that Juniper’s expert relied
`upon) does not somehow obligate Juniper to create similar documents for Finjan, particularly
`when Finjan has not even propounded a discovery request seeking this information (e.g., an
`interrogatory seeking such information). Given the questionable relevance of revenue data
`concerning power cords and accessories, the fact that Finjan has not actually propounded a
`discovery request that seeks the information, and the expense Juniper would incur to create the
`requested data (if it is even possible), Finjan’s motion should be denied.
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`C.
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`Finjan Is Not Entitled To Additional Discovery On Customer Support
`Licenses.
`Finjan also argues that the Court should compel Juniper to provide revenue data for
`customer support licenses. With regard to ATP Appliance, Juniper does not offer customer
`support licenses so there is no data to produce. To the extent Cyphort offered such licenses prior
`to the time that Juniper acquired it, those licenses would be reflected in the pre-acquisition data
`that Juniper has already produced, which shows all of Cyphort’s customer invoices.
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`As to Sky ATP, Juniper has already provided data showing the revenues for the Sky ATP
`licenses themselves, and (again) Juniper does not offer any separate customer support licenses
`for Sky ATP. While these facts (which Juniper has previously provided to Finjan) would
`ordinarily resolve this purported dispute, Finjan persists in arguing that there must be additional
`licenses based, presumably, on a reference to “Additional License Requirements” on Juniper’s
`website. See https://www.juniper.net/documentation/en_US/release-independent/sky-
`atp/topics/reference/general/sky-atp-licenses-overview.html. But the additional license identified
`(AppSecure) is just part of a software package option for those SRX devices—and Juniper has
`already produced data for those bundles. Thus, to the extent customers purchased a bundle that
`included both SRX and AppSecure, Juniper has already provided the revenue data that could be
`attributed to AppSecure. To the extent a customer purchased AppSecure separately, Juniper’s
`financial data system simply does not track the purchase price (if any) for licenses (or other
`services) purchased by customers who signed up for the free version of Sky ATP.
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`Finally, with respect to the SRX—just as with Sky ATP—Juniper does not track or
`correlate SRX devices with customer support contracts. Thus, based on Juniper’s current
`investigation, Juniper simply does not have documents sufficient to show the requested
`information. If and when Juniper locates any documents with this information, it will produce
`them (unless the Court enters judgment for Juniper on the ’154 Patent, because, as discussed
`above, that will remove the standalone SRX from the list of accused products).
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`Case 3:17-cv-05659-WHA Document 530 Filed 06/14/19 Page 7 of 8
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`Dated: June 14, 2019
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`KRAMER LEVIN NAFTALIS
`& FRANKEL LLP
`
`/s/ Yuridia Caire
`By:
`Paul J. Andre (SBN 196585)
`Lisa Kobialka (SBN 191404)
`James Hannah (SBN 237978)
`Yuridia Caire (SBN 268881)
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`ycaire@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`Respectfully Submitted,
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`By:
`/s/ Ingrid Petersen
`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@irell.com
`Harry A. Mittleman (SBN 172343)
`hmittleman@irell.com
`Alan Heinrich (SBN 212782)
`aheinrich@irell.com
`Joshua Glucoft (SBN 301249)
`jglucoft@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Rebecca Carson (SBN 254105)
`rcarson@irell.com
`Ingrid Petersen (SBN 313927)
`ipetersen@irell.com
`Kevin Wang (SBN 318024)
`kwang@irell.com
`840 Newport Center Drive, Suite 400
`Newport Beach, California 92660-6324
`Telephone: (949) 760-0991
`Facsimile: (949) 760-5200
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`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
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`Case 3:17-cv-05659-WHA Document 530 Filed 06/14/19 Page 8 of 8
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`ATTESTATION
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`I, Yuridia Caire, am the ECF user whose identification and password are being used to
`file this Joint Discovery Letter. In compliance with Civil L.R. 5-1(i)(3), I hereby attest that the
`other signatory to this document has concurred in this filing.
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`Dated: June 14, 2019
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`/s/ Yuridia Caire
` Yuridia Caire
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