Case 4:18-cv-07229-YGR Document 87 Filed 08/17/20 Page 1 of 8
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`August 17, 2020
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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 G – 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. Qualys Inc., Case No. 4:18-cv-07229-YGR
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`Dear Magistrate Judge Hixson:
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`Pursuant to your Standing Order in Civil Cases, the parties submit the following joint
`statement regarding Plaintiff Finjan, Inc.’s (“Finjan”) motion to compel Defendant Qualys Inc.
`(“Qualys”) to provide technical and damages-related documents, supplemental interrogatory
`responses, and additional deposition dates for its fact witnesses. Finjan also requests that the Court
`overrule Qualys’ objections to Finjan’s expert disclosure. Qualys respectfully requests the Court
`to compel Finjan to produce all relevant litigation documents from related cases involving at least
`one of the patents-in-suit as set forth below.
`The parties attest that they met and conferred on these issues by teleconference on July
`28, 2020, and further conferred by telephone and email on multiple occasions to attempt to
`narrow and resolve these disputes.1
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`Respectfully submitted,
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`/s/ Kristopher Kastens
`Kristopher Kastens (State Bar No. 254797)
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
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`Attorneys for Plaintiff
`Finjan, Inc.
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`/s/ Cristopher Mays
`Cristopher Mays (State Bar No. 266510)
`WILSON SONSINI GOODRICH & ROSATI
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`Attorneys for Defendant
`Qualys Inc.
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`1 Due to the COVID-19 pandemic, the parties met and conferred by teleconference in order to
`satisfy the in-person meet and confer requirement for discovery dispute resolution under the
`Court’s Standing Order.
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`Case 4:18-cv-07229-YGR Document 87 Filed 08/17/20 Page 2 of 8
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`Finjan’s Position
`A. The Court Should Compel Qualys to Produce Technical Documents.
`Qualys should be compelled to produce confidential technical documents. Early in
`discovery, Finjan requested production of specifications, architecture diagrams, flow charts, and
`similar development documents (see, e.g., Ex. 1 (Requests for Production Nos. 13, 16, 17)).
`These are highly relevant to the accused products. They are also standard production in patent
`cases involving software. Qualys initially claimed to be unaware if such documents existed or
`where to look for them. Finjan then learned that Qualys maintains several repositories with these
`documents. Qualys claimed it was incapable of searching these repositories (see Ex. 2, T.
`Gordnia email dated May 22, 2020, stating that it was “not possible” for Qualys to search its own
`repositories), but agreed to allow Finjan to search them on the source code review computer.
`Finjan did that, and identified scores of highly relevant, technical documents. Not being
`permitted to export documents from the source code computer, which has severe restrictions and
`requires in person access. Finjan identified responsive documents for Qualys to produce on July
`1, 2020. Although production of these documents requires nothing more than printing them,
`Qualys has not produced them. Qualys now states that it is withholding these documents, which
`are not emails, until the parties exchange ESI the week of August 17. Qualys states it will
`produce these document, but Finjan is required to include it in this letter because Qualys has
`continually broken previous discovery agreements.
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`B. The Court Should Compel the Damages-Related Discovery Sought by Finjan.
`Qualys should be compelled to produce damages related discovery that it has been
`withholding for months, even after Qualys agreed to produce the material. In particular, Finjan
`seeks production of documents showing billings/revenues, sales and revenue forecasts, market
`analyses, surveys, competitive analyses, development costs, marketing costs, valuations,
`bundling, pricing, and documents showing the extent of use. See, e.g., Ex. 1 (Finjan’s Requests
`for Production Nos. 23, 24, 26, 27, 30, 33, 34, 57, 62, and 63). This is fundamental damages
`discovery, which Qualys has refused to produce and has not basis to withhold. So far, Qualys
`has provided nothing except some public SEC filings and a single incomplete spreadsheet.
`Qualys should also be compelled to supplement its responses to interrogatories asking for
`financial information. For these, Qualys relies only on a 33(d) response to the nine public SEC
`filings and a single spreadsheet it did produce. See Ex. 3 (Qualys’ Responses to Interrogatory
`Nos. 3 and 6) and Ex. 4 (Qualys Response to Interrogatory No. 8). However, this is insufficient
`at least because the spreadsheet has over 500 unidentified SKU numbers and there is no way to
`tie the SKU numbers to the specific products because there is no description regarding what is
`provided in this sheet other than a column heading that appears to be for a quarter and year.
`Qualys should be compelled to identify the products for these SKUs. That Qualys confirmed its
`witness can do this shows this information is readily available to Qualys. Qualys’ Rule 33(d)
`citation is improper because the documents cited do not provide all of the requested information
`and provides no explanation for what it did provide. Fed. R. Civ. P. 33(d). For example, the
`spreadsheet does not identify the region covered, revenues, units, number of users, profit etc.
`Only Qualys has the requested data so its response is deficient.
`When Finjan pressed Qualys to provide this discovery in February, Qualys agreed to
`search for responsive documents, supplement its interrogatory responses, and look into providing
`a key to identify the products that correspond to the myriad SKUs. Five months later, Qualys
`changed its mind and informed Finjan that it was reneging on its prior agreement, and that Finjan
`should wait for explanations at a deposition next month. This is highly improper because Finjan
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`Case 4:18-cv-07229-YGR Document 87 Filed 08/17/20 Page 3 of 8
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`is entitled to have the opportunity to examine this information well before any deposition, and is
`liable to waste the majority of its deposition going through a list of 500 SKUs. Additionally,
`Qualys failed to identify the sales, revenue, cost and profits for each accused instrumentality
`pursuant to Patent L.R. 3-1(b) and did not cite to a single document for this information in its
`contentions. See Patent L.R. 3-4(d); Ex. 5 at 93-94. After receiving Finjan’s half of this letter,
`Qualys changes position again, stating for the first time that it has located additional information
`but that it will be forthcoming in ESI. However, Qualys still cannot confirm that this production
`is complete, and it is doubtful that the only responsive financial information or documents
`Qualys has for the accused products are public SEC filings and a single spreadsheet.
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`II. The Court Should Overrule Qualys’ Objections to Dr. Cole.
`Qualys objected to Finjan’s expert, Dr. Cole, having access to its confidential information
`because he provided a 45-minute Webex presentation on identify management. See Ex. 6 (K.
`Kastens email dated 7/13/2020). This limited, single engagement did not include confidential
`information and does not give any rational basis for objection. Indeed, Qualys declined to accept
`a declaration from Dr. Cole stating that he has no plans to consult with the company he provided
`the presentation to in the future. As such, the Court should overrule Qualys’ objection.
`Qualys also objects to Finjan having more than two experts review its source code
`computer. No such limitation is included in the protective order in this case. See Dkt. 34.
`Qualys’ limitation is unreasonable due to the number of patents in this case and the fact that
`source code is relevant to issues beyond infringement, such as validity and damages. Finjan
`proposed a compromise to limit the number of experts to four, with the caveat that other experts
`bound by the protective order may review source code printed for production and/or included in
`another expert’s report. Four experts is appropriate given that there are 7 patents in the case,
`requiring two infringement experts and two validity experts (a common practice in patent cases).
`Qualys offers no justification to not allow four experts, and only makes a generic claim that its
`source code is highly proprietary, which is true in every patent case involving software. The
`Court should overrule Qualys’ objections and allow four experts. If the Court considers limiting
`experts, then Qualys should be required to agree that it will not challenge Finjan’s expert based
`on them not reviewing the source code in person.
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`III. Finjan Agreed to a Reasonable Production of Litigation Documents From Other Cases
`Qualys’ request for Finjan to produce litigation material should be denied. Finjan has
`already produced thousands of documents from prior cases including: deposition transcripts,
`discovery responses, hearing transcripts, invalidity contentions, infringement contentions, and
`trial transcripts. Finjan has also produced many expert reports from prior litigations, including
`certain confidential expert reports where third parties have provided consent under the protective
`order. Qualys knows full well that Finjan is continuing its effort to clear and produce additional
`confidential reports (the only exception being infringement reports subject to a previous letter).
`See Ex. 6 (K. Kastens email dated 7/17/2020). Finjan understands Qualys’ complaint to be that
`Finjan is taking too long to produce what it vaguely refers to as “litigation documents.”
`However, Qualys is responsible for any delay. First, Qualys failed to identify a consistent set of
`“litigation documents” it seeks from the third parties, which has continued to shift (even while
`exchanging drafts of this letter) and appears to vary by party, even for parties whom Qualys
`knew consented to only a specific list of documents months ago. See, e.g., Ex. 7. Second, Finjan
`is obligated under Section 11 of the protective order to clear the third party confidential
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`Case 4:18-cv-07229-YGR Document 87 Filed 08/17/20 Page 4 of 8
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`information sought by Qualys, which often necessitates sending the documents to the third
`parties for inspection (and this process repeats when additional documents are identified). Finjan
`has sent scores of emails to third parties to negotiate the production of their confidential
`information, and put Qualys in touch with many of these third parties to help speed the process,
`as many had concerns permitting Qualys to share their confidential information with designated
`in-house counsel under the protective order. While Qualys complains of delay, its refusal to
`engage in timely discussions with some of these third parties is telling. See, e.g., Ex. 8 (Qualys
`permitting over 3 months to pass before engaging), Ex. 9 (Qualys allowing 4 months to pass, just
`days prior to filing this letter, before confirming to Finjan that it had negotiated the scope of
`documents to be produced with certain third parties, which has still not been provided to Finjan);
`see also, e.g., Ex. 10 (D. Williams email to C. Mays dated 8/10/2020).
`Even during the drafting of this letter, Qualys has changed the list of documents it seeks.
`While Finjan does not object to production of all but the infringement expert reports and related
`expert deposition transcripts, the other documents listed are duplicative of material already
`provided or are available on the public docket. Therefore, for most of these documents, Finjan
`only asked that Qualys identify the specific documents it seeks so that Finjan can seek third party
`consent once more. None of the cases cited by Qualys required indiscriminant production of
`litigation documents without consideration of the confidential rights of third parties. See, e.g.,
`Finjan, Inc. v. ESET, LLC, No. 17CV183 CAB (BGS), 2018 WL 5263243, at *6 (S.D. Cal. Oct.
`23, 2018) (denying motion to compel third party confidential information because of “minimal
`relevance” and burden of redacting). Qualys’ request should therefore be denied, or if granted,
`should include a cost shifting providing where Qualys pays for the burden in producing the
`documents.
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`Case 4:18-cv-07229-YGR Document 87 Filed 08/17/20 Page 5 of 8
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`QUALYS’S POSITION
`I. Finjan’s Motion to Compel is Unfounded
`As described below, Finjan’s motion to compel is unfounded, moot, and should be denied.
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`A. Qualys Already Agreed to Produce the Requested Technical Documents
`Qualys has never withheld any of the documents that are the subject of this motion. This is
`simply Finjan’s attempt to detract from the fact that Finjan has affirmatively withheld a host of
`relevant documents from related litigations for over a year (see discussion below). The record
`reflects that the subject documents are part of third party ESI repositories. Qualys made the entirety
`of these repositories available for inspection months ago, and Finjan continues to have complete
`access to these documents today. After Finjan made an inspection, it requested several gigabytes
`worth of documents be produced. Qualys has informed Finjan that it is processing these various
`ESI requests and expects to complete production of them in the week of August 17. See Qualys
`Ex. A. Tellingly, Finjan has stated that it plans to produce its own ESI on August 14, only a handful
`of days before Qualys.
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`B. Qualys Has Produced Relevant Damages-Related Discovery
`As Finjan concedes, Qualys has produced sales, revenue, cost, and profits information for
`each of the accused instrumentalities for the relevant damages period via the spreadsheet and its
`10-Ks. Finjan’s complaint that Qualys has not produced sufficient financial documents hinges on
`its assumption that Qualys maintains the specific types of records Finjan demands. Tellingly,
`Finjan improperly focuses on the types of documents rather than the information sought. For
`example, Finjan’s complaint that Qualys did not produce cost documents is false as Finjan admits
`that Qualys has produced its SEC filings, which specifically disclose Qualys’s costs. See Qualys
`Ex. B (QUALYS00030017-114, Qualys 10-K for 2012). Additionally, Qualys is in the process of
`producing other financial information as part of its ESI production and has already informed Finjan
`that it will produce such documents the week of August 17. See Qualys Ex. A. Moreover, Finjan’s
`assertion that the forthcoming financial information is not ESI is unfounded and inaccurate. Finjan
`has taken no depositions in this case to date, and so has no basis other than sheer speculation for
`making it.
`Finjan also takes issue with Qualys’s interrogatory responses, focusing on a single financial
`spreadsheet that shows bundled package of sales (a category of information Finjan specifically
`requested). Finjan neglected to tell the Court that Qualys’s interrogatory responses also cite several
`additional financial documents, and Finjan fails to show that Qualys’ responses in their entirety
`are deficient. In any event, Finjan’s complaint that it is unable to interpret the spreadsheet is an
`issue that is more suitable for a deposition. The document at issue identifies bundled product sales
`as Qualys identifies them in the ordinary course of its business. These bundles are coded using
`clear product and/or package abbreviations (indeed, Finjan used many of these abbreviations itself
`in its infringement contentions). Despite Finjan’s speculative protests otherwise, no “key” exists
`for these abbreviations. However, to the extent Finjan has questions about such abbreviations, a
`deposition of an informed witness should quickly resolve the issue, just the same as a deposition
`covering any other sort of voluminous financial documents.
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`II. Qualys Objects to Dr. Cole Having Unlimited Access to Qualys’s Source Code Repository
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`Qualys objects solely to granting Dr. Cole (“Cole”) unlimited access to Qualys’s source
`code repository. Finjan’s two other technical experts (Drs. Medvidovic and Goodrich) already
`have full access and spent dozens of hours identifying the code relevant to Finjan’s infringement
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`Case 4:18-cv-07229-YGR Document 87 Filed 08/17/20 Page 6 of 8
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`contentions. See Qualys Ex. C (Finjan’s Response to ROG 7) (redacted excerpt). Qualys has agreed
`that Cole may access the files identified by these experts and any of Qualys’s experts. Given this
`agreement, it is not reasonably necessary for Cole to access the repository. Indeed, those two other
`experts have spent dozens of hours reviewing the code and have already identified those portions
`that Finjan contends are relevant to its allegations. There is simply no need for a third expert to
`have such unfettered access to the source code repository.
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`Further, granting Cole access is particularly problematic because he has provided (and may
`again in the future) consulting services for Qualys’s competitors in the last five years. Finjan
`admits that Cole has provided “security consulting” for at least one company that “develops,
`markets, and supports a family of . . . vulnerability management products.” Qualys Ex. D at 1. This
`is the field in which Qualys competes, and Qualys’s Vulnerability Management® software is
`accused in this case. Qualys requested that Cole agree to not provide any such security consulting
`services to any Qualys competitor for a period of two years from the date his engagement in this
`matter ends. Cole refused but offered a declaration stating he has no present intention to do future
`work in the VM field. But such a declaration is meaningless as Cole remains free to change his
`mind at any time. Permitting Cole unfettered access to the entirety of Qualys’s source code given
`his past and potential future work for Qualys’s competitors is unreasonable, particularly since
`Finjan has other experts with access and given Qualys’s agreement to allow Cole to review code
`identified by Finjan’s other experts.
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`III. Finjan Should Produce Relevant Litigation Documents from Related Cases Involving the
`Same Patents-in-Suit
`Qualys asks the Court to compel Finjan to produce prior expert reports, expert deposition
`transcripts, Finjan fact witness deposition transcripts, summary judgment motions, Daubert
`motions, in limine motions, pre-trial filings, and post-trial submissions/motions (along with all
`exhibits and orders thereto). Qualys has sought these documents since March 2019. See Qualys
`Ex. S at 22-23; see Qualys Ex. E (September 2019 meet and confer letter seeking the same). Finjan
`has present one excuse after another for the delays, and now claims to withhold them due to third-
`party confidentiality issues. See Qualys Ex. F. This is a smokescreen: First, the protective order in
`this case is adequate to resolve any such concerns. Second, Finjan itself obtained permission from
`most defendants several months ago. See Qualys Exs. G-I (showing third parties consenting to
`production); Qualys Ex. J; Qualys Ex. K. Finjan has recently taken to contacting those third parties
`again to seek “new” consent, clearly seeking to undermine previous agreements to produce. See
`Qualys Exs. Q-R (confirming that Qualys is not seeking any third-party materials other than those
`previously agreed upon). Finjan also inexplicably delayed contacting other defendants until only
`recently. See Qualys Ex. L.2
`Finjan is also wrong that Qualys has changed the scope of its requests. For over a year,
`Qualys has sought these documents. Indeed, in April 2020 (a year after Qualys served RFP 16),
`Finjan finally contacted third parties to inform them of Qualys’s document request, and
`specifically identified many of the documents at issue here. See Qualys Ex. Q at 7 (“the documents
`sought by Qualys generally include expert reports, deposition testimony, and licensing/settlement
`negotiations.”). And, Qualys’s repeated letters could not have been clearer as to the documents
`sought. See Qualys Ex. E; Qualys Ex. M. If anything, Qualys has narrowed its requests from the
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`2 Finjan’s claims that Qualys has refused to engage in discussions with third parties is wrong. Qualys has reached
`agreement with many third parties, yet Finjan has demonstrated that it is willing to go to great lengths to avoid
`producing a complete set of documents from relevant litigations.
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`Case 4:18-cv-07229-YGR Document 87 Filed 08/17/20 Page 7 of 8
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`language of RFP 16 since, as noted above, Qualys is moving on only specific sets of documents.
`Finjan’s claim that Qualys has not previously requested and/or changed the scope of its requests
`is demonstrably untrue.
`Further, the documents Qualys seeks are highly relevant given the overlapping subject matter
`and issues between this case and the related litigations (namely, the same or related patents as well
`as many of the same defenses, including invalidity, unclean hands, inequitable conduct, and
`others). To give one telling example, Finjan continues to withhold every single report and
`deposition for every single one of its three disclosed technical experts, Cole, Medvidovic, and
`Goodrich, and produced deposition transcripts for many of its own fact witnesses in heavily
`redacted form and omitting many exhibits. This is a clear attempt by Finjan to shield its witnesses
`from potential cross examination and impeachment. This is a frequent strategy of Finjan, who has
`been ordered to produce similar documents in many other cases after repeated attempts at
`stonewalling. See Qualys Ex. N (Finjan, Inc. v. SonicWall, Inc., No. 17-CV-04467-BLF(VKD),
`Dkt. No. 273 (N.D. Cal. July 21, 2020)). And, Finjan has been repeatedly ordered to produce expert
`reports in cases with overlapping patents as here. See Finjan, Inc. v. Blue Coat Sys., Inc., No. 5:13-
`CV-03999-BLF, Dkt. No. 121 at 1 (N.D. Cal. Oct. 29, 2014) (Qualys Ex. O); Dkt. No. 108 at 8
`(N.D. Cal. Oct. 9, 2014) (Qualys Ex. P); Finjan, Inc. v. ESET, LLC, 2018 WL 5263243, at *5-6
`(S.D. Cal. Oct. 23, 2018). Qualys therefore respectfully requests the Court to compel Finjan to
`produce these documents.
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`Case 4:18-cv-07229-YGR Document 87 Filed 08/17/20 Page 8 of 8
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`ATTESTATION
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`In accordance with Civil Local Rule 5-1(i)(3), I attest that concurrence in the filing of this
`document has been obtained from any other signatory to this document.
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`/s/ Kristopher Kastens
`Kristopher Kastens
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