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`FINJAN, LLC,
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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` Case No.: 17-cv-183-CAB-BGS
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`ORDER ON DISCOVERY DISPUTE
`REGARDING ACQUISITION
`DOCUMENTS
`
`[ECF 849]
`
`Plaintiff,
`
`v.
`ESET, LLC and ESET SPOL. S.R.O.,
`Defendant.
`
`Defendants ESET, LLC and ESET SPOL. S.R.O (“ESET”) move to compel
`Plaintiff Finjan, LLC (“Finjan”) to produce documents in response to eleven requests for
`production of documents (“RFPs”). (ECF 849 at 4.1) The parties have briefed the issues
`in dispute through a Joint Statement. (ECF 849.)
`BACKGROUND
`I.
`
`This case was stayed from May 7, 2018 until July 23, 2020 as to the ’305 Patent,
`one of six patents Finjan asserts ESET has infringed, and is currently stayed. (ECF 215,
`802.) After the stay was lifted and the parties were proceeding with discovery, the Court
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`1 This Order cites the CM/ECF electronic pagination unless otherwise noted.
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`ordered the parties to submit proposed deadlines to complete any ’305 discovery that was
`not completed prior to the stay. (ECF 811.) The Court then issued two orders setting
`deadlines to complete discovery as to the ’305. (ECF 819, 832.2)
`Since this briefing was filed, the district judge issued an order granting ESET’s
`renewed motion for summary judgment of indefiniteness as to all the other patents in this
`case. (ECF 864.) The decision was followed by an order granting the parties’ joint
`request to sever the ’305 patent from the others and stay it pending a final determination
`on the decision as to the other patents. (ECF 871.)
`The documents at issue in this dispute are related to Fortress Investment Group’s
`(“Fortress”) acquisition of Finjan Holdings, Inc. on July 24, 2020 for $43.9 million.
`(ECF 849 at 2-5, 13-17.) ESET seeks communications between and documents
`exchanged by Fortress and Finjan regarding: the patents asserted in this case and Finjan’s
`patent portfolio as a whole, including valuations for any damages claims for any of the
`patents or any Finjan litigation (RFPs 222, 223, 226, 230 and 231); ESET (RFP 224);
`substitution of Finjan’s counsel in any litigation (RFP 225); any allocation associated
`with the acquisition (RFP 227); potential invalidity, unenforceability, and prior art as to
`any of the patents-in-suit (RFP 232); and any communications between Finjan and its
`shareholders regarding the acquisition (RFP 229). (ECF 849.)
`Fortress’ acquisition of Finjan Holdings included Plaintiff Finjan, Inc., now Finjan,
`LLC.3 (Id. at 13-14.) Finjan represents that Fortress’ due diligence for this acquisition
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`2 The Court had ordered the parties to identify what additional discovery was needed as to
`the ’305 Patent and when it could be completed, however, the parties’ initial proposals
`only addressed written discovery as to the ’305 Patent. A second order addressed
`additional deadlines after receiving the parties’ proposed deadlines to address all
`remaining discovery deadlines as to the ’305 Patent.
`3 After the acquisition, Finjan filed a Motion to Amend the Caption seeking to change the
`name of the Plaintiff from Finjan Inc. to Finjan, LLC because Finjan’s entity status had
`been changed from a corporation to a limited liability corporation. (ECF 835.) ESET
`opposed the Motion, arguing Finjan was acting in bad faith in not disclosing the
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`began in August 2018; and as part of it, Fortress and Finjan executed a non-disclosure
`agreement (“NDA”) and common interest agreement (“CIA”), both in 2018. (Id. at 14
`(citing Decl. of Regis Worley, Ex. G (Finjan’s Supplemental Privilege Log) at Doc. Nos.
`2322-23)4.)
`II. DISCUSSION
`There are three primary issues raised in the parties’ briefing: (1) do ESET’s RFPs
`seek discovery within the scope authorized by the Court; (2) do they seek discovery that
`is relevant and proportional to the needs of the case; and (3) whether the withheld
`documents are protected by the common legal interest doctrine. The Court first addresses
`whether the discovery sought is within the scope of discovery authorized and if it is
`relevant and proportional to the needs of the case.
`A. Relevant to the ’305 and Proportional to the Needs of the Case
`The relevance section of ESET’s briefing groups the RFPs as follows: (1)
`valuation documents (RFPs 222, 223, 226, 227, 230, and 231); (2) documents regarding
`ESET (RFPs 224); (3) Finjan’s shareholder communications (RFP 229); and (4)
`documents regarding the validity and enforceability of the ’305 Patent (RFPs 232, 233).
`(ECF 849 at 6-7.) In a different section of the Joint Statement, ESET identifies only
`RFPs 222 and 226 as patent valuation documents and separates out RFP 223 as
`documents referring to the asserted patents, RFP 227 as documents referring to the
`allocation of the acquisition, and RFPs 230 and 231 as documents referring to the
`valuation of infringement damages for the asserted patents. (ECF 849 at 4.) This section
`also includes one RFP not identified in the relevance section, RFP 225, documents
`referring to substitution of counsel. (Id.)
`
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`acquisition documents that are in dispute here. (ECF 840.) The assigned district judge
`granted the motion to amend the caption and understandably did not reach the issue of
`these discovery documents. (ECF 846.)
`4 Despite quoting from the NDA in redacted portions of its briefing, Finjan only cites its
`privilege log for these two documents. (ECF 849 at 14.)
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`1.
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`Discovery Limited to ’305 Patent
`Parties’ Positions on Authorized Scope of Discovery
`a)
`
`Finjan argues that the RFPs go beyond the ’305 discovery authorized by the Court
`because they seek documents and communications between Finjan and Fortress regarding
`Finjan’s whole patent portfolio, Finjan’s former counsel, and ESET generally. (Id. at 12.)
`ESET does not directly dispute that discovery at this point is limited to the ’305.
`However, ESET argues that even if portions of responsive documents are beyond the
`’305, extending to patent portfolio documents, Finjan should not be allowed to withhold
`or redact those portions that extend beyond the ’305 if they otherwise contain information
`relevant to the ’305. (Id. at 6-7, 11 (citing Finjan, Inc. v. SonicWall, Inc., Case No. 17-cv-
`04467-BLF (VKD), 2020 WL 4192285, at *3 (N.D. Cal. July 21, 2020).) ESET seems to
`be arguing that if the documents are responsive and relevant for purposes of the ’305 then
`they should not be withheld just because they encompass more than the ’305. As to some
`of the RFPs, ESET also argues they are related to the ’305 even though the language of
`the RFP does not limit its scope to the ’305. Additionally, in a footnote, ESET asks that
`if the Court finds the valuation documents in dispute are not related to the ’305 and
`beyond the scope of 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.” (Id.
`at 11 n.12.)
`
`b) Analysis of Authorized Scope
`The only discovery the parties were authorized to conduct when this dispute arose
`was ’305 discovery. As noted above, discovery in this case was proceeding as to all the
`patents-in-suit when the case was stayed as to the ’305 on May 7, 2018, however, all
`other discovery was completed, and the case proceeded to trial5 while the stay was in
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`5 A mistrial was declared on March 16, 2020 as a result of the COVID-19 Pandemic.
`(ECF 783.) Additionally, since this briefing was filed, ESET’s motion for summary
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`place. (ECF 447 (close of expert discovery on March 19, 2019), 780-82 (trial).) In this
`respect, the only discovery the parties were authorized to pursue once the stay was lifted
`on July 23, 2020 was on the ’305 because discovery was closed as to everything else.
`(ECF 802, 819, 832.6) The Court also notes that the Court’s first order requiring the
`parties to submit proposals to complete ’305 discovery ordered them to identify discovery
`that was not cumulative or duplicative of discovery already completed. (ECF 811.)
`Additionally, in ordering the parties to address all discovery deadlines (they had only
`addressed written discovery in their initial competing proposals) the Court reminded
`them that ’305 discovery should only be updated as necessary because discovery as to the
`’305 was already in progress when it was stayed. (ECF 819.)
`On their face, the RFPs are not limited to the ’305. For example, RFP 222 requests
`“All Communications 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.” (ECF 849-6 at 12 (emphasis added).) In this respect, the
`language of these RFPs is overbroad in seeking discovery beyond the scope authorized
`by the Court. However, as to this and other similarly worded RFPs, the issue is not
`necessarily resolved by substituting “the ’305 Patent” in place of “Patents-in-Suit or
`Finjan patent portfolio as a whole” or something similar to narrow every RFP to the ’305.
`As discussed below, in the context of discovery related to a purchase of patents or an
`acquisition that includes patents, an RFP may arguably seek discovery relevant to the
`value of one patent even when it encompasses documents related to the value of other
`patents. (See I.A.1.b)(1)(b).) Rather than eliminate RFPs entirely because they do not
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`judgment of invalidity of the other patents, based on indefiniteness, was also granted.
`(ECF 864.)
`6 Neither party has sought to reopen discovery regarding anything beyond the ’305 and
`their briefing does not directly address any of the factors courts are required to consider
`in reopening discovery.
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`specify they are only asking for the discovery as to the ’305 or substitute in “the ’305” for
`the broader language in a blanket fashion, the Court considers below whether the RFPs as
`currently stated seek any discovery that is relevant to the ’305 and narrows them
`accordingly.
`The Court briefly addresses the parties’ arguments regarding obtaining discovery
`as to Finjan’s standing below in addressing relevancy and proportionality. (See
`I.A.1.b)(3)) However, to the extent ESET’s footnote regarding an “additional discovery
`period” could be considered a request to reopen discovery or open discovery more
`broadly than the ’305, it is denied at this time for not properly raising it. “When ruling on
`a motion to amend a Rule 16 scheduling order to reopen discovery, [the Ninth Circuit]
`instructs” courts to consider:
`1) whether trial is imminent, 2) whether the request is opposed, 3)
`whether the non-moving party would be prejudiced, 4) whether the
`moving party was diligent in obtaining discovery within the guidelines
`established by the court, 5) the foreseeability of the need for additional
`discovery in light of the time allowed for discovery by the district court,
`and 6) the likelihood that the discovery will lead to relevant evidence.
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`City of Pomona v. SQM N. Am. Corp., 866 F.3d 1060, 1066 (9th Cir. 2017)
`(quoting United States ex rel. Schumer v. Hughes Aircraft Co., 63 F.3d 1512, 1526 (9th
`Cir. 1995) vacated on other grounds, 520 U.S. 939 (1997)). Not only is a footnote not a
`proper avenue to seek to reopen discovery, ESET has not addressed this standard or any
`alternative standard it might advance to justify obtaining discovery beyond the ’305.
`Raising it in a footnote with little analysis leaves the Court to speculate as to the standard
`ESET might think applies and ESET’s justifications under this or another standard.
`Additionally, by raising it in a footnote with little analysis, it also denies Finjan the
`opportunity squarely address the appropriate standard or ESET’s arguments. The Court
`will not rule on an issue raised in this way.
`///
`///
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`2.
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`Relevance and Proportionality
`Scope of Discovery
`a)
`The Federal Rules of Civil Procedure provide that “parties may obtain discovery
`regarding any non-privileged matter that is relevant to any party’s claim or defense and
`proportional to the needs of the case, considering the importance of the issues at stake in
`the action, the amount in controversy, the parties’ relative access to relevant information,
`the parties’ resources, the importance of the discovery in resolving the issues, and
`whether the burden or expense of the proposed discovery outweighs its likely benefit.”
`Fed. R. Civ. P. 26(b)(1). Here, as discussed above, the scope is further limited to the
`’305.
`District courts have broad discretion in determining what is relevant. Facedouble,
`Inc. v. Face.com, No. 12cv1584 DMS (MDD), 2014 WL 585868, at *1 (S.D. Cal. Feb.
`13, 2014). “Evidence is relevant if (a) it has any tendency to make a fact more or less
`probable than it would be without the evidence; and (b) the fact is of consequence in
`determining the action.” Fed. R. Evid. 401. “The party who resists discovery has the
`burden to show that discovery should not be allowed, and has the burden of clarifying,
`explaining, and supporting its objections.” Global Ampersand, LLC v. Crown
`Engineering and Construction, Inc., 261 F.R.D. 495, 499 (E.D. Cal. 2009) (quoting
`Oakes v. Halvorsen Marine Ltd., 179 F.R.D. 281, 283 (C.D. Cal. 1998) and Nestle Foods
`Corp. v. Aetna Casualty & Surety Co., 135 F.R.D. 101, 104 (D. N.J. 1990)); see also
`Gordon v. Nexstar Broad., Inc., Case No. 1:18-cv-007 DAD-JTL, 2019 WL 2177656, at
`*4 (E.D. Cal. May 20, 2019) (“Once the party seeking discovery establishes that a request
`seeks relevant information, the party who resists discovery has the burden to show
`discovery should not be allowed, and has the burden of clarifying, explaining, and
`supporting its objections.”) (citations omitted).
`The 2015 Amendments to Rule 26 made clear that “[r]elevancy alone is no longer
`sufficient—discovery must also be proportional to the needs of the case.” In re Bard IVC
`Filters Prods. Liability Litig., 317 F.R.D. 562, 564 (D. Ariz. 2016). When a dispute
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`implicates proportionality, the party claiming undue burden has an obligation to explain
`what is burdensome about complying with the request and the party claiming it is
`important enough to require a response must explain why it is important. Fed. R. Civ. P.
`26 advisory committee’s notes. “The court’s responsibility, using all the information
`provided by the parties, is to consider these, [undue burden or expense and importance of
`information sought,] and all the other factors in reaching a case-specific determination of
`the appropriate scope of discovery.” Id. Limits on discovery may be issued where the
`“burden or expense outweighs the likely benefits.” Id. (citing Fed. R. Civ. P. 26(b)).
`b) Rule 26 Analysis of RFPs
`Finjan argues that the RFPs seek discovery that is beyond the ’305 and not
`proportional to the needs of the case. Finjan asserts that these RFPs seek production of
`irrelevant documents and communications regarding Finjan’s entire patent portfolio,
`Finjan’s former counsel, and ESET generally. Finjan argues the only information
`relevant to the value of a hypothetical license, the basis for the reasonably royalty
`calculation, is the actual purchase price, not the broad pre-acquisition negotiations,
`valuations, or purchase price allocations ESET seeks in these RFPs. (ECF 849 at 12, 17.)
`In justifying such broad discovery as to the acquisition, ESET relies on an alleged
`discrepancy between Finjan’s expert’s opinion as to a reasonable royalty as to the other
`patents and what Fortress paid in total to acquire Finjan. ESET explains that in the filing
`period ending March 31, 2020, prior to the acquisition, Finjan Holdings reported total
`current assets of $36 million and additionally identified 12 pending patent infringement
`actions in which Finjan was a plaintiff (6 of them involving the ’305 patent). (ECF 849
`at 2 (relying on Worley Decl., Ex. C).) By comparing this 10-Q filing and the amount
`Fortress paid to acquire Finjan, $43.9 million, ESET argues Fortress paid only $8 million
`more for Finjan than its total cash assets. ESET argues this purchase price significantly
`discounts, potentially to zero, the value of the ESET litigation, as well as Finjan’s other
`reported litigations, and the value of its intellectual property assets. (Id. at 2-3.) It asserts
`there is a significant difference between nothing, what it asserts Fortress paid for these
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`patents among others, and the opinion of Finjan’s expert as to the reasonable royalty
`owed by ESET to Finjan for alleged infringement of the other five patents asserted in this
`case.7 (Id. at 2, 11.) Based on this difference, ESET argues it is entitled to review
`everything Finjan told Fortress about the value of this case.
`The Court addresses the RFPs as categorized by ESET in its briefing starting with
`the largest group, the “valuation documents.”
`(1) Valuation Documents
`ESET identifies RFPs 222, 223, 226, 227, 230, and 231 as seeking valuation
`documents. (ECF 849 at 6.) As discussed in more detail below, ESET argues documents
`responsive to these RFPs are relevant to the value of the ’305 and calculation of a
`reasonable royalty rate. (Id. at 3, 6.)
`When a patent is infringed, the patentee is entitled to ‘damages adequate to
`compensate for the infringement, but in no event less than a reasonable royalty for the use
`made of the invention by the infringer.’” Whitserve, LLC v Computer Packages, Inc.,
`694 F.3d 10, 26 (Fed. Cir. 2012) (quoting 35 U.S.C. § 284). “A reasonable royalty can
`be calculated from an established royalty, the infringer’s profit projections for infringing
`sales, or a hypothetical negotiation between the patentee and infringer based on the
`factors in Georgia–Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.
`N.Y.1970).”8 Wordtech Sys., Inc. v. Integrated Network Solutions, Inc., 609 F.3d 1308,
`
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`7 The parties have not yet completed expert discovery in this case as to the ’305. ESET
`relies on a modified expert report provided by Finjan’s expert as to the other patents-in-
`suit.
`8 The Georgia-Pacific factors are:
`(1) royalties the patentee has received for licensing the patent to others; (2)
`rates paid by the licensee for the use of comparable patents; (3) the nature
`and scope of the license (exclusive or nonexclusive, restricted or
`nonrestricted by territory or product type); (4) any established policies or
`marketing programs by the licensor to maintain its patent monopoly by not
`licensing others to use the invention or granting licenses under special
`conditions to maintain the monopoly; (5) the commercial relationship
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`1319 (Fed. Cir. 2010) (emphasis added) (citing Lucent Techs. v. Gateway, Inc., 580 F.3d
`1301, 1324 (Fed. Cir. 2009) and Minks v. Polaris Indus., 546 F.3d 1364, 1372 (Fed. Cir.
`2008)); see also Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir.
`2011) (“This court has sanctioned the use of the Georgia-Pacific factors to frame the
`reasonable royalty inquiry. Those factors properly tie the reasonable royalty calculation
`to the facts of the hypothetical negotiation at issue.”); see also N.D. Cal. Model Patent
`Jury Instruction 5.7. As noted above, ESET is relying on an alleged discrepancy between
`Finjan’s expert’s opinion regarding a reasonable royalty as to all the other patents-in-suit
`and what Fortress paid for Finjan in total, including the ’305. Finjan’s expert’s
`reasonable royalty calculation that ESET seeks discovery to challenge is based on a
`hypothetical negotiation.
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`(a) RFPs
`
`RFP 222:
`All Communications 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.
`
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`between the licensor and licensee, such as whether they are competitors; (6)
`the effect of selling the patented specialty in promoting sales of other
`products of the licensee; (7) the duration of the patent and license term; (8)
`the established profitability of the product made under the patent, including
`its commercial success and current popularity; (9) the utility and advantages
`of the patent property over old modes or devices; (10) the nature of the
`patented invention and the benefits to those who have used the invention;
`(11) the extent to which the infringer has used the invention and the value of
`that use; (12) the portion of profit or of the selling price that may be
`customary in that particular business to allow for use of the invention or
`analogous inventions; (13) the portion of the realizable profit that should be
`credited to the invention as opposed to its non-patented elements; (14) the
`opinion testimony of qualified experts; and (15) the results of a hypothetical
`negotiation between the licensor and licensee.
`
`
`i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 853 n.3 (Fed. Cir. 2010) (emphasis
`added).
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`RFP 223:
`All Documents provided to Fortress Investment Group LLC prior to the
`acquisition of Finjan referring or relating to any of the Patents-in-Suit.
`
`RFP 226:
`All Communications between Finjan, Inc. or Finjan Holdings, Inc. and
`Fortress Group LLC regarding any valuation assigned to the Patents-in-
`Suit.
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`RFP 227:
`All Documents pertaining to any purchase price allocations associated with
`the acquisition of Finjan by Fortress Investment Group LLC.
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`RFP 230:
`All Communications between Finjan, Inc. or Finjan Holdings, Inc. and
`Fortress Investment Group LLC regarding any valuation assigned to
`pending claims for damages for alleged infringement of any of the Patents-
`in-Suit in any Finjan Litigation.
`
`RFP 231:
`All Communications between Finjan, Inc. or Finjan Holdings, Inc. and
`Fortress Investment Group LLC regarding any valuation assigned to
`pending claims for damages for any alleged infringement by ESET of any
`of the Patents-in-Suit.
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`RFP 229:9
`All Communications between Finjan and any of its shareholders regarding
`the acquisition of Finjan by Fortress Investment Group LLC.
`
`(ECF 849-6 at 12-19.)
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`
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`9 RFP 229 was not listed as a valuation RFP, however, because ESET asserts it is relevant
`to the valuation attributed to this litigation and Finjan’s damages claims and those issues
`are addressed in this section, the Court considers it here.
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`(b) Analysis
`The Court finds some of the documents sought in the valuation RFPs are relevant,
`however, the RFPs are also overbroad because they encompass discovery that is not
`relevant or proportional to the needs of the case.
`As Finjan accurately explains, ESET already has the purchase price for the
`acquisition. (ECF 849 at 17 (Arguing ESET fails to explain “why preacquisition
`documents are relevant to this inquiry when it may account for the actual purchase price
`(of $43.9 million noted above) in its valuation of a hypothetical license”).) The issue
`then is whether broader discovery into all Finjan and Fortress’ pre-acquisition documents
`and communications regarding Finjan’s entire patent portfolio and litigations are relevant
`to the ’305 and calculation of, or challenging a calculation of, a reasonably royalty based
`on a hypothetical negotiation. As explained in detail below, even the cases ESET relies
`on in support of the valuation RFPs do not support production of the breadth of discovery
`ESET seeks. However, the Court finds that documents that specifically value the ’305 or
`other patents acquired as part of the acquisition are within the scope of relevant ’305
`discovery and proportional to the needs of the case.
`In its section addressing relevance as to RFPs 222, 223, 226, 230, and 231, ESET
`states the “valuation documents are highly relevant to the issue of a reasonable royalty.”
`(Id. at 6.) ESET then cites three cases in support of this assertion. (Id. (citing Integra
`Lifesciences I, Ltd. v. Merk KGaA, 331 F.3d 860, 871 (Fed. Cir. 2003), vacated on other
`grounds, 545 U.S. 193 (2005), Uniloc USA, Inc. v. Apple Inc., No. 19-cv-01692-EJD
`(VKD), 2020 WL 4368207, at *2 (N.D. Cal. July 30, 2020), and Fresenius Med. Care
`Holding, Inc. v. Baxter Int’l, Inc., 224 F.R.D. 644, 653 (N.D. Cal. 2004)).
`Of the cases cited by ESET, the one most procedurally aligned with the dispute
`here is Uniloc v. Apple. 2020 WL 4368207. The decision addresses damages discovery
`in the context of multiple transactions selling large groups of patents. Uniloc, 2020 WL
`4368207, at *1-2. The patent at issue was sold three different times, first in a portfolio
`with over one thousand others, second with hundreds of others, and third as part of
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`another large group. Id. at 1. The dispute focused on whether documents valuing the
`other patents10 that were sold were relevant to the value of the patent at issue for purposes
`of determining a reasonable royalty. Id. at 2. Despite plaintiff’s arguments that they
`were too far removed from the reasonable royalty calculation to be relevant to damages,
`the court found the relative values of the patents sold together were relevant to damages
`as to the single patent at issue. Id. at 1, 3 (citing Integra, 331 F.3d at 871) (other citations
`omitted)
`This case provides support for ESET’s assertion that an opposing party’s
`valuations can be relevant to a damages calculation. (ECF 849 at 3, 6 (Arguing
`valuations are “highly relevant to determining the value of the ’305 patent” and “bear
`directly on Finjan’s highly-inflated damages claims for the other asserted patents-in-
`suit.”).) Additionally, the finding that values of other patents sold in the same group are
`relevant to the value of a single patent at issue would suggest that valuations of other
`patents sold in a portfolio with the ’305 could be within the limited scope of discovery
`permitted here, discovery as to the ’305. Valuations of other patents sold in the
`acquisition may reflect how much or little of the acquisition price should be attributed to
`the ’305.
`However, even as broad as the discovery authorized in this case is, it would not,
`for example, require production of “All documents provided . . . prior to the acquisition . .
`. referring to or related to any of the patents-in-suit” (RFP 223 (emphasis added)) or any
`documents or communications that only relate or refer to valuations (RFPs 222, 226, 230,
`and 231). The court specifically excluded the broad language used in ESET’s RFPs,
`“documents that ‘refer or relate to’” the specific documents the court ordered produced.
`Id. at 3. Additionally, the court’s primary basis for allowing discovery into the valuation
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`10 The parties had already agreed that documents reflecting the value of the patent at issue
`and the other patents sold with it that were at issue in other litigations with the same
`parties would be produced. Id. at 2.
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`documents is determination of “the price paid to acquire all rights to a patent” because
`that “may be considered in assessing a reasonable royalty for a hypothetical license to the
`patent.” Id. at 2-3 (citing Integra, 331 F.3d at 871 and collecting cases addressing
`experts’ and juries’ reliance on values of patents in sales).
`The Court is not convinced that every document or communication exchanged in
`relation to this acquisition is relevant. Rather, under this court’s rationale, only a
`document that places an actual value on a patent that is sold would be relevant to
`determine the portion of the total amount paid that should be attributed to one patent or
`another. Documents valuing patents sold together are relevant to determine what portion
`of the price is attributable the patent at issue, here the ’305. Additionally, the
`proportionality analysis here is very different. There, the court found the very broad
`discovery proportional to the needs of the case primarily based on the $1.1 billion at
`issue. Id. at 3-4. Although neither party has addressed it here, a review of Finjan’s
`Complaint confirms there is certainly not $1.1 billion at issue. Fed. R. Civ. P. 26 (Listing
`among others, amount in controversy as a proportionality factor). Production of
`essentially every communication or document related to this acquisition or even related to
`a valuation is not proportional to the needs of this case.
`The only other discovery decision ESET relies on for the relevancy of the
`valuation RFPs, Fresenius Medical v. Baxter, authorizes discovery beyond actual
`valuations, including some similar to ESET’s here. 224 F.R.D. at 653. For example, one
`seeks all documents relating to one party’s evaluation, purchase, and acquisition of the
`other. Id. However, the analysis is very brief and only states the acquisition price and
`allotment of it to a particular patent is relevant. Id. (citing Integra, 331 F.3d at 871).
`Additionally, the court appears to rely on the absence of proposed alternatives to narrow
`the RFPs and a lack of other available documents regarding the valuation of the patents-
`in-suit. Id. at 654.
`The final case ESET relies on as to the valuation RFPs is also cited as supporting
`the discovery authorized in both Fresenius and Uniloc. The Integra decision recognizes
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`that the purchase price for an acquisition that includes patents at issue in a case could be
`of consequence to the calculation of a reasona