Case 5:17-cv-04467-BLF Document 277 Filed 08/07/20 Page 1 of 6
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`
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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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`
`
`
`
`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:
`
`
`Plaintiff Finjan, Inc. and Defendant SonicWall, Inc. jointly submit this letter brief
`pursuant to the Court’s Discovery Standing Order.
`
`I.
`
`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(c), whether the Court should strike SonicWall’s
`identification of “SonicWall’s patent portfolio” from SonicWall’s second supplemental
`initial disclosures, which was served on the last day of fact discovery.
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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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`SonicWall waited until the last day of fact discovery, July 31, 2020—and almost
`three years after Finjan filed its Complaint—to disclose its “patent portfolio” as
`purportedly relevant to its claims and defenses. Ex. 1 at 13 (SonicWall’s Second
`Supplemental Initial Disclosures, served July 31, 2020). For several years, SonicWall never
`identified to Finjan, including in any of its interrogatory response, that it would be relying
`on its own patent portfolio to support any alleged defense. Notably, during the parties’
`meet and confer, SonicWall’s counsel was unable to identify how its “patent portfolio” is
`relevant.
`
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
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`SILICON VALLEY | NEW YORK | PARIS
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`

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`Case 5:17-cv-04467-BLF Document 277 Filed 08/07/20 Page 2 of 6
`
`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`B.
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`SonicWall’s Belated Disclosure of its Patent Portfolio Should Be Stricken
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`SonicWall’s untimely identification of its patent portfolio in its second
`supplemental disclosures on the close of fact discovery should be stricken. Fed. R. Civ. P.
`26(e) “imposes an affirmative obligation on a party to supplement its initial disclosures ‘in
`a timely manner’ if the party learns that the disclosures are incomplete or incorrect, and
`if the additional or corrective information has not otherwise been made known to the
`other parties during the discovery process or in writing.” Vieste, LLC v. Hill Redwood
`Development, No. C09-04024 JSW (DMR), 2011 WL 2181200, at *2 (N.D. Cal. June 3, 2011)
`(precluding reliance on witnesses that were belatedly disclosed). Where a party has
`violated Rule 26's disclosure requirements, a court may prohibit the party “from
`introducing designated matters in evidence.” Fed. R. Civ. P. 37(b)(2)(A)(ii), (c)(1)(C).
`Additionally, a party in violation of Rule 26 may also be prohibited from using
`“information or [a] witness to supply evidence on a motion, at a hearing, or at trial,”
`unless the failure to disclose the information or witness “was substantially justified or is
`harmless.” Fed. R. Civ. P. 37(c)(1).
`
`Here, SonicWall bears the burden of proving that its failure to disclose the
`required information was substantially justified or is harmless. Yeti by Molly Ltd. v. Deckers
`Outdoor Corp., 259 F.3d 1101, 1107 (9th Cir. 2001)(“Implicit in Rule 37(c)(1) is that the
`burden is on the party facing sanctions to prove harmlessness.”).
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`1.
`
`SonicWall’s Belated Disclosure of its “Patent Portfolio” Is Not
`Substantially Justified
`
`SonicWall cannot meet its burden of demonstrating that the identification of its
`“patent portfolio” on the last day of fact discovery in its initial disclosures is substantially
`justified. SonicWall cannot make such a showing because it has not articulated how its
`“patent portfolio” is related to any of its defenses in this case. In its Answer, SonicWall
`made no mention of its “patent portfolio,” nor did it mention its “patent portfolio” in
`response to Finjan’s interrogatories requesting the bases for SonicWall’s affirmative
`defenses. See Dkt. No. 103 at ¶¶ 232–262. Indeed, SonicWall does not identify a single
`witness in its initial disclosures regarding SonicWall’s patent portfolio. See Ex. 1.
`
`During the meet and confer between the parties, SonicWall alleged that Finjan
`should have known of SonicWall’s intent to rely on its patents because it produced them
`during discovery, and Finjan should have known based on publicly available information
`before filing its Complaint. Regarding SonicWall’s first argument, Finjan could not have
`reasonably known that SonicWall intended to rely on SonicWall’s patents for any purpose
`simply because SonicWall produced its patents in its document production. SonicWall
`produced over 150,000 pages of documents, and it was unreasonable to ask Finjan to
`guess which documents SonicWall intended to rely on, particularly as this was the subject
`of Finjan’s interrogatories regarding SonicWall’s defenses. Second, simply because a
`defendant owns patents of its own is irrelevant to whether it infringes different patents.
`Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (“[T]he
`existence of one's own patent does not constitute a defense to infringement of someone
`else's patent.”) (citation omitted).
`
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`Courts in this District routinely preclude parties from relying on information
`untimely disclosed where it could have been produced earlier. See, e.g., Vieste, 2011 WL
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`Case 5:17-cv-04467-BLF Document 277 Filed 08/07/20 Page 3 of 6
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`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`2181200, at *3 (precluding witnesses disclosed “two weeks before the close of fact
`discovery,” noting this untimely disclosure “was not harmless”); Finjan, Inc. v. Proofpoint,
`Inc., No. 3:13-cv-05808- HSG (HRL), 2015 WL 9900617, at *2–3 (N.D. Cal. Oct. 26, 2015)
`(precluding witnesses disclosed before the close of fact discovery); Baird v. Blackrock
`Institutional Trust Co., N.A., 330 F.R.D. 241, 246–48 (N.D. Cal. Feb. 27, 2019) (same). Where
`SonicWall failed to disclose its “patent portfolio” in its initial disclosures until the very last
`day of the close of fact discovery, despite having this information available to it since
`Finjan filed its complaint in August 2017, the Court should fairly preclude SonicWall from
`being able to rely on the same information. If SonicWall intended to rely on its own
`patents for any defensible purpose, it should not have waited nearly three years to
`identify this information in its initial disclosures. Its belated disclosure is not substantially
`justified and is a problem of SonicWall’s own making. Therefore, SonicWall’s second
`supplemental initial disclosures, which identify its patent portfolio for the first time, should
`be stricken.
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`2.
`
`SonicWall’s Belated Disclosure of its Patent Portfolio is Unfairly
`Prejudicial to Finjan
`
`SonicWall’s untimely disclosure causes significant and undue prejudice to Finjan.
`Because SonicWall waited until the last day of fact discovery to disclose its patent
`portfolio in its initial disclosures, SonicWall is now trying to backdoor in a new defense
`when Finjan did not have the opportunity to pursue any depositions or written discovery
`related to SonicWall’s patent portfolio. Besides the fact that SonicWall has still not
`articulated what defense its “patent portfolio” is purportedly related to, had SonicWall
`disclosed its patent portfolio earlier in discovery, Finjan would have had the opportunity
`to pursue discovery regarding the same. Now, after the close of fact discovery, and less
`than a month before the expert reports are due, SonicWall should not be permitted to
`generically rely on its own patents to support an unspecified defense.
`
`Because SonicWall has not articulated any particular defense that its patent
`portfolio related to, Finjan expects that SonicWall will try to confuse the jury at trial into
`believing that if a company owns patents of its own, it could not possibly infringe other
`patents. As discussed above, such an argument has no basis in the law and would be
`significantly unfairly prejudicial.
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`Therefore, the Court should strike SonicWall’s untimely disclosure of its patent
`portfolio from its initial disclosures.
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`Finjan’s View Regarding Hearing
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`IV.
`
`Finjan does not believe that a hearing would assist the Court in resolving the
`dispute because the facts are straightforward and SonicWall should have provided this
`information sooner.
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`V.
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`SonicWall’s Position
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`Finjan’s request that the Court strike SonicWall’s second supplemental initial
`disclosures because they purportedly “identify [SonicWall’s] patent portfolio for the first
`time” is fundamentally flawed from both a legal and factual perspective.
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`Case 5:17-cv-04467-BLF Document 277 Filed 08/07/20 Page 4 of 6
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`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`It is apparently Finjan’s position that because SonicWall did not name in its initial
`disclosures the category of “SonicWall’s Patent Portfolio” until the last day of discovery,
`SonicWall’s identification is untimely, and thus Sonicwall cannot use its patent portfolio in
`any motions or at trial. Finjan, however, misreads the requirements of Federal Rule of Civil
`Procedure 26. Specifically, Federal Rule of Civil Procedure 26(a)(1)(A) requires the
`parties to provide, without awaiting a discovery request:
`
`a copy—or a description by category and location—of all documents,
`electronically stored information, and tangible things that the disclosing
`party has in its possession, custody, or control and may use to support its
`claims or defenses, unless the use would be solely for impeachment;
`
`Fed. R. Civ. P. 26(a)(1)(A)(ii) (emphasis added). Thus, for any document or ESI that a
`party may use to support its claims or defenses, the party has the option of either
`including within its initial disclosures a description by category of such documents or
`providing a copy of the documents. Finjan does not deny that SonicWall produced a
`copy of the patents in its patent portfolio – in fact it actually complains about that fact
`noting that “SonicWall dumped over 150,000 pages of documents” on it. Rather, its
`complaint is that SonicWall never spelled out for Finjan that or how it would be relying on
`its portfolio. Yet Federal Rule 26 does not require a party to identify the specific defenses
`for which it intends to use each document it produces. That’s what the discovery
`process is to be used for.
`
`While Finjan complains that SonicWall’s discovery responses never indicated that
`it intended to rely on its patent portfolio, Finjan did not submit any specific discovery
`requests that would have elicited such information. Since SonicWall does not intend to
`rely on its patent portfolio in connection with any of its affirmative defenses, there would
`have been no reason for SonicWall to have identified its portfolio in response to
`interrogatories seeking the basis for SonicWall’s affirmative defense. And SonicWall was
`in no way obligated to inform Finjan during the parties’ meet and confers how it intends
`to rely on its portfolio. If, at the time that SonicWall refers to or otherwise uses its portfolio
`(for example, if Finjan’s damages expert does not account for SonicWall’s patents in
`conducting a proper apportionment analysis and SonicWall’s expert relies on the
`portfolio to rebut SonicWall’s apportionment analysis), Finjan believes such use is
`improper, Finjan has the ability to object to the use at that time.1 However, moving to
`strike use of the patent portfolio at this time – when Finjan never served an interrogatory
`seeking such information and is speculating about what the use will be – is premature.
`
`Notably, SonicWall produced its entire patent portfolio to Finjan before Finjan
`took the deposition of several of SonicWall’s witnesses, including Alex Dubrovsky who is
`one of the named inventors on numerous SonicWall patents, and it produced specific
`patents within its portfolio as far back as 2018, before Finjan took any depositions in this
`case. Nevertheless Finjan failed to ask any witness even a single question about the
`portfolio nor did it serve interrogatories seeking information about any SonicWall patents,
`including whether or how SonicWall intended to rely on the patents. Thus, the idea that
`Finjan did not have the “opportunity to pursue any depositions or written discovery
`related to SonicWall’s patent portfolio” is simply not supportable. That Finjan chose to
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`1 To be clear, SonicWall is not relying on its own patent portfolio to establish non-
`infringement
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`Case 5:17-cv-04467-BLF Document 277 Filed 08/07/20 Page 5 of 6
`
`The Honorable Virginia K. DeMarchi, Magistrate Judge
`August 7, 2020
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`ignore SonicWall’s ownership of numerous patents related to the accused products is of
`its own doing and should in no way preclude SonicWall from relying on such portfolio in a
`motion or at trial in a manner consistent with the case law (as determined by the
`standard pre-trial and in-trial objection process).
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`In view of the foregoing, the Court should deny in its entirety Finjan’s request to
`strike SonicWall’s second supplemental infringement contention.
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`VI.
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`SonicWall’s View Regarding Hearing
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`SonicWall requests a hearing regarding this dispute.
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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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`Dated: August 7, 2020
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`Respectfully submitted,
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`
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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
`
`
`Attorneys for Plaintiff
`FINJAN, INC.
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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 277 Filed 08/07/20 Page 6 of 6
`
`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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