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`Case 4:18-cv-07229—YGR Document 81-4 Filed 07/23/20 Page 1 of 14
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`QUALYS EXHIBIT D
`QUALYS EXHIBIT D
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 1 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 2 of 14
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`EDWARD G. POPLAWSKI (State Bar No. 113590)
`epoplawski@wsgr.com
`OLIVIA M. KIM (State Bar No. 228382)
`okim@wsgr.com
`LAURA E. EVANS (State Bar No. 254547)
`levans@wsgr.com
`PAUL M. MCADAMS (State Bar No. 276697)
`pmcadams@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071
`Telephone: (323) 210-2900
`Facsimile: (866) 974-7329
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`Counsel for Defendant
`BLUE COAT SYSTEMS, INC
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`CASE NO.: 13-cv-03999-BLF-PSG
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`BLUE COAT’S NOTICE OF
`MOTION AND MOTION TO
`COMPEL DISCOVERY
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` Date: October 29, 2014
` Time: 10 A.M.
` Place: Courtroom 5, 4th Floor
` Before: Hon. Paul S. Grewal
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`
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`v.
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`BLUE COAT SYSTEMS, INC., a Delaware
`Corporation,
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`Defendant.
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`CASE NO. 3:13-CV-03999-BLF-PSG
`6659983
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 2 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 3 of 14
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`TABLE OF CONTENTS
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`NOTICE OF MOTION AND MOTION ................................................................................... - 1 -
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`RELIEF REQUESTED .............................................................................................................. - 1 -
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`MEMORANDUM OF POINTS AND AUTHORITIES ........................................................... - 1 -
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`I.
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`II.
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`INTRODUCTION .......................................................................................................... - 1 -
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`LEGAL STANDARD .................................................................................................... - 2 -
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`III.
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`ARGUMENT ................................................................................................................. - 3 -
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`A.
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`B.
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`Finjan Should Be Compelled to Provide a Supplementary Response to Blue
`Coat’s Interrogatory No. 7 That Details Finjan’s Bases for Claiming Certain
`Priority Dates ...................................................................................................... - 3 -
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`Finjan Should be Compelled to Produce Additional Documents Responsive
`to RFP Nos. 61-66, Pertaining To Previous Legal Proceedings/Previous
`Testimony ........................................................................................................... - 6 -
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`CONCLUSION ............................................................................................................ - 10 -
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`IV.
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`CASE NO. 3:13-CV-03999-BLF-PSG
`6659983
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`-i-
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 3 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 4 of 14
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`TABLE OF AUTHORITIES
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`CASES
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` PAGES
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`Apple, Inc. v. Samsung Elecs., Co., No. 11-CV-1846 LHK (PSG), 2012 U.S. Dist.
`LEXIS 9921 (N.D. Cal. Jan. 27, 2012) ................................................................................10
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`Apple, Inc. v. Samsung Elecs., Co., No. 12-CV-0630-LHK-PSG, 2013 U.S. Dist.
`LEXIS 91450 (N.D. Cal. June 26, 2013) ...............................................................................9
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`Cross Med. Prods. v. Depuy Acromed, Inc., No. SA-CV-00876-GLT, 2003 U.S.
`Dist. LEXIS 26720 (C.D. Cal. Jan. 7, 2003) ..........................................................................4
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`Go Medical Industries Pty., Ltd. v. Inmed Corp., 471 F.3d 1264 (Fed. Cir. 2006) ...........................4
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`High Point Sarl v. Sprint Nextel Corp., No. 09-2269-CM-DJW, 2011 U.S. Dist.
`LEXIS 101700 (D. Kan. Sept. 2011) .....................................................................................9
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`In re Chu, 66 F.3d 292 (Fed. Cir. 1995) .............................................................................................4
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`McKesson Information Solutions LLC v. Epic Systems Corp., 242 F.R.D. 689 (N.D.
`Georgia, 2007) ........................................................................................................................4
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`Vasudevan Software, Inc. v. MicroStrategy Inc., No. 11-CV-06637-RS-PSG, 2013
`U.S. Dist. LEXIS 31902 (N.D. Cal. Feb. 15, 2013) ...............................................................9
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`
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`RULES
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`FED. R. CIV. P. 26 .......................................................................................................................2, 3, 4
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`FED. R. CIV. P. 33 ...........................................................................................................................3, 5
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`FED. R. CIV. P. 34 ...............................................................................................................................3
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`FED. R. CIV. P. 37 .......................................................................................................................1, 3, 6
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`CASE NO. 3:13-CV-03999-BLF-PSG
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`- ii -
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 4 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 5 of 14
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`NOTICE OF MOTION AND MOTION
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`PLEASE TAKE NOTICE that on October 29, 2014, or as soon thereafter as the matter may be
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`heard by the Honorable Paul S. Grewal in Courtroom 5, 4th Floor, United States District Court for the
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`Northern District of California, 280 South 1st Street, San Jose, CA 95113, Defendant Blue Coat
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`Systems, Inc. (“Blue Coat”) shall and hereby does move the Court for an order granting Blue Coat’s
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`motion to compel Finjan to provide discovery. The motion is based on this notice of motion and
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`supporting memorandum of points and authorities, the Declaration of Laura Evans in Support of Blue
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`Coat System, Inc.’s Motion to Compel Discovery (“Evans Decl.”) and exhibits attached thereto, and
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`such other written or oral argument as may be presented at or before the time this motion is deemed
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`submitted by the Court.
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`RELIEF REQUESTED
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`Blue Coat seeks an order pursuant to Fed. R. Civ. P. 37(a) compelling Finjan to complete the
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`following discovery by November 1, 2014: (1) to supplement its response to Blue Coat’s
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`Interrogatory No. 7 to provide a complete and detailed identification of which subject matter in
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`various patent applications Finjan relies on to purportedly support Finjan’s contentions that the
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`patents-in-suit are entitled to certain priority dates and (2) to produce documents responsive to
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`Blue Coat’s Requests for Production Nos. 61-66 relating to prior litigation documents to the extent
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`that they have been withheld on the grounds of third party confidentiality obligations.
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`INTRODUCTION
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`Blue Coat moves to compel Finjan to produce two key types of discovery that Finjan is
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`I.
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`withholding. The first type concerns the support for Finjan’s contentions that it is entitled to early
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`priority dates for the patents-in-suit. Blue Coat served an interrogatory asking for Finjan to
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`describe in detail the bases for these contentions. Ignoring the request for a detailed description of
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`the bases for Finjan’s contentions, Finjan lists only the filing dates for certain patent applications
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`CASE NO. 3:13-CV-03999-BLF-PSG
`6659983
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`- 1 -
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 5 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 6 of 14
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`and patents to which the patents-in-suit purportedly claim priority. But even after Blue Coat
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`repeatedly explained during meet and confers that what it seeks is an identification of the specific
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`subject matter of those patents and patent applications that Finjan asserts support a finding that
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`what is claimed in the patents-in-suit was actually found in those patents and patent applications,
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`Finjan has refused to provide this information. Yet this is critical information because Blue Coat
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`will discuss the applicable priority dates in its opening invalidity expert report, and Blue Coat will
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`be greatly hampered in rebutting Finjan’s positions if it does not know the bases for Finjan’s
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`positions. Blue Coat thus respectfully requests that the Court order Finjan to supplement its
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`interrogatory responses to provide this critical information.
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`Second, Blue Coat seeks highly relevant documents that Finjan withholds on third party
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`confidentiality grounds. Finjan has litigated some of the patents-in-suit as well as related patents
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`in prior and pending litigation. Documents from those prior litigations are highly relevant to this
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`litigation. For example, Finjan’s prior interpretation of the previously asserted patents is very
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`relevant to the scope of the application of the patents-in-suit in this case. Yet Finjan refuses to
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`produce certain documents responsive to Blue Coat’s requests for production solely on the
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`grounds that third parties have not consented to their production. Where, as here, third party
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`confidential information is relevant to the issues in litigation, a protective order—such as the one
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`entered in this matter—provides those third parties with adequate protection under the law. Blue
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`Coat thus respectfully requests that the Court order Finjan to produce these withheld materials.
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`II.
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`LEGAL STANDARD
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`Federal Rule of Civil Procedure 26(b) establishes a broad scope of discovery, stating that
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`“[p]arties may obtain discovery regarding any matter, not privileged, that is relevant to the claim
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`or defense of any party.” FED. R. CIV. P. 26(b)(1). The rule further advises that “[r]elevant
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`information need not be admissible at the trial if the discovery appears reasonably calculated to
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`CASE NO. 3:13-CV-03999-BLF-PSG
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 6 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 7 of 14
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`lead to the discovery of admissible evidence.” Id. When a party fails to respond to interrogatories
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`served under Rule 33 or document requests served under Rule 34, the party that served those
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`requests may move to compel such responses pursuant to Rule 37(a). “[A]n evasive or incomplete
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`disclosure, answer, or response is to be treated as a failure to disclose, answer, or respond.” FED.
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`R. CIV. P. 37(a)(3).
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`III. ARGUMENT
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`A.
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`Finjan Should Be Compelled to Provide a Supplementary Response to Blue
`Coat’s Interrogatory No. 7 That Details Finjan’s Bases for Claiming Certain
`Priority Dates
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`Blue Coat’s Interrogatory No. 7 seeks the detailed grounds for Finjan’s contentions that it
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`is entitled to the priority dates it claims for the patents-in-suit in its Preliminary Infringement
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`Contentions:
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`INTERROGATORY NO. 7
`Describe in detail the bases for Finjan's contentions that it is entitled to the
`prior[ity] dates of the asserted claims of the patents-in-suit identified in its
`Preliminary Infringement Contentions and any amendments thereto.
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`See Exh. A (Finjan’s Second Supplemental Objections and Responses to Blue Coat’s
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`Interrogatory No. 7) at 1. Indeed, Blue Coat served its Interrogatory No. 7 to find out how
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`Finjan intended to support its contentions in its Preliminary Infringement Contentions that the
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`patents-in-suit were entitled to certain early priority dates.
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`For example, the ’731 patent asserted in this case was filed on May 3, 2004 as a
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`continuation-in-part of an application that issued as U.S. Patent No. 6,804,780 (“the ’780
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`patent”), which was filed on March 30, 2000. See Exh. B (U.S. Patent No.7,418,731, “the ’731
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`patent”). The ’780 patent in turn was a continuation of an application that became U.S. Patent
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`No. 6,092,194 (“the ’194 patent”), which was filed on November 6, 1997. See id. The ’194
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`patent in turn claimed priority to a provisional patent application, U.S. Patent Application Serial
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`Number 60/030,639, which was filed on November 8, 1996 (“the ’639 application”). Finjan
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`CASE NO. 3:13-CV-03999-BLF-PSG
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 7 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 8 of 14
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`appears to contend in its Preliminary Infringement Contentions that the ’731 patent claims are
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`entitled to claim priority to the ’639 provisional application. See Exh. C (Preliminary
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`Infringement Contentions) at 14 (claiming a priority date of November 8, 1996).1 If the claims
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`of the ’731 patent are supported by the original subject matter of the ’639 application, Finjan
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`may then be entitled to claim November 8, 1996 as the priority date of the ’731 patent. Go
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`Medical Industries Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1270 (Fed. Cir. 2006). If, as Blue
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`Coat contends, however, the ’731 claims are not properly supported by the subject matter of the
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`earlier patents or patent applications, then the ’731 patent can only claim a priority date of May
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`3, 2004. See id. (explaining that a patent claim in a continuation-in-part application based on
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`“[n]ew subject matter does not receive the benefit of the earlier priority date”).
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`This is a crucial distinction because publications will only be considered prior art if they
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`are dated before the priority date of the ’731 patent. See, e.g., Cross Med. Prods. v. Depuy
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`Acromed, Inc., No. SA-CV-00876-GLT, 2003 U.S. Dist. LEXIS 26720, at *18, (C.D. Cal. Jan. 7,
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`2003) (holding that six references having filing or publication dates after the April 26, 1990,
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`priority date of the patent at issue cannot be considered prior art); see also In re Chu, 66 F.3d
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`292, 297 (Fed. Cir. 1995) (holding that a reference was properly considered prior art because the
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`earlier filed application did not support the patent’s claims, thereby precluding reliance on its
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`earlier priority date). The information sought by Blue Coat is thus highly relevant to its
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`invalidity defense to patent infringement and is undoubtedly discoverable under Rule 26. See,
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`e.g., McKesson Information Solutions LLC v. Epic Systems Corp., 242 F.R.D. 689, 692 (N.D.
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`1 Blue Coat notes that Finjan is inconsistent in its positions with respect to the priority date of
`the ’731 patent. Finjan’s infringement contentions claim a November 8, 1996 date, but its latest
`response to Blue Coat’s Interrogatory No.7 claims a November 6, 1997 date. See Exh. C
`(Preliminary Infringement Contentions) at 14 (claiming a priority date of November 8, 1996);
`Exh. A at 2 (“For the ‘731 patent, Finjan properly claims priority to Application No. 08/964,388
`and is therefore entitled to November 6, 1997 as its priority date.”).
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`CASE NO. 3:13-CV-03999-BLF-PSG
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 8 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 9 of 14
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`Georgia, 2007) (holding that documents pertaining to the priority date of a patent are relevant
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`and must be produced).
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`But in its latest response to Interrogatory No. 7, Finjan simply lists the patent application
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`or patent numbers and priority dates upon which it intends to rely without actually describing in
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`detail the bases for its contentions:
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`For the ’780 patent, Finjan properly claimed priority to Provisional
`Application No. 60/030,639 and is therefore entitled to November 8, 1996
`as its priority date.
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`For the ’844 patent, Finjan properly claimed priority to Provisional
`Application No. 60/030,639 and is therefore entitled to November 8, 1996
`as its priority date.
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`For the ’731 patent, Finjan properly claimed priority to Provisional
`Application No. 08/964,388 and is therefore entitled to November 6, 1997
`as its priority date.
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`For the ’822 patent, Finjan properly claimed priority to Patent No.
`6,167,520 and is therefore entitled to January 29, 1997 as its priority date.
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`For the ’633 patent, Finjan properly claimed priority to Patent No.
`6,167,520 and is therefore entitled to January 29, 1997 as its priority date.
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`See Exh. A (Finjan’s Second Supplemental Objections and Responses to Blue Coat’s
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`Interrogatory No. 7) at 2. After listing each patent application or patent number and priority
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`date, Finjan merely concludes with the following statement:
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`Finjan properly claims a priority date (distinguished from invention date)
`for the asserted claims as set forth above.
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`Id. Beyond that, Finjan provides no explanation or justification for why it believes it should be
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`entitled to the priority dates listed above. Id. Finjan then lists the bates numbers of the file
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`histories of each of the patents-in-suit pursuant to Rule 33(d), but it fails to point to any specific
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`passages of the original applications or patents to which it contends priority may be claimed. Id.
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`at 2-3.
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`The parties met and conferred about Finjan’s responses to this interrogatory repeatedly,
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`but Finjan still refuses to remedy its incomplete and evasive responses to this basic
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`CASE NO. 3:13-CV-03999-BLF-PSG
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`inquiry. Evans Decl. at ¶ 5; see also id. at ¶ 6 (8/26/14 letter from P. McAdams to B. Wells); id.
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`at ¶ 7 (5/28/14 letter from O. Kim to B. Wells); id. at ¶ 8 (6/9/14 letter from B. Wells to O.Kim).
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`Finjan’s failure to provide a substantive response to Blue Coat’s Interrogatory No. 7—
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`information which is essential to Blue Coat’s invalidity defenses—necessitates this motion under
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`F.R.C.P. Rule 37(a). This issue must be resolved in order to determine the scope and content of
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`the prior art, which in turn will bear on the invalidity of the patents-in-suit. Absent this
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`information, Blue Coat will not be in a position to address Finjan’s priority date contentions in
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`Blue Coat’s opening expert report regarding invalidity of the patents-in-suit. Blue Coat is
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`entitled to a full response to its interrogatory and respectfully requests that the Court order Finjan
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`to provide a complete and detailed response explaining which subject matter contained in the
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`various patent applications Finjan relies on to purportedly support Finjan’s contentions that the
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`patents-in-suit are entitled to the priority dates Finjan claims.
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`B.
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`Finjan Should be Compelled to Produce Additional Documents Responsive to
`RFP Nos. 61-66, Pertaining To Previous Legal Proceedings/Previous
`Testimony
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`This is not the first time that Finjan has asserted the patents-in-suit or related patents.
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`Finjan has in fact asserted its patents multiple times in the past, and Finjan is currently involved in
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`numerous other cases where it has asserted its portfolio of patents. See Evans Decl. at ¶ 9 (Chart
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`of Finjan litigations and asserted patents). The patents-in-suit are either identical to or related to
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`the patents asserted in these other cases. See id. Blue Coat seeks tailored discovery regarding
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`these other patent cases given the nexus between the patents-in-suit and the patents asserted in the
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`other Finjan patent litigation.
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`On March 3, 2014, Blue Coat served the following six requests for production on Finjan:
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`REQUEST FOR PRODUCTION NO. 61:
`Documents relating to any legal proceedings involving any of the patents-in-suit
`or related patents or patent applications, including all pleadings, transcripts of
`depositions (with exhibits); written discovery (including interrogatories and
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`CASE NO. 3:13-CV-03999-BLF-PSG
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`

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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 10 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 11 of 14
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`responses, requests for admissions and responses, document requests and
`responses); expert witness reports; witness lists; and transcripts of all hearings and
`other court proceedings, all documents relating to settlement of any claim of
`infringement of any patents-in-suit or any foreign counterpart thereto.
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`REQUEST FOR PRODUCTION NO. 62:
`Any documents relating to testimony previously given by any person from whom
`you expect to offer testimony in this case.
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`REQUEST FOR PRODUCTION NO. 63:
`Documents relating to Finjan v. Aladdin, Case No. 08-cv-300 (D. Del.) (and any
`appeal thereof), including all pleadings, transcripts of depositions (with exhibits);
`written discovery (including interrogatories and responses, requests for
`admissions and responses, document requests and responses); expert witness
`reports; witness lists; and transcripts of all hearings and other court proceedings,
`all documents relating to settlement of any claim of infringement of any patents-
`in-suit or any foreign counterpart thereto.
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`REQUEST FOR PRODUCTION NO. 64:
`Documents relating to Secure Computing et al., No. 06-cv-369 (D. Del., Judge
`Sleet) (and any appeal thereof), including all pleadings, transcripts of depositions
`(with exhibits); written discovery (including interrogatories and responses,
`requests for admissions and responses, document requests and responses); expert
`witness reports; witness lists; and transcripts of all hearings and other court
`proceedings, all documents relating to settlement of any claim of infringement of
`any patents-in-suit or any foreign counterpart thereto.
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`REQUEST FOR PRODUCTION NO. 65:
`Documents relating to Finjan v. Symantec et al., No. 1 0-cv-593 (D. Del., Judge
`Sleet) (and any appeal thereof), including all pleadings, transcripts of depositions
`(with exhibits); written discovery (including interrogatories and responses,
`requests for admissions and responses, document requests and responses); expert
`witness reports; witness lists; and transcripts of all hearings and other court
`proceedings, all documents relating to settlement of any claim of infringement of
`any patents-in-suit or any foreign counterpart thereto.
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`REQUEST FOR PRODUCTION NO. 66:
`Any and all sworn testimony, oral or written, including declarations and affidavits
`previously provided by any named inventor of the patents-in-suit.
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`Evans Decl. at ¶ 10 (Finjan’s Responses to Blue Coat’s First Set of RFPs (Nos. 1-70)) at 70-76. In
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`response, Finjan agreed to produce “responsive, non-privileged documents located after a
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`reasonable search of documents in its custody and control,” subject to its objections. Id. One
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`objection Finjan made was to the extent any request sought “confidential, business, financial,
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`CASE NO. 3:13-CV-03999-BLF-PSG
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 11 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 12 of 14
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`proprietary or sensitive information or trade secrets of third parties, which is subject to pre-
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`existing protective order(s) and/or confidentiality agreements.” Id.
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`The parties met and conferred regarding these requests for months.2 Finjan initially
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`refused to produce documents containing any third party confidential information, arguing in part
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`that the documents were not relevant to this case, but finally agreed to seek consent for their
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`production. Evans Decl. at ¶ 8 (6/9/2014 letter from B. Wells to O. Kim); Evans Decl. at ¶ 11
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`(7/2/14 email from L. Evans to B. Wells). But Finjan did not follow up to inform Blue Coat that it
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`had not obtained the necessary consents; only when Blue Coat again raised the issue during a meet
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`and confer did Finjan indicate that it had for the most part been unsuccessful in obtaining such
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`consent. Evans Decl. at ¶ 13. Finjan has now refused to produce any documents containing third
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`party confidential information, and the parties are thus at an impasse. Evans Decl. at ¶ 14.
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`As part of the meet and confer process, and to try and narrow the issues in dispute, Blue
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`Coat provided Finjan with a specific list of categories of documents Blue Coat seeks:
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`• Court filings such as:
`o Motions and related filings, including summary judgment motions
`o Pre-trial filings (e.g., pre-trial statement, jury instructions)
`• Discovery-related materials such as:
`o Initial disclosures
`o Finjan responses to defendants’ discovery requests
`o Defendants’ responses related to invalidity and other public information (e.g.,
`inequitable conduct, laches, etc.)
`•
`Infringement contentions
`•
`Invalidity contentions
`• Expert reports such as:
`o All Finjan reports (infringement, damages, etc.)
`o Invalidity related reports (and any other reports containing primarily, or only public
`information)
`• Deposition transcripts such as:
`o Finjan fact witnesses
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`2 See, e.g., Evans Decl. at ¶ 12; see also id. at ¶ 6 (8/26/14 letter from P. McAdams to B.
`Wells); see also id. at ¶ 11 (7/16/14 email from B. Wells to L. Evans); see also id. at ¶ 11 (7/2/14
`email from L. Evans to B. Wells); id. at ¶ 7 (5/28/14 letter from O. Kim to B. Wells); id. at ¶ 8
`(6/9/14 letter from B. Wells to O.Kim).
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`CASE NO. 3:13-CV-03999-BLF-PSG
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`

`

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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 12 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 13 of 14
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`o Inventors
`o Finjan experts
`o Defense invalidity experts
`• Claim construction materials such as:
`o Joint Claim Construction Statements
`o All briefings
`o Hearing presentations (slides) and tutorials
`o Hearing transcripts
`o Presentations made at trial (slides, demonstratives, etc.)
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`Evans Decl. at ¶ 15 (6/12/2014 email from L. Evans to B.Wells). There is no question that the
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`documents sought are relevant. They all pertain to the manner in which Finjan has litigated its
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`patents previously, including Finjan’s interpretation of the patents-in-suit or related Finjan patents.
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`Under this Court’s “technological nexus” standard, these documents should be produced in light
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`of the overlap between the asserted patents in the prior litigations and the asserted patents in this
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`case. See, e.g., Apple, Inc. v. Samsung Elecs., Co., No. 12-CV-0630-LHK-PSG, 2013 U.S. Dist.
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`LEXIS 91450, at *87 (N.D. Cal. June 26, 2013) (“when other litigation shares a technological
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`nexus with the patents in the case, a presumption of relevance for all documents in that case
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`arises”); Vasudevan Software, Inc. v. MicroStrategy Inc., No. 11-CV-06637-RS-PSG, 2013 U.S.
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`Dist. LEXIS 31902, at *6 (N.D. Cal. Feb. 15, 2013) (“Similarity thus arises from whether the
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`other litigation involved patents, technology, or features similar to the patent-at-issue. . . .”).
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`The only reason that Finjan is withholding these documents is because of alleged third
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`party confidentiality obligations.3 But confidentiality alone “does not act as a bar to discovery and
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`is not grounds to withhold documents.” High Point Sarl v. Sprint Nextel Corp., No. 09-2269-CM-
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`DJW, 2011 U.S. Dist. LEXIS 101700, at *7 (D. Kan. Sept. 2011). To the extent that Finjan
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`opposes this motion on the grounds that it does not have the third parties’ permission to produce
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`these documents, the Protective Order in this case (Dkt. 16) should provide adequate protection
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`3 Blue Coat does not know whether these obligations stem from protective orders, contracts,
`or both.
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`CASE NO. 3:13-CV-03999-BLF-PSG
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` - 9 -
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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`

`

`
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`Case 5:13-cv-03999-BLF Document 108 Filed 10/09/14 Page 13 of 13Case 4:18-cv-07229-YGR Document 81-4 Filed 07/23/20 Page 14 of 14
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`for the third parties. See, e.g., Apple, Inc. v. Samsung Elecs., Co., No. 11-CV-1846 LHK (PSG),
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`2012 U.S. Dist. LEXIS 9921, at *40-41, (N.D. Cal. Jan. 27, 2012) (granting Samsung’s motion to
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`compel Apple source code that contained code proprietary to Intel after Intel withheld permission
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`for Apple to produce the code).
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`Accordingly, Blue Coat respectfully requests that the Court order Finjan to produce any
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`documents responsive to Blue Coat’s RFP Nos. 61-66 relating to prior litigation documents that
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`Finjan has been withholding on the grounds of third party confidentiality.
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`IV. CONCLUSION
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`Blue Coat respectfully requests that the Court order Finjan to provide the following
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`discovery no later than November 1, 2014: a) supplementation of Finjan’s response to Blue
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`Coat’s Interrogatory No. 7 to provide a complete and detailed response explaining what subject
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`matter contained in the various patent applications Finjan relies on to purportedly support Finjan’s
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`contentions that the patents-in-suit are entitled to the priority dates Finjan claims and b)
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`production of the categories of documents listed in Section IV from the other Finjan patent
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`litigations, to the extent not already produced.
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`Respectfully submitted,
`
`
`WILSON SONSINI GOODRICH & ROSATI
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`Professional Corporation
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`
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`By:
`/s/ Laura E. Evans
` EDWARD G. POPLAWSKI
`OLIVIA M. KIM
`LAURA E. EVANS
`PAUL M. MCADAMS
`
`Counsel for Defendant
`BLUE COAT SYSTEMS, INC.
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`DATED: October 9, 2014
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`BLUE COAT’S MOTION TO
`COMPEL DISCOVERY
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