Case 4:18-cv-07229-YGR Document 51-6 Filed 03/13/20 Page 1 of 4
`Case 4:18-cv-07229—YGR Document 51-6 Filed 03/13/20 Page 1 of 4
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`EXHIBIT 5
`
`EXHIBIT 5
`
`REDACTED VERSION OF
`
`DOCUMENT SOUGHT TO BE
`
`REDACTED VERSION OF
`DOCUMENT SOUGHT TO BE
`SEALED
`
`SEALED
`
`

`

`Case 4:18-cv-07229-YGR Document 51-6 Filed 03/13/20 Page 2 of 4
`From: Williams, Daniel
`Sent: Fri, 19 Jul 2019 17:23:24
`To: Smith, Ryan
`Cc: Kim, Olivia; Poplawski, Edward; Frankel, Aaron; Andre, Paul; Kobialka, Lisa; Hannah, James
`Subject: RE: Finjan licenses
`Sensitivity: Normal
`
`Ryan,
`
`Finjan reached out to Qualys over 6 weeks ago regarding license production with zero response from Qualys. Qualys’ timely
`cooperating will greatly expedite this process.
`
`Finjan expects to make a significant production next week that will include certain licenses that we are currently able to
`produce and that have not already been produced. Since you have not agreed to the terms set forth by the parties that
`placed conditions upon their consent to disclosure, we have put you in touch with those parties in order to provide an
`opportunity for Qualys to negotiate an acceptable resolution with those parties directly. With respect to Finjan’s recent
`license with
`, we need to know if Qualys agrees to the conditions required for
` consent to production, which
`has been sent in a previous email. If Qualys does not agree to
` conditions, then we will likewise put you in touch
`with counsel for
` to confer on this issue.
`
`, Finjan is completely in the dark as to the status of the negotiations
`As for the production of Finjan’s license with
`between Qualys and
`. Please apprise us of the status of the discussions between Qualys and
` since we
`introduced you to
` counsel by email on May 7, 2019.
`
`With respect to Finjan’s license with
`production.
`
`In response to the other email you sent earlier this morning, please provide times next week that you are available in case
`we still need to meet and confer on the source code availability issue. We believe this emails resolves your questions
`regarding license agreements but, if that is not the case, we can also discuss during next week’s meet and confer.
`
`Regards,
`Dan
`
`
`
` and Trend Micro, Finjan has reached out to these parties seeking consent to
`
`Daniel Williams
`Associate
`
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road, Menlo Park, California 94025
`T 650.752.1735 F 650.752.1800
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain information that is confidential,
`privileged or legally protected. Any unauthorized use or dissemination of this communication is strictly prohibited. If you have received this
`communication in error, please immediately notify the sender by return e-mail message and delete all copies of the original communication. Thank you
`for your cooperation.
`
`
`
`From: Smith, Ryan <rsmith@wsgr.com>
`
`

`

`Case 4:18-cv-07229-YGR Document 51-6 Filed 03/13/20 Page 3 of 4
`Sent: Friday, July 19, 2019 9:18 AM
`To: Williams, Daniel <DDWilliams@KRAMERLEVIN.com>
`Cc: Kim, Olivia <okim@wsgr.com>; Poplawski, Edward <epoplawski@wsgr.com>; Frankel, Aaron
`<AFrankel@KRAMERLEVIN.com>; Andre, Paul <PAndre@KRAMERLEVIN.com>; Kobialka, Lisa
`<LKobialka@KRAMERLEVIN.com>; Hannah, James <JHannah@KRAMERLEVIN.com>
`Subject: [EXTERNAL] Re: Finjan licenses
`
`Dan,
`
`As you know, LPR 3-2 states that the plaintiff must produce “[a]ll agreements, including licenses, transferring an interest in
`any patent-in-suit.” Finjan has not yet complied with its obligation to do so. That being said, Qualys presently has no
`intention of disclosing license agreements with
` to in-house counsel for Qualys. However,
`we don’t yet know how (if at all) these agreements may be utilized during the litigation. To the extent that such materials
`are utilized in expert reports, for example, it is possible that Qualys’ in-house counsel will review those reports.
`
` regarding potential use of its license
` additional request, Finjan is free to provide notice to
`Regarding
` wish to
`agreement. But it is unclear why Qualys would jointly undertake that obligation. To that end, if Finjan and/or
`seal the courtroom, they would need to address that with the court. I presently do not see any reason why Qualys would
`oppose that request, but we cannot provide a blanket non-opposition without a better understanding of how the license is
`to be used. For example, it may be possible to merely instruct a witness to avoid stating the amount on the record and/or to
`show an exhibit to the jury without displaying the exhibit on other screens.
`
`Finally, please let us know if Finjan is withholding any additional licenses beyond those identified in your email.
`
`Best regards,
`Ryan
`
`
`Ryan R. Smith | Wilson Sonsini Goodrich & Rosati | 650 Page Mill Road | Palo Alto, CA 94304 |
`Direct: 650.849.3345 | Cell: 650.269.0822 | Email: rsmith@wsgr.com
`
`
`
`From: Daniel Williams <DDWilliams@KRAMERLEVIN.com>
`Date: Tuesday, June 4, 2019 at 10:55 AM
`To: "Smith, Ryan" <rsmith@wsgr.com>
`Cc: "Kim, Olivia" <okim@wsgr.com>, Edward Poplawski <epoplawski@wsgr.com>, Aaron Frankel
`<AFrankel@KRAMERLEVIN.com>, Paul Andre <PAndre@KRAMERLEVIN.com>, Lisa Kobialka
`<LKobialka@KRAMERLEVIN.com>, James Hannah <JHannah@KRAMERLEVIN.com>
`Subject: Finjan licenses
`
`Ryan,
`
` Each of these
`Finjan has a license agreement with each of the following third parties:
`third parties consents to Finjan’s production of its license agreement with Finjan in this case so long as it is designated
`Highly Confidential – Attorney’s Eyes Only and is not disclosed to in-house counsel for Qualys. Please confirm that Qualys
`agrees to these conditions.
`
` consent is further conditioned on the parties giving
` license,
`Additionally, with respect to the production of the
`advanced notice prior to use at trial (no less than 2-week notice prior to introduction at trial) and requesting to seal the
`Court room in the event it is sought for use at trial. Please confirm that Qualys agrees to these conditions.
`
`If Qualys is unwilling to agree to these conditions, we will put you in touch with counsel for the licensees to confer on these
`
`

`

`Case 4:18-cv-07229-YGR Document 51-6 Filed 03/13/20 Page 4 of 4
`
`issues.
`
`Regards,
`Dan
`
`
`Daniel Williams
`Associate
`
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road, Menlo Park, California 94025
`T 650.752.1735 F 650.752.1800
`ddwilliams@kramerlevin.com
`
`Bio
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain information that is confidential,
`privileged or legally protected. Any unauthorized use or dissemination of this communication is strictly prohibited. If you have received this
`communication in error, please immediately notify the sender by return e-mail message and delete all copies of the original communication. Thank you
`for your cooperation.
`
`
`This email and any attachments thereto may contain private, confidential, and privileged material for the sole use of the intended
`recipient. Any review, copying, or distribution of this email (or any attachments thereto) by others is strictly prohibited. If you
`are not the intended recipient, please contact the sender immediately and permanently delete the original and any copies of this
`email and any attachments thereto.
`
`