Case 3:17-cv-00183-CAB-BGS Document 849 Filed 01/06/21 PageID.40315 Page 1 of 24
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`Nicola A. Pisano, CA Bar No. 151282
` NicolaPisano@eversheds-sutherland.com
`Jose L. Patiño, CA Bar No. 149568
` JosePatino@eversheds-sutherland.com
`Justin E. Gray, CA Bar No. 282452
` JustinGray@eversheds-sutherland.com
`Scott A. Penner, CA Bar No. 253716
` ScottPenner@eversheds-sutherland.com
`EVERSHEDS SUTHERLAND (US) LLP
`12255 El Camino Real, Suite 100
`San Diego, California 92130
`Telephone: 858.252.6502
`Facsimile: 858.252.6503
`Attorneys for Defendants & Counter-
`Plaintiffs
`ESET, LLC and ESET, SPOL. S.R.O.
`
`
`Juanita Brooks (SBN 75934)
` brooks@fr.com
`Roger A. Denning (SBN 228998)
` denning@fr.com
`Jason W. Wolff (SBN 215819)
` wolff@fr.com
`Michael A. Amon (SBN 226221)
` amon@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Telephone: (858) 678-5070
`Facsimile:
`(858) 678-5099
`
`Attorneys for Plaintiff
`FINJAN LLC
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
` Case No. 3:17-cv-0183-CAB-BGS
`PUBLIC REDACTED VERSION
`JOINT STATEMENT REGARDING
`BRIEFING ORDER (D.I. 841)
`
`
`Judge: Hon. Bernard G. Skomal
`
`FINJAN LLC,
`
`Plaintiff,
`
`v.
`ESET, LLC, et al.,
`Defendants.
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`AND RELATED COUNTERCLAIMS.
`
` CONTAINS HIGHLY CONFIDENTIAL –
`ATTORNEYS’ EYES ONLY
`INFORMATION
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`I.
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`ESET’S STATEMENT
`Finjan steadfastly refuses to produce highly relevant non-privileged documents that
`are directly responsive to ESET’s Requests for Production on the ruse that privilege
`attaches to the disputed documents. Finjan is whistling past the graveyard; its assertions
`lack any legal or factual support. The Court should order production of those documents.
`A. Relevant Background
`On July 23, 2020, the Court lifted the stay on U.S. Patent No. 7,975,350 (“the ’305
`patent”). The next day, Finjan Holdings, Inc. announced that it was acquired by Fortress
`for $43.9 million. See Declaration of Regis C. Worley, Jr. in Support of Joint Statement
`(“Worley Decl.”), Ex. A. Finjan Holdings, Inc. survived the merger as a wholly owned
`subsidiary. Id. at Ex. B. The acquisition of Finjan Holdings, Inc. included its wholly-
`owned subsidiary, Finjan LLC (formerly Finjan, Inc.) – the plaintiff in this case.1
`In a 10-Q filing for the period ending March 31, 2020, Finjan Holdings, Inc.
`reported total current assets (not including intangible assets) of $36 million. See Worley
`Decl., Ex. C. Finjan Holdings, Inc. stated in that 10-Q that its revenue “results from
`grants of licenses to its patented cybersecurity technology and settlements reached from
`legal enforcement of the Company’s patent rights.” Moreover, the 10-Q identified 12
`pending patent infringement actions in which Finjan, Inc. was plaintiff (six of which
`involve the ’305 patent), including the instant action. Apart from its litigation costs in the
`March to July time-period, it appears that Fortress paid just $8 million more to acquire
`Finjan Holdings, Inc. than Finjan Holdings, Inc.’s cash assets.
`In this litigation, Finjan’s damages expert opined in his expert report on the
`“reasonable royalty” owed by ESET for alleged infringement. See D.I. 726-4, at pp. 4-5
`(Supplemental Expert Report of Kevin Arst, dated November 20, 2019). Fortress’s
`acquisition price not only significantly discounts the value of the ESET litigation, but
`
`1 Finjan has provided ESET with no discovery regarding Finjan LLC’s standing to
`continue to assert the patents-in-suit as a result of any corporate restructuring. While
`Finjan argues that ESET has not shown that Finjan LLC lacks standing, ESET has been
`provided none of the relevant documents relating to Finjan LLC’s restructuring.
`Moreover, Finjan bears the burden of proving its right to maintain suit.
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`discounts all of Finjan’s other reported litigations, and the value of its intellectual
`property assets, to zero.2
`The actual valuations that Finjan Holdings, Inc. assigned to the ESET litigation, all
`of Finjan’s other pending litigations, and Finjan’s intellectual property rights and other
`assets, as determined by an arm’s length transaction, all likely are revealed in documents
`exchanged between Finjan Holdings, Inc. and Fortress to induce the acquisition. Such
`valuations were not publicly disclosed, but are highly relevant to determining the value of
`the ’305 patent and any associated royalty rate. Those documents also bear directly on
`Finjan’s highly-inflated damages claims for the other asserted patents-in-suit. Moreover,
`discovery of the documents relating to the Fortress acquisition is required to establish
`whether Finjan LLC even has standing to continue pursuing this litigation.
`For example, a recent order in a suit brought by another subsidiary of Fortress
`revealed that subsidiary lacked standing to maintain its patent infringement action.
`Uniloc USA, Inc. v. Apple, Inc., No. C 18-00358 WHA, 2020 U.S. Dist. LEXIS 240994
`(N.D. Cal. Dec. 22, 2020) (putative plaintiff lacking standing where milestone venue
`targets missed). Moreover, counsel for Finjan LLC maintains that the parent corporation,
`Finjan Holdings, Inc. – that consummated the sale to Fortress – “no longer exists as an
`entity,” notwithstanding that as recently as December 9, 2020, Finjan Holdings, Inc. filed
`a pleading in a shareholder suit pending in the Northern District of California. (Worley
`Decl., Exs. I and J). Its corporate agent also acknowledged receipt of ESET’s subpoena
`to Finjan Holdings, Inc. on January 4, 2021. ESET is entitled not only to valuation
`documents regarding the value of the ESET litigation and ’305 patent, but moreover to
`discovery regarding the chain of title to the asserted patents, and proof that Finjan LLC
`has sufficient rights to maintain this suit.
`
`
`2 For example, in another recently resolved Finjan case, it was reported that Finjan sought
`$142 million in damages in another case, whereas the defendant, had infringement been
`established (it was not) would have owed less than $1.8 million. See Worley Decl., Ex.
`K (D. Simpson, Finjan Fights $8.7M Fee Bid For ‘BS’ Juniper Patent War, LAW360
`(Dec. 15, 2020), available at https://www.law360.com/articles/1338065/finjan-fights-8-
`7m-fee-bid-for-bs-juniper-patent-war).
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`B. Requested Documents in Dispute
`Finjan refuses to produce valuation or case-specific documents exchanged with
`Fortress in response to multiple Requests for Production (RFPs), including: patent
`valuation documents (RFPs 222 and 226); documents referring to (a) the asserted patents
`(RFP 223); (b) referring to ESET (RFP 224); (c) substitution of Finjan’s counsel of
`record (RFP 225); (d) allocation of
`the acquisition (RFP 227); (e) Finjan’s
`communications to shareholders about the acquisition (RFP 229); (f) valuation of
`infringement damages for the asserted patents (RFPs 230 and 231); (g) potential
`invalidity or unenforceability of the ’305 patent (RFP 2323); and (h) prior art to the ’305
`patent (RFP 2334).5 See Worley Decl., Ex. D.
`C. Legal Standards
`A party asserting privilege bears the burden of establishing all elements of the
`privilege. Ayers v. Yiu Lee, No. 14-cv-542-BGS (NLS), 2018 U.S. Dist. LEXIS 211333,
`at *9-10 (S.D. Cal. Dec. 14, 2018). Voluntary disclosure of privileged documents
`constitutes waiver of the privilege, which extends to all other such communications. Id.
`at *10-11. “‘If litigants are to have any faith in the discovery process, they must know
`that parties cannot fail to produce highly relevant documents within their possession with
`impunity.’” HM Elecs., Inc. v. R.F. Techs., Inc., No. 12cv2884-BAS-MDD, 2015 U.S.
`Dist. LEXIS 104100, at *33 (S.D. Cal. Aug. 7, 2015); OEM-Tech v. Video Gaming
`Techs., Inc., No. C 10-04368 RS, 2013 U.S. Dist. LEXIS 201318, at *17-18 (N.D. Cal.
`Jan. 8, 2013) (same). Indeed, as the Ninth Circuit observed: “‘Litigation is not a game. It
`
`3 During the meet-and-confer process, ESET agreed to narrow RFPs 232 and 233 from
`“any of the Patents-in-Suit” to “the ’305 patent.” In view of the uncertainty that recent
`court filings in the Northern District reveal regarding how Fortress entities retain title to
`and fund patent litigations, such narrowing now appears unduly restrictive.
` 5 As noted during the call with the Court, a parallel dispute has arisen regarding Finjan’s
`responses to Interrogatory 24 (“Identify the dollar amount at which This Litigation was
`valued in connection with any discussions between Finjan, Inc. and Fortress Investment
`Group LLC relating to the acquisition of Finjan, Inc. by Fortress Investment Group
`LLC”) and Interrogatory 25 (“Identify the dollar amount at which the ’305 patent was
`valued in connection with any discussions between Finjan, Inc. and Fortress Investment
`Group LLC relating to the acquisition of Finjan, Inc. by Fortress Investment Group
`LLC”). ESET submits that the interrogatory dispute is ripe for adjudication together with
`this RFP dispute.
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`is the time-honored method of seeking the truth, finding the truth, and doing justice.
`When a corporation and its counsel refuse to produce directly relevant information an
`opposing party is entitled to receive, they have abandoned these basic principles in favor
`of their own interests.’” Haeger v. Goodyear Tire & Rubber Co., 793 F.3d 1122, 1126
`n.1 (9th Cir. 2015).
`D.
`Finjan’s Defective Privilege Logs
`On December 30, 2020, Finjan provided a privilege log listing 24 documents.
`Among its numerous deficiencies, the log failed to identify all senders and recipients,
`their positions and employers, and whether any of the addressees were attorneys. See
`Worley Decl., Ex. E (under seal). ESET requested that Finjan provide an amended log
`on December 31 remedying those deficiencies. See Worley Decl., Ex. F; see also
`Jumping Turtle Bar & Grill v. City of San Marcos, No. 10-cv-00270-IEG (BGS), 2010
`U.S. Dist. LEXIS 119390, at *13 (S.D. Cal. Nov. 10, 2010) (requiring an amended
`privilege log be served “that includes all the recipients of the communications and
`provides the position held by each person identified in the privilege log”). Finjan agreed
`to do so, but its replacement privilege log suffers many of the same deficiencies (see, e.g.,
`documents 2317, 2318, 2320, 2321, 2324, 2325, 2326, 2327, 2328 each of which identify
`the author as “
`”). See Worley Decl., Ex. G (under seal). The new
`log raised as many questions as it purported to answer. For example, the “From” entry of
`document 2319 originally stated “
`
`,” (emphasis added) whereas the revised entry states
`.” Id. Likewise, the “From” entry of document 2314
`merely “
`originally stated “
`
`
`,” (emphasis added) but the revised entry now identifies only “
`. Id.
`,” who
`Moreover, while Ms. Mar-Spinola is an attorney, she also participates in competitive
`decision-making within Finjan LLC, and as such her appearance on communications
`exchanged outside of Finjan refutes any claim that such communications are privileged.
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`The revised privilege log also fails to identify (other than Ms. Mar-Spinola) any
`attorneys, and if so, whom they represent. See Skyline Wesleyan Church v. California
`Dep't of Managed Health Care, 322 F.R.D. 571, 584 (S.D. Cal. 2017) (setting forth
`criteria for a sufficient privilege log); Jumping Turtle Bar & Grill, 2010 U.S. Dist.
`LEXIS 119390, at *13. Accordingly, ESET requests that all entries on the log be
`reviewed by the Court in camera to assess which, if any, properly may be withheld from
`production. In addition, as described below, ESET contends that any privilege that could
`have existed was waived when the documents were shared between Finjan, Fortress, and
`many other entities during the acquisition negotiations, as set forth below.
`E.
`The Requested Documents in Dispute Are Relevant
`ESET’s requests for valuation documents6 are highly relevant to the issue of a
`reasonable royalty. Integra Lifesciences I, Ltd. v. Merck KGaA, 331 F.3d 860, 871 (Fed.
`Cir. 2003) (purchase price should have been considered as a factor that would have
`considerably reduced the value of a hypothetical license), rev’d on other grounds, 545
`U.S. 193 (2005); Uniloc USA, Inc. v. Apple Inc., No. 19-cv-01692-EJD (VKD), 2020
`U.S. Dist. LEXIS 137077, at *6 (N.D. Cal. July 30, 2020) (“The price paid to acquire all
`rights to a patent may be considered in assessing a reasonable royalty for a hypothetical
`license to the patent.”); Fresenius Med. Care Holding, Inc. v. Baxter Int’l, Inc., 224
`F.R.D. 644, 653 (N.D. Cal. 2004) (“The amount paid to acquire a company with desired
`patents, and the amount of the acquisition amount allotted to a particular patent is
`relevant to the establishment of a reasonable royalty.”).
`Documents regarding ESET7 shared between Fortress and Finjan, including
`whether to replace counsel after the ESET mistrial, may relate to any or all aspects of this
`action, and therefore are also relevant.
`Finjan’s shareholder communications8 are also relevant, because they may provide
`an overview of Finjan’s assessment of the transaction and contractual issues that
`
`6 See, e.g., RFP 222, RFP 223, RFP 226, RFP 227, RFP 230, and RFP 231.
`7 See, e.g., RFP 224.
`8 See, e.g., RFP 229.
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`potentially affect Plaintiff’s standing in this action, and the valuation that Finjan
`Holdings, Inc. attributed to this litigation and Finjan’s damages claims.
`Finally, because validity and enforceability of the ’305 patent are directly at issue
`in this action, documents relating to these topics,9 and especially communications to
`Fortress regarding the ex parte reexamination results finding most of the claims of the
`’305 patent invalid over prior art are highly relevant. See Worley Decl., Ex. H.
`F.
`The Requested Documents in Dispute Are Not Privileged
`Finjan bears the burden of establishing privilege over the withheld documents. See
`Skyline Wesleyan Church, 322 F.R.D. at 583-584. Finjan’s defective replacement
`privilege log fails to permit an assessment of Finjan’s privilege assertions because, at a
`minimum, it fails to identify which individuals are attorneys or all the recipients of the
`documents. See id.; Jumping Turtle Bar & Grill, 2010 U.S. Dist. LEXIS 119390, at *13.
`Accordingly, Finjan has not met its burden of establishing privilege.
`G. Any Privilege That May Have Existed Was Waived
`According to Finjan’s privilege log, 23 of the 24 documents are dated prior to
`Fortress’s July 24, 2020 acquisition of Finjan Holdings, with some dated as early as
`2018. See Worley Decl., Ex. G. Documents shared between parties involved in an
`arm’s-length transaction lose any privilege that was previously attached. See Fresenius
`Med. Care Holding, 224 F.R.D. at 654 n.3 (a party may not claim attorney client
`privilege for communications made while involved in arm’s-length negotiations); Nidec
`Corp. v. Victor Co., 249 F.R.D. 575, 578 (N.D. Cal. 2007) (attorney-client privilege and
`work product protection are lost when the information is communicated to a third party);
`Ayers, 2018 U.S. Dist. LEXIS 211333, at *10-11. Because Finjan shared documents with
`Fortress during the arm’s-length transaction of the acquisition, those documents lost any
`privilege that may have existed. Moreover, Finjan shared many documents regarding the
`valuations of its pending litigations with 50 other entities, only 11 of which were under a
`confidentiality agreement. See Worley Decl., Ex. I at 4:1-8. Even if Finjan shared a
`
`9 See, e.g., RFP 232 and RFP 233.
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`specific document on its log with Fortress under a confidentiality agreement, if Finjan
`also shared that same document with any of the other 39 entities not subject to a
`confidentiality agreement, that document should be produced.10
`While an exception to the general waiver rule exists for participants in a common
`litigation defense or individuals with a community of interest, those criteria are not met
`here.11 Nidec, 249 F.R.D. at 578. A threshold requirement is that, “the parties must have
`‘a common legal, as opposed to commercial, interest.’” Id. at 579; see also Hewlett-
`Packard Co. v. Bausch & Lomb, Inc., 115 F.R.D. 308, 310 (N.D. Cal. 1987) (common
`legal interest existed due to anticipated joint litigation). Here, no common legal interest
`existed, nor exists today. See D.I. 835 at 2 (Finjan. Inc.’s Notice of Motion and Motion
`to Amend Caption, noting that neither Finjan Holdings nor Fortress are a party in this
`case). Additionally, “[t]he joint defense exception requires some evidence of an
`agreement to share information for the specific purpose of coordinating a common legal
`defense.” Ayers, 2018 U.S. Dist. LEXIS 211333, at *12-13. Indeed, even taking Finjan’s
`privilege log at face value, the log shows that the parties did not establish a common
`interest agreement until August 2020, which is after the acquisition. See Worley Decl.,
`Ex. G, Doc. No. 2323. Thus, the common interest exception does not apply to the other
`23 documents that were exchanged prior to that time. Moreover, the circulation of likely
`hundreds of similar documents with Finjan’s 50+ other hoped-for suitors (not listed on
`Finjan’s log) surely eviscerates any privilege claim. The common interest agreement
`itself was negotiated at arm’s-length and should be discoverable to determine the breadth
`of any actual common interest that allegedly applies to the remaining documents.
`The communications between Finjan Holdings and Fortress relate to an arm’s-
`length commercial transaction, in which the parties had opposing interests, and were not
`undertaken in furtherance of a joint litigation defense. To the extent Finjan exchanged
`
`10 While a confidentiality agreement does not establish a joint privilege, freely circulating
`documents without even such a minimal restriction obliterates any claim to privilege.
` 11 Because the common interest exception “is an anti-waiver exception, it comes into play
`only if the communication at issue is privileged in the first instance.” Nidec, 249 F.R.D.
`at 578.
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`the documents with Fortress with the purpose of inducing acquisition, that exchange was
`not seeking legal advice, but instead a business transaction. See Nidec, 249 F.R.D. at
`579-580 (common interest doctrine did not apply, noting “Defendants provided the
`litigation abstract in order to facilitate the [third party’s] fund’s and other potential
`bidders’ commercial decision whether to buy the majority share in JVC. Thus, it was
`designed to further not a joint defense in this litigation, but to further a commercial
`transaction in which the parties, if anything, have opposing interests.”) (emphasis
`added); Pac. Pictures Corp. v. United States Dist. Court, 679 F.3d 1121, 1129 (9th Cir.
`2012) (“a shared desire to see the same outcome in a legal matter is insufficient to bring a
`communication between
`two parties within [the common
`interest] exception”);
`Genentech, Inc. v. Trs. of the Univ. of Pa., No. C 10-2037 PSG, 2011 U.S. Dist. LEXIS
`123302, at *10 (N.D. Cal. Oct. 24, 2011) (no common interest when the communications
`relate “to business prospects and strategy”). Finjan has no colorable basis for claiming
`privilege over such valuation documents.
`Finjan’s efforts to preclude discovery in its litigation against SonicWall proved
`equally futile. There, Finjan previously had shared documents with Cisco, a third party,
`and then attempted to shield those documents from discovery by asserting the same
`common interest doctrine that it raises here. See Finjan, Inc. v. SonicWall, Inc., No. 17-
`cv-04467-BLF (VKD), 2020 U.S. Dist. LEXIS 128725 (N.D. Cal. July 7, 2020). The
`Northern District rejected Finjan’s arguments, finding that Finjan “waived any attorney-
`client privilege it may have had with respect to the disputed materials by voluntarily
`disclosing them to Cisco.” In ordering that the requested documents be produced, the
`Court noted that “Cisco’s investment in Finjan and its status as a board observer, with or
`without an obligation of confidentiality, did not create a common legal interest between
`Cisco and Finjan.” Id. at *11-13. The same reasoning applies here.
`Finjan lacks any colorable claim of privilege, it should be ordered to disclose the
`24 responsive documents identified on its privilege log, or in the alternative, at least
`submit them for in camera inspection.
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`H. ESET’s Response to Finjan’s Statement
`Finjan’s Privilege Claims: Finjan admits it has the burden of establishing privilege.
`Its defective privilege log (as set forth above) does not meet Finjan’s burden. Finjan also
`argues that “many” documents are subject to work product protection, but provides no
`declaration(s) in support of that claim. Finjan makes no showing to establish work
`product privilege. See Ayers, 2018 U.S. Dist. LEXIS 211333, at *24. Moreover, any
`alleged privilege was lost when those documents were disclosed to Fortress (and others
`not under NDA) in adversarial arm’s-length negotiations.
`Finjan’s Cases Are Readily Distinguished: Finjan’s broad reading of Hewlett-
`Packard has been repeatedly rejected. Nidec, 249 F.R.D. at 579-580 (analyzing Hewlett-
`Packard); 10x Genomics, Inc. v. Celsee, Inc., No. 19-862-CFC, 2020 U.S. Dist. LEXIS
`227544, at *10 (D. Del. Dec. 4, 2020) (rejecting Hewlett-Packard and finding “the vast
`majority of the courts that have been asked to follow Hewlett-Packard have declined to
`do so”). Finjan’s other case citations fare no better, as they involved the concern of
`collaborating parties that a third party might initiate an infringement suit. Hewlett-
`Packard, 115 F.R.D. at 310 (“quite likely” the negotiating parties would be sued for
`patent infringement); Movril Tech., LLC v. Ablation Frontiers, Inc., No. 10-CV-2088-
`BEN (BGS), 2012 U.S. Dist. LEXIS 30815, at *9 (S.D. Cal. Mar. 8, 2012) (same);
`Britesmile, Inc. v. Discus Dental, Inc., No. C 02-3220 JSW (JL), 2004 U.S. Dist. LEXIS
`20023, at *3 (N.D. Cal. Aug. 10, 2004) (same). Here, Finjan has not shown any
`likelihood that Finjan Holdings, Inc. or Fortress would require a joint litigation defense.
`Regents is distinguishable because a common legal interest arose where the parties
`collaborated to prosecute patents together. In re Regents of the Univ. of Cal., 101 F.3d
`1386, 1388-90 (Fed. Cir. 1996). No such collaboration occurred here, where the
`acquisition involved arm’s-length negotiations. And Cavallaro relied on Hewlett-
`Packard and First Circuit privilege law. Cavallaro v. United States, 153 F. Supp. 2d 52
`(D. Mass. 2001). It also rejected a privilege claim where only one party was represented
`by counsel. Id. at 62. That is the case with many documents on Finjan’s log.
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`Non-Disclosure Agreement (NDA) and Common Interest Agreement (CIA):
`Finjan identifies Document No. 2322 as the NDA and Document No. 2323 as the CIA.
`That argument was considered and soundly rejected in SonicWall. SonicWall, 2020 U.S.
`Dist. LEXIS 128725, at *11-12 (Cisco’s investment in Finjan did not create a common
`legal interest; any privilege was waived when “Finjan voluntarily disclosed the disputed
`materials to a third-party investor”). As in SonicWall, Finjan Holdings, Inc. and Fortress
`had a common commercial interest, not a common legal interest.
`Discovery Limitations: Finjan takes the myopic view that ESET should not be
`permitted to discover information beyond the ’305 patent. Yet “a party generally may
`not redact or withhold from production irrelevant portions of documents that also contain
`relevant and responsive information.” SonicWall, 2020 U.S. Dist. LEXIS 128725, at *9-
`10. Even absent the acquisition – which provides an independent basis for discovery of
`the Fortress deal documents as they relate to the issue of standing – Finjan cannot shield
`its patent portfolio documents from discovery just because they extend beyond the ’305
`patent.12
`Finjan also argues that ESET’s damages expert has the valuation numbers he needs
`to evaluate reasonable royalty damages for the asserted patents. From the outset of this
`case, ESET has maintained that Finjan’s infringement case is baseless. ESET is entitled
`to review what Finjan actually told Fortress about the value of this case. As discussed
`above, the Fortress acquisition valuation assumed zero value for many of Finjan’s
`pending litigations, including several cases asserting the ’305 patent. Whether this case
`was one of the cases that Finjan assigned zero value in its discussions with Fortress, as
`was well on its way towards being established prior to the March 2020 mistrial, is highly
`relevant to Finjan’s damages claims.
`ESET requests that the documents listed in Finjan’s privilege log, as well as those
`not listed but provided to other suitors, be produced or subjected to in camera review.
`
`12 If the Court concludes that valuation documents not related to the ’305 patent are
`beyond the scope of the current discovery, ESET requests that an additional discovery
`period be ordered that will enable ESET to take fulsome discovery of the Fortress
`transaction sufficiently to assess whether Finjan LLC even retained standing to sue.
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`II.
`A.
`
`FINJAN’S STATEMENT
`INTRODUCTION
`Plaintiff Finjan LLC (“Finjan”) opposes Defendants ESET, LLC and ESET SPOL.
`S.R.O.’s (“ESET”) Motion to Compel Discovery. ESET’s discovery requests go beyond
`the scope of the Court’s order permitting additional discovery limited to the ’305 Patent,
`and instead seek production of irrelevant documents and communications regarding
`Finjan’s whole patent portfolio, Finjan’s former counsel, and ESET generally. ESET’s
`broad requests impose a burden not “proportional to the needs of the case” or authorized
`by this Court’s order limiting additional fact discovery to the ’305 Patent for this phase of
`the case. See D.I. 832.
`Even if ESET’s requests were within the scope of allowable discovery—they are
`not—the requests are directed to information protected from discovery by the attorney
`client privilege, the work product doctrine, and/or the common interest protection. The
`requests seek documents and communications exchanged between Finjan and Fortress
`Investment Group LLC, which ultimately acquired Finjan. But those communications
`included attorney-client communications and attorney work product reflecting attorneys’
`mental impressions and analysis, and those exchanges were made subject to non-
`disclosure and common interest agreements that expressly included provisions preserving
`these protections.
`Accordingly, Finjan respectfully requests the Court deny ESET’s motion to compel
`production of irrelevant discovery that do not expressly deal with the ’305 Patent and that
`are protected by privilege.
`B.
`PROCEDURAL BACKGROUND
`
`On October 26, 2020, ESET served its Seventh Set of Requests for Production of
`Documents Nos. 222-236 (“RFPs”). ESET requested, among other things:
`All communication between Finjan, Inc. or Finjan Holdings, Inc. and
`Fortress Investment Group LLC regarding any valuation of the Patents-in-
`Suit or the Finjan patent portfolio as a whole (RFP 222);
`
`All Documents provided to Fortress Investment Group LLC prior to the
`acquisition of Finjan referring or relating to substituting Kramer Levin as
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`counsel of record in any Finjan Litigation, including this litigation (RFP
`225);
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`All communications between Finjan and any of its shareholders regarding
`the acquisition of Finjan by Fortress Investment Group LLC (RFP 229), and
`
`All communications between Finjan, Inc. or Finjan Holdings, Inc. and
`Fortress Investment Group LLC regarding any prior art to any of the
`Patents-in-Suit (RFP 233).
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`On November 25, 2020, Finjan objected to these requests (and others in the same
`
`set) because they seek information unrelated to the ’305 Patent, and therefore go beyond
`the discovery authorized by the Court for this phase.13 See Amon Decl., Exh. A at 10-13,
`15-19; see also D.I. 832. Finjan also objected to the requests as seeking documents and
`information protected from discovery by the attorney client-privilege, and the attorney
`work product and common interest protections. For requests 222-27 and 229-33,14 Finjan
`stated it would not produce documents.
`The parties raised the discovery dispute with the Court and on December 23, 2020,
`the Court ordered the parties to file a joint motion addressing relevancy, attorney-client
`privilege, the work product doctrine, the common interest doctrine, and scope. D.I. 841.
`The Court’s order provided that “the only discovery the parties are currently permitted to
`pursue is discovery regarding the ’305 Patent.” Id. at 1. The Court further ordered
`Finjan to provide a privilege log, which Finjan served on ESET on December 30, and
`revised on December 31. See Declaration of Regis C. Worley, Jr. in Support of Joint
`Statement (“Worley Decl.”), Exh. G .
`C.
`FACTUAL BACKGROUND
`
`In August 2018, Fortress Investment Group (“Fortress”) began the due diligence
`process for its eventual acquisition of Finjan. As part of that process, Finjan and Fortress
`executed a non-disclosure agreement (“NDA”) and a common interest agreement
`(“CIA”), which contemplated the exchange of privileged and attorney work product
`information while ensuring the confidentiality of that information. See Worley Decl.,
`
`13 Exhibits additional to ESET’s are attached to the Declaration of Michael A. Amon
`(“Amon Decl.”) in Support of Joint Statement filed contemporaneously herewith.
`14 RFP Nos. 228 and 234-236 are not in dispute in this motion.
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