Case 5:17-cv-04467-BLF Document 368 Filed 03/04/21 Page 1 of 7
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`Juanita R. Brooks (CA SBN 75934) brooks@fr.com
`Roger A. Denning (CA SBN 228998) denning@fr.com
`Jason W. Wolff (CA SBN 215819) wolff@fr.com
`John-Paul Fryckman (CA 317591) fryckman@fr.com
`K. Nicole Williams (CA291900) nwilliams@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Ste. 400
`San Diego, CA 92130
`Telephone: (858) 678-5070 / Fax: (858) 678-5099
`
`Proshanto Mukherji (Pro Hac Vice) mukherji@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Phone: (617) 542-5070/ Fax: (617) 542-5906
`Robert Courtney (CA SBN 248392) courtney@fr.com
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Phone: (612) 335-5070 / Fax: (612) 288-9696
`
`Attorneys for Plaintiff
`FINJAN LLC
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`(SAN JOSE DIVISION)
`FINJAN LLC., a Delaware Limited Liability
`Case No. 5:17-cv-04467-BLF (VKD)
`Company,
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`Plaintiff,
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`v.
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`SONICWALL, INC., a Delaware Corporation,
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`Defendant.
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`PLAINTIFF FINJAN LLC’S MOTION IN
`LIMINE NO. 3 TO PRECLUDE
`ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL
`
`Date: March 18, 2021
`Time: 1:30 PM
`Hon. Beth Labson Freeman
`Ctrm: 3, 5th Floor
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`REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
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`Case No. 17-cv-04467-BLF (VKD)
` FINJAN LLC’S MOTION IN LIMINE NO. 3
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`Case 5:17-cv-04467-BLF Document 368 Filed 03/04/21 Page 2 of 7
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`I.
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`INTRODUCTION
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`Pursuant to Federal Rules of Evidence 401, 402, 403, and 611, Finjan LLC (“Finjan”)
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`respectfully requests that the Court exclude from presentation to the jury at trial any argument by
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`SonicWall, or evidence purporting to relate thereto, that actual notice of Finjan’s infringement
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`claims, conveyed to SonicWall’s prior owner Dell, does not relate to SonicWall.
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`II.
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`ARGUMENT
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`In pre-trial correspondence, SonicWall attempted to unveil a new defense, never before
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`presented—or preserved—in any part of the case to date. SonicWall suddenly argued that
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`Finjan’s pre-suit notice of infringement, conveyed to SonicWall’s then-parent Dell, did not apply
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`to SonicWall. This argument appears in neither SonicWall’s damages contentions, nor in its
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`interrogatory responses specifically addressing notice. It is forfeit. It is also meritless.
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`A.
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`SonicWall’s Statements in its Answer, Written Discovery, and Damages
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`Contentions Forfeit Argument That SonicWall Did Not Inherit Notice
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`At the start of the period for which Finjan seeks damages, SonicWall was owned by Dell.
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`It is undisputed that Finjan and Dell communicated about SonicWall, and how its activities related
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`to Finjan’s patents, during the period of Dell’s ownership, starting no later than 2014. In 2016,
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`Dell divested SonicWall in 2016 to a private equity firm, but nothing about that transaction
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`suggests that it transformed SonicWall from being on notice of infringement (via its parent Dell)
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`into one suddenly unaware of Finjan’s claims.
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`For most of this case, even SonicWall did not make such a contention. Its Amended
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`Answer, specifically discussing the correspondence between Finjan and Dell relating to
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`SonicWall’s infringement, repeatedly called Dell SonicWall’s “predecessor-in-interest,” and far
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`from claiming ignorance, discussed the content of the Finjan-Dell interactions in detail. D.I. 103
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`at ¶¶ 39. Nowhere did the Amended Answer allege, or even suggest, that SonicWall might not
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`have Dell’s notice imputed to it.
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`Case 5:17-cv-04467-BLF Document 368 Filed 03/04/21 Page 3 of 7
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`SonicWall also did not suggest it was not Dell’s successor for notice purposes when
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`responding to written discovery specifically directed to the issue. Finjan’s very first interrogatory
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`to SonicWall, served nearly three years ago, sought the details of SonicWall’s first awareness of
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`Finjan’s patents. Exh. 13 at 3 (Interrogatory No. 1 (“Describe in detail when and under what
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`circumstances You first became aware of the existence of the Asserted Patents . . . .”).) Far from
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`contending that SonicWall would not have patent-related interactions with Dell imputed to it,
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`SonicWall’s response (supplemented several times) specifically invoked the negotiations between
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`Finjan and Dell, and identified Dell as SonicWall’s “predecessor-in-interest.” Exh. 13 at 4.
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`SonicWall’s interrogatory response went on to describe how Finjan communicated with Dell
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`about its patents and infringement theories, including concerning SonicWall. In general,
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`SonicWall’s interrogatory response (like its other discovery responses) treated Finjan-Dell
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`correspondence relating to SonicWall as imputed to SonicWall. Id. at 4–5. In a supplemental
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`response, SonicWall went further, describing awareness by Dell of other Finjan-filed lawsuits as
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`bearing on SonicWall’s awareness of the patents. Id. at 5. And in a second supplemental
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`response, SonicWall identified a Dell employee as a knowledgeable person about the subject
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`matter of the interrogatory. At no point in this or any other interrogatory response did SonicWall
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`suggest that it did not inherit Dell’s awareness of Finjan’s patents and claims.
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`A similar story is in the parties’ damages contentions. Finjan’s damages contentions
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`alleged damages during the period of SonicWall’s ownership by Dell. Exh. 14 at 4. Further, the
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`contentions directed SonicWall to Finjan-Dell correspondence as reflecting “prior correspondence
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`between the parties” relevant to damages. Id. at 10. SonicWall’s responsive contentions did not
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`mention, in any way whatsoever, any theory that notice of infringement to Dell might not be
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`imputed to SonicWall. Exh. 15. To the contrary, SonicWall’s contentions referred to pre-suit
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`correspondence about the patents as “pre-suit communications between Finjan and SonicWall,”
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`drawing no distinction even though some were formally between Finjan and Dell. Indeed, the
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`Case 5:17-cv-04467-BLF Document 368 Filed 03/04/21 Page 4 of 7
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`only mention of Dell at all was to note that some Dell-Finjan exchanges were marked under Rule
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`408 (irrelevant to the notice issue). Id. at 13.
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`Still further, when Finjan argued during summary judgment that SonicWall “does not
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`dispute—because it cannot—that Finjan expressly brought [its] patents to the attention of
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`SonicWall’s predecessor Dell in mid-2014,” D.I. 326 at 21, SonicWall did not dispute the issue. It
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`certainly did not dispute that Dell was SonicWall’s “predecessor,” or that notice to Dell would be
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`imputed to it. See D.I. 335-3 at 13 et seq.
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`The only hint, during literal years of discovery, of SonicWall disputing inherited notice
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`was when SonicWall unaccountably refused Requests for Admission on the subject. But even
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`then, SonicWall’s refusal was conclusory and unaccompanied by any cognizable evidence. See
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`generally D.I. 276. While Magistrate Judge DeMarchi denied Finjan’s request to impose an
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`admission on SonicWall, in no sense did she endorse the idea that SonicWall, by corporate
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`restructuring, divested itself of § 287 notice. See D.I. 281. No evidence of SonicWall avoiding
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`inheriting notice was tendered to her, or to Finjan, at any point then, or since.
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`B.
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`SonicWall Has Forfeited Argument That It Is Not Dell’s Successor for Notice
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`In this Court and others, it is well established that failure to timely raise an issue before
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`trial forfeits the issue at trial. E.g., GPNE Corp. v. Apple, Inc., No. 12-CV-02885-LHK, 2014 WL
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`3870256, at *5 (N.D. Cal. Aug. 6, 2014) (finding waiver where argument raised only extremely
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`late). Here, though specifically called by Finjan to address notice under the patents-in-suit several
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`times, SonicWall never contended, in any sense, that it would not inherit whatever notice had been
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`given to Dell. Crucially, this included SonicWall’s total failure to raise the issue in damages
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`contentions, despite Finjan plainly indicating that its damages theory would revolve, in part, on
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`notice conveyed to Dell. Cf. Finjan, Inc. v. Cisco Systems, Inc., No. 17-cv-00072-BLF, 2019 WL
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`6174936, at *5 (N.D. Cal. Nov. 20, 2019) (noting that attempts to make arguments not in damages
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`contentions are appropriate for a motion in limine). Compounded with SonicWall’s decision not
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`Case 5:17-cv-04467-BLF Document 368 Filed 03/04/21 Page 5 of 7
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`to raise this issue in its Amended Answer, or in its interrogatory responses, nor even to dispute it
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`when raised by Finjan in summary judgment briefing, it would be profoundly unfair for SonicWall
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`to inject this new defense into the case during the immediate run-up to trial.
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`The prejudice to Finjan is plain. During pleadings SonicWall specifically admitted that
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`Dell was its “predecessor-in-interest.” It failed to dispute inherited notice in damages contentions,
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`or in interrogatory responses. Additionally, injection of this issue before the jury would have no
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`practical value except to engender confusion and wastage.
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`Finally, even had SonicWall not forfeited dispute that it inherited Finjan’s § 287 notice to
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`Dell, and even were SonicWall permitted to evade its discovery responses confirming Dell as its
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`“predecessor” for notice purposes, the dispute is meritless. At the time of notice, SonicWall was
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`wholly controlled Dell and bound by Dell’s negotiation with Finjan, including for notice purposes,
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`both as an aspect of Dell’s ownership and under the doctrine of apparent agency. This alone
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`would be sufficient for Finjan’s § 287 notice to relate to SonicWall. Still further, the record shows
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`that Dell, when it spun SonicWall out, specifically
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` as part of
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`the deal. See Exh. 16 at 102 (disclosing, in detail, exchanges between Finjan and Dell).
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`Additionally, John Gmuender, SonicWall’s CTO during its ownership by Dell and still its CTO
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`today,
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`. Exh. 17 at 240:1–18. And more,
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`when Finjan asked Mr. Gmuender if he had evaluated Finjan’s claims before the spin-out, Mr.
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`Gmuender refused to answer after a privilege instruction from SonicWall’s counsel. Id. at 241:2–
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`22. It would be inappropriate and unfair for SonicWall, after specifically blocking inquiry into its
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`top technology executive’s knowledge of Finjan’s claims, to now be permitted to contend
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`SonicWall lacked actual notice.
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`It is unfair and prejudicial for SonicWall to litigate for three years referring to Dell as its
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`“predecessor-in-direction,” then flip direction after discovery is closed and attempt to tell the jury
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`Case 5:17-cv-04467-BLF Document 368 Filed 03/04/21 Page 6 of 7
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`the opposite, all while ignoring clear evidence squarely undermining that position. The Court
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`should preclude this late-rising and meritless argument.
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`Dated: March 4, 2021
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`Respectfully Submitted,
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`By: /s/ Robert Courtney
`Juanita R. Brooks (CA SBN 75934)
`brooks@fr.com
`Roger A. Denning (CA SBN 228998)
`denning@fr.com
`Jason W. Wolff (CA SBN 215819)
`wolff@fr.com
`John-Paul Fryckman (CA 317591)
`fryckman@fr.com
`K. Nicole Williams (CA 291900)
`nwilliams@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Ste. 400
`San Diego, CA 92130
`Phone: (858) 678-5070 / Fax: (858) 678-5099
`
`Proshanto Mukherji (Pro Hac Vice)
`mukherji@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Phone: (617) 542-5070/ Fax: (617) 542-5906
`
`Robert Courtney (CA SNB 248392)
`courtney@fr.com
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Phone: (612) 335-5070 / Fax: (612) 288-9696
`
`Attorneys for Plaintiff
`FINJAN LLC
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`Case 5:17-cv-04467-BLF Document 368 Filed 03/04/21 Page 7 of 7
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on March 4, 2021 to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF system. Any other counsel of record will
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`be served by electronic mail and regular mail.
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`/s/ Robert Courtney
`Robert Courtney
`courtney@fr.com
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`Case No. 17-cv-04467-BLF (VKD)
`FINJAN LLC’S MOTION IN LIMINE NO. 3
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