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`EXHIBIT 1
`
`EXHIBIT 1
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 2 of 21 PageID #: 6173
`Case 1:18—cv-01519—MN Document 141-1 Filed 05/19/20 Page 2 of 21 PageID #: 6173
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`THIS EXHIBIT HAS BEEN
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`THIS EXHIBIT HAS BEEN
`REDACTED ,IN ITS ENTIRETY
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`REDACTEDIN ITS ENTIRETY
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`

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`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 3 of 21 PageID #: 6174
`Case 1:18—cv-01519—MN Document 141-1 Filed 05/19/20 Page 3 of 21 PageID #: 6174
`
`EXHIBIT 2
`
`EXHIBIT 2
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`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 4 of 21 PageID #: 6175
`
`UNITED STATES
`SECURITIES AND EXCHANGE COMMISSION
`Washington, D.C. 20549
`
`SCHEDULE 13G
`
`Under the Securities Exchange Act of 1934
`(Amendment No. 5)*
`
`Finjan Holdings, Inc.
`
`(Name of Issuer)
`
`Common Stock, $0.0001 par value per share
`(Title of Class of Securities)
`
`31788H105
`(CUSIP Number)
`
`December 31, 2017
`(Date of Event Which Requires Filing of this Statement)
`
`Check the appropriate box to designate the rule pursuant to which this Schedule is filed:
`
`☐Rule 13d-1(b)
`
`☐Rule 13d-1(c)
`
`☒Rule 13d-1(d)
`
`*
`
`The remainder of this cover page shall be filled out for a reporting person’s initial filing on this form with respect to the subject class of securities, and for
`any subsequent amendment containing information which would alter disclosures provided in a prior cover page.
`
`The information required on the remainder of this cover page shall not be deemed to be “filed” for the purpose of Section 18 of the Securities Exchange Act of
`1934 (“Act”) or otherwise subject to the liabilities of that section of the Act but shall be subject to all other provisions of the Act (however, see the Notes).
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 5 of 21 PageID #: 6176
`CUSIP No. 31788H105
`13G
`Page 2 of 5 Pages
`
`1
`
`NAMES OF REPORTING PERSONS/I.R.S. IDENTIFICATION NOS. OF ABOVE PERSONS (ENTITIES ONLY)
`
`2
`
`3
`
`4
`
`Cisco Systems, Inc. (“ Cisco ”)
`I.R.S. Identification No. 77-0059951
`CHECK THE APPROPRIATE BOX IF A MEMBER OF A GROUP
`(a) ☐ (b) ☐
`
`SEC USE ONLY
`
`CITIZENSHIP OR PLACE OF ORGANIZATION
`
`State of California
`5
`SOLE VOTING POWER
`
`NUMBER OF
`SHARES
`BENEFICIALLY
`OWNED BY
`EACH
`REPORTING
`PERSON WITH
`
`6
`
`7
`
`8
`
`0
`SHARED VOTING POWER
`
`0
`SOLE DISPOSITIVE POWER
`
`0
`SHARED DISPOSITIVE POWER
`
`0
`AGGREGATE AMOUNT BENEFICIALLY OWNED BY EACH REPORTING PERSON
`
`0
`CHECK IF THE AGGREGATE AMOUNT IN ROW (9) EXCLUDES CERTAIN SHARES ☐
`
`9
`
`10
`
`11
`
`PERCENT OF CLASS REPRESENTED BY AMOUNT IN ROW (9)
`
`0%
`TYPE OF REPORTING PERSON
`
`12
`
`CO
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 6 of 21 PageID #: 6177
`CUSIP No. 31788H105
`13G
`Page 3 of 5 Pages
`
`Item 1(a)
`
`Name of Issuer :
`
`Finjan Holdings, Inc.
`
`Item 1(b)
`
`Address of Issuer’s Principal Executive Offices :
`
`2000 University Avenue, Suite 600, East Palo Alto, California 94303
`
`Item 2(a)
`
`Name of Person Filing :
`
`Cisco Systems, Inc.
`
`Item 2(b)
`
`Address of Principal Business Office or, If None, Residence
`
`170 West Tasman Drive, San Jose, California 95134
`
`Item 2(c)
`
`Citizenship :
`
`State of California
`
`Item 2(d)
`
`Title of Class of Securities :
`
`Common Stock, $0.0001 par value per share
`
`Item 2(e)
`
`CUSIP Number :
`
`31788H105
`
`Item 3.
`
`If this statement is filed pursuant to 240.13d-1(b) or 240.13d-2(b) or (c), check whether the person filing is a :
`
`(a) ☐ Broker or dealer registered under section 15 of the Act (15 U.S.C. 78o)
`
`(b) ☐ Bank as defined in section 3(a)(6) of the Act (15 U.S.C. 78c).
`
`(c) ☐ Insurance company as defined in section 3(a)(19) of the Act (15 U.S.C. 78c).
`
`(d) ☐ Investment company registered under section 8 of the Investment Company Act of 1940 (15 U.S.C 80a-8).
`
`(e) ☐ An investment adviser in accordance with 240.13d-1(b)(1)(ii)(E);
`
`(f) ☐ An employee benefit plan or endowment fund in accordance with 240.13d-1(b)(1)(ii)(F);
`
`(g) ☐ A parent holding company or control person in accordance with 240.13d-1(b)(1)(ii)(G);
`
`(h) ☐ A savings associations as defined in Section 3(b) of the Federal Deposit Insurance Act (12 U.S.C. 1813);
`
`(i) ☐ A church plan that is excluded from the definition of an investment company under section 3(c)(14) of the Investment Company Act of
`1940 (15 U.S.C. 80a-3);
`
`(j) ☐A non-U.S. institution in accordance with §240.13d–1(b)(1)(ii)(J);
`
`(k) ☐ Group, in accordance with 240.13d-1(b)(1)(ii)(K). If filing as a non-U.S. institution in accordance with §240.13d–1(b)(1)(ii)(J), please
`specify the type of institution:
`
`Not applicable.
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 7 of 21 PageID #: 6178
`CUSIP No. 31788H105
`13G
`Page 4 of 5 Pages
`
`Item 4.
`
`Ownership
`
`(a) Amount Beneficially Owned : 0 shares
`
`(b) Percent of Class : 0%
`
`(c) Number of shares as to which the person has :
`
`(i)
`
`(ii)
`
`(iii)
`
`(iv)
`
`Sole power to vote or direct the vote: 0 shares.
`
`Shared power to vote or direct the vote: 0 shares.
`
`Sole power to dispose or to direct the disposition of: 0 shares.
`
`Shared power to dispose or to direct the disposition of: 0 shares.
`
`Item 5.
`
`Ownership of Five Percent or Less of a Class
`
`If this statement is being filed to report the fact that as of the date hereof the reporting person has ceased to be the beneficial owner or more than five
`percent of the class of securities, check the following box: ☒
`
`Item 6.
`
`Ownership of More Than Five Percent on Behalf of Another Person
`
`Not applicable.
`
`Item 7.
`
`Identification and Classification of Subsidiary Which Acquired the Security Being Reported on by the Parent Holding Company or Control Person
`
`Not applicable.
`
`Item 8.
`
`Identification and Classification of Members of the Group
`
`Not applicable.
`
`Item 9.
`
`Notice of Dissolution of Group
`
`Not applicable.
`
`Item 10.
`
`Certifications
`
`Not applicable.
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 8 of 21 PageID #: 6179
`CUSIP No. 31788H105
`13G
`Page 5 of 5 Pages
`
`After reasonable inquiry and to the best of my knowledge and belief, I certify that the information set forth in this statement is true, complete and correct.
`
`Dated: February 2, 2018
`
`CISCO SYSTEMS, INC.
`
`SIGNATURE
`
`/s/ Mark Chandler
`By:
`Name: Mark Chandler
`Title:
`Senior Vice President, Legal Services,
`General Counsel and Chief Compliance Officer
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 9 of 21 PageID #: 6180
`Case 1:18—cv-01519—MN Document 141-1 Filed 05/19/20 Page 9 of 21 PageID #: 6180
`
`EXHIBIT 3
`
`EXHIBIT 3
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`

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`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 10 of 21 PageID #: 6181
`Case 1:18—cv-01519—MN Document 141-1 Filed 05/19/20 Page 10 of 21 PageID #: 6181
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`THIS EXHIBIT HAS BEEN
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`

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`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 11 of 21 PageID #: 6182
`Case 1:18—cv-01519—MN Document 141-1 Filed 05/19/20 Page 11 of 21 PageID #: 6182
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`EXHIBIT 4
`EXHIBIT 4
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`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 12 of 21 PageID #: 6183
`
`In the United States Court of Federal Claims
`
`No. 11-268C
`(Filed: April 16, 2019)
`NOT FOR PUBLICATION
`* * * * * * * * * * * * * * * * * * * * * * * *
`
`SECURITYPOINT HOLDINGS, INC.,
`
`
`
`Motion to compel; Privilege
`logs; RCFC 26(b)(5)(A)(ii);
`Attorney-client
`privilege;
`Waiver; Common
`interest
`doctrine; Work
`product
`doctrine.
`
`Plaintiff,
`
`
`
`
`
`v.
`
`THE UNITED STATES,
`
`Defendant.
`
`* * * * * * * * * * * * * * * * * * * * * * * *
`
`
`
`ORDER
`
`Pending now is defendant’s second renewed motion to compel
`
`documents withheld as privileged, filed on February 26, 2019. This motion
`again concerns defendant’s attempt to probe plaintiff’s finances, valuation of
`its intellectual property, and any outside investors in SecurityPoint or funders
`of the litigation. We have previously protected the disclosure of plaintiff’s
`litigation funding agreements based on the representation of counsel that
`none of them include “any transfer of rights or interest in enforcement of the
`patent or management of the litigation.” Tr. 21 (Nov. 1, 2017 hearing) (ECF
`No. 303). At that same hearing, plaintiff agreed to produce documents
`related to ownership and valuation documents related to an outside investor
`in SecurityPoint, Raptor. In July 2018, as part of a sanction against plaintiff
`for failure to fully produce Raptor documents, we ordered plaintiff to
`produce all remaining documents related to Raptor and any other outside
`investors in SecurityPoint or potential outside investors “to the extent that
`they are not privileged.” Order Granting Mot. For Sanctions 6 (July 17,
`2018) (ECF No. 359). We also ordered plaintiff to maintain a privilege log
`for all documents withheld and to produce it to defendant.
`
`Those productions have taken place, and the period for discovery has
`ended. Defendant, however, timely filed a motion challenging the
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 13 of 21 PageID #: 6184
`
`sufficiency of the privilege logs produced by plaintiff and asking for
`unredacted copies of certain documents. As a remedy for the alleged
`insufficient logs, the government requests that the court review a
`representative sample in camera to confirm what defendant believes are
`inappropriate claims of privilege. Defendant’s motion names 1465 entries in
`those logs as problematic. By the time of oral argument, defendant clarified
`that it was maintaining its challenge as to only documents appearing in that
`list that do not have an attorney listed in the sender or receiver box of the log;
`the rest of their challenges have been abandoned. There are two noted
`exceptions that receive special treatment in defendant’s motion: 1) Oxford
`Valuation Partners Report; and 2) The Prepaid Forward Purchase
`Agreement. We begin with the more general issue of the sufficiency of
`plaintiff’s privilege logs.
`
`I. SecurityPoint’s Logs
`
`Defendant argues that plaintiff’s privilege logs are insufficient under
`
`Rule 26 because they fail to adequately “describe the nature of the
`documents” withheld and fail to do so “in a manner that . . . will enable the
`other party to assess the claim” of privilege. RCFC 26(b)(5)(A)(ii).
`Defendant finds particularly troublesome the lack of document titles and
`email subject lines disclosed. As defendant puts it, “[n]one of the entries
`include any clue as to the content of the document.” Def.’s Mot. 5 (ECF No.
`397). As mentioned above, defendant has abandoned this argument as to
`documents listing an attorney as a sender or receiver. It maintains its request
`to produce those documents that do not list an attorney as the sender or
`receiver, many which involve a transmittal from SecurityPoint personnel to
`individuals at plaintiff’s investor, Raptor.
`
`Plaintiff responds that it has disclosed more than enough information
`
`in its logs to comport with Rule 26. It notes that its description of documents
`is much more forthcoming of relevant information than mere document titles
`or email subject lines would be and argues that the date, senders, receivers,
`privileges asserted, and description of documents withheld—the information
`disclosed for each entry in its logs—should be sufficient for defendant’s
`purposes. As a general matter, we agree.
`
`A survey of the caselaw from this circuit reveals that the rules do not
`
`require a monolithic form of privilege logs. See Deseret Mgmt. Corp. v.
`United States, 76 Fed. Cl. 88, 91 (2007) (quoting the advisory committee
`notes from FRCP 26(b)(5)). What is necessary is that the log be sufficient to
`2
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 14 of 21 PageID #: 6185
`
`disclose the nature of the document withheld and the basis for withholding
`with enough detail for the other party to assess the claim of privilege.
`Although defendant argues that the logs are wholly insufficient, its own
`briefing largely belies the point. It lists several categories of documents that
`it challenges as not privileged: documents disclosed to non-essential decision
`makers within SecurityPoint; documents disclosed to Lisa Smithson and
`employees of her company as agents or consultants but not for purposes of
`legal advice; documents disclosed to other third parties; and documents sent
`from plaintiff to Raptor (and vice versa). Defendant’s papers take aim at the
`claimed privileges within those tranches of documents. This reveals that,
`instead of a facial challenge to the sufficiency of the logs, defendant
`disagrees with plaintiff’s assertion of attorney-client privilege or work
`product doctrine or believes a waiver of those protections has taken place as
`to a host of documents. We thus conclude that no remedy would be
`appropriate for the mere condition of the logs themselves.1
`
`What thus remains at issue after defendant’s abandonment of other
`claims at oral argument are those documents within the above-mentioned
`categories that do not list an attorney in the sender or receiver line. These
`are primarily documents exchanged between Raptor and SecurityPoint. As
`we understand it, defendant’s principle claim is not that these documents
`contain information other than legal advice but that their disclosure by
`plaintiff to Raptor is a waiver of the protection of that advice. Plaintiff’s
`counter-assertion is that the common legal interest it shares with Raptor,
`namely the validity of the patent, protects the disclosure from waiver. We
`find the common interest exception applicable and thus decline to order their
`production to the government.
`
`
`
`A. Common Interest Doctrine
`
`Normally, a communication that is seeking or giving legal advice that
`
`is disclosed to a third party waives the attorney-client privilege as to the
`subject of that communication. Eden Isle Marina, Inc. v. United States, 89
`Fed. Cl. 480, 501 (2009). The common interest doctrine, however, operates
`to save such communications from waiver of the privilege if that third party
`
`1 And we note that defendant stated affirmatively that it was not seeking new
`logs from SecurityPoint as it believed that would be a waste of time, but also
`as we discuss above, because, as is plain from its papers, it was able to
`ascertain the basis for the privileges asserted and disagreed with them by
`bringing the present motion.
`
`3
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 15 of 21 PageID #: 6186
`
`is “allied in a common legal cause” with the client in the present suit claiming
`privilege. In re Regents of Univ. Of Cal., 101 F.3d 1386, 1389 (Fed. Cir.
`1996) (quoting In re Grand Jury Duces Tecum, 406 F. Supp. 381, 386
`(S.D.N.Y. 1975)). The third party need not be a litigant in the present suit,
`or any suit, but its interest shared with the party in the present suit must be a
`legal one, not merely commercial.2 See B.E. Meyers & Co., Inc. v. United
`States, 41 Fed. Cl. 729, 732 (1998). The communication must be in
`furtherance of that common purpose. Kansas City Power & Light Co. v.
`United States, 138 Fed. Cl. 546, 563 (2018) (citing United States v.
`Schwimmer, 892 F.2d 237, 243 (2nd Cir. 1989)).
`
`
`
`
`We hold that SecurityPoint and Raptor share a common legal interest We hold that SecurityPoint and Raptor share a common legal interest y p g
`
`
`
`
`in the validity of the patent-in-suit, which is at issue in this lawsuit. Raptor in the validity of the patent-in-suit, which is at issue in this lawsuit. Raptor y p , p
`
`
`
`
`
`is an equity investor in SecurityPoint, and, as such, it has a common interest is an equity investor in SecurityPoint, and, as such, it has a common interest q y y , , ,
`
`
`
`
`
`
`
`in the legal status of the ‘460 patent sufficient to protect its communications in the legal status of the ‘460 patent sufficient to protect its communicationsg p p
`
`
`
`
`with SecurityPoint (and vice versa) regarding this lawsuit and other legal with SecurityPoint (and vice versa) regarding this lawsuit and other legaly (
`
`
`questions concerning the patent.3questions concerning the patent.
`
`
`
`B. SecurityPoint Employees and Consultants
`
`Defendant’s motion also specifically calls out several other sub-
`
`categories of documents as being subject to waiver of any privilege asserted:
`documents and communications shared too broadly within SecurityPoint
`itself and those shared with Lisa Smithson and employees of her accounting
`firm.
`
`2 Defendant’s motion posits that disclosure to a non-attorney would not
`invoke the common interest rule, but we find no support for that rule in the
`caselaw. The case cited by defendant from the Third Circuit was applying a
`specific Delaware evidentiary rule that mandated that conclusion. In re
`Teleglobe Comm’n Corp., 493 F.3d 345, 364-65 (3rd Cir. 2007) (applying
`Del. R. Evid. 502(B)(3)). The court there noted that the Restatement of Law
`Governing Lawyers did not “emphasize this requirement, though it appears
`in the plain text of the relevant Delaware evidentiary rule.” Id. at 364 n.21.
`
`3 As we now understand, Raptor also has a separate contractual relationship
`with plaintiff through a litigation funding agreement. Because Raptor has a
`pre-existing equity investment in SecurityPoint, we do not reach the question
`of whether a litigation funding arrangement alone would be sufficient to
`establish a commonality of legal interest.
`4
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 16 of 21 PageID #: 6187
`
`1. Management
`
`Defendant argues that the privilege logs reveal a wide distribution of
`communications claimed to contain legal advice among employees of
`SecurityPoint. This defendant believes is a waiver of the privilege because
`these employees are not themselves decision makers as relates to the legal
`advice nor were they otherwise necessary to the decision making regarding
`that advice. For example, they were not acting at the behest of a corporate
`superior who directed them to obtain legal advice or provide information to
`the corporate attorney. Disclosure of privileged information to persons
`within a corporation that do not have a need for that information is a waiver
`of the attorney-client privilege. See Scott v. Chipotle Mexican Grill, Inc., 94
`F. Supp. 3rd 585, 598 (S.D.N.Y 2015).
`
`The four documents cited by defendant as examples in its brief,
`
`however, paint a different picture and perhaps raise a different issue for
`plaintiff. Only two “lower level” employees are among the names found in
`the sender and receiver boxes in the logs.4 Plaintiff represents in its
`opposition that one is an administrative manager and the other a “strategic
`account manager.” Plaintiff also argues that, in a small company such as
`SecurityPoint, any type of management position would properly be
`considered necessary for the sending and receiving of legal advice. We
`agree. No broad dissemination has been shown, and we are persuaded that
`any legal advice shared among managers at SecurityPoint, a small business,
`would be proper.
`
`The other issue raised by the logs is that the legal advice or work
`
`product claimed as protected in these log entries involves disclosure to third
`parties. For several of them, plaintiff claims that the third parties, Dex
`Imaging and Infocus Design, are consulting experts and covered by the
`privilege. Those involving Ms. Smithson, we discuss below.
`
`There are a few entries involving entities other than plaintiff and
`Raptor throughout defendant’s list of challenged entries. Plaintiff has not
`undertaken to explain each and every entry other than to rest on its
`descriptions provided by its logs or those specifically mentioned above in the
`briefing.5 Nor, on the other hand, has defendant made more specific
`
`4 Other names appearing in those entries, Mr. Ambrefe and Mr. Linehan, are
`principals or high level employees of the company.
`5 As to Dex Imaging and Infocus Design, plaintiff demurs from answering
`5
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 17 of 21 PageID #: 6188
`
`arguments in its briefing as to these others not mentioned above. In fact, the
`first two cited examples in this section above have been abandoned by the
`government as they do not appear in the revised list of challenged entries that
`appears in defendant’s reply brief. Although we are mindful that it is
`plaintiff’s burden to show that the privilege is properly invoked, in light of
`our holding that the logs themselves are not deficient, we are not presented
`with a reason to order their disclosure absent a more concrete argument as to
`why they should be. We are left with the default that the privilege logs have
`properly asserted the privileges claimed for these entries.
`
`2. Lisa Smithson
`
`Similar to the category above, disclosure of legal advice to agents of
`
`the corporation for a purpose other than rendering or obtaining legal advice
`is a waiver, which defendant believes has taken place as it regards Lisa
`Smithson and employees of her accounting firm. Ms. Smithson is the
`Corporate Financial Officer of SecurityPoint, and her firm provides
`accounting services to plaintiff. Defendant raises the issue that, since she is
`an accountant and her firm provides accounting services, the privileges
`invoked may be improper as the communications were for business and
`financial purposes rather than for giving or receiving legal advice or
`preparing documents for litigation.
`
`Plaintiff retorts that, as the company’s CFO, Ms. Smithson is entitled
`
`to review legal advice provided by counsel without any waiver arising and is
`further entitled to disseminate that advice to necessary individuals without
`waiving any privileges. Plaintiff also points out that it has produced
`hundreds of documents from Ms. Smithson to defendant already, which, in
`its view, shows that it has properly applied the relevant question of whether
`Ms. Smithson (and her company) were acting merely as accountants or were
`reviewing legal advice properly provided to the company as it pertains to the
`relevant documents. We agree with plaintiff. SecurityPoint has shown a
`
`those allegations in its briefing as it claims that the issue was not properly
`raised by plaintiff in its pre-motion meet-and-confer. It states, however, that
`it would endeavor to provide more information to defendant. These
`challenged entries do not appear again in defendant’s reply brief nor were
`they mentioned at argument. We note that the entry involving Dex Imaging
`was left off defendant’s final list of challenged entries. We are left in much
`the same position as plaintiff: without a reason to delve into the issue more
`deeply.
`
`6
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 18 of 21 PageID #: 6189
`
`valid reason that the privilege would apply to these documents.
`
`II. Oxford Valuation Report and Prepaid Forward Purchase Agreement
`
`The bulk of the briefing concerns two documents, initially withheld,
`
`then produced after defendant’s motion in redacted form to defendant. The
`first is a valuation of plaintiff’s stock that contains counsel’s views of the
`value of the present litigation, including likelihood of success and particular
`recovery scenarios. The second is a litigation funding agreement involving
`Raptor and other parties. We consider each in turn.
`
`A. Oxford Valuation Report
`
`The Oxford Report was authored by Oxford Valuation Partners in
`2016 and was commissioned by plaintiff to provide an independent valuation
`of SecurityPoint’s stock. It is the only such valuation known by defendant
`to exist. Plaintiff originally withheld the entirety of the document from
`defendant, then produced it with pages 39-62 entirely redacted, and now,
`after the present motion, has produced it largely in its original form but with
`many numerical figures withheld, including those that could be used to
`“reverse engineer” the predictions and valuations provided by plaintiff’s
`attorneys.
`
`Defendant challenges the withholding of any information in the
`document on the basis that the legal advice provided to SecurityPoint in the
`report has been disclosed to an independent third-party, Oxford, and thus the
`protection is waived. Plaintiff argues that Oxford was acting as an agent of
`it by preparing the report and including the advice of counsel at plaintiff’s
`behest. We conclude, however, that the disclosure to Oxford was a waiver.6
`
`The report is clear that its purpose was to value SecurityPoint’s stock
`as of July 1, 2016, a non-legal purpose. Defendant presents evidence from
`plaintiff’s contemporary board meeting that the report was commissioned to
`
`6 Although we are sympathetic to plaintiff’s point that the information
`withheld as privileged, standing by itself, would not be relevant to the
`underlying issues in the lawsuit, it is contained within the context of a
`document that is relevant to issue of damages, and because the report
`inextricably wound counsel’s valuations of the litigation into the company’s
`stock value, the information cannot be neatly sequestered without ruining
`much of its value to defendant.
`
`7
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 19 of 21 PageID #: 6190
`
`complete a deferred compensation valuation under I.R.C. § 409A. The report
`itself states that it can be used in compliance with that tax provision.
`Subsequent events further confirm the purpose, as defendant lays out in its
`brief. Thus, even if the author was acting as an agent of plaintiff, the reason
`for disclosing the legal advice to Oxford was not for the purpose of giving or
`receiving legal advice. Further, Oxford was not acting as an agent of
`SecurityPoint nor was it merely a conduit of information between counsel
`and client. It was Oxford that authored the report and exercised its judgment
`in how to use the information provided by counsel. It was commissioned to
`provide an independent valuation of the stock, and the rights to the use of the
`report are limited by the cover letter and attached “statement of limiting
`conditions.” See GA 71-72. In sum, we are persuaded that no privilege
`attaches to the Oxford Valuation Report because any privilege over the
`advice given by counsel has been waived by disclosure to Oxford, and the
`document must be produced in unredacted form to defendant.
`
`B. Prepaid Forward Purchase Agreement
`
`The final item for our consideration is an agreement between
`SecurityPoint and Raptor that provides for funding of the litigation by Raptor
`up to an agreed upon amount in exchange for a priority return of those funds
`should plaintiff recover them in this lawsuit and an additional return on
`investment if the proceeds of the lawsuit allows. The document, like the
`Oxford Report, was initially withheld from production on the basis of work
`product protection and because we found litigation funding matters to be
`irrelevant based on counsel’s representation that no such agreement included
`an exchange of rights in the patent or control over the litigation. An
`amendment to the Prepaid Forward Purchase Agreement (“PFPA”) was
`produced, however, the language of which suggests to defendant that
`plaintiff’s counsel’s representations were less than wholly forthcoming and
`that some control of the litigation was ceded to Raptor and other investors.7
`Plaintiff in turn has produced almost all of the original PFPA with certain
`limited redactions. Defendant believes it is entitled to those redacted entries
`now.
`
`Litigation funding agreements are often considered by the federal
`courts to be protected by the work product doctrine or as otherwise irrelevant
`to the issues at hand. See Miller UK Ltd. v. Caterpillar, Inc., 17 F. Supp. 3d
`
`7 The amendment to the PFPA added several additional parties as funders of
`the litigation.
`
`8
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 20 of 21 PageID #: 6191
`
`711, 730-39 (N.D. Ill. 2014); Lambeth Magnetic Structures, LLC v. Seagate
`Tech. (US) Holdings, Inc., Civil Action No. 16-538. 2018 WL 466045, at *5-
`6 (W.D. Pa. Jan. 18, 2018) (order denying motion to compel). In the context
`of litigation with the federal government, however, defendant points out that
`the Assignment of Claims Act, 31 U.S.C. § 3727 (2012), might make certain
`provisions relevant to the enforcement of that statute in the litigation or
`whether necessary parties have been joined. Plaintiff counters that the PFPA
`is irrelevant to any issue at bar and that the redacted version provided to
`defendant ought to assuage any concerns regarding assignment of claims or
`joinder. Plaintiff also disputes defendant’s characterization of its prior
`representations to the court and draws a fine distinction in that it represented
`to the court that it had no traditional litigation funding arrangements. This is
`so, in its view, because Raptor has a pre-existing equity interest in
`SecurityPoint and is thus not like a traditional outside funder of litigation.
`Plaintiff maintains its position that the PFPA does not give any control over
`the litigation to any third parties nor any interest in the patent.
`
`We begin with the initial issue of misrepresentation to the court.
`Although plaintiff’s distinction between a classic litigation funding
`agreement and one made with a party with whom the litigant has a pre-
`existing equity arrangement may have been made in good faith, it certainly
`was not a distinction that the court could have drawn from merely how the
`representation was made. Further, plaintiff has not explained how the other
`entities added as funders by the amendment to the PFPA fit within that
`definition. That said, we do not see a lack of candor with the court or an
`attempt to affirmatively misrepresent.
`
`There is also the representation that no control of the litigation nor
`interest in the patent was conveyed. Generally, we agree that, by the terms
`of the agreement, plaintiff maintains control of the litigation, but an override
`provision is afforded to the investors should they be of the opinion that
`plaintiff is acting in bad faith by settling or refusing to settle the case. The
`agreement resolves such a dispute by referring it to binding arbitration.
`Again, we find that a good faith distinction between the two positions is
`possible and thus no intent to deceive the court is inferred, but the issue of
`relevance remains.
`
`It is clear that several of the redactions are merely percentages of
`recovery and funding that are not implicated by any of the concerns raised
`by defendant; there are also several entries, however, that may shed further
`light on the rights and interests of the parties to the PFPA as it pertains to
`9
`
`

`

`Case 1:18-cv-01519-MN Document 141-1 Filed 05/19/20 Page 21 of 21 PageID #: 6192
`
`control of the litigation. We simply cannot tell from the context alone, and
`we are not in a position to opine on the ultimate importance, or not, of these
`provisions as they pertain to any of the potential issues raised by defendant.
`Therefore, a legitimate need may be present that overcomes a relevance
`objection, but the question of work product protection remains. We
`previously ruled that funding of the litigation was off limits to the
`government. Defendant has raised a potential need for the information now
`due to assignment or joinder. Because work product protection is not
`inviolable and can be overcome by a showing of need, the inquiry is not over.
`The court will have to assess the issue by reviewing the unredacted
`provisions in camera.
`
`III. Conclusion
`
`Accordingly, the following is ordered. Defendant’s motion is granted
`as it pertains to the Oxford Valuation Report. Plaintiff must produce it in
`whole to defendant. Plaintiff is furthered ordered to provide an unredacted
`copy of the PFPA to the court for review in camera on or before April 23,
`2019. Defendant’s motion is denied in all other respects.
`
`s/Eric G. Bruggink
`ERIC G. BRUGGINK
`Senior Judge
`
`10
`
`