Case 5:17-cv-04467-BLF Document 404-6 Filed 03/11/21 Page 1 of 7
`
`DUANE MORRIS LLP
`D. Stuart Bartow (CA SBN 233107)
`dsbartow@duanemorris.com
`Nicole E. Grigg (CA SBN 307733)
`negrigg@duanemorris.com
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`Telephone: 650.847.4150
`Facsimile: 650.847.4151
`DUANE MORRIS LLP
`Joseph A. Powers (PA SBN 84590)
`Admitted Pro Hac Vice
`japowers@duanemorris.com
`Jarrad M. Gunther (PA SBN 207038)
`Admitted Pro Hac Vice
`jmgunther@duanemorris.com
`30 South 17th Street
`Philadelphia, PA 19103
`Telephone: 215.979.1000
`Facsimile: 215.979.1020
`Attorneys for Defendant
`SONICWALL INC.
`
`DUANE MORRIS LLP
`Matthew C. Gaudet (GA SBN 287789)
`Admitted Pro Hac Vice
`mcgaudet@duanemorris.com
`John R. Gibson (GA SBN 454507)
`Admitted Pro Hac Vice
`jrgibson@duanemorris.com
`Robin L. McGrath (GA SBN 493115)
`Admitted Pro Hac Vice
`rlmcgrath@duanemorris.com
`David C. Dotson (GA SBN 138040)
`Admitted Pro Hac Vice
`dcdotson@duanemorris.com
`Jennifer H. Forte (GA SBN 940650)
`Admitted Pro Hac Vice
`jhforte@duanemorris.com
`1075 Peachtree NE, Suite 2000
`Atlanta, GA 30309
`Telephone: 404.253.6900
`Facsimile: 404.253.6901
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`FINJAN, LLC, a Delaware Limited Liability
`Company,
`
`Plaintiff,
`
`v.
`
`SONICWALL INC., a Delaware Corporation,
`
`Defendant.
`
`Case No.: 5:17-cv-04467-BLF-VKD
`
`SONICWALL INC.’S RESPONSE TO
`FINJAN’S MOTION IN LIMINE NO. 4 TO
`PRECLUDE EVIDENCE OR TESTIMONY
`REGARDING MR. TOUBOUL’S
`REPLACEMENT AS CEO OF FINJAN
`Date:
`March 18, 2021
`Time:
`1:30 PM
`Courtroom: 3, 5th Floor
`Judge:
`Hon. Beth Labson Freeman
`
` REDACTED
`
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 4 TO PRECLUDE EVIDENCE OR TESTIMONY RE: MR.
`TOUBOUL’S REPLACEMENT AS CEO OF FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
`
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`Case 5:17-cv-04467-BLF Document 404-6 Filed 03/11/21 Page 2 of 7
`
`TABLE OF REFERENCED EXHIBITS1
`
`Excerpts from August 6, 2019 Deposition Transcript of Shlomo
`Touboul, Finjan, Inc. v. Cisco Sys., Inc., Case No. 17-cv-72-BLF (N.D.
`Cal)
`August 1, 2005 Email from Asher Polani regarding Termination Letters,
`marked as Polani Deposition Ex. 13
`October 8, 2005 Email from Asher Polani regarding Finjan Transition
`Status – Snap Shot (October 8th 2005), marked as Polani Deposition Ex.
`14
`January 1, 2012 Consulting Agreement entered into between FI
`Delaware, Inc. and Shlomo Touboul, marked as Touboul Deposition Ex.
`31
`April 11, 2006 Email from Asher Polani regarding Yahoo! Finance
`Story – Aladdin Granted Important U.S. Patent for Proactive Protection
`Against Spyware and Viruses, marked as Polani Deposition Ex. 4
`Excerpts from August 5, 2019 Deposition Transcript of Asher Polani,
`Finjan, Inc. v. Cisco Sys., Inc., Case No. 17-cv-72-BLF (N.D. Cal)
`Frequently Asked Questions for Sales, marked as Polani Deposition Ex.
`7
`Excerpts from January 8, 2018 Trial Transcript, Finjan, Inc. v. Blue
`Coat Systems, Inc., Case No. CV-15-03295-BLF (N.D. Cal)
`Excerpts from October 31, 2017 Trial Transcript, Finjan, Inc. v. Blue
`Coat Systems, Inc., Case No. CV-15-03295-BLF (N.D. Cal)
`Excerpts from the February 25, 2019 Deposition of Philip Hartstein, ,
`Finjan, Inc. v. Cisco Sys., Inc., Case No. 17-cv-72-BLF (N.D. Cal)
`
`Ex. 40
`
`Ex. 46
`
`Ex. 47
`
`Ex. 48
`
`Ex. 49
`
`Ex. 50
`
`Ex. 51
`
`Ex. 52
`
`Ex. 53
`
`Ex. 54
`
`
`1 All exhibits are attached to the Declaration of Jarrad M. Gunther.
`
`i
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 4 TO PRECLUDE EVIDENCE OR TESTIMONY RE: MR.
`TOUBOUL’S REPLACEMENT AS CEO OF FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 404-6 Filed 03/11/21 Page 3 of 7
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`Finjan’s Motion in Limine (“MIL”) No. 4 seeks to allow Finjan to tell a one-sided version of
`its history. Finjan’s effort should be rejected for multiple reasons.
`
`A.
`Finjan Cannot Cherry-Pick The Facts Of Its Corporate History
`As this Court has seen multiple times, Finjan’s story to juries is that Finjan’s founder – Shlomo
`Touboul – was a “visionary” and a genius, that he invented behavioral-based security, that Finjan
`thus invested $70 million in research and development to bring its patented technology to market,
`that the only marketplace obstacle Finjan could not overcome was the financial crisis of 2008, and
`that Mr. Touboul remains a key technical consultant to the company and is the origin of the
`company’s current mobile app (called InvinciBull).
`That story is highly misleading. Evidence uncovered since those first few Finjan trials before
`this Court shows that
`
` to
`
`testify in line with the image Finjan would like to project to juries.
`Specifically, Mr. Touboul now admits that
`
`
`.” Ex. 40, at 176:6-176:9).
`Finjan’s next CEO (Asher Polani) then alerted the Board that “Shlomo will, for any reason, sue the
`company. . .” and that “his attitude caused and is causing damages to the company on a continues
`[sic] basis . . . .” Ex. 46. Two months later, Mr. Polani told the Board that Kenyon & Co. (then
`Finjan’s outside counsel) advised that Finjan should reconcile with Mr. Touboul because
`
`
`” Ex. 47. (emphasis in original). Following that
`
`. Ex. 40 at
`. Ex. 48 at Section 2.1
`259:17-24.
`and Annex A. In other words, the actual evidence shows that much of Finjan’s story about its own
`history and about Mr. Touboul is a paid-for, made-for-litigation narrative. This goes to the heart of
`credibility.
`
`realization, Finjan
`
`
`
`1
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 4 TO PRECLUDE EVIDENCE OR TESTIMONY RE: MR.
`TOUBOUL’S REPLACEMENT AS CEO OF FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
`DM2\13880370.1
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`Case 5:17-cv-04467-BLF Document 404-6 Filed 03/11/21 Page 4 of 7
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`It would be fundamentally unfair to allow Finjan to tell any part of its story but preclude
`SonicWall from presenting the other side. Finjan attempts to shield itself from these bad facts by
`arguing that Mr. Touboul’s replacement as CEO of Finjan “has no bearing on whether SonicWall
`infringes Finjan’s asserted patents, the validity of Finjan’s patents, or the amount of damages
`SonicWall owes Finjan for its willful infringement of the asserted patents.” Dkt. 367 at 1. But the
`same can be said of the story that Finjan wishes to present to the jury. In other words, the fact that
`Finjan is anything other than the named plaintiff has no bearing on any of these issues. Yet, Finjan
`surely intends to tell the jury all about Finjan (the company) and its version of its corporate history,
`as it has done in every prior trial.
`
`B.
`
`
`
`Even Apart From Finjan’s Story, Mr. Touboul’s Replacement is Highly
`Relevant
`In addition to the fundamental fairness point above, there are two additional, stand-alone
`issues for which these facts are already relevant, regardless of what Finjan tells the jury about its
`history.
`First, Mr. Touboul’s replacement – Asher Polani – made a series of statements in his capacity
`as CEO about the fact that Finjan’s technology and patents
`
`. This is a crucial point, because the key product that Finjan
`accuses on every remaining patent is SonicWall’s sandbox, called “Capture ATP.” Mr. Touboul’s
`replacement – Mr. Polani – told the world that
`
`
`In an April 2006 email to the Board
`
`
`
`
`
`
`
` Ex. 49. Mr. Polani went on
`to explain that a gateway sandboxing solution (i.e., exactly what Finjan accuses in this
`case)
`” Id.
`Mr. Polani confirmed the accuracy of these statements at his deposition. Ex. 50 at 42:7-
`2
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 4 TO PRECLUDE EVIDENCE OR TESTIMONY RE: MR.
`TOUBOUL’S REPLACEMENT AS CEO OF FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 404-6 Filed 03/11/21 Page 5 of 7
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`44:24.
` Likewise, under Mr. Polani’s leadership, Finjan released a public document stating that
`“We are not sandboxing the code, we do static analysis. What our 21 granted patents and
`26 other pending patents do is understand what the code intends to do on your browser,
`e.g., if it is downloading something to your computer or writing to your disk.” Ex. 51.
`Again, Mr. Polani testified about this document. Ex. 50 at 54:16-58:13.
`If Mr. Polani’s statements as CEO are true, then SonicWall’s sandbox cannot possibly infringe
`Finjan’s patents. Especially in a case where Finjan is alleging willfulness – i.e., that SonicWall must
`know that its sandbox infringes Finjan’s patents – these irreconcilable statements from the CEO who
`replaced Mr. Touboul are highly relevant. Finjan’s effort to make Mr. Polani disappear – and to
`replace him only by its paid litigation consultant (Mr. Touboul) – should be rejected.
`Second, the facts relating to Mr. Polani are relevant to the credibility of Finjan’s current CEO,
`Mr. Hartstein. For example, Mr. Hartstein testified under oath before multiple juries that the 2005
`agreement between Finjan and Microsoft was “transformational,” and set the groundwork for the
`credibility of Finjan’s license program. Ex. 52 at 243:19-244:14 (“[B]eing able to strike a license
`agreement with Microsoft . . . was really transformational for our business.”); Ex. 53 at 372:13-373:10
`(“[T]he ability to have the industry recognize Finjan’s technology was really transformative.”).
`Based on the evidence, Mr. Hartstein appears to have made this up. Mr. Touboul
`
`. Ex. 50 at 129:18-24. Mr. Polani (again, the replacement
`CEO who Finjan wants to erase from its history and who was CEO during what would have been the
`“transformation”) testified that
` Id., at
`78:2-16. Mr. Hartstein would not have known that, however, because despite Mr. Hartstein’s
`willingness to offer sworn testimony about events for which he has no first-hand knowledge, he has
`never even spoke with Mr. Polani. Ex. 54 at 126:16-23.
`
`C.
`No Unfair Prejudice
`Finjan has not articulated any specific example of unfair prejudice, nor cited any cases that
`reach a result analogous to what Finjan seeks here. In sum, the reason Finjan will reference Mr.
`
`
`
`3
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 4 TO PRECLUDE EVIDENCE OR TESTIMONY RE: MR.
`TOUBOUL’S REPLACEMENT AS CEO OF FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 404-6 Filed 03/11/21 Page 6 of 7
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`Touboul is to glorify the story of its founding and create a sense of credibility about itself. There is
`nothing unfairly prejudicial about telling the rest of the story, nor is there anything unfair about
`rebutting Finjan’s willful infringement allegations with the public statements of its former CEO (Mr.
`Polani) that its patents do not cover sandboxing.
`Finjan has not identified any distinct form of unfair prejudice in its motion. Finjan simply
`does not like the picture that emerges when all of the evidence is presented to the jury.
`
`
`Dated: March 11, 2021
`
`
`
`Respectfully Submitted,
`
`
`/s/ Nicole E. Grigg
`
`Nicole E. Grigg (formerly Johnson)
`Email: NEGrigg@duanemorris.com
`DUANE MORRIS LLP
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`
`Matthew C. Gaudet (Pro Hac Vice)
`Email: mcgaudet@duanemorris.com
`John R. Gibson (Pro Hac Vice)
`Email: jrgibson@duanemorris.com
`Robin L. McGrath (Pro Hac Vice)
`Email: rlmcgrath@duanemorris.com
`David C. Dotson (Pro Hac Vice)
`Email: dcdotson@duanemorris.com
`Jennifer H. Forte (Pro Hac Vice)
`Email: jhforte@duanemorris.com
`1075 Peachtree Street, Ste. 2000
`Atlanta, GA 30309
`
`Joseph A. Powers (Pro Hac Vice)
`Email: japowers@duanemorris.com
`Jarrad M. Gunther (Pro Hac Vice)
`Email: jmgunther@duanemorris.com
`30 South 17th Street
`Philadelphia, PA 19103
`
`Attorneys for Defendant
`SONICWALL INC.
`
`
`
`
`
`4
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 4 TO PRECLUDE EVIDENCE OR TESTIMONY RE: MR.
`TOUBOUL’S REPLACEMENT AS CEO OF FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 404-6 Filed 03/11/21 Page 7 of 7
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`CERTIFICATE OF SERVICE
`This is to certify that a true and correct copy of SONICWALL INC.’S RESPONSE TO
`FINJAN’S MOTION IN LIMINE NO. 4 TO PRECLUDE EVIDENCE OR TESTIMONY
`REGARDING MR. TOUBOUL’S REPLACEMENT AS CEO OF FINJAN was served by ECF
`on all counsel of record on March 11, 2021.
`
`
`
`
`
`
`
`/s/ Nicole E. Grigg
`Nicole E. Grigg
`
`
`
`
`1
`DEFENDANT SONICWALL INC.’S CERTIFICATE OF SERVICE, CASE NO. 5:17-CV-04467-BLF-VKD
`DM2\13880370.1
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