Case 1:18-cv-01519-MN Document 141 Filed 05/19/20 Page 1 of 5 PageID #: 6167
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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` v.
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`RAPID7, INC., a Delaware Corporation and
`RAPID7 LLC, a Delaware Limited Liability
`Company,
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`Defendants.
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`C.A. No. 18-1519-MN
`
`LETTER TO THE HONORABLE MARYELLEN NOREIKA
`FROM PHILIP A. ROVNER
`
`Philip A. Rovner (#3215)
`Jonathan A. Choa (#5319)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza
`P.O. Box 951
`Wilmington, DE 19899
`(302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Attorneys for Plaintiff
`Finjan, Inc.
`
`OF COUNSEL:
`
`Paul J. Andre
`Lisa Kobialka
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`(650) 752-1700
`
`Aaron M. Frankel
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`(212) 715-9100
`
`Dated: May 12, 2020
`
`PUBLIC VERSION
`
`Public version dated: May 19, 2020
`
`

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`Case 1:18-cv-01519-MN Document 141 Filed 05/19/20 Page 2 of 5 PageID #: 6168
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`Philip A. Rovner
`Partner
`provner@potteranderson.com
`302 984-6140 Direct Phone
`302 658-1192 Firm Fax
`
`May 12, 2020
`
`VIA CM/ECF
`The Honorable Maryellen Noreika
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, DE 19801
`
`
`
`
`Re: Finjan, Inc. v. Rapid7, Inc., D. Del. C.A. No. 18-1519-MN
`
`
`
`Dear Judge Noreika:
`
`As a threshold matter, we write to raise two important points that Rapid7 omitted. First,
`counsel for the parties to this action already briefed and argued this same issue to Magistrate
`Judge DeMarchi in Finjan, Inc. v. SonicWall, 5:17-cv-04467-BLF-VKD (N.D. Cal.), who is in
`the process of reviewing the Disputed Documents in camera and is expected to issue an order
`shortly. Second, the parties narrowed the dispute, agreeing in SonicWall that the Court only need
`determine if eight documents from 2005 to 2008 were properly redacted or withheld. The
`remaining documents on the privilege log Rapid7 submitted to the Court (D.I. 135-1, Ex. A) are
`either duplicate documents or 2019 deposition transcripts with the redactions limited to the
`portions discussing the eight disputed documents. Finjan attaches as Exhibit 1 the updated
`privilege log submitted in SonicWall with the remaining eight disputed documents noted. Upon
`the Court’s request, Finjan will provide the Disputed Documents for in camera review.
`Finjan properly withheld or redacted the Disputed Documents in this case because they
`are privileged and contain attorney work product. These documents are materials from Finjan’s
`Board of Directors (from 12 to 15 years ago) containing the legal advice of counsel regarding
`patent litigation and enforcement matters, a dispositive fact that Rapid7 does not dispute. Ex. 1.
`There was no waiver of work product immunity or privilege when Finjan shared these
`documents with Mr. Samet, who attended Finjan’s Board meetings as an observer for Cisco.
`Finjan only shared these documents with Cisco under the parties’ specific, confidential,
`common-interest relationship where Cisco, which became a major Finjan investor in 2004,
`obtained an observer position on Finjan’s Board. D.I. 135-2, Ex. B, Samet Tr. at 60:19-61:6. At
`the time Finjan shared the materials, Finjan and Cisco were not adversaries and worked
`collaboratively to further their common interests to obtain favorable business and legal
`outcomes. Cisco did not divest its significant stake in Finjan until 2017, after Finjan filed suit
`against Cisco. Ex. 2, SEC filing.
`In the Investor Rights Agreement (“IRA”) between Finjan and Cisco, which provided
`Cisco the right to send an observer, Cisco agreed that
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`
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` D.I. 135-5, Ex. E (IRA), § 2.7 (emphasis added). Rapid7 offers no
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`PUBLIC VERSION
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`May 19, 2020
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`

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`Case 1:18-cv-01519-MN Document 141 Filed 05/19/20 Page 3 of 5 PageID #: 6169
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`evidence that Cisco or its observer ever failed to comply with that contractual obligation. To the
`contrary, Finjan’s Board member Daniel Chinn testified that Finjan and Cisco entered into
`nondisclosure agreements “at various stages.” Ex. 3, Chinn Tr. at 242:11-16. And Rapid7
`acknowledges that Cisco and Finjan entered into NDAs before and after the time of the
`disclosure. D.I. 135-6, Ex. F; D.I. 135-8, Ex. H. Cisco’s obligation to keep confidential the
`Disputed Documents continues to this day. Thus, there is no waiver and Rapid7 is not entitled to
`these privileged and work-product materials.1
`The Court should further deny Rapid7’s request because the Disputed Documents are
`irrelevant to this action. Cisco produced the Disputed Documents in its case because they related
`to its intimate knowledge of Finjan’s patents and its litigation activities and, thus served as
`evidence in that case of, among other things, Cisco’s willful infringement of Finjan’s patents.
`The same relevance rationale does not apply here. Rapid7 concedes it has no specific basis to
`conclude that these 12-year old documents are relevant to the issues in this case. Relevance is
`never a “non-sequitur” in a motion to compel, as Rapid7 contends. It is the sine qua non.
`Indeed, the Disputed Documents do not reference Rapid7.
`A.
`The Disputed Documents are Attorney Work Product
`The Disputed Documents include advice prepared by Finjan’s outside counsel in
`anticipation of litigation and are therefore immune from discovery as attorney work product.
`D.I. 135-1, Ex. A at 2-8; WebXchange Inc. v. Dell Inc., 264 F.R.D. 123, 128 (D. Del. 2010)
`(“Under the attorney work-product doctrine, documents prepared by counsel … in anticipation of
`litigation are not discoverable absent a showing of substantial need, undue hardship, or inability
`to obtain their equivalent by other means.”). Finjan’s assertions of work product immunity are
`narrowly limited. For example, Finjan redacted only 13 of 118 pages of a Board presentation.
`Finjan did not waive work product immunity when it shared the Disputed Documents
`with Cisco’s Board observer pursuant to a confidentiality obligation a decade before the parties
`became adversaries. D.I. 135-5, Ex. E (IRA), § 2.7. Immunity is maintained when a document
`is prepared “in anticipation of litigation” and is only disclosed to third-parties bound to maintain
`its confidence, as was the case here. Magnetar Techs. Corp. v. Six Flags Theme Park Inc., 886
`F. Supp. 2d 466, 478 (D. Del. 2012) (“To waive the protection of the work product doctrine, the
`disclosure must enable an adversary to gain access to the information.”); FastVDO LLC v. AT&T
`Mobility LLC, C.A. No. 16-385-H (WVG), 2016 WL 6138036, at *3 (S.D. Cal. Oct. 21, 2016);
`(use of NDA shows that disclosure “did not increase the probability that a future adversarial
`party would discover the documents.”); Mondis Tech., Ltd. v. LG Elecs., Inc., No. 2:07-cv-565-
`TJW-CE, 2011 WL 1714304, at *3 (E.D. Tex. May 4, 2011) (documents prepared for future
`litigation are protected work product when only disclosed to third parties under an NDA).
`That Cisco and Finjan subsequently became adversaries in litigation years later, does not
`change the dispositive fact that, when Cisco obtained the Disputed Documents in 2005-2008,
`Cisco and Finjan enjoyed a collaborative relationship and there was no indication they would
`become adversaries. This is supported by Mr. Samet’s claims that he initially had an open
`invitation to Finjan’s board meetings, indicating the alignment of Cisco’s and Finjan’s interests
`to achieve commercial and legal success concerning Finjan’s potential patent litigation. D.I.
`
`1 Finjan did not locate these documents, which are 12 to 15 years old, in its files, and only had
`them when Cisco produced them. Having obtained the documents through that action, Finjan
`duly identified them to Rapid7 in its privilege log in this case.
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`Case 1:18-cv-01519-MN Document 141 Filed 05/19/20 Page 4 of 5 PageID #: 6170
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`135-2, Ex. B at 62:15-16; Ex. 4, Securitypoint Holdings, Inc. v. U.S., No. 11-268C, Slip. Op. at 4
`(Ct. Cl. Apr. 16, 2019) (finding no waiver when plaintiff shared privileged documents with
`equity investor in company due to “common legal interest in the validity of the patent-in-suit”).
`Rapid7 attempts to muddy the waters by implying that Finjan and Cisco were adverse
`when they exchanged the Disputed Documents, and that Mr. Samet stopped regularly attending
`board meetings after Finjan’s IP-litigation activities intensified. However, the testimony that
`Rapid7 cites refers to the 2008 to 2010 timeframe, which is after Finjan provided the Disputed
`Documents to Cisco. D.I. 135-2, Ex. B at 63:3-64:14; Ex. 3, Chinn Tr. at 219:1-220:16; Ex. 1.
`And Finjan’s suit against Cisco did not come until years later. Because Finjan and Cisco were
`not adverse during the relevant timeframe, disclosure of the Disputed Documents did not waive
`immunity. Mondis, 2011 WL 1714304 at *3. Rapid7’s reliance on Micron Tech. and other
`authorities is misplaced because those cases involved voluntary disclosure to an entity adverse at
`the time of disclosure. Here, Finjan and Cisco had a close, confidential relationship at the time
`of disclosure. Thus, the Court should deny Rapid7’s request to obtain Finjan’s work product.
`B.
`The Disputed Documents are Attorney-Client Privileged
`The Disputed Documents are also privileged because they contain legal advice
`communicated by Finjan’s outside counsel to its client. D.I. 135-1, Ex. A at 2-16. As such, they
`are immune from discovery. WebXchange, 264 F.R.D. at 126 (“The attorney-client privilege
`protects from compelled disclosure any communication that satisfies the following elements: it
`must be (1) a communication (2) made between privileged persons (3) in confidence (4) for the
`purpose of obtaining or providing legal assistance for the client.”) (internal citations omitted).
`Finjan did not waive attorney-client privilege in the Disputed Documents. Attorney-
`client privilege attaches to both individuals and corporations. Upjohn Co. v. U.S., 449 U.S. 383,
`390 (1981). Only Finjan, as the holder of the attorney-client privilege may waive it. In re
`Hechinger Investment Co. of Delaware, 285 B.R. 601, 610 (D. Del. 2002). Here, Finjan as the
`holder of the privilege has vigilantly and correctly asserted its protection.
`Providing Disputed Documents to Cisco’s Board observer under an NDA did not waive
`privilege because of the common interest between Finjan and Cisco at that time. Mondis, 2011
`WL 1714304, at *3 (finding privilege covers documents prepared for investors that covered
`potential litigation); MobileMedia Ideas LLC v. Apple, Inc., 890 F. Supp. 2d 508, 518 (D. Del.
`2012) (finding a common interest among investors where they each received “a percentage of the
`recovery from any successful enforcement” of patents); Devon It, Inc. v. IBM Corp., 10-2899,
`2012 WL 4748160, at *1 (E.D. Pa. Sept. 27, 2012) (finding plaintiff and its investor have a
`common interest in the successful outcome of the litigation). Finjan and Cisco’s falling out a
`decade later does not change Cisco’s obligation to maintain the confidentiality of the Disputed
`Documents under the IRA and the parties’ NDAs. Montgomery v. eTreppid Techs., LLC, 548 F.
`Supp. 2d 1175, 1187 (D. Nev. 2008) (finding attorney-client privilege is the corporation’s and a
`now adverse former director still has a duty to keep information confidential).
`
`Rapid7 entirely misses the point in arguing that Finjan
` The salient point is that Cisco had a common legal interest with
`Finjan in the validity and enforcement of the company’s infringed patents, and Cisco and its
`representative were obligated to preserve as confidential all information that Finjan provided.
`Thus,
`there was no waiver, and attorney-client privilege
`prevents Rapid7 from obtaining the Disputed Documents. Devon It, 2012 WL 4748160, at *1.
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`Case 1:18-cv-01519-MN Document 141 Filed 05/19/20 Page 5 of 5 PageID #: 6171
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`Respectfully,
`
`/s/ Philip A. Rovner
`
`Philip A. Rovner (#3215)
`
`cc: All Counsel of Record – by CM/ECF
`6729060
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`