Case 5:17-cv-04467-BLF Document 248 Filed 04/17/20 Page 1 of 8
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`April 17, 2020
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`VIA ELECTRONIC FILING
`
`The Honorable Judge Virginia K. DeMarchi
`Federal Court of the Northern District of California
`
`Re:
`
`
`
`Finjan, Inc. v. SonicWall Inc.
`United States District Court Case No. 5:17-cv-04467-BLF-VKD
`Joint Discovery Letter
`
`
`
`Dear Magistrate DeMarchi:
`
`
`Defendant SonicWall Inc. (“Defendant” or “SonicWall”) and Plaintiff Finjan, Inc.
`(“Plaintiff” or “Finjan”) (collectively “the Parties”) submit this Joint Discovery Letter.
`
`I.
`
`Joint Statement of Disputed Issue
`SonicWall disputes Finjan’s claim of work product immunity and privilege as to portions
`of and exhibits to deposition transcripts of Yoav Samet, Philip Hartstein, Yuval Ben-Itzhak, and
`Daniel Chinn regarding Finjan’s intellectual property (the “Disputed Documents”) that were
`produced in another Finjan patent litigation, Finjan, Inc. v. Cisco Systems, Inc., No. 5:17-cv-
`00072-BLF-SVK (N.D. Cal.) (“Cisco Action”). The Disputed Documents are identified in
`Finjan’s privilege log, attached as Ex. A.1, 2
`
`Defendant’s Position and Proposed Resolution
`As a threshold matter, Finjan’s argument that SonicWall has not established the relevance
`of the Disputed Documents is a non-sequitur, as SonicWall does not have access to the withheld
`portions of the Disputed Documents. These documents were the subject of four depositions in a
`case between Finjan and Cisco involving five of the same asserted patents. Finjan already
`produced these transcripts and redacted versions of the documents in response to discovery
`requests, and then withheld certain portions on the basis of privilege, not relevance.
`
`II.
`
`Finjan alleges that the Disputed Documents are protected by attorney-client and work
`product privilege. However, the deposition transcripts themselves are available to (and were
`taken by) Cisco (Finjan’s adversary) in the Cisco Action. Each of the deposition exhibits was
`produced by Cisco (not Finjan) in the Cisco Action. Finjan, despite asserting privilege over the
`exhibits in this case, did not even have them in its possession. Instead, the source of the exhibits
`was a former Cisco employee, Yoav Samet, as evidenced by the documents’ Bates numbers in
`the Cisco Action (i.e., Cisco-Finjan-YS). Finjan’s privilege log does not even list Samet as a
`
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`1 SonicWall is not challenging Finjan’s privilege claim for Finjan-RPD 414376.
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`2 Per the Court’s standing order, materials cited herein are not attached as exhibits, but are
`available if requested by the Court.
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`Case 5:17-cv-04467-BLF Document 248 Filed 04/17/20 Page 2 of 8
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`recipient of most documents – instead listing Finjan’s Board of Directors, employees and outside
`lawyers.
`
`Mr. Samet possessed these documents even though he was not a Finjan employee or
`member of Finjan’s Board. Instead, Cisco was an investor in Finjan with a contractual right to
`“observe” portions of Finjan’s board meetings. Samet Dep., 23:17-24: 20; Chinn Dep., 38:8-
`39:17. Cisco designated Mr. Samet as its board observer. Samet Dep. 60:16-23. This is unlike
`the former director in Montgomery, upon which Finjan relies. That court found that possessing
`an interest in a company (which is the correct characterization of Cisco’s relationship with
`Finjan) does not allow access to privileged documents. 548 F. Supp. 2d at 1187. Moreover, Mr.
`Samet is not a lawyer. Samet Dep. 16:12-18. Finjan thus sent these exhibits beyond the audience
`identified in its log, to a party (Cisco) and non-lawyer (Samet), who merely had a contractual
`relationship with Finjan. Finjan (who bears the burden) has no evidence that there was a shared
`privilege between these parties – much less a confirmation between them of a shared privilege.
`Further, Finjan’s claim that “many, if not most” of Finjan’s interactions with Cisco related to
`patent matters is contradicted by the testimony of both Samet and Finjan’s Chairman. Samet
`Dep. 64:2-65:13; 68:12-16 (
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`); Chinn Dep. 219:1-
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`15; 221:9-222:11
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`.
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`Indeed, these very deposition transcripts were created in an adverse matter between these
`parties (i.e., they did not exist when Cisco had an investment in Finjan). All of the Disputed
`Documents (the transcripts and exhibits) relate to the subject matter of the Cisco Action, and
`likely will be presented to the trier of fact in that case.
`
`No Privilege Existed. The “attorney-client privilege is ‘strictly construed,’ and the party
`claiming the privilege bears the burden of establishing its claim.” In re Napster v. Beretelsman
`AG, 2005 U.S. Dist. LEXIS 11497, at *8 (N.D. Cal. 4/11/ 05). Communications between
`attorneys and clients “made in the presence of, or shared with, third-parties destroys the
`confidentiality of the communications and the privilege protection that is dependent upon that
`confidentiality.” Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 578 (N.D. Cal. 2007). An
`exception to waiver of privilege exists when the parties share a common legal interest regarding
`the subject matter of the communication. Napster, 2005 U.S. Dist. LEXIS 11497, at *12. There
`must be “a common legal, as opposed to commercial, interest” and such communications must
`be “designed to further that legal effort.” Nidec, 249 F.R.D. at 579. “[A] shared desire to see the
`same outcome in a legal matter is insufficient.” In re Pac., 679 F.3d at 1129.
`
`Finjan claims the Disputed Documents are privileged based on its “specific, unique
`relationship” with Cisco. This relationship was defined by the Investors’ Rights Agreement
`(“IRA”), whereby Cisco obtained the right to send an observer to Finjan’s board meetings.
`Section 2.7. Finjan argues that Cisco’s board observer received these documents subject to a
`“strict NDA,” but Finjan has not shown that such an NDA exists. The NDA Finjan produced in
`this case is Cisco’s “standard mutual NDA.” This NDA predates the IRA, was not executed by
`Finjan, and relates only to
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`Case 5:17-cv-04467-BLF Document 248 Filed 04/17/20 Page 3 of 8
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` Id.3 The presence of a generic NDA is not enough to establish a
`common legal interest. Rembrandt Patent Innovations, LLC v. Apple Inc., 2016 U.S. Dist.
`LEXIS 13749, at *26-27 (N.D. Cal. 2/4/16) (“The presence of a non-disclosure agreement
`covering these disclosures . . . is not conclusive” in finding a common legal interest); see also
`SEC v. Berry, 2011 U.S. Dist. LEXIS 28301, at *19 (N.D. Cal. 3/7/11) (work product waived
`despite confidentiality agreements). Nowhere do the IRA or the NDA say that Cisco would
`receive privileged information, or that the parties had a common legal interest, or that Cisco was
`required to maintain any privilege of Finjan (unlike the common interest NDA in Devon, upon
`which Plaintiff relies). The IRA says the opposite – it says that Finjan’s “
`
`
`” The
`primary purpose of the right to exclude is to preserve the company’s attorney-client privilege.
`See WestLaw Practical Law Glossary (“[B]oard observers usually can be excluded from
`meetings to preserve the company’s attorney client privilege, particularly when the board is
`discussing potential litigation ….”). Thus, Finjan had a mechanism to maintain privileged
`information and chose not to.
`
`Moreover, any generalized interest in Finjan’s litigation plans that Cisco had as an
`investor was merely a commercial interest or “shared desire” that is insufficient for privilege
`protection. In re Pac., 679 F.3d at 1129. Likewise, there is no “shared litigation threat in which
`their interests are ‘identically aligned’” to support a finding of privilege. Planned Parenthood
`Fed'n of Am., Inc. v. Ctr. for Med. Progress, 2019 U.S. Dist. LEXIS 63638, at *36-38 (N.D. Cal.
`Apr. 11, 2019); Rembrandt, 2016 U.S. Dist. LEXIS 13749, at *27-28 (“although the business
`opportunities contemplated arose from . . . analysis of the patent and broad identification of
`litigation targets”, such information is not privileged as it “focused on exploring a business
`relationship.”).
`
`For work product immunity, “documents that merely set forth a general strategy or
`template that might relate to or be relevant to future litigation are not prepared in anticipation of
`a particular trial.” Hatamian v. Advanced Micro Devices, Inc., 2016 U.S. Dist. LEXIS 60551, at
`*21-22 (N.D. Cal. May 6, 2016). Finjan has not shown that the Disputed Documents were in
`preparation for any specific litigation.
`
`Any Privilege or Work Product Protection Was Waived. Finjan sued Cisco on its
`intellectual property discussed in the Disputed Documents. By definition, Finjan and Cisco are
`adversaries specifically relating to the subject matter in the Disputed Documents. “[I]t would be
`absurd to extend the protection of the privilege to matters in which the two corporations’ legal
`interests were directly adverse to each other.” Napster, 2005 U.S. Dist. LEXIS 11497, at 17.
`
`Accordingly, even if the Court were to find that the Disputed Documents were initially
`privileged, such privilege was waived once the parties became adversaries. Similar to a joint
`representation, “the policy of encouraging confidential communications between a lawyer and
`
`3 Finjan points to the NDA referenced during Samet’s deposition. Samet Dep., 194:6-13. This
`NDA covers the parties’ pre-suit licensing discussions and was executed in 2014, nearly a
`decade after Finjan provided the Disputed Documents to Cisco. Cisco Action, Dkt. 1 at ¶ 9.
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`Case 5:17-cv-04467-BLF Document 248 Filed 04/17/20 Page 4 of 8
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`… clients would not be advanced by protecting those communications from disclosure after …
`those clients have sued each over a matter falling within the scope of the attorney’s
`representation.” Napster, 2005 U.S. Dist. LEXIS 11497, at 16. Additionally, “[o]nce a party has
`disclosed work product to one adversary, it waives work-product protection as to all other
`adversaries.” Waymo LLC v. Uber Techs., Inc., 2017 U.S. Dist. LEXIS 88411, at *43 (N.D. Cal.
`June 5, 2017).
`
`Likewise, work product protection is lost when disclosure to third parties “enables an
`adversary to gain access to the information.” Nidec, 249 F.R.D. at 580. Here, the deposition
`transcript was created in the very case in which the parties are adversaries; it would be absurd to
`say a deposition transcript and the exhibits thereto are the protected work product of one of the
`adversaries.
`
`III. Defendant’s View on a Hearing
`Defendant requests a telephonic hearing on this dispute.
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`IV.
`
`Plaintiff’s Position and Proposed Resolution
`
`The Disputed Documents are privileged and contain attorney work product because they
`are materials from Finjan’s Board of Directors (from 9-15 years ago) containing the legal advice
`of counsel regarding patent litigation and enforcement matters — a dispositive fact that
`SonicWall does not dispute. Ex. A, 2-16.
`Cisco’s possession of these documents and subsequent adversity to Finjan more than a
`decade after the disclosure does not waive privilege or work-product immunity. Finjan only
`shared these documents with Cisco under the parties’ specific, confidential, common-interest
`relationship where Cisco, which became a major Finjan investor in 2004, had an observer
`position on Finjan’s Board. Samet Dep. 60:19-61:6. Subject to a strict NDA, limiting Cisco’s
`use of any information obtained from Finjan, Cisco’s observer had access to Finjan’s most
`sensitive and confidential information through this special relationship with Finjan, receiving the
`documents with the expectation and contractual obligation to maintain such sensitive information
`as confidential and privileged. Id. 194:8-11. Cisco only obtained the Disputed Documents
`through this NDA and common-interest-relationship. At the time Finjan shared the materials,
`Finjan and Cisco were not adversaries and worked collaboratively to further their common legal
`interests to obtain favorable business and legal outcomes on multiple fronts (Cisco did not divest
`its significant stake in Finjan’s stock until 2017, months after Finjan filed suit against Cisco). Id.
`24:21-26:23; SEC filing.4 Cisco’s obligation to keep confidential the Disputed Documents
`
`
`4 SonicWall tries to confuse the record by referring to deposition testimony that Samet stopped
`regularly attending board meetings after Finjan’s IP-litigation activities intensified. This
`deposition testimony refers to the 2008 to 2010 timeframe, which is years after Finjan provided
`all but one of the Disputed Documents to Cisco. Samet Dep. 63:3-64:14; Chinn Dep. 219:1-
`220:16; Ex. A.
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`Case 5:17-cv-04467-BLF Document 248 Filed 04/17/20 Page 5 of 8
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`continues to this day. Under these circumstances there is no waiver and SonicWall is not entitled
`to these privileged and work-product materials.5
`The Court should further deny SonicWall’s request because the Disputed Documents are
`irrelevant to this action. Cisco produced the Disputed Documents in its case because they related
`to Cisco’s intimate knowledge of Finjan’s patents and its litigation activities and, thus, served as
`evidence in that case of, among other things, Cisco’s willful infringement of Finjan’s patents.
`Here, SonicWall concedes it has no basis to conclude that these 14-year old documents are
`relevant to the issues in this case. Relevance is never a “non-sequitur” in a motion to compel, as
`SonicWall contends. It is the sine qua non. Indeed, the Disputed Documents do not reference
`SonicWall, and the only connection seems to be that the same counsel represents both Cisco and
`SonicWall. However, the Court already rebuffed SonicWall’s attempt to import materials from
`another case. Dkt. 142 (“This request seems geared to manipulate the Patent Local Rules where
`counsel in this case is simultaneously representing a different defendant in a separate case
`involving the same patents. The Patent Local Rules do not condone this conduct and neither
`does this Court.”).
`A.
`The Disputed Documents are Attorney Work Product
`The Disputed Documents include advice prepared by Finjan’s outside counsel in
`anticipation of litigation. Ex. A, 2-16. As such they are immune from discovery as attorney
`work product. Skynet Elec. Co., Ltd v. Flextronics Int'l, Ltd., 12-06317 WHA, 2013 WL
`6623874, at *3 (N.D. Cal. Dec. 16, 2013) (“The work product doctrine protects from discovery
`documents … prepared … in anticipation of litigation.”). Finjan’s assertions of work product
`immunity are narrowly limited. For example, Finjan redacted only 13 pages out of a 118-page
`Board presentation. To the extent it will aid the Court’s assessment of this dispute, Finjan will
`provide the Disputed Documents for in camera review.
`Finjan did not waive work product immunity when it shared the Disputed Documents
`with Cisco’s Board observer a decade before the parties became adversaries. Immunity is
`maintained when a document is prepared “in anticipation of litigation” and is only disclosed to
`third-parties “bound to maintain its confidence,” as was the case here. Skynet, 2013 WL
`6623874, at *2-3 (waiver only occurs when a party discloses protected information to a third
`party not bound to maintain confidentiality). Here, Finjan provided the Disputed Documents
`under an NDA that limited Cisco’s use of received information, precluding any waiver. Samet
`Dep. 194:8-10; Mondis Tech., Ltd. v. LG Elecs., Inc., No. 2:07-CV-565-TJW-CE, 2011 WL
`1714304, at *3 (E.D. Tex. May 4, 2011) (documents prepared for future litigation are protected
`work product when only disclosed to third parties under an NDA).
`That Cisco and Finjan subsequently became adversaries in litigation 13 years later, does
`not change the dispositive fact that, when Cisco obtained the Disputed Documents in 2004-2008,
`Cisco and Finjan enjoyed a positive, collaborative relationship and there was no indication they
`could become adversaries. Mondis, *2 (“[d]isclosure of work-product waives the work-product
`protection only if work-product is given to adversaries or treated in a manner than substantially
`
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`5 Finjan did not locate these documents, which are 9-15 years old, in its files, and only had them
`when Cisco produced them. Having obtained the documents through that action, Finjan duly
`identified them to SonicWall in its privilege log in this case.
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`Case 5:17-cv-04467-BLF Document 248 Filed 04/17/20 Page 6 of 8
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`increases the likelihood that an adversary will come into possession of the material.”). This is
`supported by Mr. Samet’s claims that he initially had an open invitation to Finjan’s board
`meetings, indicating the alignment of Cisco’s and Finjan’s interests to achieve commercial and
`legal success concerning Finjan’s potential patent enforcement litigation. Samet Dep. 62:15-16;
`Securitypoint Holdings, Inc. v. United States, No. 11-268C, at 4 (Ct. Cl. Apr. 16, 2019 (unpub.)
`(finding no waiver when plaintiff shared privileged documents with equity investor in company
`due to “common legal interest in the validity of the patent-in-suit”).
`Thus, SonicWall’s reliance on Napster is misplaced, as the parties were already adverse
`to one another at the time they exchanged the documents at issue in that case. Id. at *11.
`SonicWall attempts to muddy the waters by implying that Finjan and Cisco were in an
`adversarial relationship when they exchanged the Disputed Documents. But Finjan’s suit against
`Cisco did not come until more than a decade later. Because Finjan and Cisco were not adverse
`during the relevant timeframe, disclosure of the Disputed Documents did not waive immunity.
`Mondis, 2011 WL 1714304 at *3.
`The absence of waiver is further confirmed by the specific relationship between Finjan
`and its Board observer. This type of arrangement creates an especially close, trusted confidential
`relationship between the two companies, as acknowledged in Defendant’s cited materials.
`Westlaw Glossary(a board observer is “[a]n individual who is permitted to attend and participate
`in meetings of the board of directors and to receive all information provided to members of the
`board,” subject to the “same confidentiality obligations as members of the board”);
`Securitypoint Holdings, at 4 (no waiver from sharing materials with investor).
`Thus, the Court should deny SonicWall’s request to obtain Finjan’s attorney-work
`product.
`The Disputed Documents are Attorney-Client Privileged
`C.
`The Disputed Documents are privileged because they contain legal advice communicated
`by Finjan’s outside counsel to its client. Ex. A, 2-16. As such, they are immune from discovery.
`Dkt. No. 99 (Order on discovery dispute letter) (“[a] party is not entitled to discovery of
`information protected by the attorney-client privilege.”), quoting, Navajo Nation v. Confederated
`Tribes & Bands of the Yakama Indian Nation, 331 F.3d 1041, 1046 (9th Cir. 2003).
`Finjan did not waive attorney-client privilege in the Disputed Document. Attorney-client
`privilege attaches to both individuals and corporations. Upjohn Co. v. United States, 449 U.S.
`383, 390 (1981). Only Finjan, as the “holder of the attorney-client privilege may waive it.”
`Tennenbaum v. Deloitte & Touche, 77 F.3d 337, 340-41 (9th Cir. 1996). Here, Finjan as the
`holder of the privilege has vigilantly and correctly asserted its protection.
`Providing Disputed Documents to Cisco’s Board observer under an NDA did not waive
`privilege because of the common interest between Finjan and Cisco at that time. Mondis Tech.,
`2011 WL 1714304, at *3 (finding privilege covers documents prepared for investors that covered
`potential litigation); Devon It, Inc. v. IBM Corp., 10-2899, 2012 WL 4748160, at *1 (E.D. Pa.
`Sept. 27, 2012) (finding plaintiff and its investor have a common interest in the successful
`outcome of the litigation). Finjan and Cisco’s falling out a decade later does not change Cisco’s
`obligation to maintain the confidentiality of the Disputed Documents. Montgomery v. eTreppid
`Techs., LLC, 548 F. Supp. 2d 1175, 1187 (D. Nev. 2008) (finding attorney-client privilege is the
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`Case 5:17-cv-04467-BLF Document 248 Filed 04/17/20 Page 7 of 8
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`corporation’s and a now adverse former director still has a duty to keep information
`confidential).
`SonicWall entirely misses the point in arguing that Finjan had the ability to exclude Mr.
`Samet from board meetings. The salient point is that Cisco had a common legal interest with
`Finjan in the validity and enforcement of the company’s infringed patents, and Cisco and its
`representative were obligated to preserve as confidential all information that Finjan provided.
`Thus, there was no need to exclude Mr. Samet, there was no waiver, and attorney-client privilege
`prevents SonicWall from obtaining the Disputed Documents. Devon It, 2012 WL 4748160, at
`*1.
`V.
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`Plaintiff’s View on a Hearing
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`Plaintiff requests a telephonic hearing on this dispute.
`
`VI. Discovery Cut-Off Dates
`Fact discovery closes on May 1, 2020 and expert discovery ends on September 18, 2020.
`
`VII. Compliance with Meet and Confer Requirement
`The parties telephonically met and conferred on this dispute on March 16, 2020, but were
`unable to resolve this dispute.
`
`Dated: April 17, 2020
`
`Respectfully submitted,
`
`
`By: /s/ Lisa Kobialka
`Paul Andre (SBN 196585)
`pandre@kramerlevin.com
`Lisa Kobialka (SBN 191404)
`lkobialka@kramerlevin.com
`James Hannah (SBN 237978)
`jhannah@kramerlevin.com
`Hannah Lee (SBN 253197)
`hlee@kramerlevin.com
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Aaron M. Frankel (pro hac vice)
`afrankel@kramerlevin.com
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`
`
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`Respectfully submitted,
`
`
`By: /s/ Matthew C. Gaudet
`Matthew C. Gaudet (Admitted Pro Hac Vice)
`mcgaudet@duanemorris.com
`Robin L. McGrath (Admitted Pro Hac Vice)
`rlmcgrath@duanemorris.com
`David C. Dotson (Admitted Pro Hac Vice)
`dcdotson@duanemorris.com
`John R. Gibson( Admitted Pro Hac Vice)
`jrgibson@duanemorris.com
`Jennifer H. Forte (Admitted Pro Hac Vice)
`jhforte@duanemorris.com
`Alice E. Snedeker (Admitted Pro Hac Vice)
`aesnedeker@duanemorris.com
`DUANE MORRIS LLP
`1075 Peachtree NE, Suite 2000
`Atlanta, GA 30309-3929
`Telephone: 404.253.6900
`
`D. Stuart Bartow (SBN 233107)
`Email: DSBartow@duanemorris.com
`
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`Case 5:17-cv-04467-BLF Document 248 Filed 04/17/20 Page 8 of 8
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`1177 Avenue of the Americas
`New York, NY 10036
`Telephone: (212) 7793
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`Nicole E. Grigg (SBN 307733)
`Email: NEGrigg@duanemorris.com
`DUANE MORRIS LLP
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`Tel.: 650.847.4150
`Fax: 650.847.4151
`
`Joseph A. Powers (Admitted Pro Hac Vice)
`Email: japowers@duanemorris.com
`Jarrad M. Gunther (Admitted Pro Hac Vice)
`Email: jmgunther@duanemorris.com
`DUANE MORRIS LLP
`30 South 17th Street
`Philadelphia, PA 19103
`Telephone: 215.979.1000
`
`Counsel for Defendant
`SONICWALL, INC.
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