Case 1:18-cv-01519-MN Document 140 Filed 05/18/20 Page 1 of 4 PageID #: 6149
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`May 11, 2020
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`RICHARD L. RENCK
`DIRECT DIAL: +1 302 657 4906
`E-MAIL: RLRenck@duanemorris.com
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`BY VIA ECF & HAND DELIVERY
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`The Honorable Judge Maryellen Noreika
`J. Caleb Boggs Federal Building
`844 N. King Street, Unit 19, Room 4324
`Wilmington, DE 19801-3555
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`Re: Finjan, Inc. v. Rapid7, Inc. and Rapid7 LLC, Case No. 18-1519-MN (D. Del.)
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`Dear Judge Noreika:
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`Pursuant to Fed. R. Civ. P. 26 and 37 and Paragraph 8(h) of the Court’s Scheduling Order
`(D.I. 29), Defendants Rapid7, Inc. and Rapid7 LLC (“Rapid7”), respectfully request an order
`compelling Plaintiff Finjan, Inc. (“Finjan”) to produce portions of, and exhibits to, deposition
`transcripts of Yoav Samet, Philip Hartstein, Yuval Ben-Itzhak, and Daniel Chinn regarding
`Finjan's intellectual property (the “Disputed Documents”) that were produced without redaction
`by Finjan in another litigation, Finjan, Inc. v. Cisco Systems, Inc., C.A. No. 5:17-cv-00072-BLF-
`SVK (N.D. Cal.) (“Cisco Action”). The Disputed Documents are identified in Finjan’s privilege
`log, attached as Exhibit A. Rapid7 is not challenging the privilege claim for Finjan-RPD 414376.
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`As an initial matter, Finjan may argue Rapid7 has not established the relevance of the
`Disputed Documents. But, this is a non-sequitur, as Rapid7 does not have access to the withheld
`portions of the documents. These documents were the subject of four depositions in the Cisco
`Action involving two of the same asserted patents and two other related patents. Finjan has
`produced these transcripts and redacted versions of the exhibits in response to Rapid7’s
`discovery requests, but withheld certain portions only on the basis of privilege, not relevance.
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`Finjan alleges that the Disputed Documents are protected by attorney-client and work
`product privilege. However, the deposition transcripts themselves are available to Cisco
`(Finjan’s adversary) in the Cisco Action. Each of the deposition exhibits was produced by Cisco
`(not Finjan) in the Cisco Action. Despite asserting privilege over the exhibits in this case, Finjan
`did not have them in its possession. Instead, the source of the exhibits was a former Cisco
`employee, Yoav Samet, as evidenced by the documents’ Bates numbers in the Cisco Action (i.e.,
`Cisco-Finjan-YS). Finjan’s privilege log neglects to list Samet as a recipient of most documents
`– instead listing Finjan’s Board of Directors, employees and outside lawyers.
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`Mr. Samet possessed these documents even though he was not a Finjan employee or
`member of Finjan’s Board. Instead, Cisco was an investor in Finjan with a contractual right to
`“observe” portions of Finjan’s board meetings. Samet Dep., Ex. B, at 23:17-24:20; Chinn Dep.,
`Ex. C., at 38:8-39:17. Cisco designated Mr. Samet as its board observer. Ex. B, at 60:16-23.
`Finjan thus sent these exhibits beyond the audience identified in its log, to a party (Cisco) and
`non-lawyer (Samet), who merely had a contractual relationship with Finjan. Finjan (who bears
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`Case 1:18-cv-01519-MN Document 140 Filed 05/18/20 Page 2 of 4 PageID #: 6150
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`The Honorable Judge Maryellen Noreika
`May 11, 2020
`Page 2
`the burden) has no evidence that there was a shared privilege between these parties. Further, the
`testimony of both Samet and Finjan’s Chairman indicates that Finjan’s interactions with Cisco
`when Cisco was an investor in Finjan did not involve patent matters. Ex. B, at 64:2-65:13; 68:12-
`16 (
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`); Ex. C. at 219:1-15; 221:9-222:11 (
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`); Ex. G at FINJAN-RPD 419205. Indeed, these
`very deposition transcripts were created in an adverse matter between these parties. All of the
`Disputed Documents relate to the subject matter of the Cisco Action, and will be presented to the
`trier of fact in that case. See Finjan and Cisco Trial Exhibit Lists, Ex. D.
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`No Privilege / Work Product Protection. Evidentiary privileges are “strictly construed.”
`Univ. of Pa. v. EEOC, 493 U.S. 182, 189 (1990). The party claiming privilege “bears the burden
`of establishing the privilege.” Del. Display Grp. LLC v. Lenovo Grp. Ltd., 2016 U.S. Dist.
`LEXIS 21461, at *6-7 (D. Del. Feb. 23, 2016). Attorney-client communications are privileged if
`they are made in confidence. Id. at *13 (citation omitted). ‘“[I]f a client subsequently shares a
`privileged communication with a third party, then it is no longer confidential.’” Id.
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`An exception to waiver of attorney-client privilege is the common interest doctrine. The
`interest “must be ‘identical, not similar, and be legal, not solely commercial.’” Leader Techs.,
`Inc. v. Facebook, Inc., 719 F. Supp. 2d 373, 376 (D. Del. 2010) (citations omitted). A common
`interest may exist “where [entities] are co-defendants or are involved in or anticipate joint
`litigation.” Union Carbide v. Dow Chemical, 619 F. Supp. 1036 (D. Del. 1985). To show they
`are “‘allied in a common legal cause,’ the party asserting the privilege bears the burden of
`showing ‘that the disclosures would not have been made but for the sake of securing, advancing,
`or supplying legal representation.’” Del. Display, 2016 U.S. Dist. LEXIS 21461, at *14.
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`Finjan claims the Disputed Documents are privileged based on its alleged confidential
`relationship with Cisco. This relationship was defined by the Investors’ Rights Agreement
`(“IRA”), whereby Cisco obtained the right to send an observer to Finjan’s board meetings. Ex. E,
`at Section 2.7. Finjan argues Cisco’s board observer received these documents subject to a strict
`NDA, but Finjan has not shown such an NDA exists. The NDA Finjan produced in this case is
`Cisco’s “standard mutual NDA.” Ex. F, NDA. This NDA predates the IRA, relates only to
`“
`,” and
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`” Id.1 Unlike the agreements in MobileMedia Ideas LLC v. Apple Inc.,
`890 F. Supp. 2d 508, 517-18 (D. Del. 2012), nowhere in either of Finjan’s agreements does it say
`that Cisco was required to maintain Finjan’s privileged information. In fact, the IRA says the
`opposite – it says Finjan’s “
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`1 To the extent that Finjan points to the NDA referenced during Samet’s deposition (Ex. B, at
`194:6-13), that NDA was executed in 2014, nearly a decade after Finjan provided the Disputed
`Documents to Cisco. See Ex. H.
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`Case 1:18-cv-01519-MN Document 140 Filed 05/18/20 Page 3 of 4 PageID #: 6151
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`The Honorable Judge Maryellen Noreika
`May 11, 2020
`Page 3
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`.” The primary purpose of the right to exclude is to
`preserve the company’s attorney-client privilege. See Ex. C, at 223:9-224:9 (“
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`”). Thus, Finjan had a mechanism to maintain privilege and chose not to.
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`Further, any interest in Finjan’s patent litigation plans that Cisco had as an investor was a
`commercial interest that is insufficient for privilege protection. Del. Display, 2016 U.S. Dist.
`LEXIS 21461, at *17 (finding no privilege where plaintiff argued “the same interest in obtaining
`strong and enforceable patents” existed). Likewise, “Plaintiffs have not identified any case which
`holds that a mere right to receive a royalty, along with the obvious ‘interest’ in receiving that
`royalty, suffices to create a shared, identical legal interest.” Id. Further, “a voluntary disclosure
`of the opinion of counsel to a third party in order to gain a competitive advantage in the
`marketplace evidences ‘tactical employment’ of the attorney-client privilege,” which “would be
`unfair to [Finjan’s] present adversaries to continue to cloak the disclosed materials with the
`attorney-client privilege.” Gtech Corp. v. Sci. Games Int'l, Inc., 2005 U.S. Dist. LEXIS 56099, at
`*7 (D. Del. Nov. 22, 2005). Finjan’s disclosure to Cisco was not in an effort to formulate a joint
`defense. See Corning Inc. v. SRU Biosystems, LLC, 223 F.R.D. 189, 190-91 (D. Del. 2004).
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`Additionally, “[a]n exception to the work product doctrine applies when the documents
`sought are prepared in the ordinary course of business.” Immersion Corp. v. HTC Corp., No. 12-
`259-RGA, 2014 U.S. Dist. LEXIS 108856, at *4-5 (D. Del. Aug. 7, 2014); Fed. R. Civ. P.
`26(b)(3)). For work product protection to apply, a court must find that “the primary purpose
`behind its creation was to aid in possible future litigation.” Id. at *5. See Acceleration Bay LLC
`v. Activision Blizzard, Inc., 2018 U.S. Dist. LEXIS 21506, at *5-6 (D. Del. Feb. 9, 2018)
`(documents shared “‘for the purpose of obtaining funding to assert [the] patents’. . . and before
`Plaintiff filed any litigation” are not work product).
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`Any Privilege/Work Product Protection Was Waived. Finjan sued Cisco on its
`intellectual property discussed in the Disputed Documents. By definition, Finjan and Cisco are
`adversaries specifically relating to the subject matter in the Disputed Documents. “Any
`disclosure to an adversary absent direct judicial compulsion is a voluntary disclosure.” Micron
`Tech. v. Rambus Inc., 2006 U.S. Dist. LEXIS 108518, at *63 (D. Del. Mar. 6, 2006). Thus, even
`if the Court finds that the Disputed Documents were initially privileged, any privilege was
`waived once the parties became adversaries. “[O]nce privileged materials are turned over to an
`adversary, the confidential nature of the materials and the privilege as to third parties is waived
`even if the initial disclosure was subject to a confidentiality agreement.” Id. at *63-64.
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`Likewise, work-product protection is lost when disclosure to third parties “enable[s] an
`adversary to gain access to the information.” Westinghouse Elec. Corp. v. Republic of Phil., 951
`F.2d 1414, 1428 (3d Cir. 1991). “A party cannot selectively share work-product and then expect
`it to remain as a shield.” Advanced Micro Devices, Inc. v. Intel Corp. (In re Intel Corp.
`Microprocessor Antitrust Litig.), 2008 U.S. Dist. LEXIS 125410, at *27-29 (D. Del. Mar. 6,
`2008) (internal citations omitted). Here, the deposition transcripts were created in the very case
`in which the parties are adversaries. Further, both parties have identified the unredacted versions
`of the disputed deposition exhibits as trial exhibits to be presented to the jury in the Cisco
`Action. Thus, these documents cannot be the protected work product of one of the adversaries.
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`Case 1:18-cv-01519-MN Document 140 Filed 05/18/20 Page 4 of 4 PageID #: 6152
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`The Honorable Judge Maryellen Noreika
`May 11, 2020
`Page 4
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`RLR/chp
`Attachments
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`Very truly yours,
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`/s/ Richard L. Renck
`Richard L. Renck (#3893)
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`Counsel for Rapid7, Inc. and Rapid7 LLC
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