Case 4:18-cv-07229-YGR Document 95 Filed 08/27/20 Page 1 of 3
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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. 87
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`Defendant.
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`The Court held a hearing this afternoon concerning the joint discovery letter brief at ECF
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`No. 87 and now issues this order.
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`A.
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`Finjan’s Request for Technical Documents
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`Qualys says it has produced the requested items following the filing of the letter brief.
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`Finjan says it is reviewing the recent production and has not yet been able to determine if it is
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`adequate. Accordingly, this issue is moot for the time being, but Finjan is free to raise it again if
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`its review discloses any gaps in production.
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`B.
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`Finjan’s Request for Damages-Related Discovery
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`Here, Finjan requests (1) that Qualys produce certain types of documents and amend
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`certain interrogatory responses, and (2) that Qualys explain a spreadsheet in a 33(d) reference. As
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`to issue #1, the letter brief is stale. Qualys claims that it has produced the requested documents
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`and states that it plans to amend the interrogatory responses. If Finjan thinks the document
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`production or the amended responses are inadequate, it can raise this issue again.
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`As to the spreadsheet, a 33(d) reference is permissible only when the answer to the
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`interrogatory “may be determined” from the reference, see Fed. R. Civ. Proc. 33(d), so the Court
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`orders Qualys to explain the product family and description 2 codes. It’s not good enough to
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`Case 4:18-cv-07229-YGR Document 95 Filed 08/27/20 Page 2 of 3
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`produce a witness who can explain them in a deposition; the explanation must be in the
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`interrogatory response or the 33(d) reference.
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`C.
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`Qualys’s Objections to Dr. Cole
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`The Court overrules Qualys’s objections to Dr. Cole being able to review its source code.
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`The stipulated protective order precludes someone who is a past or current employee of a party or
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`a party’s competitor from being an expert. ECF No. 34 ¶ 2.7. But here, Dr. Cole merely provided
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`consulting services on at least one occasion to a competitor of Qualys’s. That’s a very thin reed
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`on which to limit his work on this case. Qualys’s concern that Dr. Cole might consult again in the
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`future for other competitors of Qualys’s is just another way of saying that he is an expert in the
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`field of security, which is why Finjan hired him. Also, Qualys’s proposed compromise that Dr.
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`Cole can review all of the source code that Finjan’s other experts identify, which presumably is
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`most of the important stuff in the case, simultaneously limits his ability to independently
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`contribute to the case while also seeming to acknowledge that he isn’t really a risk.
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`D.
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`Qualys’s Request for Documents in Other Litigation Involving the Same Patents
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`The Court orders Finjan to produce prior expert reports, expert deposition transcripts, and
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`Finjan fact witness deposition transcripts. Those are relevant, and since Qualys wasn’t a party to
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`those cases, and documents like these are often not in the public record, the only way Qualys can
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`get them is from Finjan.
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`However, for public filings (such as summary judgment motions, Daubert motions, in
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`limine motions, pre-trial filings and post-trial filings), those should all be in the public record,
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`except for redactions. They are also less directly relevant than expert reports and deposition
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`transcripts. Therefore, the Court does not order Finjan to produce all of these. However, for any
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`public filings that are redacted and for which Qualys wants the unredacted version, Qualys should
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`identify those specific documents to Finjan and request the unredacted version. If Finjan refuses
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`to produce it, Qualys should file a joint discovery letter brief raising the issue. The Court advises
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`that it will likely rule in Qualys’s favor in such a dispute, unless the number of unredacted
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`documents Qualys requests is enormous.
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`Case 4:18-cv-07229-YGR Document 95 Filed 08/27/20 Page 3 of 3
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`E.
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`SonicWall Issue
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`During the hearing Qualys stated that it wants the documents referred to in Qualys Exhibit
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`N. This issue was not teed up in the letter brief. The Court orders the parties to meet and confer.
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`If they cannot agree, they shall file a joint discovery letter brief by September 1, 2020.
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`IT IS SO ORDERED.
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`Dated: August 27, 2020
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`THOMAS S. HIXSON
`United States Magistrate Judge
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