Case 4:18-cv-07229-YGR Document 44-1 Filed 02/28/20 Page 1 of 3
`
`EDWARD G. POPLAWSKI (SBN 113590)
`epoplawski@wsgr.com
`OLIVIA M. KIM (SBN 228382)
`okim@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Telephone: (323) 210-2901
`Facsimile: (866) 974-7329
`
`RYAN R. SMITH (SBN 229323)
`rsmith@wsgr.com
`CHRISTOPHER D. MAYS (SBN 266510)
`cmays@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`Facsimile: (650) 493-6811
`
`Attorneys for Defendant
`QUALYS INC.
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`OAKLAND DIVISION
`
`CASE NO.: 4:18-cv-07229-YGR
`
`DECLARATION OF
`CHRISTOPHER D. MAYS IN
`SUPPORT OF DEFENDANT
`QUALYS INC.’S MOTION FOR
`LEAVE TO AMEND ANSWER AND
`AFFIRMATIVE DEFENSES
`
`Judge:
`
`Hon. Yvonne Gonzalez
`Rogers
`
`April 7, 2020
`Date:
`2:00 pm
`Time:
`Location: Courtroom 1, 4th Floor
`
`))))))))))))))))
`
`FINJAN, INC., a Delaware Corporation,
`
`Plaintiff,
`
`v.
`
`QUALYS INC., a Delaware Corporation,
`
`Defendant.
`
`CASE NO. 4:18-cv-07229-YGR
`
`MAYS DECL. ISO
`MOT. TO AMEND ANSWER
`
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`

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`Case 4:18-cv-07229-YGR Document 44-1 Filed 02/28/20 Page 2 of 3
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`I. Christopher D. Mays, the undersigned, declare as follows:
`1.
`I am an attorney at law, duly licensed to practice before all the courts of the State of
`California. I am an associate with the law firm of Wilson Sonsini Goodrich Rosati, and am
`counsel of record for Defendant Qualys Inc. (“Qualys”). I submit this declaration in support of
`Qualys’s Motion for Leave to File a Second Amended Answer.
`2.
`Unless otherwise stated, I have personal knowledge of the facts set forth in this
`declaration.
`In this litigation, no depositions have yet been taken. The parties have begun, but
`3.
`not completed, their respective document productions in this case. For example, the parties have
`exchanged email discovery requests, but have not yet produced emails based on those requests
`(per an agreed-upon production schedule).
`4.
`With respect to Qualys’ proposed new affirmative defenses, many of the relevant
`documents have already been produced to Finjan or were in its possession from the start. For
`example, Finjan’s license agreement with Trend Micro, Inc. (“Trend Micro”)—on which these
`defenses are premised—is a Finjan document. Similarly, on January 22, 2020, Qualys produced
`technical documents to Finjan showing Qualys’ use of Trend Micro software that Qualys contends
`is licensed to the Patents-in-Suit under Finjan’s agreement with Trend Micro. Likewise, in the
`ordinary course of business in the Patent Office, the Reexamination Certificate that it issued
`cancelling claims of the ’305 Patent would normally be transmitted to Finjan as the party-in-
`interest in those proceedings. Although Finjan has not yet produced that reexamination certificate,
`it is a matter of public record.
`5.
`Patent Local Rule 3-2 requires a patentee asserting a claim of infringement to
`produce all license agreements pertaining asserted patents. The patentee is required to produce
`these license agreements at the same time it serves its Patent Local Rule 3-1 Infringement
`Contentions. In this case, Finjan served its Infringement Contentions on April 19, 2019.
`However, it did not produce its license agreement with Trend Micro until September 3, 2019.
`Attached as Exhibit A is a true and correct copy of Qualys’s proposed Second
`6.
`Amended Answer.
`
`CASE NO. 4:18-cv-07229-YGR
`
`-1-
`
`MAYS DECL. ISO
`MOT. TO AMEND ANSWER
`
`

`

`Case 4:18-cv-07229-YGR Document 44-1 Filed 02/28/20 Page 3 of 3
`
`Attached as Exhibit B is a true and correct copy of a Reexamination Certificate for
`7.
`U.S. Patent No. 7,975,305, dated January 29, 2020.
`Attached as Exhibit C is a true and correct copy of a press release dated February
`8.
`14, 2011, entitled “Qualys Releases Integration with Trend Micro Suite of Threat Protection
`Offerings.”
`Attached as Exhibit D is a true and correct copy of a document entitled
`9.
`“Confidential Patent License Agreement” between Finjan and Trend Micro. It is dated June 29,
`2018 and is bates labeled FINJAN-QUALYS 044290 -FINJAN-QUALYS 044321.
`Attached as Exhibit E is a true and correct copy of Appendix B to Finjan’s
`10.
`Infringement Contentions, ’968 Claim Chart.
`Attached as Exhibit F is a true and correct copy of Appendix A to Finjan’s
`11.
`Infringement Contentions, ‘844 Claim Chart.
`Attached as Exhibit G is a true and correct copy of Appendix C to Finjan’s
`12.
`Infringement Contentions ’731 Claim Chart.
`Attached as Exhibit H is a true and correct copy of Appendix G to Finjan’s
`13.
`Infringement Contentions ’494 Claim Chart.
`Attached as Exhibit I is a true and correct copy of U.S. Patent No. 7,975,305.
`14.
`Attached as Exhibit J is a true and correct copy of an email string dated January
`15.
`31, 2020 RE: [EXTERNAL] RE: Finjan v. Qualys: Claim Construction.
`I declare under penalty of perjury of the laws of the United States of America that the
`foregoing is true and correct and that this Declaration is executed this 28th day of February 2020,
`at Morgan Hill, California.
`
`By:
`
`/s/ Christopher D. Mays
`Christopher D. Mays
`
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`CASE NO. 4:18-cv-07229-YGR
`
`-2-
`
`MAYS DECL. ISO
`MOT. TO AMEND ANSWER
`
`