Case 4:18-cv-07229-YGR Document 89 Filed 08/21/20 Page 1 of 6
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
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`Plaintiff,
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`v.
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`QUALYS INC.,
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`Case No. 18-cv-07229-YGR (TSH)
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`DISCOVERY ORDER
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`Re: Dkt. No. 79
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`Defendant.
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`The parties have filed a joint discovery letter brief raising three issues: (1) Finjan’s request
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`for Qualys’s foreign sales data, (2) whether Finjan has exceeded the limit of 25 interrogatories,
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`and (3) whether Finjan should be required to produce all expert reports from prior and pending
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`lawsuits involving one or more of the patents-in-suit in this case. ECF No. 79. The Court held a
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`hearing on August 20 and now issues this order.
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`Let’s start with foreign sales. The Court finds Finjan’s arguments too cursory to
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`satisfactorily evaluate them. In a single sentence with no factual support or case law, Finjan
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`argues that Qualys’s worldwide sales are part of the relevant royalty base because they infringe
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`under the “making” prong of 35 U.S.C. § 271(a). And then in the next sentence, Finjan says that
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`the Court need not decide the issue. This leaves the Court unsure if Finjan is really making this
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`argument. If Finjan is going to press this point, it must assert a well-developed argument and not
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`just make a conclusory assertion.
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`Next, Finjan asserts that even if the foreign sales do not infringe, they are relevant to the
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`reasonable royalty inquiry and “other issues in this case, including Finjan’s claims for induced
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`infringement under 35 U.S. § 271(a).” But . . . how? Courts have split on the relevance of foreign
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`sales, compare Polaris Innovations Ltd., Kingston Tech. Co., Inc., 2017 WL 3275615, *5 (C.D.
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`Case 4:18-cv-07229-YGR Document 89 Filed 08/21/20 Page 2 of 6
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`Cal. Feb. Feb. 14, 2017), with Kajeet, Inc. v. Qustodio, LLC, 2019 WL 8060078, at *13 (C.D. Cal.
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`Oct. 22, 2019), so proclaiming the evidence relevant and citing a case that goes your way is not a
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`persuasive argument when your opponent announces the opposite and cites a case going their way.
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`Finjan needs to put some sentences together that actually explain theories of relevance in a logical
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`way. For example, if Finjan thinks that foreign sales are part of the relevant royalty base, then
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`Finjan must also explain why the royalty base should include activities that do not constitute
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`patent infringement. If Finjan thinks foreign sales are relevant to induced infringement, it must
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`explain why that is so. And if there are “other” issues in the case to which foreign sales are
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`relevant, Finjan must say what they are and explain that too. While the Court has a vivid
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`imagination, it should not be in the position of having to guess what Finjan’s theories of relevance
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`are. Also, as to the Rule 30(b)(6) depo notice, Finjan must state which topics are at issue in this
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`motion.
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`The Court orders the parties to file a further joint discovery letter brief within 14 days, not
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`to exceed five pages, in which they address the above issues.
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`The second issue – whether Finjan has exceeded “25 written interrogatories, including all
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`discrete subparts,” Fed. R. Civ. Proc. 33(a)(1) – is one of those recurring discovery disputes that
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`seem to come up all the time in patent cases. Both sides cite Erfindergemeinschaft Uropep GbR v.
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`Eli Lilly & Co., 315 F.R.D. 191 (E.D. Tex. 2016), a leading decision on that issue. In addition,
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`Magistrate Judge Ryu wrote a lengthy decision in Synopsys, Inc. v. ATopTech, Inc., 319 F.R.D.
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`293 (N.D. Cal. 2016), surveying the case law on this issue, and concluding that it is not all
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`consistent. This Court generally follows both of these decisions without repeating their lengthy
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`analysis but tailors its approach to the arguments set forth in the parties’ letter brief in this case.
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`For example, Judge Ryu noted that there can be disputes about whether a single interrogatory that
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`asks about all accused products or all patents-in-suit should be construed as one interrogatory per
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`accused product or patent-in-suit. The answer may depend on how similar the accused products or
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`patents-in-suit are to each other. See id. at 295-96. In the letter brief, however, Qualys does not
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`Case 4:18-cv-07229-YGR Document 89 Filed 08/21/20 Page 3 of 6
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`advance such an argument.1 While Qualys does generally contend that Finjan’s interrogatories
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`have impermissible subparts, it does not make any assertions that the accused products or patents-
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`in-suit are sufficiently different from each other that they should be considered different topics.
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`Judge Ryu also noted that there can be a dispute about whether an interrogatory that asks about
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`facts, people who know the facts, and documents that reflect the facts is one interrogatory or three,
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`concluding that it is one if the facts, people and documents all relate to the same primary question.
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`See id. at 297. The Court follows that holding and rejects Qualys’s argument to the contrary. The
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`real issue, then, is whether any of Finjan’s interrogatories cover more than one primary subject.
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`Let’s start with interrogatory 1. The Court thinks it is fair to pair the date of first
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`awareness of the asserted patents with at least some action taken in response, since first awareness
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`seems like only part of a primary subject. But the assessment of the validity or enforceability of
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`the patents is a totally different subject from infringement or design around. A litigant could tell a
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`complete story about everything it did to avoid infringement liability without even mentioning
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`invalidity defenses. And vice versa. This counts as two interrogatories.
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`Interrogatories 2 and 3 each count as one interrogatory. Although they each seek a lot of
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`information, they are each focused on an easily discerned primary subject. The Court concludes
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`the same for interrogatories 5, 6, 7, 8, 9, 10, 12, 18 and 19. Interrogatory 11 looks superficially
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`like it covers different subjects, but in reality, stating the legal and factual basis for a damages
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`calculation does embrace all of the listed subjects, so this is just one interrogatory. Interrogatory
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`13 is one of the familiar “each patent” and “each accused product” interrogatories, but as noted,
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`Qualys did not make any assertion in the letter brief that the asserted claims, asserted patents, or
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`accused instrumentalities are sufficiently different from each other with respect to the questions
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`being asked that they should be considered different topics, so the Court will count this as one
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`interrogatory. For the same reason, the Court will deem interrogatories 14 and 15 each as one
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`interrogatory.
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`1 Asserting an objection in a written response to a discovery request is not sufficient to preserve it
`in the face of a motion to compel. Rather, in opposing a motion to compel, a litigant must assert
`arguments in its written briefing for them to be considered by the Court.
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`Case 4:18-cv-07229-YGR Document 89 Filed 08/21/20 Page 4 of 6
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`However, interrogatory 4 is two interrogatories. Most of the interrogatory asks about
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`infringement, specifically, where the accused instrumentalities show up in the source code. But
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`then it asks which portions of the source code are prior art to the patents-in-suit. As with
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`interrogatory 1, the Court believes that infringement and invalidity are different primary subjects.
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`At oral argument, Finjan modified interrogatory 16. It initially seemed to ask about three
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`primary subjects: licenses for the asserted patents, licenses for the accused instrumentalities, and
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`licenses that Qualys contends are relevant to the evaluation of a reasonably royalty. As a matter of
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`common sense, it is hard to understand why Finjan would want to know about any licenses in the
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`first two categories if they are not within the third, and Finjan clarified that, no, it doesn’t want
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`that. As modified, interrogatory 16 asks Qualys about license agreements related to the
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`technology of the asserted patents or accused instrumentalities and that Qualys contends are
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`relevant to the evaluation of a reasonably royalty. This is one interrogatory.
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`Interrogatory 17 – “Describe in detail the complete legal and factual basis for each
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`affirmative defense that Qualys has asserted in this litigation . . .” (emphasis added) – is more than
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`one interrogatory. Technically, Qualys asserts 13 affirmative defenses, see ECF No. 26, so there
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`would be some logic in saying this is 13 interrogatories. However, that would leave Finjan victim
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`to the whimsy of Qualys’s pleading practices. Qualys pleads invalidity for each patent in a single
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`affirmative defense (its third) but then pleads inequitable conduct in separate defenses for each
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`patent (its tenth, eleventh and twelfth defenses). Further, Qualys’s thirteenth affirmative defense
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`(unclean hands) overlaps entirely with its tenth and eleventh affirmative defenses such that these
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`are not really separate topics. The Court thinks that Qualys’s affirmative defenses reflect 10
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`primary subjects: failure to state a claim, non-infringement,2 invalidity, limitations on damages,
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`28 U.S.C. § 1498, failure to mark, ensnarement, prosecution history estoppel, prosecution laches,
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`and inequitable conduct. Thus, this is 10 interrogatories.
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`Accordingly, modified interrogatory 16 actually amounts to interrogatory 18. Therefore,
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`2 Failure to state a claim and non-infringement are not really affirmative defenses, of course, but
`Qualys pleaded them as such, so the Court interprets interrogatory 17 to ask for the legal and
`factual basis for those arguments.
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`the last seven interrogatories were interrogatory 17 as it was directed to the affirmative defenses
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`concerning failure to state a claim, non-infringement, invalidity, limitations on damages, 28
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`U.S.C. § 1498, failure to mark, and ensnarement. With that, Finjan is out of interrogatories.
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`Please note that the parties briefed only the question of whether Finjan has exceeded the
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`allowed number of interrogatories. The parties did not brief the merit of any of these discovery
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`requests, and the Court has not decided that.
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`We now turn to the expert reports. Finjan resists producing expert reports in other cases
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`involving one or more of the patents-in-suit for reports that contain infringement analysis. It is not
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`refusing to produce reports that reflect invalidity analysis. Finjan’s relevance argument is that the
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`infringement reports describe how third-party products infringe on the patents-in-suit, and those
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`products are not at issue in this case. While it is true that the third-party products are not relevant
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`to this lawsuit, the Court disagrees that an infringement analysis describes only the accused
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`products. An infringement analysis also typically describes how the expert interprets the scope of
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`the patents and claims, has definitions of a person of ordinary skill in the art, and discusses other
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`issues not strictly limited to discussions of the accused product.
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`Further, Qualys asserts that the parties’ experts in this case have been experts in previous
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`cases involving the same patents-in-suit. It is certainly relevant to see an expert’s prior opinions
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`about the same patents. Indeed, Qualys says that one of its own experts doesn’t even have his own
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`report from a prior case – only Finjan has it. It is unfair for Finjan alone to possess such potential
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`cross-examination material and not provide it to Qualys.
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`For all these reasons, the infringement reports are relevant. The Court observes that
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`precedent in this district has gone even further, adopting a presumption of relevance for all
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`documents produced in another case if the patents in the two cases share a technological nexus.
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`See Apple Inc. v. Samsung Elecs. Co. Ltd., 2013 WL 3246094, *20 (N.D. Cal. June 26, 2013).
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`As to burden, Finjan says there are about 30-40 infringement reports at issue. Finjan’s
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`counsel have nearly all of them stored on their law firm’s computer servers due to their long-
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`standing representation of Finjan, so the burden for them is just copying some easily identifiable
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`electronic files. It is unclear if there is any meaningful burden on the affected non-parties. At
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`Case 4:18-cv-07229-YGR Document 89 Filed 08/21/20 Page 6 of 6
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`least one non-party just sent a quick email telling Finjan to designate its documents as AEO in this
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`action, see ECF No. 81, Ex. B, so that was not a burden.
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`The Court orders Finjan to produce the infringement reports. It should do so using the
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`procedure set forth in section 11 of the protective order in this case, see ECF No. 34, which is
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`specifically designed for the scenario in which a discovery request calls for documents that
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`possess a non-party’s confidential information, as these reports presumably do. It requires Finjan
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`to give notice to the non-party and gives the non-party an opportunity to seek a protective order.
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`Non-parties are also free to designate the reports in their case as HC-AEO under the protective
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`order in this case. They may also wish to redact certain portions of the expert reports that refer to
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`the non-party’s technology, if Qualys is willing to live with those redactions.
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`IT IS SO ORDERED.
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`Dated: August 21, 2020
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`THOMAS S. HIXSON
`United States Magistrate Judge
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