Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 1 of 43
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 1 of 43
`
`EXHIBIT 35
`
`EXHIBIT 35
`
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 1 of 43
`
`EXHIBIT 35
`
`EXHIBIT 35
`
`
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 2 of 43
`
` Pages 1 - 41
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`Before The Honorable Virginia K. DeMarchi, Magistrate Judge
`
`)
`FINJAN, INC.,
` )
` Plaintiff, )
` )
` VS. ) NO. C 17-04467 BLF (VKD)
` )
`SONICWALL, INC.,
`)
` )
` Defendant.
`)
` )
`
` San Jose, California
` Tuesday, August 18, 2020
`
`
`
`TRANSCRIPT OF PROCEEDINGS BY ZOOM WEBINAR
`
`
`
`
`APPEARANCES BY ZOOM WEBINAR:
`
`For Plaintiff:
` KRAMER, LEVIN, NAFTALIS & FRANKEL LLP
` 990 Marsh Road
` Menlo Park, California 94025
` BY: PAUL J. ANDRE, ATTORNEY AT LAW
`
`
`For Defendant:
` DUANE MORRIS LLP
` 1075 Peachtree Street - Suite 200
` Atlanta, Georgia 30309
` BY: ROBIN L. MCGRATH, ATTORNEY AT LAW
` ALICE E. SNEDEKER, ATTORNEY AT LAW
`
`
`
`
`Reported By: Jo Ann Bryce, CSR No. 3321, RMR, CRR, FCRR
` Official Reporter
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 3 of 43
`
` 2
`
`Tuesday - August 18, 2020
`
` 11:02 a.m.
`
`P R O C E E D I N G S
`
`---000---
`
`THE CLERK: Calling the matter of Finjan versus
`
`SonicWall, Case Number 17-cv-4467.
`
`THE COURT: May I have appearances, please, starting
`
`with plaintiff.
`
`MR. ANDRE: For plaintiff Finjan, Paul Andre.
`
`THE COURT: Okay. Good morning.
`
`And for defendant?
`
`MS. McGRATH: Good morning, Your Honor. This is Robin
`
`McGrath on behalf of SonicWall.
`
`MS. SNEDEKER: Alice Snedeker on behalf of SonicWall.
`
`THE COURT: Okay. Good morning to you both.
`
`Ms. McGrath, your audio is a little bit quiet so I don't
`
`know if you can maybe get a little bit closer to the microphone
`
`when you speak. That would be helpful.
`
`MS. McGRATH: I will do my best.
`
`THE COURT: Okay. Thank you.
`
`So we are here on two disputes. The first is at
`
`Docket 276, and that's a dispute concerning certain of Finjan's
`
`requests for admissions and SonicWall's responses to those
`
`requests; and second is Document Number 277 concerning
`
`SonicWall's identification of its patent portfolio and
`
`supplemental initial disclosures served on the last day of
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 4 of 43
`
` 3
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`discovery.
`
`So both of these are styled as sanctions motions and, as
`
`you may know, my standing order does not permit the use of a
`
`discovery letter brief for sanctions motions. It's supposed to
`
`be a regularly noticed motion.
`
`This rule is principally for the parties' benefit because
`
`often sanctions motions cannot be fairly briefed and dealt with
`
`in the abbreviated expedited procedure that I use for discovery
`
`disputes. There's not an opportunity for declarations or any
`
`of those things.
`
`But it appears you-all have agreed to handle these
`
`disputes in the discovery letter way, and I am happy to go
`
`along with that in this situation in the sense that I think
`
`that at least the expedited procedure for discovery disputes
`
`can be used to resolve the initial question, which is: Has
`
`there been a discovery violation?
`
`And so that's how I intend to proceed with this hearing,
`
`is just using what you've done so far to address that initial
`
`question. And then we can talk about if there's more -- if
`
`there's something further that needs to be done, what the most
`
`appropriate format is for that because, as I said, I'd like to
`
`make sure that it's fair to all parties, and that's the reason
`
`that I have that provision in my standing order for sanctions
`
`matters.
`
`Okay. So I'd like to start with the second matter first,
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 5 of 43
`
` 4
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Docket Number 277, which is the dispute about the supplemental
`
`initial disclosures, and I'd like to start with a few questions
`
`for Finjan.
`
`So, first of all, Rule 26(a), as you know, permits a party
`
`to describe its documents or to produce them, and those are
`
`documents that a party may use in support of the claim or
`
`defense. So I understand that the documents that comprise
`
`SonicWall's patent portfolio have been produced -- were
`
`produced at some point to Finjan, and so I want to understand,
`
`first of all, why that production is not sufficient to satisfy
`
`Rule 26(a).
`
`MR. ANDRE: Well, they were produced along with
`
`150,000 other documents, and the reason it doesn't satisfy the
`
`rule is because they didn't identify them as any relevance. We
`
`asked in an interrogatory response to identify all their bases
`
`for their affirmative defenses. They didn't identify those
`
`documents. They had to list their prior art. In their
`
`election of prior art, they didn't identify any of those
`
`documents.
`
`And so those documents were produced. As in a lot of
`
`these patent cases, Your Honor is quite aware, many times
`
`there's a lot of irrelevant documents produced. So we just
`
`assumed they were documents they produced and they were not
`
`relevant to anything in the case.
`
`And then on the very last day of discovery, they seem to
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 6 of 43
`
` 5
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`put this, you know, placeholder in saying it is relevant to
`
`their claims and defenses in their initial disclosures,
`
`supplemental initial disclosures.
`
`So our concern is: What is the relevance of these
`
`documents? We asked the questions through interrogatories,
`
`through their selection of prior art not listed, so they kind
`
`of sandbagged us here at the last minute.
`
`If they were -- if it was sufficient to just produce the
`
`documents, why did they supplement on the last day of discovery
`
`their initial disclosure? That tells me something is, you
`
`know, not quite right here.
`
`And, to be candid, we had meet and confers. We said, "Why
`
`is this relevant? You know, just tell us why it's relevant."
`
`And we probably wouldn't be here today, but they couldn't even
`
`tell us why it's relevant.
`
`So this seems like a classic sandbag that we are trying to
`
`avoid having to do motions in limine in on down the road. If
`
`they were relevant to their claims or defenses, they should
`
`have told us because we asked about it.
`
`THE COURT: Well, so let me ask about this a little
`
`bit more. How many patents are there?
`
`MR. ANDRE: I don't know the exact number, Your Honor.
`
`I'm sorry.
`
`THE COURT: Just a guesstimate. Are we talking about
`
`50? Are we talking about 200? How many patents are there?
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 7 of 43
`
` 6
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`MR. ANDRE: I'm guessing less than 100, Your Honor.
`
`THE COURT: Okay. And when were they produced? It
`
`sounds like, and I will ask the SonicWall folks this question,
`
`but it sounds like they were produced maybe not all at once but
`
`in some stages.
`
`MR. ANDRE: I don't have the breakdown when they were
`
`produced, but they had a rolling production of documents and
`
`all of them were produced in the relevant time period of
`
`discovery. So, you know, they didn't wait to produce them
`
`until the last minute.
`
`THE COURT: I see. Okay.
`
`All right. Now, you mentioned that Finjan served an
`
`interrogatory asking for identification of documents relevant
`
`to affirmative defenses or asked something about affirmative
`
`defenses, but I read SonicWall's portion of the discovery
`
`letter and they state that these patents are not relevant to
`
`any affirmative defense that they plan to put forward, and they
`
`also say that they're not relying on the patents for prior art.
`
`So that should give you at least some comfort. They're not
`
`using them for that purpose at all.
`
`So I'm wondering, are there any other discovery requests,
`
`either a document request or an interrogatory, for which you
`
`believe these patents should have been either produced or
`
`identified or something, something responsive to a discovery
`
`request that you served or Finjan served?
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 8 of 43
`
` 7
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`MR. ANDRE: I think the interrogatory is the most
`
`relevant. There were seven affirmative defenses asserted in
`
`this case, and presumably that is their defenses to this case.
`
`Maybe noninfringement is the only affirmative defense -- or the
`
`only defense they didn't assert as an affirmative defense.
`
`Patents, as Your Honor is aware, is not a defense to
`
`noninfringement. You know, patents don't describe the actual
`
`product necessarily.
`
`So we asked about all their affirmative defenses. We
`
`think that is encompassing of all their claims or defenses that
`
`are required by Rule 26, and that's how they identified it in
`
`their initial disclosure, these are documents relevant to their
`
`claims and defenses.
`
`They had no claims. They didn't assert counterclaims in
`
`this case, just affirmative defenses. So the only defense
`
`that, you know, they pled were invalidity and various other
`
`patent exhaustion, licensing, and things of that nature, the
`
`seven affirmative defenses that are identified in the
`
`interrogatory response and they didn't identify these patents
`
`as relevant to those defenses.
`
`THE COURT: I think the confusion here might be is
`
`that there's a difference between defenses and affirmative
`
`defenses on which a party may have the burden of proof.
`
`So what I understood, and I can ask SonicWall to confirm
`
`this, but what I understood from their papers was they were
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 9 of 43
`
` 8
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`saying, sure, these might relate to a defense but not an
`
`affirmative defense so would not be responsive to your
`
`interrogatory. In fact, SonicWall suggests it may -- and this
`
`is my reading, perhaps they are more cagey than this --
`
`SonicWall suggests it may use its patent portfolio as part of a
`
`defense of damages case to say, look, Finjan's damages expert
`
`needs to take into account all of the IP that goes into the
`
`accused products, some of which is ours, maybe some of which is
`
`licensed in -- I don't know, but as part of an apportionment
`
`argument that they may feel they need to make if your damages
`
`expert doesn't take into account those kinds of things. So
`
`that would be a defense to your damages case but not an
`
`affirmative defense.
`
`So what I'm really trying to get at, is there some other
`
`discovery request that Finjan served for which documents -- a
`
`patent portfolio being used for the purpose that I just
`
`described would have needed to be identified in some way?
`
`MR. ANDRE: Your Honor, I don't know of any possible
`
`defense that a patent infringement defendant could use their
`
`patents as a defense -- or as any kind of defense, whether it
`
`be damages or anything, other than prior art or trying to show
`
`the state of the art at the time, and that would be under our
`
`interrogatories. So I don't have anything additional to the
`
`affirmative defenses that they asserted.
`
`And probably more problematic is: Why did they wait till
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 10 of 43
`
` 9
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`the last day?
`
`THE COURT: I'm going to get to that --
`
`MR. ANDRE: Yeah.
`
`THE COURT: -- because I do think that's an important
`
`question, and I do intend to pose it to SonicWall as well.
`
`But let me just explore a little bit further about what
`
`happened. So at some point the SonicWall patents were
`
`produced, maybe over time, but you noticed them in the file or
`
`in the production. Did Finjan inquire about these patents at
`
`any point, either lawyer to lawyer or inquire of a witness?
`
`MR. ANDRE: Not that I'm aware of, Your Honor. We
`
`view them as irrelevant unless it's being used for prior art or
`
`for some other defense. We didn't see it being used that way
`
`so we assumed, like, as Your Honor is aware in these patent
`
`infringement cases, if we get anywhere from, you know, 200,000
`
`documents to sometimes over millions of documents, the vast
`
`majority of the documents are not going to be relevant to the
`
`case. I mean, that's just the nature of patent litigation,
`
`unfortunately.
`
`But we saw the patents. We assumed they were going to be
`
`used as some type of invalidity defense, to be candid with you,
`
`because that's what they're normally there for. We thought it
`
`was -- you know, they threw too many at us, but that's not
`
`unusual either; you know, kind of bury the documents. When
`
`they made their prior art selection, none of those were
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 11 of 43
`
` 10
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`selected. So we didn't think they were relevant to the case
`
`and we didn't pursue them any further than what was required
`
`just as we didn't pursue a lot of other irrelevant documents
`
`they produced.
`
`THE COURT: Okay. Now, you made a remark at the
`
`outset that kind of caught my attention because one of the
`
`notes I made in preparing for this hearing was that in some
`
`respects, Finjan's portion of the discovery letter reads like a
`
`motion in limine, and I actually think that in some respect
`
`your beef with SonicWall is really more well-suited to a
`
`motion in limine if you have one.
`
`So, you know, the question of whether these patents or
`
`some subset of them may be admissible or may be relied upon by
`
`a damages expert, for example, is really more of a question for
`
`Judge Freeman than me as a discovery matter. You see, it seems
`
`like your issue might be the use that SonicWall may intend to
`
`make of these patents.
`
`And certainly if in the face of your discovery response to
`
`the interrogatory asking for affirmative defenses SonicWall
`
`attempted to use these patents in support of an affirmative
`
`defense, you would, of course, be within your rights to say,
`
`"Oh, but wait a minute. That was not disclosed to us in
`
`discovery and that should be excluded."
`
`I don't know how Judge Freeman would rule on that kind of
`
`issue, but it seems like the kind of argument that you might
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 12 of 43
`
` 11
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`make to your trial judge or your motion hearing judge as
`
`opposed to the discovery magistrate.
`
`I don't know whether listing the patent portfolio in
`
`supplemental initial disclosures on the last day would be
`
`something that would cure any problem of a failure to disclose
`
`in response to a discovery request like the one I described
`
`but, again, that seems like that would be an issue for whoever
`
`is deciding the uses that can be made of those documents. So
`
`why isn't this better suited to a motion in limine?
`
`MR. ANDRE: And, Your Honor, I've tried several cases
`
`in front of Judge Freeman, and I've had instances where this
`
`was in -- this is a disclosure issue in discovery. We think it
`
`was unduly late without, you know, any cause and it was
`
`prejudicial. And I've had Judge Freeman once before kind of
`
`reprimand me saying I should have taken that up with the
`
`discovery judge.
`
`THE COURT: So you're between a rock and a hard place
`
`is what you're saying. Okay.
`
`MR. ANDRE: I appreciate it is -- if this is -- this
`
`motion to strike this particular disclosure under the Rule 26
`
`is denied, I would imagine if they try to use these patents, it
`
`will be a motion in limine in front of Judge Freeman.
`
`I think listing it in the initial disclosure on the last
`
`day was just that, it was trying to cure -- to the extent -- I
`
`can't imagine how they're going to use these patents, to be
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 13 of 43
`
` 12
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`candid. I don't think they know either because they couldn't
`
`tell us what the relevance is here. But if that's the case,
`
`then we can take it up in front of Judge Freeman and I think,
`
`you know, that she would be very receptive to this type of late
`
`disclosure after the close of discovery essentially, so...
`
`THE COURT: Well, let's assume that it's as you -- as
`
`I posited based on the remarks in the discovery letter brief,
`
`that this is -- that the -- which, frankly, is what I would
`
`have assumed, that a party discloses its own patent portfolio
`
`because it wants to use that in connection with damages. So
`
`that would be my expectation, is that's why they're there. So
`
`let's hypothesize that that's why they're there and that's how
`
`SonicWall intends to use that information.
`
`They've produced the documents to you in advance of the
`
`discovery deadline. They didn't identify it in their
`
`supplemental initial disclosures because it's not an
`
`affirmative -- it's not something that has to be identified
`
`because they can simply produce them under Rule 26(a). They
`
`don't have to categorize them. It's not an affirmative defense
`
`so they haven't failed to identify them in response to an
`
`interrogatory. It's not prior art so they haven't failed to
`
`identify them in response to that interrogatory.
`
`So what exactly is the discovery violation that would be
`
`problematic if we assume that SonicWall intends to use these
`
`documents in the way I described?
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 14 of 43
`
` 13
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`MR. ANDRE: Well, I'm -- Your Honor, I'm sorry, I'm
`
`looking away from the camera here, but I am looking at the --
`
`THE COURT: You're looking for your interrogatories
`
`and document requests.
`
`MR. ANDRE: Yes. I'm looking at the interrogatories
`
`now and just seeing what the -- if we actually did ask the
`
`interrogatory on damages because, once again, I've never seen
`
`another person's patents be used in a defense for their damages
`
`case because I don't think that's relevant, and that
`
`obviously --
`
`THE COURT: It happens all the time in apportionment.
`
`All the time, believe me.
`
`MR. ANDRE: Okay. I'll trust you on that one. I've
`
`never -- I've not personally --
`
`THE COURT: Okay.
`
`MR. ANDRE: I've not personally seen it.
`
`Anyway, I'm looking at the various interrogatories and
`
`there are interrogatories on damages. I don't think those
`
`patents were not identified on that.
`
`THE COURT: What does the interrogatory say?
`
`MR. ANDRE: Let me find it here real quick.
`
`(Pause in proceedings.)
`
`MR. ANDRE: So Interrogatory Number 19 says (reading):
`
`"Assuming Finjan is entitled to award of damages of
`
`no less than reasonable royalties, state in detail the
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 15 of 43
`
` 14
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`monetary amount of damages Finjan is entitled for
`
`SonicWall's infringement and the complete legal and
`
`factual basis for your damages calculation including, but
`
`not limited to, the royalty base" -- "the royalty rate,
`
`and any apportionment or offset."
`
`THE COURT: Wait a minute. Say that again. It's a
`
`request from Finjan to SonicWall?
`
`MR. ANDRE: It's an interrogatory.
`
`THE COURT: Yeah. But it's an interrogatory from
`
`Finjan to SonicWall asking about whose damages?
`
`MR. ANDRE: If Finjan is entitled to an award of
`
`damages. If Finjan gets the damages --
`
`THE COURT: Yeah.
`
`MR. ANDRE: -- then what is -- what's SonicWall's
`
`complete and legal factual basis for their damages calculation.
`
`THE COURT: Okay. So their rebuttal damages
`
`calculation --
`
`MR. ANDRE: Yes.
`
`THE COURT: -- to which they responded: See my expert
`
`report and this is an improper interrogatory because it asks
`
`for this, like, detailed massive narrative; right? Or
`
`something like that.
`
`MR. ANDRE: Something like that.
`
`THE COURT: Okay. All right.
`
`MR. ANDRE: Anyway.
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 16 of 43
`
` 15
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`THE COURT: So not totally compelling on that point
`
`that would have necessarily required them to identify their
`
`patent portfolio in response to that interrogatory.
`
`Okay. So let me just say, I did read all of the cases
`
`that you cited, and the difficulty with the cases that you're
`
`relying on is that those are all about late-disclosed
`
`witnesses. And I will acknowledge that the rule treats
`
`witnesses differently than documents. The rule requires you to
`
`identify your witnesses and the subject matter of their
`
`information.
`
`And in these cases that you rely on, there was a late
`
`disclosure and a finding, at least in some respects, that there
`
`hadn't been a sufficient disclosure in other forms of
`
`discovery -- interrogatory response or document production or
`
`deposition testimony -- and that it was prejudicial to have
`
`identified witnesses so late.
`
`But I'm not aware -- and I looked briefly -- I'm not aware
`
`of any cases where they have your fact pattern where it's a
`
`late identification of documents where the documents have
`
`already been produced, in a way that's not alleged to be too
`
`late, where it wasn't required that they even be identified in
`
`the first place.
`
`So I'm not aware of any authority that is really like what
`
`you're trying to argue here. So my inclination is to find that
`
`you haven't actually made out a violation of Rule 26(a) with
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 17 of 43
`
` 16
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`respect to the documents identified, you know, based on my
`
`understanding of the thesis here.
`
`But, again, you've answered all of my questions. So now
`
`I'd like to give you an opportunity to argue anything you think
`
`that bears on this matter that we haven't touched on.
`
`MR. ANDRE: No, Your Honor. I think you've got the
`
`gist of what we're going for here. There's no justification
`
`for waiting for the last day. They can't identify any
`
`justification, and there is prejudice to the extent they're
`
`going to use these in a way that was not disclosed in a timely
`
`manner.
`
`You know, our papers state that and we think the
`
`principles that even if it's witnesses or documents, that they
`
`should apply because patent cases are unique, that they -- you
`
`know, there are massive amounts of documents produced in these
`
`cases; and to try to go through and figure out what one is
`
`going to use the documents -- how they're going to use the
`
`documents is a -- it's prejudicial to us.
`
`Because if we would have seen the initial disclosures and
`
`they sent the patent portfolio, we would have issued discovery
`
`requests talking about "How are you going to use the patent
`
`portfolio?" You know, we'd ask for witnesses. They just
`
`produced the documents.
`
`And, you know, once again, it would be, I think, a little
`
`bit of a crapshoot to try to figure out every irrelevant
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 18 of 43
`
` 17
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`document that's produced by a defendant or even a plaintiff in
`
`the case, how they're going to use it and anticipate how
`
`they're going to use it if they don't give proper disclosures.
`
`So the fact they waited till the last day of discovery is, I
`
`think, our best argument.
`
`THE COURT: I mean, I agree that it's hard to figure
`
`out what to do with all of the documents if you don't know, but
`
`I'm struggling to find a rule that compels them to tell you.
`
`If you haven't served an interrogatory, you haven't asked the
`
`question. I don't see anything in Rule 26 that compels them to
`
`affirmatively tell you with respect to documents. So that's
`
`the difficulty I'm having.
`
`MR. ANDRE: Well, and the problem I'm having,
`
`Your Honor, is really it's just the timing of why they
`
`supplement initial disclosures on the last day of discovery to
`
`add it on.
`
`THE COURT: Well, let's find out.
`
`MR. ANDRE: Okay.
`
`THE COURT: Thank you very much.
`
`All right. So who's going to be arguing on behalf of
`
`SonicWall?
`
`MS. McGRATH: That would be me, Your Honor. Robin
`
`McGrath.
`
`THE COURT: Okay. And, again, you're a little bit
`
`quiet. Just I don't know if this is a problem that you've had
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 19 of 43
`
` 18
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`on any other Zoom matters, but one thing that I've discovered
`
`is that if you look at the caret next to the mute button and
`
`you make sure that your microphone and speaker are "same as
`
`system," that might be helpful.
`
`MS. McGRATH: I just moved it. Is that better?
`
`THE COURT: That's a little better. It may just be
`
`because you're closer so let's go with it. I just want to make
`
`sure that our court reporter can actually hear you and
`
`transcribe it.
`
`MS. McGRATH: Thank you, Your Honor.
`
`THE COURT: Okay. So how about that? Why did
`
`SonicWall do this supplemental initial disclosure on the last
`
`day of the discovery period?
`
`MS. McGRATH: And if I'm completely honest with you,
`
`Your Honor, since this issue has arisen, I have been asking
`
`myself that sort of on a daily basis because, as Your Honor is
`
`aware, we could not have identified it but because we produced
`
`the patents themselves in a timely manner, we could have used
`
`them to support our claims and/or defenses regardless anyway
`
`without having identified it. So it seems like our doing so
`
`caused a problem where none prior to that existed.
`
`That said, I will tell you that the thinking behind doing
`
`it is what I'm guessing would be the same thinking that Finjan
`
`went through when they supplemented a number of their
`
`interrogatories by citing over 170 additional documents on the
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 20 of 43
`
` 19
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`last day of discovery, which is you go through at the end of
`
`discovery and you look at everything that has been written and
`
`everything that's been disclosed and you sort of belt and
`
`suspenders it. And you just make sure that every I is dotted
`
`and T is closed -- is crossed while you're within the discovery
`
`period, which is why I assume that they too supplemented on the
`
`last day by identifying documents for the first time in
`
`response to the interrogatories.
`
`It would not have dawned on us to question -- as long as
`
`those documents had been produced earlier, to question their
`
`ability to do so. Now I'm wondering if, you know, what's good
`
`for the goose isn't good for the gander; but --
`
`THE COURT: No. No. You're done with motions; right?
`
`It's past August 7th. This is my last one; right?
`
`MS. McGRATH: Well, good. I'm glad to hear that
`
`because we had no intention of doing that.
`
`THE COURT: Okay.
`
`MS. McGRATH: But this idea, and I think Your Honor
`
`hit it right on the head, about how, you know, had we never
`
`supplemented on the last day, any document that we have
`
`produced during the course of discovery in a timely manner,
`
`absent a specific request in an interrogatory for how we plan
`
`to use the document, we had the right and ability to use that
`
`document in connection with a claim or defense. And so I see
`
`that Finjan is in no worse or different position than they were
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 21 of 43
`
` 20
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`had we not supplemented on the last day.
`
`And I will also note that this idea that they raised in
`
`their letter brief about, you know, the ability to ask
`
`questions, not only were the patents produced but many of the
`
`exhibits that they questioned our technical witnesses on in
`
`depth, in detail, on the accused products identified the
`
`patents that applied to those accused products and they went
`
`into detail about these documents with our witnesses and never
`
`asked a single question about whether these products were
`
`patented, what the patents applied to. You know, they had the
`
`information and didn't ask anything in any deposition or in any
`
`interrogatory, and some of those depositions were of the named
`
`inventors.
`
`So I'm not exactly sure, other than us spelling out on the
`
`last day of discovery that we actually do -- we may use the
`
`portfolio in connection with a claim or defense, I don't see
`
`that they are in any worse or different a portion than had we
`
`not done that.
`
`THE COURT: Okay. And was the only addition -- or the
`
`only supplementation to the initial disclosures that was made
`
`on July 31st by SonicWall the addition of the reference to the
`
`patent portfolio, or were there other things supplemented as
`
`well? Maybe you don't know.
`
`MS. McGRATH: I don't believe that was the only one.
`
`I believe that there were others. I can think of at least one
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 22 of 43
`
` 21
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`other, and I'm seeing Ms. Snedeker nod her head so I am getting
`
`the distinct impression that we had others as well.
`
`THE COURT: And how many patents are there in the
`
`portfolio?
`
`MS. McGRATH: I believe there are north of 200 and I'm
`
`guessing we produced the entirety of the portfolio, but I can't
`
`guarantee that we produced every single one.
`
`THE COURT: Okay. And you just mentioned now that in
`
`discovery there were documents also produced and also used in
`
`deposition that described which patents were associated with
`
`which accused products? Did I understand you correctly?
`
`MS. McGRATH: Yes. Not on a, you know, one-to-one
`
`basis but many of our documents that will have a description of
`
`a product and then would have sort of like a notice marking at
`
`the bottom and identify what patents relate to that product,
`
`and there were other documents that refer to our 200-plus
`
`patent portfolio. So they had plenty of notice about the
`
`existence and their possible application to the accused
`
`products.
`
`THE COURT: Okay. All right. Thank you.
`
`I will give you an opportunity to add anything else to
`
`your presentation that you feel bears on this dispute.
`
`MS. McGRATH: All right. I really think that the main
`
`points were we produced the documents, they had the ability to
`
`ask, never bothered to ask with respect to exhibits that they
`
`
`
`Case 5:17-cv-04467-BLF Document 410-1 Filed 03/11/21 Page 23 of 43
`
` 22
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`did use; and, you know, the notice on the last day was a sort
`
`of no harm, no foul given that they had everything and sort of
`
`did the same thing with their own interrogatories.
`
`THE COURT: All right. Thank you.
`
`Mr. Andre, if there's anything you'd like to respond to,
`
`I'll give you a brief opportunity to do that.
`
`MR. ANDRE: No, Your Honor. I think Ms. McGrath kind
`
`of signaled how they're going to try to use these patents in
`
`her argument there, that their products are covered by their
`
`own patents so, therefore, they can't infringe our patents, and
`
`I think that's -- that's not your issue.
`
`THE COURT: I doubt if she's going to do that.
`
`MR. ANDRE: I know it's not your issue.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
