Case 3:17-cv-05659-WHA Document 571 Filed 07/01/19 Page 1 of 4
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`FINJAN, INC.,
`
`Plaintiff,
`
`v.
`
`JUNIPER NETWORK, INC., et al.,
`
`
`
`
`
`Defendants.
`
`
`
`Case No. 17-cv-05659-WHA (TSH)
`
`
`ORDER COMPELLING PRODUCTION
`
`Re: Dkt. No. 543
`
`The Court had a telephonic hearing on June 27, 2019 concerning the parties’ joint
`
`discovery letter brief at ECF No. 543. This is Juniper’s motion to compel concerning RFPs 3-4,
`
`10, and 12-15, which are about Finjan’s relationship with and lawsuit against Trustwave.
`
`In 2009, Finjan divested its operating division to a company called M86 Security, Inc. See
`
`https://en.wikipedia.org/wiki/Finjan. As part of that spin-off, Finjan licensed its patents to M86 so
`
`that M86 could sell Finjan’s products that were covered by Finjan’s patents. In 2012, Trustwave
`
`acquired M86. See https://en.wikipedia.org/wiki/M86_Security. Finjan and Trustwave amended
`
`and restated the patent license agreement to account for the transfer of ownership. See ECF No.
`
`554 (Finjan v. Trustwave Complaint), ¶ 6. In 2015, Singtel acquired Trustwave. Id. ¶ 8; see
`
`generally ECF No. 336 at 255-57 (Finjan’s CEO’s testimony about these transactions).
`
`At the December trial in this action, Finjan’s CEO Phillip Hartstein testified that the
`
`original code developed by Finjan is still included in the Trustwave boxes being sold today. ECF
`
`No. 336 at 326-27. Finjan also contends that it is entitled to an injunction in part because it
`
`“indirectly compete[s with Juniper] through Finjan’s licensees and prospective licensees” and that
`
`“Finjan’s technology that was sold and licensed to M86 Security, and subsequently Trustwave, is
`
`still actively sold in the market in competition with Juniper.” ECF No. 542, Ex. A at 25 (response
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:17-cv-05659-WHA Document 571 Filed 07/01/19 Page 2 of 4
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`to interrogatory no. 8). And Finjan points to its licensees – including Trustwave – as evidence of
`
`the “commercial success” of the patents in support of its contentions concerning secondary
`
`considerations of non-obviousness. Id. at 30 (response to interrogatory no. 9).
`
`In April 2018, Finjan sued Trustwave for breach of contract. ECF No. 554. Finjan alleges
`
`that Trustwave failed to make certain royalty payments that became due upon the acquisition by
`
`Singtel. Finjan also alleges that Trustwave breach the 2012 license by failing to cooperate with
`
`KPMG’s audit, which determined that an additional $1.5 million was due in royalty payments.
`
`Trustwave moved to dismiss, asserting, among other arguments, that Finjan’s complaint failed to
`
`adequately plead that any Trustwave products actually did embody any valid Finjan patent. ECF
`
`No. 554-1 at 8-10. The motion appears to raise both the factual issue of whether any Trustwave
`
`products that use the Finjan technology were identified (see id. at 8 n.3 & 9) and the legal question
`
`of whether, if so, those patents are valid. See id. at 9-10. Thus, there is a dispute in that action
`
`over whether Trustwave’s products actually use Finjan’s patented technology.
`
`With that as background, the Court turns to the specific RFPs at issue. RFPs 3-5 and 13-14
`
`seek communications and documents regarding any agreements between Finjan and Trustwave
`
`involving the patents-in-suit (RFP 3), any efforts to license the patents to Trustwave (RFP 4), the
`
`negotiation or performance of any agreement (including any discussion of royalty rates or
`
`payments amounts) (RFP 5), the negotiations over Trustwave’s obligation to pay royalties (RFP
`
`13), and any communications referenced in Finjan’s complaint filed against Trustwave (RFP 14).
`
`For RFP 3, Finjan agreed to provide documents leading up to the 2009 license with M86 and
`
`nothing after. For RFP 14, Finjan agreed to produce nothing. The responses to the other RFPs do
`
`not clearly say what Finjan will or will not produce.
`
`RFPs 10 and 12 seek sales and revenue information concern the Trustwave products that
`
`allegedly embody Finjan’s patents. For RFP 10, Finjan says no, and for RFP 12, Finjan’s
`
`response is unclear. RFP 15 seeks documents relating to KPMG’s audit of Trustwave concerning
`
`royalties allegedly owed to Finjan. In response, Finjan refuses.
`
`The Court finds that these RFPs seek relevant information. Finjan has put its relationship
`
`with Trustwave at issue by claiming that Trustwave’s products use Finjan’s patented technology,
`
`2
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:17-cv-05659-WHA Document 571 Filed 07/01/19 Page 3 of 4
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`and then using this alleged fact in support of its claim for injunctive relief and as secondary
`
`evidence of non-obviousness. RFPs 3-5 and 13 assume that Finjan’s assertions about Trustwave
`
`using its patents are true and then seek documents that are relevant to determining the degree of
`
`comparability between the Trustwave license and the hypothetical negotiation in this case, as well
`
`as to calculating a reasonable royalty. The documents sought by RFPs 10, 12, 14 and 15 are
`
`relevant to determining the extent to which it is actually true that Trustwave’s products embody
`
`Finjan’s patents.
`
`Finjan argues that documents about its lawsuit against Trustwave are not relevant to
`
`Juniper’s damages in this case. However, that argument is a straw man. The documents Juniper is
`
`seeking about that lawsuit relate to the extent to which Trustwave uses Finjan’s patented
`
`technology, which as stated above, is relevant to Finjan’s injunction claim and to the commercial
`
`success of Finjan’s patents.1
`
`Finjan asserts that none of the requested documents are relevant to secondary
`
`considerations of non-obviousness. However, the extent to which Trustwave’s sales reflect the
`
`commercial success of Finjan’s patents is very much at issue in the lawsuit between Finjan and
`
`Trustwave, and that issue is relevant to non-obviousness. Likewise, Finjan is probably correct that
`
`whether Trustwave still sells products that embody its patents “does not dispose of Finjan’s
`
`irreparable harm claims,” but information need not be dispositive to be discoverable, merely
`
`relevant.
`
`Finjan alternatively argues that in the event the Court determines that these documents are
`
`relevant, it should deny the motion to compel anyway because Juniper has pending ESI requests
`
`that may result in the production of these documents. The Court finds that argument confusing.
`
`The Court is ordering Finjan to produce responsive documents but not telling Finjan how to do it.
`
`If Finjan can locate responsive documents through an ESI search, it is free to produce them that
`
`way.
`
`
`1 The Court agrees with Finjan that none of these RFPs is relevant to Juniper’s marking defense
`given Finjan’s representation that is not alleging constructive notice at the upcoming trial. ECF
`No. 543-3.
`
`3
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:17-cv-05659-WHA Document 571 Filed 07/01/19 Page 4 of 4
`
`
`
`Finjan also argues that Juniper can subpoena some of this information from Trustwave.
`
`However, party discovery is typically easier and faster than non-party discovery.
`
`Finally, Finjan asserted other objections in its RFP responses but does not argue any of
`
`them in the letter brief. Accordingly, the Court considers those objections waived.
`
`The Court ORDERS Finjan to produce non-privileged documents responsive to RFPs 3-5,
`
`10 and 12-15.
`
`
`
`IT IS SO ORDERED.
`
`
`
`Dated: July 1, 2019
`
`
`
`
`
`THOMAS S. HIXSON
`United States Magistrate Judge
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`