Case 5:17-cv-04467-BLF Document 99 Filed 10/15/18 Page 1 of 10
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`FINJAN, INC.,
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`Plaintiff,
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`v.
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`SONICWALL, INC.,
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`Defendant.
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`Case No.17-cv-04467-BLF (VKD)
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`ORDER RE AUGUST 17, 2018 JOINT
`DISCOVERY LETTER
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`Re: Dkt. No. 82
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`On August 17, 2018, the parties submitted a joint discovery letter regarding a dispute
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`concerning plaintiff Finjan, Inc.’s (“Finjan”) inadvertent production of email communications to
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`defendant SonicWall, Inc. (“SonicWall”). Dkt. No. 82. The parties ask the Court to resolve the
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`following disputes:
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`1. Whether the attorney-client privilege or attorney work product doctrine protects
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`Finjan’s communications;
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`2. Whether Finjan waived its privilege or work product protection; and
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`3. Whether SonicWall used the communications in violation of Federal Rule of Civil
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`Procedure 26(b)(5)(B).
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`The Court held a hearing on the matter on September 4, 2018. Dkt. No. 86.
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`Having considered the parties’ submissions and the arguments of counsel at the hearing,
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`the Court finds that the email communications at issue are privileged and that Finjan did not waive
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`the privilege. The Court therefore denies SonicWall’s request to compel production of the email
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`communications. As discussed further below, the Court does not reach the question of whether
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`SonicWall has violated Rule 26(b)(5)(B).
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`Case 5:17-cv-04467-BLF Document 99 Filed 10/15/18 Page 2 of 10
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`I.
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`BACKGROUND
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`Finjan holds patents directed to network security software. Dkt. No. 1 ¶¶ 8-38. According
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`to the complaint, Finjan and SonicWall began discussing a license to Finjan’s patents in June
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`2014. Id. ¶ 39. The parties exchanged written communications in July and September 2014,
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`followed by in-person meetings in October 2014, February 2015, June 2016, and October 2016.
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`Id. ¶¶ 40-43. Ultimately, SonicWall declined to take a license to Finjan’s patents. Id. ¶ 44.
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`Finjan filed this action for patent infringement against SonicWall on August 4, 2017. See
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`generally Dkt. No. 1. Among other relief, Finjan seeks treble damages for willful infringement
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`pursuant to 35 U.S.C. § 284. Id. ¶¶ 72, 90, 106, 123, 140, 158, 170, 189, 206, 224, Prayer for
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`Relief at D.
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`On October 13, 2017, SonicWall moved to dismiss the complaint for failure to state a
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`claim for willful infringement, arguing that Finjan had not pled any “egregious” behavior required
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`for a finding of willfulness. Dkt. No. 26. The Court denied SonicWall’s motion, finding that
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`Finjan had pled sufficient facts from which it could be inferred that SonicWall had engaged in
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`disingenuous licensing negotiations, including alleging that “[a]t no time did [SonicWall] provide
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`any explanation as to how any of the Accused Products do not infringe any of the Asserted
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`Patents.” Dkt. No. 73 at 5–6 (citing Dkt. No.1 ¶ 44)).
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`During discovery, Finjan inadvertently produced email communications to SonicWall that
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`Finjan says contain attorney-client privileged communications and protected attorney work
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`product. Dkt. No. 82 at 1. Upon discovering the inadvertent production, Finjan asked SonicWall
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`to return and not use the email communications. Id. at 6. The parties dispute whether Finjan may
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`withhold the email communications as privileged or whether they must be produced to SonicWall.
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`In addition, the parties dispute whether SonicWall improperly used the email communications in
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`settlement discussions after receiving notice from Finjan that the production was inadvertent.
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`II.
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`LEGAL STANDARD
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`As a general matter, “[a] party is not entitled to discovery of information protected by the
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`attorney-client privilege.” Navajo Nation v. Confederated Tribes & Bands of the Yakama Indian
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`Nation, 331 F.3d 1041, 1046 (9th Cir. 2003) (citing Wharton v. Calderon, 127 F.3d 1201, 1205
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`(9th Cir. 1997)). The purpose of the attorney-client privilege is “to encourage full and frank
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`communication between attorneys and their clients . . . .” Upjohn Co. v. United States, 449 U.S.
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`383, 389 (1981). The privilege applies only where the communication concerns legal advice
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`sought from an attorney in his or her capacity as a professional legal advisor, and where the
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`communication is made in confidence, is intended to be maintained in confidence by the client,
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`and is not disclosed. In re Fischel, 557 F.2d 209, 211 (9th Cir. 1977) (citing 8 J. Wigmore,
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`Evidence § 2292 at 554). The privilege extends to both the substance of the client’s
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`communication and the attorney’s advice in response. Id. The party claiming the privilege has the
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`burden to establish that it applies. See United States v. Martin, 278 F.3d 988, 999–1000 (9th Cir.
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`2002).
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`The attorney work product doctrine protects from discovery materials that are prepared by
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`or for a party or its representative in anticipation of litigation. A party representative includes the
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`party’s attorney, consultant, or agent. Visa U.S.A., Inc. v. First Data Corp., No. C-02-1786 JSW,
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`2004 WL 1878209, at *5 (N.D. Cal. Aug. 23, 2004) (citing In re Grand Jury Subpoena (Mark
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`Torf/Torf Envt’l Mgmt.), 357 F.3d 900, 906 (9th Cir. 2004); Fed. R. Civ. P. 26(b)(3)). The
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`doctrine aims to balance the “promotion of an attorney’s preparation in representing a client” and
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`“society’s general interest in revealing all true and material facts to the resolution of a dispute.” In
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`re Seagate Tech., LLC, 497 F.3d 1360, 1375 (Fed. Cir. 2007) (citation and quotation marks
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`omitted), overruled on other grounds by Halo Elecs., Inc. v. Pulse Elecs., Inc., 126 S. Ct. 1923
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`(2016). A party asserting the work product doctrine bears the burden of demonstrating that the
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`protection applies. See, e.g., Visa U.S.A., 2004 WL 1878209, at *5.
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`The protections afforded by the attorney-client privilege and the attorney work product
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`doctrine are not absolute. The attorney-client privilege may be waived “either implicitly, by
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`placing privileged matters in controversy, or explicitly, by turning over privileged
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`documents.” Gomez v. Vernon, 255 F.3d 1118, 1131 (9th Cir.), cert. denied, Beauclair v. Puente
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`Gomez, 534 U.S. 1066 (2001). The waiver doctrine protects “the unfairness that would result
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`from a privilege holder selectively disclosing privileged communications to an adversary,
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`revealing those that support the cause while claiming the shelter of the privilege to avoid
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`Case 5:17-cv-04467-BLF Document 99 Filed 10/15/18 Page 4 of 10
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`disclosing those that are less favorable.” Tennenbaum v. Deloitte & Touche, 77 F.3d 337, 340-41
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`(9th Cir. 1996) (citing 8 J. Wigmore, Evidence § 2327, at 636). Similarly, work product
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`protection may be waived, although the scope of the waiver may be narrowly restricted. Seagate,
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`497 F.3d at 1375 (discussing United States v. Nobles, 422 U.S. 225 (1975)); see also Fed. R. Civ.
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`P. 26(b)(3)(A), (b)(4) (permitting discovery of work product in certain circumstances). The client
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`or counsel may waive work product protection. See Hernandez v. Tanninen, 604 F.3d 1095, 1100
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`(9th Cir. 2010); United States v. Salsedo, 607 F.2d 318, 320 (9th Cir. 1979).
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`Whether a particular communication is protected from discovery by the attorney-client
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`privilege or the work product doctrine and, if so, whether that protection has been waived, are
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`questions governed by Ninth Circuit law. See GFI, Inc. v. Franklin Corp., 265 F.3d 1268, 1272
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`(Fed. Cir. 2001) (holding that waiver of privileged information is not a substantive patent law
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`issue and regional circuit law applies); Phoenix Solutions Inc. v. Wells Fargo Bank, N.A., 254
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`F.R.D. 568, 576 (N.D. Cal. 2008) (applying Ninth Circuit law on issue concerning waiver of
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`attorney-client privilege).
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`III. DISCUSSION
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`A.
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`Disputed Email Communications
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`The parties’ dispute centers on the following three emails, which were written following
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`the second of the parties’ four in-person meetings prior to the filing of this action:
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`1.
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`Email #1:
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`. Dkt. No. 82, Ex. A at FINJAN-SW047874–75.
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`1 Dell is SonicWall’s predecessor-in-interest. Dkt. No. 82 at 2.
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`Case 5:17-cv-04467-BLF Document 99 Filed 10/15/18 Page 5 of 10
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`2.
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`Email #2:
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`3.
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`Email #3:
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`. Id.
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`. Id. at FINJAN-SW047873–74.
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`SonicWall argues that no attorney-client privilege or work product protection applies to
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`these emails, and further argues that even if they are protected, Finjan impliedly waived its
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`privilege or protection.
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`B.
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`Attorney-Client Privilege and Work Product
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`The communications at issue fall squarely within the attorney-client privilege. First,
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`Email #1 reflects that
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`determine
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`for legal advice.
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` Dkt. No. 82-1 at FINJAN-SW047874–75. Asking one’s lawyer to help
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` in light of certain information is the quintessential request
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` (who, in fact, now represents
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`Finjan in this action before the Court). Dkt. No. 82 at 4–5, n.1. The communications related to
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`.
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`’s request was made in confidence, as
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`evidenced by
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`. Save for the inadvertent disclosure, Finjan’s assertion of the privilege has been
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`unequivocal.
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`Case 5:17-cv-04467-BLF Document 99 Filed 10/15/18 Page 6 of 10
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`Emails #2 and #3 do not alter the Court’s conclusion that the attorney-client privilege
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`applies.
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`. These emails fall squarely within the privilege.
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`SonicWall argues that the attorney-client privilege does not cover communications that
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`merely report or summarize conferences or recite information conveyed by third parties.
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`According to SonicWall, only summaries that are so interwoven with legal advice may be
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`considered privileged as a whole. Citing Segerstrom v. United States, No. C 00–0833 SI, 2001
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`WL 283805 (N.D. Cal. Feb. 7, 2001), SonicWall argues that Finjan’s request for legal advice and
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` are not so interwoven as to be
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`inseparable. SonicWall suggests that the portions of the email seeking legal advice or reflecting
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`the writer’s opinions (e.g.,
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`) can
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`simply be redacted. This view ignores the context of these email communications. The portion of
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`not merely a neutral recording of
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`; rather,
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` about which Finjan sought legal advice and, in the same
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`communication, expressly sought such advice from counsel. These emails are similar to
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`Documents 78 and 81 discussed in Segerstrom as to which Judge Illston found the privilege
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` is
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`attached. See id. 2001 WL 283805 at *13-14.
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`Emails #2 and #3 also qualify as attorney work product.
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` Dkt. No. 82 at 5. The
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`emails reflect counsel’s mental processes and reveal the information he considered significant;
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`they are not merely verbatim summaries of
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`. Tierno v.
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`Rite Aid Corp., No. C 05-02520 THE, 2008 WL 2705089, at *4 (N.D. Cal. July 8, 2008) (“[W]hile
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`verbatim witness statements are generally considered ordinary work product, . . . an attorney’s
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`notes and memoranda of statements are protected as opinion work product because they reveal the
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`attorney’s mental processes and show what facts the attorney deems legally significant.”) (internal
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`citation omitted); see also In re Intuitive Surgical Sec. Lit., No. 5:13-cv-01920-EJD (HRL), 2016
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`WL 10459785, at *1 (N.D. Cal. Sept. 19, 2016) (listing cases where courts concluded that
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`interview notes and witness summaries drafted by counsel are subject to work product protection);
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`Upjohn, 449 U.S. at 399 (“Forcing an attorney to disclose notes and memoranda of witnesses’ oral
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`statements is particularly disfavored because it tends to reveal the attorney’s mental processes
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`. . . .”).
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`SonicWall also relies on TVT Records v. Island Def Jam Music Grp., 214 F.R.D. 143
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`(S.D.N.Y. 2003) for the proposition that the privilege does not apply when an attorney “merely
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`convey[s] to his client the substance of what a third party has conveyed.” Id. at 147. But TVT
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`Records itself suggests that the privilege would apply to documents that reflect “attorney-client
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`‘strategy’ discussions.” Id. at 147. Here, Finjan’s communications with its counsel
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`. Emails #2 and
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`#3 collect and transmit information prepared for use in such discussions.
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`The Court therefore finds that all emails are protected by the attorney-client privilege and
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`that Emails #2 and #3 are also protected by the work product doctrine.
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`C. Waiver of the Privilege or Protection
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`Having determined that the communications at issue are protected from disclosure by the
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`attorney-client privilege and the work product doctrine, the Court considers whether Finjan
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`waived those protections. SonicWall contends that Finjan impliedly waived its privilege by
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`asserting a claim for willfulness and alleging in its complaint and in opposition to SonicWall’s
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`motion to dismiss that SonicWall never provided a substantive noninfringement position to Finjan.
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`SonicWall argues that it would be unfair to permit Finjan to use its privilege as a shield when
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`.
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`The Ninth Circuit addressed waiver of the attorney-client privilege in Chevron Corp. v.
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`Pennzoil Co., 974, F.2d 1156 (9th Cir. 1992), stating that the privilege “may not be used as both a
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`sword and a shield. . . . Where a party raises a claim which in fairness requires disclosure of the
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`protected communication, the privilege may be implicitly waived.” Id. at 1162. In Chevron,
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`Pennzoil asserted an advice of counsel defense, placing the attorney-client communications
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`directly at issue. Finjan has not asserted a claim or defense that puts at issue advice of counsel or
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`any communications with counsel.2 SonicWall reasonably contends that the privileged
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`communications are relevant to Finjan’s claim of willful infringement. But Finjan’s withholding
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`of them does not mean it is using its privilege as both a sword and shield. Finjan is only using its
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`privilege as a shield. This is what happens any time a party prepares a privilege log listing
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`otherwise responsive documents as privileged and withholds those documents from production. A
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`party may not obtain an adversary’s privileged communications simply because it believes those
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`communications would bear on—or even contradict—its adversary’s allegations.
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`SonicWall points to Apple v. Samsung, 306 F.R.D. 234 (N.D. Cal. 2015) to support its
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`argument that it would be unfair for Finjan to continue to withhold these emails while maintaining
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`its claim that SonicWall’s infringement was willful. Apple v. Samsung is distinguishable. In that
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`case, Samsung waived its attorney-client privilege with respect to its privilege log, briefs,
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`declarations, and submission of in camera documents by directly placing those documents at issue
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`in a sanctions proceeding following Samsung’s improper disclosure of unredacted confidential
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`expert reports to third parties. As the Apple court explained:
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`Samsung put the disputed documents at issue by raising affirmative
`defenses about inadvertence and whether Nokia’s confidential
`information actually was used. . . . For example, Samsung
`referenced privileged communications to argue there is “no evidence
`that anyone deliberately, with a purpose of sharing information that
`should not be shared at any time disclosed that information. We are
`talking about inadvertent disclosures.”
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`Id. at 241–42 (emphasis added). Unlike Samsung, Finjan does not use or refer to the emails or
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`their contents to support a claim or defense.
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`SonicWall argues that it should at least be permitted to use the emails for impeachment
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`2 For this reason, SonicWall’s citations to Synalloy Corp. v. Gray, 142 F.R.D. 266 (D. Del. 1992)
`and Conkling v. Turner, 883 F.2d 431 (5th Cir. 1989) are inapposite.
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`purposes. However, the cases on which SonicWall relies for this remedy concern circumstances
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`where the attorney-client privilege or work product doctrine is used as a sword and shield, and
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`particularly at trial where the unfairness that arises cannot be remedied except by waiver of the
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`privilege. In re Grand Jury Proceedings John Doe Co. v. United States, 350 F.3d 299, 303 (2d.
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`Cir. 2003) (“The unfairness courts have found which justified imposing involuntary forfeiture
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`generally resulted from a party’s advancing a claim to a court or jury (or perhaps another type of
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`decision maker) while relying on its privilege to withhold from a litigation adversary materials
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`that the adversary might need to effectively contest or impeach the claim.”) (emphasis added);
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`United States v. Pinho, No. CRIM. 02-814, 2003 WL 25772423 (E.D. Pa. July 8, 2003) (holding
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`that defendant could not assert privilege over a conversation that she testified at trial did not
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`occur); United States v. Nobles, 422 U.S. 225 (1975) (holding that defendant waived protection
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`under the work product doctrine over his investigator’s reports when he called the investigator as a
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`trial witness to attack the credibility of prosecution witnesses). These cases do not address the
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`inadvertent disclosure of privileged communications during discovery.
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`As the Court observed during the hearing, the attorney-client privilege protects qualifying
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`communications; it does not protect facts. SonicWall may take discovery of Finjan regarding the
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`meeting to which the emails refer, including depositions and requests for admissions. Such
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`discovery may reveal that there is nothing to impeach.
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`D.
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`Violation of Federal Rule of Civil Procedure 26(b)(5)(B)
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`The record before the Court does not allow it to determine whether SonicWall used
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`privileged communications for an improper purpose after being advised that the communications
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`had been disclosed inadvertently. To the extent Finjan seeks disqualification of counsel or some
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`other sanction as remedy for the alleged violation, such a request should be directed to the
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`presiding judge by means of a noticed motion under the Civil Local Rules and should be
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`supported by a more substantial record of what occurred.
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`IV. CONCLUSION
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`For the foregoing reasons, the Court determines that the attorney-client privilege and work
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`product doctrine protect the emails at issue from disclosure, and that Finjan did not waive those
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`Case 5:17-cv-04467-BLF Document 99 Filed 10/15/18 Page 10 of 10
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`protections. SonicWall must certify to Finjan by October 29, 2018 that it has returned or
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`destroyed all copies of the emails in its possession, custody, or control.
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`IT IS SO ORDERED.
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`Dated: October 15, 2018
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`VIRGINIA K. DEMARCHI
`United States Magistrate Judge
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`Northern District of California
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`United States District Court
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