Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 1 of 86 PageID #: 6441
`Case 1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 1 of 86 PagelD #: 6441
`
`FOR THE DISTRICT OF DELAWARE
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FIN]AN. INC.. a Delaware Corporation.
`
`Plaintiff,
`
`V-
`
`CA. No. 1:18-cv—01519-MN
`
`RAPIDY, INC.. a Delaware Corporation
`and RAPID? LLC, a Delaware Limited
`
`Liability Company,
`
`Defendants.
`
`
`EXHIBITS A, B, D-H, AND J-N TO
`DEFENDANTS' LETTER BRIEF TO
`
`COMPEL PRODUCTION OF IBM
`
`DOCUMENTS, WHICH WAS FILED
`UNDER SEAL IN A SEPARATE TRANSACTION
`
`DATED: June 30, 2020
`
`DUANE MORRIS LLP
`Richard L. Renck, Esq. (#3893)
`222 Delaware Avenue. Suite 1600
`
`Wilmington, DE 19801
`Tel.:
`(302) 657—4900
`Fax:
`(302] 657—4901
`rlrenck@duanemorris.com
`
`COUNSEL FOR DEFENDANTS
`
`DEFENDANTS RAPIDZ INC. AND
`RAPID7 LLC
`
`

`

`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 2 of 86 PageID #: 6442
`Case 1:18—cv-01519—MN Document 161 Filed 06/30/20 Page 2 of 86 PageID #: 6442
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`EXHIBIT A
`
`

`

`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 3 of 86 PageID #: 6443
`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 3 of 86 PagelD #: 6443
`
`
`
`Frankel, Aaron <AFrankel@ KRAMERLEVIN.com>
`
`Thursday, April 30, 2020 1:53 PM
`
`Gaudet, Matthew C.; Forte, Jennifer H.; Dotson, David C.; Jameson, Woody; Gibson,
`John R.; Gunther, Jarrad M; Garellek, Jordana; Renck, Richard L.; Snedeker, Alice
`
`Andre, Paul; Kobialka, Lisa; Hannah, James; Lee, Hannah; Hedvat, Shannon H.; Pymento,
`Julian; provner@potteranderson.com; 'Choa, Jonathan A.‘
`
`Finjan/RapidY; Finjan/SonicWaIl: IBM Documents
`
`From:
`
`Sent:
`
`To:
`
`Cc:
`
`Subject:
`
`Counsel:
`
`IBM consents to the production of the patent assignment agreement between IBM and Finjan on a "CONFIDENTIAL--
`OUTSIDE COUNSEL ONLY" and ""HIGHLY CONFIDENTIAL - ATI'ORNEYS' EYES ONLY" basis under the respective protective
`
`orders in the Rapid? and SonicWaH cases, subject to Defendants’ agreement that all electronic and physical copies of the
`
`agreement will be returned to Finjan or destroyed when the litigations are concluded. Please confirm Defendants’
`agreement, and Finjan will produce the document.
`
`IBM objects to the production of documents related to the negotiation of the agreement as, at a minimum, non—
`responsive to Defendants’ discovery requests and irrelevant to the claims and defenses in the Iitigations.
`
`Regards,
`Aa ron
`
`Aaron M. Frankel
`
`Krorner Levin Noflolis & Frankel LLP
`1 177 Avenue of the Americas, New York. New York 10036
`T 212.715.7793 F 212.715.8363
`
`Qfrgnk§|-=:§-‘krom§ri§vin.ggm
`
`

`

`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 4 of 86 PageID #: 6444
`Case 1:18—cv-01519—MN Document 161 Filed 06/30/20 Page 4 of 86 PageID #: 6444
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`EXHIBIT B
`
`

`

`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 5 of 86 PageID #: 6445
`Case 1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 5 of 86 PagelD #: 6445
`
`August 28, 201?
`
`finjanrr
`
`Cybersecurity
`
`Finjan Announces Formation of New Subsidiary,
`Finjan Blue, Inc.
`
`Finjan and IBM Enter Patent Acquisition and Development Agreement
`
`EAST PALO ALTO, CA -- (Marketwired) -- 08i28l17 -- Finign Holdings, Inc. (NASDAQ: FNJN), a cybersecurity
`company, today announced that it has formed a new subsidiary. Finjan Blue, Inc.. a Delaware corporation and
`wholly owned subsidiary of Finjan Holdings, which has entered into a patent acquisition and development agreement
`with IBM (NYSE: IBM), and includes pathways for the two companies to consider development efforts in the future.
`The Agreement, the terms of which are confidential, includes the transfer of select secu rity—related patent assets
`and provides for the sharing of pertinent institutional knowledge and resources by IBM to Finjan Blue.
`
`"Finjan returns to its roots with a business relationship it had with IBM nearly 20 years ago that included Finjan
`shipping its early enterprise appliance products on the IBM e-series chassis." said Phil Hartstein. President and
`CEO of Finjan Holdings. "This Agreement sets the foundation for us to work cooperatively with IBM now and into the
`future, bolsters our growth, and fits squarely within our strategic objectives."
`
`A call to discuss Finjan's new subsidiary, Finjan Blue. Inc. will be held on Monday. August 28, 2017 at 1:30 pm. PTi
`4:30 pm. ET. Interested parties can dial in 1-855-327-6837. The call will also be webcasted on the IR section of
`Finjan's website https:llir.tinjan.comiir-calendar.
`
`ABOUT FINJAN
`
`Established nearly 20 years ago, Finjan is a globally recognized leader in cybersecurity. Finjan's inventions are
`embedded within a strong portfolio of patents focusing on software and hardware technologies capable of
`proactively detecting previously unknown and emerging threats on a real—time, behavior—based basis. Finjan
`continues to grow through investments in innovation. strategic acquisitions, and partnerships promoting economic
`advancement and job creation. For more information, please visit www.finian.com.
`Finjan® is the registered trademark of Finjan Holdings, Inc.
`
`Follow Finjan Holdings, Inc.:
`Twitter: @FinianHoldings
`Linkedln: link din. ml m n fin’ n
`
`Facebook: facebookcomlfinianholdings
`
`Cautionary Note Regarding Forward-Looking Statements
`Except for historical information, the matters set forth herein that are forward-looking statements involve certain risks
`and uncertainties that could cause actual results to differ. Potential risks and uncertainties include, but are not
`limited to, Finjan's expectations and beliefs regarding Finjan's licensing program, the outcome of pending or future
`enforcement actions, the granting of lnter Panes Review (lPR) of our patents or an unfavorable determination
`pursuant to an lPR or other challenges at the USPTO of our patents, the enforceability of our patents, the cost of
`litigation, timing of redemption of shares of preferred stock, the unpredictability of our cash flows, our ability to
`expand our technology and patent portfolio, the continued use of our technologies in the market, our stock price,
`changes in the trading market for our securities, regulatory developments, general economic and market conditions,
`the market acceptance and succeszul business, technical and economic implementation of Finjan Holdings'
`intended operational plan; and the other risk factors set forth from time to time in our filings with the SEC, including
`our Annual Report on Form 10-K for the year ended December 31, 2016, and the Company's periodic filings with the
`SEC, copies of which are available free of charge at the SEC's website at mvwsecgov or upon request from Finjan
`Holdings, inc. All forward-looking statements herein reflect our opinions only as of the date of this release. These
`statements are not guarantees of future performance and actual results could differ materially from our current
`expectations. Finjan Holdings undertakes no obligation, and expressly disclaims any obligation, to update forward-
`looking statements herein in light of new information or future events.
`
`Finjan Contact:
`Vanessa Winter | Finjan
`Valter Pinto | KCSA Strategic Communications
`
`

`

`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 6 of 86 PageID #: 6446
`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 6 of 86 PageID #: 6446
`
`(650) 282-3245
`investors@finian.com
`
`Source: Finjan Holdings. Inc.
`
`

`

`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 7 of 86 PageID #: 6447
`Case 1:18—cv-01519—MN Document 161 Filed 06/30/20 Page 7 of 86 PageID #: 6447
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`EXHIBIT C
`
`FILED UNDER SEAL
`
`

`

`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 8 of 86 PageID #: 6448
`Case 1:18-cv-01519—MN Document 161 Filed 06/30/20 Page 8 of 86 PageID #: 6448
`
`EXHIBIT D
`
`

`

`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 9 of 86 PageID #: 6449
`Ca
`1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 9 of 86 PageID #: 6449
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`FINJAN, INC,
`
`Case No.
`
`l?-cv-00072-BLF (SVK)
`
`Plaintiffi _
`
`V-
`
`CISCO SYSTEMS INC,
`
`Defendant.
`
`FINAL ORDER 0N MOTIONS HEARD
`ON JUNE 6, 2019
`
`Re: Dkt. Nos. 118, 209, 231, 243, 261
`
`The Court heard oral argument on the following motions on June 6, 2019:
`
`:-
`
`ECF 188: Finjan’s Motion to Strike Cisco’s Further Updated Second Election of
`
`Asserted Prior Art;
`
`0
`
`ECF 231: Finjan’s Motion for Leave to Supplement Infringement Contentions;
`
`- ECF 209: Cisco’s Motion to Strike Finjan’s Second Supplemental Objections and
`
`Responses to Cisco’s Interrogatory No. 10 or, in the alternative, Leave to Amend to
`
`Assert Counterclaim for Breach of Contract;
`
`-
`
`ECF 243: Joint discovery letter brief re deposition subpoena to non-party Neal
`
`Rubin; and
`
`-
`
`ECF 261: Joint discovery letter brief re Finjan’s production of documents
`
`regarding relationship between IBM and Finjanx’Finjan Blue.
`
`In advance of the hearing, the Court issued tentative rulings and questions on the motions.
`
`ECF 271. This order contains the Court’s final rulings on the motions. After careful
`
`consideration of the parties’ submissions, statements at oral arguments, the case file, and relevant
`
`law, the Court ORDERS as follows:
`
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 10 of 86 PageID #: 6450
`Gas
`1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 10 of 86 PagelD #: 6450
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`ECF 188: Finjan’s Motion to Strike
`
`Cisco’s Further Updated Second Election of Asserted Prior Art
`
`Finj an moves to strike Cisco’s Further Updated Second Election of Asserted Prior Art on
`
`the grounds that it does not comply with the Court’s August 16, 201'? Order requiring a phased
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`reduction in the number of asserted prior art references in this case. ECFISS; see also ECF T0
`
`(the “August 2017 Order”). Finjan’s motion is GRANTED IN PART and DENIED IN PART.
`
`I.
`
`Background
`
`Patent Local Rule 3-3 requires that after the patent holder serves a Disclosure of Asserted
`
`Claims and Infringement Contentions, the accused infringer must serve Invalidity Contentions.
`
`The Invalidity Contentions must contain, among other things, “[a] chart identifying specifically
`
`where and how in each alleged item of prior art each limitation of each asserted claim is found.”
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`Patent LR. 3-3(c).
`
`The Court’s August 201'? Order adopted the parties” stipulation to streamline the case by
`
`imposing “phased limits on asserted claims, prior art and invalidity theories.” ECF 70 at 4.
`
`Specifically, after Cisco provided its Invalidity Contentions, Finjan was required to serve a
`
`Preliminary Election of Asserted Claims, selecting a limited number of claims from the claims
`
`Finjan had previously asserted in its Infringement Contentions.
`
`Id. Cisco was then required to
`
`serve a Preliminary Election of Asserted Prior Art, electing a limited number of prior art
`
`references from prior art previously asserted in its Invalidity Contentions.
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`Id.
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`The second phase of elections required the parties to further reduce the number of asserted
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`claims and prior art references by serving a Second Election of Asserted Claims (by Finjan),
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`followed by a Second Election of Asserted Prior Art (by Cisco). 1d.
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`On September 13, 2018, the Court issued an order approving the parties’ stipulation to
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`further narrow the asserted claims and prior art in this case. ECF 140. Under that order, Cisco
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`was required to serve a Third Election of Asserted Prior Art, which identified a limited number of
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`invalidity theories from the subset of previously-identified prior art.
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`Id. at 1.
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 11 of 86 PageID #: 6451
`Gas 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 11 of 86 PagelD #: 6451
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`II.
`
`Discussion
`
`Finj an’s current motion seeks to strike Cisco’s Second Election of Asserted Prior Art—
`
`more precisely, Cisco’s Further Updated Second Election of Asserted Prior Art served on January
`
`18, 2019 (for purposes of this Order, that document will be referred to as Cisco’s “Second
`
`Election”). ECF 188.l The Second Election was served pursuant to the August 201? Order,
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`which provided that this election “shall assert from the subset of prior art previously identified no
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`more than 6 prior art references per patent and no more than a total of 20 references across all
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`Patents-in-Suit.” ECF 70 at 4. The August 201? Order clarified that “[a] prior art instrumentality
`
`(such as a device or process) and associated references that describe that instrumentality shall
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`count as one reference, as shall the closely related work of a single prior artist.” 1d. at n.3. Finjan
`
`argues that Cisco’s Second Election does not comply with the August 2017 Order because Cisco
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`“chose to obfuscate the specific prior art products it is asserting against Finjan and added new
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`prior art references that Cisco failed to include in its Invalidity Contentions.” ECF 188 at 5.
`
`Finjan’s specific disagreements with Cisco’s Second Election are discussed below.
`
`1.
`
`Cisco’s identification of multiple versions of software: The Court’s tentative
`
`ruling was that each version of software counts as one piece of prior art, and thus if Cisco wants
`
`the identified software to count as only one piece of prior art, it must pick a single version of the
`
`software to assert. ECF 271. At the hearing, C isco agreed to update its election of software to
`
`conform to the Court’s tentative ruling, Accordingly, the Court adopts its tentative ruling as its
`
`final order on the issue of software versions.
`
`2.
`
`Cisco’s identification of multiple versions of user manuals: The Court’s final
`
`order is that for an elected version of software, Cisco may identify a user manual that refers to that
`
`
`
`1 Following Cisco’s service of it Second Election of Asserted Prior Art, the parties met and
`conferred on various issues. See ECF 188 at 3-4. As a result of those meet and confer efforts,
`Cisco subsequently served an Updated Second Election on December 14, 2018 and, following
`additional meet and confer efforts, a Further Updated Second Election of Asserted Prior Art on
`January 18, 2019. Id; ECF l88-l at 111] 4-5.
`
`3
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 12 of 86 PageID #: 6452
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`1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 12 of 86 PageID #: 6452
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`specific software version as an “associated reference” under the August 2017 Order. For an
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`elected version of software, C isco may not identify multiple user manuals across various operating
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`systems
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`3.
`
`References that Finjan claims Cisco did not chart as part of its original
`
`invalidity contentions: As discussed above, Patent Local Rule 3-3(c) requires the accused
`
`infringer to chart each alleged prior art reference. The Court therefore holds that only those
`
`primary references that were charted in C isco’s Invalidity Contentions are valid choices from
`
`which Cisco may elect prior art in its narrowing elections. Finjan’s motion to strike argues that
`
`C isco did not chart the ’346 Chess patent, the ’035 Nash patent, or the ”348 Ji patent and that
`
`therefore those references may not be included in Cisco’s election of prior art.
`
`a.
`
`’346 Chess patent and ”0335 Nash patent
`
`Cisco argues that it adequately charted the ’346 Chess patent the ’035 Nash patent because
`
`the chart in its Invalidity Contentions for patent-in-suit 7,647,633, while not identifying these
`
`patents specifically, cross-references Section III.C .3 of Cisco’s Invalidity Contentions cover
`
`pleading. See ECF 195-3 at 8. However, Section III.C.3. of the Invalidity Contentions cover
`
`pleading is 15 pages in length and covers at least five claim elements. See ECF 194-3 at 5 1-6?.
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`Under the element “Determining if Downloadable-Infonnation has Executable Code,” which itself
`
`covers six pages, the Chess and Nash patents are mentioned, along with numerous other
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`references.
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`I'd. If the issue before the Court was purely a question of whether Finjan was on
`
`notice of the Chess and Nash patents, Cisco’s manner of cross-referencing the cover pleading in
`
`the ”633 chart might suffice. However, Patent Local Rule 3-3(c) requires prior art references to be
`
`charted. Having failed to chart these references, Cisco cannot now elect them as prior art
`
`references.
`
`b.
`
`’348 Ji patent
`
`At the hearing, Finjan agreed with Cisco that the ’348 J i patent was charted for certain
`
`asserted claims. Accordingly, that patent can be elected by Cisco as a prior reference for any
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`claim for which it was charted.
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 13 of 86 PageID #: 6453
`Gas 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 13 of 86 PagelD #: 6453
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`c. Digital Immune System (“DIS”)
`
`For patents-in—suit ?,647,633 and 8,677,494, C isco identified as prior art “Digital Immune
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`System” and listed four (for the ’633 patent) and five (for the ’494 patent) “following references.”
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`ECF 188-6 at 3-4. Based on the arguments and clarifications presented by the parties at the
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`hearing, where the Digital Immune System reference has been identified for the ’633 and the ’494
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`patents, Cisco must limit its election to just one of the “following references” that has been
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`charted.
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`4.
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`Amendment of Second Election: The Court DENIES Finjan’s motion to strike
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`Cisco’s prior art allegations as a sanction for Cisco’s conduct. The Court instead ORDERS that
`
`Cisco must serve an amended Second Election that conforms to this order within seven (7) days of
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`the date of the order. Cisco must also serve an amended Third Election of Prior Art within seven
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`(7) days of serving the amended Second Election.
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`5.
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`Production of prior art: Finjan’s motion to strike refers to certain issues
`
`regarding the production of prior art. See, e.g., ECF 188 at 8. At the hearing, neither party raised
`
`an issue with respect to Court’s tentative ruling that within seven (7) days of C isco’s service of its
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`amended election of prior art, the parties must meet and confer to resolve and, if necessary, file a
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`joint discovery letter brief regarding any issues concerning the production of prior art.
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`Accordingly, the Court adopts its tentative ruling as its final order on this issue.
`
`riff
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`fi/f
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 14 of 86 PageID #: 6454
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`1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 14 of 86 PageID #: 6454
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`ECF 231: Finjan’s Motion to Amend Infringement Contentions
`
`Finj an moves to amend its Infringement Contentions. ECF 23 I. Finjan’s motion is
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`DENIED for the reasons set forth below.
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`A plaintiff may amend its infringement contentions “only by order of the Court upon a
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`timely showing of good cause,” such as the “[r]ecent discovery of nonpublic information about the
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`Accused Instrumentality.” Patent LR. 3-6. When determining whether to grant leave to amend,
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`the Court first considers whether the party seeking leave acted diligently. Apple Inc. v. Samsung
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`Efecs. (16., No. CF 12-00630 LHK, 2012 WL 5632618, at *2 (ND. Cal. Nov. 15, 2012) (citation
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`omitted). The Court then considers whether the proposed amendment would unduly prejudice the
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`non-moving party. 1d. (citation omitted).
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`In support of its motion, Finjan does not provide a redline of its existing infringement
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`contentions, claiming that redlines made the charts unwieldly. Instead, Finj an has prepared
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`“Supplemental Infringement Charts” and provided the chart for patent-in-suit 6,154,844 as an
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`exemplar. See ECF 230-14 (“exemplary example” of Supplemental Infringement Chart — see ECF
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`23 I -I at 1| 26). At the hearing, Finjan stated that the issues raised by this motion and Cisco’s
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`opposition fall into two categories: (I) Finjan’s identification of components that correspond to
`
`previous contentions, and (2) Finjan’s assertion of Talos as a standalone infringing product.
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`However, the Supplemental Infringement Chart (hereinafter “SIC”) does not distinguish between
`
`amendments to identify components and amendments that now assert Talos alone is an infringing
`
`product.
`
`1.
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`Identification of components
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`Finj an argues that many of its proposed amendments to the Infringement Contentions
`
`would simply add the name of a particular component (cg, ThreatBrain) to its previous
`
`contentions regarding the associated functionality. Finjan argues that it learned the internal
`
`codenames of various Cisco components only recently during deposition.
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`Cisco argues that (l) Finjan’s proposed amendments are not as simple as Finjan suggests,
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`and (2) most of the proposed amendments could have been “discovered” earlier in the litigation
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 15 of 86 PageID #: 6455
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`1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 15 of 86 PagelD #: 6455
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`through focused depositions. ECF 250.
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`In particular, Cisco notes that the SIC, which is only for
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`the ”844 patent, contains 47 proposed changes. Whereas some of the proposed amendments might
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`simply add the name of a component to functionality previously disclosed in Finjan’s
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`Infringement Contentions, others appear to seek to link newly-identified components to
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`functionalities disclosed in the Infringement Contentions in a way that simply mirrors the claim
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`language.
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`It appears from the Court’s careful review of the proposed SIC and the arguments
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`presented at the hearing that Finjan’s proposed amendments to identify components are
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`significantly more complex and prejudicial than Finjan has portrayed them. First and foremost, as
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`described above, Finjan did not present its proposed amendments in the form of a redlined version
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`of its existing Infringement Contentions, but instead as an entirely new, separate document. At the
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`hearing, the Court pressed Finjan on its suggestion that it was merely inserting specific names for
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`a previously described functionality, If that were the case, it is not clear why Finjan’s current
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`infringement contention charts could not be redlined to insert the purportedly recently discovered
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`name at the place where the functionality is presently described. Simply put, without a redline, the
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`Court is unable to determine that Finjan’s proposed amendments are limited to clarifying the
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`existing contentions rather than expanding them. Thus, the Court is unable to conclude that Finjan
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`has carried its not insubstantial burden of showing diligence and lack of prejudice. Further,
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`creating an entirely new, separate document raises a specter that the parties and experts would
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`have to work with two operable infringement contention documents—the original Infringement
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`Contentions and a set of Supplemental Infringement Charts. There is no provision in the Local
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`Rules for this approach, and no other Court in this District has endorsed it.
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`Accordingly, Finjan’s motion to amend its infringement contentions to add the
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`identification of components is DENIED. Finjan’s showing of diligence is insufficient given the
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`apparent significance of its proposed amendmentfsupplementation which defy redlining its
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`existing contentions. An amendmenttsupplementation this extensive would disrupt the case
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`schedule at this point in the litigation.
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 16 of 86 PageID #: 6456
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`1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 16 of 86 PageID #: 6456
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`2. Tales standalone infringement theory
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`Finj an argues that it should be permitted to amend its Infringement Contentions to reflect
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`Talos, by itself, as an infringing product.
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`In its brief, Finjan argues that its SIC merely “identifies
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`the relevant technological relationships among the Accused Products, such that there is no
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`‘amendment’ to Finjan’s infringement claims against Cisco.
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`In other words, the same grounds for
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`asserting infringement against the same Accused Products remain the same .
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`.
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`. .” ECF 230-4 at 9.
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`However, at the hearing Finjan admitted for the first time that its “standalone Talos” contention is
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`a new theory. Finjan argues that this new infringement theory arises from recent deposition
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`testimony of Cisco witness Matt Watchinski that Talos uses sandboxes and other allegedly
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`infringing features. Id. at 5.
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`It is too late for Finjan to add this new theory to its infringement contentions. The nature
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`and characteristics of Tales have long been the subject of discovery and argument between these
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`parties. See ECF 79, ECF 83, ECF 198, ECF 199, and ECF 200, Finjan argues that Cisco
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`misrepresented the nature of Tales not only to Finjan but to this Court, but a review of the
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`proffered evidence on this point is not persuasive. That evidence, including produced documents
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`and deposition testimony, indicates that enough of Talos’s functionality was revealed to Finjan to
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`enable it to seek discovery on these issues earlier. See ECF 249-62 (chart identifying previous
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`references to Talos). Moreover, in its Initial Disclosures, Cisco disclosed Stefan Buhlmann of Joe
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`Security as a witness “[k]nowledgeable regarding JoeBox (nfk/a Joe Sandbox) sandboxing” and
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`Mr. Watchinski as a witness with “information relating to Talos service.” ECF 250-44 at 3.
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`In sum, Finjan’s showing of diligence is insufficient given the significance of its proposed
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`amendmentfsupplementation, which would add a new infringement theory at this very late date in
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`the litigation. Accordingly, Finjan’s motion to amend its infringement contentions to add a
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`standalone Talos infringement theory is DENIED.
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 17 of 86 PageID #: 6457
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`1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 17 of 86 PageID #: 6457
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`ECF 209: Cisco’s Motion to Strike Finjan’s Second Supplemental Response to
`Interrogatory 10 or, in the alternative, Motion to Amend Counterclaim
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`Cisco moves to strike Finjan’s second supplemental response and objections to
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`Interrogatory No. 10. That interrogatory seeks Finjan’s allegations regarding when Cisco received
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`actual or constructive notice of infringement of each patent-in-suit. The second supplemental
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`response adds allegations of notice arising from the parties’ pre-litigation licensing discussions,
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`which were covered by a non-disclosure agreement (“NDA”). Cisco argues that Finjan’s second
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`supplemental response should be stricken because the facts that were added to that response have
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`been in Finj an’s possession since it filed the lawsuit. Cisco also argues that if the interrogatory
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`response is not stricken, it should be granted leave to amend to assert a counterclaim for breach of
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`the parties’ NDA.
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`At the hearing, Finjan provided a timeline attempting to link its second supplemental
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`response to Interrogatory No. 10 on March 1 l, 2019 to a production of documents that occurred in
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`January to April 2019 in advance of the depositions of Finjan’s CEO and its former VP of
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`licensing. According to Finjan, documents regarding the parties’ pre-litigation licensing
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`discussions were in that document production. Finjan also argued that although it had included
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`allegations concerning the licensing discussions in its original complaint (which it later removed
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`from the complaint), those allegations related to willfillness, whereas Interrogatory No. 10 relates
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`to notice.
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`Finjan’s arguments miss the point. Finjan has known about the licensing discussions and
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`related documents it now, belatedly, points to as evidence of notice since before the lawsuit was
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`filed, as evidenced by the allegations regarding those discussions in its original complaint.
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`Although the focus of the interrogatory on notice may differ from the purpose for which Finjan
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`offered evidence of licensing discussions in its complaint, the underlying facts have nevertheless
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`been known to Finjan since the outset of the case. There simply is no good cause as to why Finjan
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`waited until its second supplemental response to assert facts in support of its position on notice.
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`C isco’s motion to strike Finjan’s second supplemental response and objections to
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`lnterrogatory No. 10 is therefore GRANTED.
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 18 of 86 PageID #: 6458
`Gas 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 18 of 86 PagelD #: 6458
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`ECF 243: Joint Discovery Letter Brief re
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`Motion to Quash Deposition Subpoena to Neal Rubin
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`At the hearing neither party challenged the Court’s tentative ruling that the request by
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`Cisco and non-party Neal Rubin to quash the deposition subpoena served by Finjan on Mr. Rubin
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`is DENIED. ECF 271 at 3. Accordingly, the Court adopts its tentative ruling as the final order on
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`this issue for the reasons discussed in the tentative ruling. Id.
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`ECF 261: Joint Discovery Letter Brief re
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`Cisco’s Motion to Compel Production of Documents re Finjan Blue
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`Cisco asks the Court to compel Finjan to produce all documents that hit on Cisco’s email
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`search terms related to the patent acquisition and development agreement entered into between
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`Finjan subsidiary Finjan Blue, Inc. and IBM and the relationship between Finjan and IBM. ECF
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`261.
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`At the hearing, Finjan argued that it only intends to make one reference to IBM to explain
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`to the jury that Finjan has a subsidiary, Finj an Blue, that has or had a relationship with IBM.
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`Finjan said it might also use a demonstrative reflecting, among other things, its relationship with
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`IBM. Finjan argues that because it will offer only minimal references to IBM and Finjan Blue at
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`trial, in the context of explaining Finjan’s corporate structure, Cisco is not entitled to the discovery
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`it seeks and Finjan’s previous production of the Finjan’s agreement with IBM is sufficient.
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`According to Cisco, under Finjan’s agreement with IBM, Finjan purchased patents from
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`IBM and has the right to retain the inventors on an hourly basis to assist in patent prosecution and
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`enforcement. ECF 260-4 at 2. Cisco is concerned that Finjan will portray its relationship with
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`IBM as more extensive. Cisco argues that if Finjan intends to create a “halo effect” at trial by
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`mentioning the company’s relationship with IBM, Cisco must be given an opportunity to obtain
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`evidence to impeach that statement. Cisco has offered to forego discovery on this issue if Finjan
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`agrees not to reference its relationship with IBM at trial.
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`Cisco’s motion to compel discovery on this issue is CONDITIONALLY GRANTED.
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`The fact that Finjan may refer only briefly to IBM at trial does not mean that discovery on the
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`Case 1:18-cv-01519-MN Document 161 Filed 06/30/20 Page 19 of 86 PageID #: 6459
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`1:18—cv-01519-MN Document 161 Filed 06/30/20 Page 19 of 86 PageID #: 6459
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`issue must be limited to the Finjan-IBM contract that Finjan has already produced. Cisco has
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`demonstrated why additional discovery is necessary to challenge statements Finjan may make at
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`trial regarding its relationship with IBM. Therefore, if Finjan intends to refer to its relationship
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`with IBM at trial, it must produce the requested documents. Within two (2) weeks, Finjan must
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`either product the requested documents or inform Cisco in writing that it will not refer to Finjan’s
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`relationship with IBM at trial.
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`SO ORDERED.
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`Dated: June 11,2019
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`Sumfifik—
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`SUSAN VAN KEULEN
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`United States Magistrate Judge
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`Case 1:18-cv-01519-MN