Case 5:17-cv-04467-BLF Document 276 Filed 08/07/20 Page 1 of 7
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`Paul Andre
`Partner
`T 650.752.1710
` pandre@kramerlevin.com
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`August 7, 2020
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`VIA ECF DELIVERY
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`
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`
`
`990 Marsh Road
`Menlo Park, CA 94025-1949
`T 650.752.1700
`F 650.752.1800
`
`The Honorable Virginia K. DeMarchi, Magistrate Judge
`United States District Court, Norther District Of California
`San Jose Courthouse, Courtroom 2 – 5th Floor
`280 South 1st Street, San Jose, CA 95113
`
`
`
`Re:
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`Finjan, Inc. v. SonicWall Inc. Case No.: 5:17-cv-04467-BLF
`
`To The Hon. Virginia K. DeMarchi:
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`Plaintiff Finjan, Inc. and Defendant SonicWall, Inc. jointly submit this letter brief
`pursuant to the Court’s Discovery Standing Order.
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`I.
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`Discovery Cut-Off Dates
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`Fact discovery closed on July 31, 2020. Dkt. No. 246. The last date for the parties
`to raise any discovery-related issues is August 7, 2020.
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`II.
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`Statement of Dispute Requiring Resolution
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`Pursuant to Fed. R. Civ. P. 37, Finjan moves the Court to deem Finjan’s Requests
`for Admissions Nos. 17 – 19, and 22 (“RFAs”) admitted based on SonicWall’s failure to
`provide meaningful responses, or in the alternative, to require SonicWall provide
`complete responses within five days of the Court’s order on this motion.
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`III.
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`Finjan’s Position
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`A.
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`Background
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`On June 30, 2020, Finjan served RFA Nos. 1-29 on SonicWall. Ex. 1. SonicWall
`served objections on July 30, 2020, making the following improper objections to RFA Nos.
`17, 18, 19, and 22, it alleged that it did not exist and could not answer. Ex. 1. Because
`SonicWall evaded its obligation to provide full and complete responses and its objections
`are not a proper basis to refuse to respond, Finjan is forced to move the Court to deem
`the RFAs admitted, or in the alternative, to move to compel SonicWall to provide
`responses to the RFAs within five days.
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`KRAMER LEVIN NAFTALIS & FRANKEL LLP
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`SILICON VALLEY | NEW YORK | PARIS
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`Case 5:17-cv-04467-BLF Document 276 Filed 08/07/20 Page 2 of 7
`
`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`B.
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`Finjan’s Requests for Admissions
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`Finjan’s RFA Nos. 17 – 19, and 22 request admissions regarding SonicWall’s
`awareness of Finjan, the asserted patents, and Finjan’s prior or pending litigations. Ex. 1.
`These RFAs request SonicWall’s knowledge of Finjan and its patents before the filing of
`the Complaint, which are as relevant to SonicWall’s willful infringement and the
`hypothetical negotiation in an analysis of a reasonable royalty of damages.
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`Rather than provide meaningful responses, SonicWall tried to bury its head in the
`sand by denying the requests and unilaterally limiting its responses because it purportedly
`did not exist when it was part of Dell1. SonicWall should be required to provide responses
`to these RFAs because it has an obligation to provide full and complete responses.
`Because of SonicWall’s evasive responses, the RFAs should be deemed admitted. Fed. R.
`Civ. P. 36(a)(6) ) (“On finding that an answer does not comply with this rule, the court
`may order either that the matter is admitted or that an amended answer be served.”);
`Davis v. Elec. Arts Inc., Case No. 10-cv-03328-RS (DMR), 2018 WL 1609289, *4 (N.D. Cal.
`Apr. 3, 2018) (deeming RFA admitted when response was "evasive").
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`RFA Nos. 17, 18, 19, and 22 request that SonicWall admit that it was aware of
`Finjan’s Asserted Patents, prior or pending patent litigations, and Finjan’s patent licenses
`prior to the Complaint. Ex. 1 at 8–10. SonicWall improperly limited its responses by
`refusing to answer for the time frame during which the SonicWall business was a part of
`Dell between 2012 and 2016. SonicWall’s attempt to evade responding and hide behind
`the corporate structure of how Dell organized its business is improper. See, e.g., Daewoo
`Elecs. Am. Inc. v. Opta Corp., No. C 13-1247 JSW, 2013 WL 3877596, at *6–7 (N.D. Cal. July
`25, 2013) (liability travels with successor company). The SonicWall business had the same
`officers and employees when it was a part of Dell including Messrs. John Gmeunder
`(SonicWall’s Senior Vice President, Chief Technology Officer), Dmitry Ayrapetov
`(SonicWall’s VP of Platform Architecture), and John Gordineer (Director of Product
`Marketing), and Senthil Cheetancheri (distinguished engineer). Indeed, SonicWall
`cannot claim it does not have possession, custody, or control over information during the
`time when it was a part of Dell because it also produced documents from the years
`when SonicWall was a part of Dell (2012-2016), including revenue information, and
`responded to other interrogatories requesting information in that timeframe. For
`example, in response to Finjan’s Interrogatory No. 1 regarding SonicWall’s knowledge of
`Finjan’s patents, it responded on behalf of what Dell knew of Finjan’s other patent
`litigations in 2014. By refusing to answer RFAs with respect to the time period before 2016,
`its objections contradict its ability to provide different responses to other discovery
`requests. SonicWall cannot cherry pick during discovery what it is willing to respond to
`and what it is not. Because the SonicWall business continued on after it divested from
`Dell, if SonicWall’s employees today have information about what was known when they
`were a part of Dell, this information is in SonicWall’s possession, custody, and control, and
`it cannot play games by claiming “it did not exist.” Accordingly, the Court should deem
`these RFAs admitted, or alternatively, require SonicWall to provide responses to these
`RFAs within five days.
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`1 The SonicWall business was a part of Dell between 2012 and 2016. SonicWall divested
`from Dell in 2016.
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`2
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`Case 5:17-cv-04467-BLF Document 276 Filed 08/07/20 Page 3 of 7
`
`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`IV.
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`Finjan’s View Regarding Hearing
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`Finjan requests that the Court grant a hearing on this issue given the importance
`of the issues involved and SonicWall’s reluctance to provide straightforward answers to
`these RFAs.
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`V.
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`SonicWall’s Position
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`Finjan’s request that the Court deem certain of its Request for Admissions (“RFAs”)
`admitted or in the alternative that the Court compel SonicWall to provide supplemental
`responses to those RFAs should be denied as baseless and unwarranted.
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`With respect to RFA Nos. 17-19 and 22, Finjan asks that the Court “deem these
`RFAs admitted” notwithstanding that in each instance, SonicWall expressly denied the
`RFA. Although SonicWall included objections to the RFAs, it did not refuse to admit or
`deny the RFA. SonicWall is aware of no precedent in which a Court has compelled a
`party to change its response from “denied” to “admitted” simply because the opposing
`party prefers the latter response, and the cases Finjan cites certainly do not support that
`proposition. See Davis v. Elec. Arts Inc., Case No. 10-cv-03328-RS (DMR), 2018 WL 1609289,
`*4 (N.D. Cal. Apr. 3, 2018) (finding defendants’ explanation for its denial evasive where it
`ignored the plaintiff’s agreement to narrow the RFA). Moreover, while Finjan and
`SonicWall disagree regarding the legal consequences of SonicWall’s corporate form with
`respect to imputation of knowledge, that dispute is not properly resolved on a discovery
`motion regarding the adequacy of RFA responses.
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`As this Court has recognized, requests for admissions “are not, strictly speaking
`discovery devices.” James v. Maguire Corr. Facility, No. C 10-1795 SI (pr), 2012 U.S. Dist.
`LEXIS 128534, at *9 (N.D. Cal. Sep. 10, 2012). Rather, requests for admissions “are
`designed to limit factual issues in a case.” Id. For that reason, “requests for admissions
`should not be used to establish ‘facts which are obviously in dispute.’” Id. (citation
`omitted).
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`Here, Finjan’s RFA Nos. 19 and 22 expressly refer to SonicWall’s knowledge of
`Finjan patents, litigations, and licenses as of 2014. “SonicWall” is shorthand for SonicWall,
`Inc., the defendant in this action. SonicWall, Inc. was incorporated in October of 2016
`and thus did not exist prior to that time. Before SonicWall’s incorporation, the SonicWall
`brand of products was manufactured and sold by the Dell Software Group, which was a
`division of Dell, Inc. The Dell Software Group sold a number of different brands, including
`the Quest and SonicWall brands. In 2016, Dell, Inc. sold the Dell Software Group to
`Francisco Partners and Elliott Management Corporation who, in turn, created SonicWall,
`Inc. as a stand-alone entity for the SonicWall brand.
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`In view of the foregoing, it is an undisputed fact that SonicWall, Inc., the
`defendant in this case, did not exist prior to October 2016. For that reason, SonicWall
`denied Finjan’s RFA nos. 19 and 22, seeking admissions regarding SonicWall’s knowledge
`two years prior to its existence. (“SonicWall did not exist in 2014. SonicWall therefore
`denies this Request.”).2 SonicWall’s denial is wholly irrelevant to the issue of successor
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`2 The fact that SonicWall produced documents created prior to its existence, does not, as
`Finjan alleges, have any bearing whatsoever on this issue. Under Federal Rule of Civil
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`Case 5:17-cv-04467-BLF Document 276 Filed 08/07/20 Page 4 of 7
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`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`liability, as Finjan suggest. Rather, the issue at hand is whether SonicWall can be forced
`to admit that it possessed knowledge of certain facts during a period of time that it did
`not exist. While Finjan may dispute the legal consequences of SonicWall’s 2016
`incorporation to this case, as this Court has recognized, RFAs “should not be used to
`establish ‘facts which are obviously in dispute.’” Id.
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`Importantly, even if Finjan were correct that any knowledge Dell may have had
`about Finjan’s patents, litigations, or patent licenses in 2014 should be imputed to
`SonicWall, Finjan’s remedy is not to have this Court deem SonicWall’s denials to be
`admissions. Rather, Finjan’s remedy is spelled out in Fed. R. Civ. P. 37 (c)(2), which
`provides:
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`Failure to admit. If a party fails to admit what is requested under Rule 36 and if the
`requesting party later proves a document to be genuine or the matter true, the
`requesting party may move that the party who failed to admit pay the
`reasonable expenses, including attorney's fees, incurred in making that proof. The
`court must so order unless:
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`(A) the request was held objectionable under Rule 36(a);
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`(B) the admission sought was of no substantial importance;
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`(C) the party failing to admit had a reasonable ground to believe that it might
`prevail on the matter; or
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`(D) there was other good reason for the failure to admit.
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`Fed. R. Civ. P. 37(c)(2).
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`Finjan’s complaints about SonicWall’s objections are likewise meritless. As the
`requesting party, Finjan “bears the burden of setting forth its requests simply, directly, not
`vaguely or ambiguously, and in such a manner that they can be answered with a simple
`admit or deny without an explanation . . . .” James, No. C 10-1795 SI (pr), 2012 U.S. Dist.
`LEXIS 128534, at *9. While the term “aware” may be common English with a readily
`understood meaning, Finjan’s ambiguous use of that term in its RFAs is objectionable.
`Specifically, the RFAs ask SonicWall to admit that it was aware of Finjan’s “prior or
`pending patent litigations,” assertion of the “Asserted Patents” in “other patent litigations
`involving Finjan and third parties,” and “one or more of Finjan’s patent licenses.” There is
`a huge difference, however, between having awareness that something exists and
`being aware of all aspects or details of that thing. It is for that reason that SonicWall
`followed up its objection to the term “aware” with an explanation as to the extent of its
`awareness. See, e.g., SonicWall’s Response to Finjan’s RFAs 17 and 18 (“SonicWall was
`
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`Procedure 34(a), SonicWall was required to produce all non-privileged, responsive
`documents in its “possession, custody, or control,” regardless of the author or creator of
`the document. Thus, SonicWall was obligated to produce documents in its possession
`from the pre-acquisition era and its doing so in no way constitutes an explicit or implicit
`admission regarding imputation of knowledge.
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`Case 5:17-cv-04467-BLF Document 276 Filed 08/07/20 Page 5 of 7
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`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`generally aware of the fact that Finjan had filed multiple patent lawsuits, but SonicWall
`was not aware of the details of any particular lawsuit.”).
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`The same applies to Finjan’s RFA Nos. 17 and 18 which seek admissions regarding
`SonicWall’s knowledge of Finan’s patent litigations and the assertion of the Asserted
`Patents in those litigations “from prior to the filing of the Complaint in this case.” “[P]rior
`to the filing of the Complaint in this case” includes the time period from before
`SonicWall’s existence, and thus the dispute addressed above is equally applicable to
`these requests. Yet, SonicWall did not just deny these requests. Rather, in response to
`both, SonicWall accompanied its denials with a further explanation for purposes of
`clarification. See James, No. C 10-1795 SI (pr), 2012 U.S. Dist. LEXIS 128534, at *9 (the
`requesting party bears the burden of setting forth its requests simply, directly, not vaguely
`or ambiguously, and in such a manner that they can be answered with a simple admit or
`deny without an explanation, and in certain instances, permit a qualification or
`explanation for purposes of clarification.”). Specifically, SonicWall explained that “post
`divestiture from Dell in 2016, SonicWall was generally aware of the fact that Finjan had
`filed multiple patent lawsuits, but SonicWall was not aware of the details of any particular
`lawsuit. SonicWall therefore denies this Request.” It is simply unclear what more Finjan
`wants, though it is clear they are not entitled anything more.
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`For these reasons, SonicWall requests that the Court deny Finjan’s request that its
`RFAs be deemed admitted or alternatively, that SonicWall provide supplemental
`responses to the RFAs.
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`VI.
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`SonicWall’s View Regarding Hearing
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`SonicWall requests that the Court grant a hearing on this issue.
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`VII.
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`Attestation
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`On August 6, 2020, lead counsel for the parties conferred via telephone
`regarding this discovery dispute in a good faith attempt to resolve the issues, during
`which attendees included Paul Andre, Hannah Lee, and Phuong Nguyen for Finjan and
`Matt Gaudet, Robin McGrath, and Jennifer Forte for SonicWall.
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`Dated: August 7, 2020
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`5
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`Respectfully submitted,
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`By: /s/ Paul J. Andre
`Paul J. Andre, Esq.
`KRAMER LEVIN NAFTALIS
`& FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`pandre@kramerlevin.com
`
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`Attorneys for Plaintiff
`FINJAN, INC.
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`Case 5:17-cv-04467-BLF Document 276 Filed 08/07/20 Page 6 of 7
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`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`Dated: August 7, 2020
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`Respectfully submitted,
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`By: /s/ Matthew C. Gaudet
`Matthew C. Gaudet, Esq.
`DUANE MORRIS LLP
`1075 Peachtree NE, Suite 2000
`Telephone: (404) 253-6900
`Facsimile: (404) 253-6901
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`Attorneys for Defendant
`SONICWALL, INC.
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`Case 5:17-cv-04467-BLF Document 276 Filed 08/07/20 Page 7 of 7
`
`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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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
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`of this document has been obtained from any other signatory to this document.
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` /s/ Paul Andre
`Paul J. Andre
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