Case 1:18-cv-01519-MN Document 162 Filed 07/01/20 Page 1 of 4 PageID #: 6527
`
`RICHARD L. RENCK
`DIRECT DIAL: +1 302 657 4906
`E-MAIL: RLRenck@duanemorris.com
`
`June 30, 2020
`
`PUBLIC VERSION FILED JULY 1, 2020
`BY VIA ECF & HAND DELIVERY
`
`The Honorable Judge Maryellen Noreika
`J. Caleb Boggs Federal Building
`844 N. King Street, Unit 19, Room 4324
`Wilmington, DE 19801-3555
`Re: Finjan, Inc. v. Rapid7, Inc. and Rapid7 LLC, Case No. 18-1519-MN (D. Del.)
`(“Rapid7 Action”)
`
`Dear Judge Noreika:
`
`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 (collectively, “Rapid7”), respectfully request
`an order compelling Plaintiff Finjan, Inc. (“Finjan”) to produce emails and related documents
`that hit on Rapid7’s ESI search terms regarding the relationship and patent acquisition and
`development agreement between Finjan’s wholly owned subsidiary, Finjan Blue, Inc., and IBM
`(“IBM Documents”). Finjan acknowledges that such documents are within its possession, but
`refuses to produce them because it says IBM will not allow it. See Ex. A, 4.30.20 Email from
`Frankel. As an alternative to producing the IBM Documents, Rapid7 requests that Finjan
`stipulate not to refer to its relationship with IBM at trial.
`
`Background
`
`In August 2017, Finjan formed Finjan Blue, Inc. and announced that it had entered into
`“a patent acquisition and development agreement with IBM”. Ex. B, 8.28.17 Finjan Press
`Release. The agreement provides for the transfer of “select security-related patent assets” from
`IBM to Finjan. Id.
`
`In its press releases, Finjan claimed that the agreement “sets the foundation for [Finjan]
`to work cooperatively with IBM now and into the future, bolsters our growth, and fits squarely
`within our strategic objectives.” Ex. B, 8.28.17 Finjan Press Release. At trial in prior actions,
`Finjan touted its ongoing business relationship with IBM, suggesting that there was more than
`just a transfer of patents. However, such a relationship is not evident from any of the information
`available to Rapid7, and there is reason to believe that no such relationship exists. Finjan is
`withholding communications regarding that relationship in its possession, which prevents Rapid7
`from investigating and rebutting Finjan’s assertion that its relationship with IBM was anything
`more than a patent purchase. This is prejudicial to Rapid7, and there is no basis for Finjan to
`withhold documents relating to its negotiations or other interactions with IBM.
`
`This issue has arisen twice before in other Finjan cases. First, in Finjan, Inc. v. Cisco
`Systems, Inc., C.A. No. 5:17-cv-00072-BLF-SVK (N.D. Cal.) (“Cisco Action”), Judge Van
`DUANE MORRIS LLP
`222 DELAWARE AVENUE, SUITE 1600 WILMINGTON, DE 19801-1659
`
`PHONE: +1 302 657 4900 FAX: +1 302 657 4901
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`

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`Case 1:18-cv-01519-MN Document 162 Filed 07/01/20 Page 2 of 4 PageID #: 6528
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`
`The Honorable Judge Maryellen Noreika
`June 30, 2020
`Page 2
`Keulen ordered Finjan to either produce the IBM Documents or to not reference IBM in any way
`at trial. Ex. D, Cisco Action, D.I. 274 at 11. Finjan elected the latter. Ex. E, Cisco Action, D.I.
`302 at 1.
`
`Second, Finjan refused to produce the IBM Documents in Finjan, Inc. v. SonicWall, Inc.,
`C.A. No. 5:17-cv-04467-BLF-VKD (N.D. Cal.) (“SonicWall Action”), a pending case in which
`outside counsel for both Parties is involved. In an effort to resolve this issue, counsel for IBM,
`Finjan, Rapid7, and SonicWall met and conferred multiple times. During a May 19, 2020 meet-
`and-confer, IBM proposed that the defendants in both actions serve deposition subpoenas on
`IBM to obtain testimony regarding the Finjan/IBM agreement and relationship, in lieu of
`production of the IBM Documents. See Ex. F, 5.29.20 Email from Snedeker. SonicWall and
`Rapid7 agreed to this compromise. Id. Following a final meet-and-confer, Finjan agreed to this
`compromise with respect to the SonicWall Action, but would not agree to the compromise in the
`Rapid7 Action, because fact discovery has closed. Id. Finjan further stated “it does not object to
`producing non-privileged, responsive documents regarding its negotiations with IBM, and is
`only withholding those documents at the direction of IBM.” Ex. G, 6.12.20 Email from Frankel.
`
`Finjan has thus acknowledged that responsive documents are in its possession, and is
`willing to produce them. Finjan cannot argue (and has not argued) that producing these
`documents is overly burdensome because it has already collected the IBM Documents in
`response to Rapid7’s ESI search terms, in addition to having collecting them in other litigations.
`
`Finjan Should be Compelled to Produce the IBM Documents or Not Refer to Its
`Relationship with IBM at Trial
`
`Finjan has already represented that it does not object to production of what it deems
`“responsive documents regarding its negotiations with IBM” (Ex. G). To avoid any doubt, Finjan
`should be compelled to produce the IBM Documents that hit on Rapid7’s ESI search terms, or
`agree not to refer to its relationship with IBM at trial. The resolution in the Cisco Action is
`instructive. There, Cisco filed a motion to compel. Ex. H, Cisco Action, D.I. 261. The Cisco
`Court determined that “additional discovery is necessary to challenge statements Finjan may
`make at trial regarding its relationship with IBM. Therefore, if Finjan intends to refer to its
`relationship with IBM at trial, it must produce the requested documents.” Ex. D, Cisco Action,
`D.I. 274 at 11. The Cisco Court reasoned “[t]he fact that Finjan may refer only briefly to IBM at
`trial [as Finjan represented] does not mean that discovery on the issue must be limited to the
`Finjan-IBM contract that Finjan has already produced.” Id. at 10-11. The Cisco Court required
`that Finjan “either product [sic] the requested documents or inform Cisco in writing that it will
`not refer to Finjan’s relationship with IBM at trial.” Id. at 11. That is the relief Rapid7 seeks.
`
`At trial in several prior litigations, Finjan informed the juries that it has an ongoing
`business relationship with IBM. Finjan did not dispute this point in the Cisco Action. Ex. H, D.I.
`261 at 3 (“Cisco also has known of Finjan’s prior trial testimony regarding IBM since the
`beginning of this case.”). Indeed, as part of its briefing on this issue in the Cisco Action, Finjan
`stated that it would refer to IBM as an example of a “business relationship[] with other well-
`known companies in the industry to develop and engage in research and licensing efforts.” Id. at
`4.
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`Case 1:18-cv-01519-MN Document 162 Filed 07/01/20 Page 3 of 4 PageID #: 6529
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`
`The Honorable Judge Maryellen Noreika
`June 30, 2020
`Page 3
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`Finjan’s characterization of its relationship with IBM in press releases and prior
`litigations contradicts information available to Rapid7 to date, and Rapid7 is entitled to discover
`the IBM Documents in order to challenge these characterizations at trial.
`
`
`
` While
`Finjan may argue it should not have to produce documents that Rapid7 could use to disparage it
`as a non-practicing entity (which it unsuccessfully argued in the Cisco Action), such an argument
`has no basis and deflects from the real issue. The real issue is basic notice and fairness – Finjan
`cannot present one side of a story to the jury about a purported ongoing relationship with IBM,
`while preventing Rapid7 from obtaining basic document discovery on those alleged facts.
`
`The IBM Documents are Relevant. As set forth above, Finjan’s characterization of its
`
`relationship with IBM has already been at issue in several prior litigations. If Finjan intends to
`say anything about its relationship with IBM at trial, then Rapid7 is entitled to discovery into that
`relationship through communications between the parties that are in Finjan’s possession.
`
`Rapid7’s Motion is Timely. The Parties have been attempting to resolve this issue for
`months, including with the input of non-party IBM. The close of fact discovery in this case is
`not a valid reason for Finjan to refuse to produce the IBM Documents or compromise on this
`issue. Rapid7 served ESI email discovery requests on Finjan on January 23, 2020, well before
`the March 13, 2020 close of fact discovery in this case. Ex. J, 1.23.20 Email from Cintia
`Phillips. Following multiple email exchanges and phone calls regarding the IBM Documents,
`Finjan stated on April 8, 2020 that it “intends to produce the IBM documents, and has started the
`process to do so.” Ex. K, 4.8.20 Email from Frankel. However, it appears that Finjan did not
`even contact IBM until April 27, 2020, after the close of fact discovery in this matter. Ex. L,
`6.12.20 Email from Jason Berrebi. Further, it was not until April 30, 2020 that Finjan reversed
`course and confirmed that it would not produce IBM Documents in this action or agree to the
`requested stipulation. Ex. A, 4.30.20 Email from Frankel. The Parties subsequently met and
`conferred along with counsel for IBM to try to reach a compromise. Ex. M, 5.12.20 Email from
`Frankel. In the meantime, on May 13, 2020, Finjan made its email production in response to
`Rapid7’s ESI search terms – 2 months after the close of fact discovery (and after repeated
`requests by Rapid7).– which failed to include the IBM Documents.1 Ex. N, 6.12.20 Email from
`Dotson. Finally, on June 12, 2020, Finjan rejected IBM’s proposed compromise as to Rapid7. Id.
`
`Thus, the fact that this dispute crystallized after the close of fact discovery is due to
`Finjan’s own shifting positions, Finjan’s delays in contacting IBM, Finjan’s delays in producing
`its email communications to Rapid7, and the Parties’ attempts to work with IBM to reach a
`suitable compromise.
`
`
`1 To the extent Finjan argues Rapid7 did not timely raise this dispute with Finjan, unlike in the
`SonicWall matter, where Finjan explicitly stated its intent to withhold the IBM Documents
`during the ESI process, Finjan did not so inform Rapid7. Thus, while the meet and confer
`process originated with the SonicWall matter, it eventually became apparent that Finjan was
`treating this issue the same across both cases, and indeed did so by its belated May 13 email
`production in the Rapid7 Action withholding the IBM Documents.
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`Case 1:18-cv-01519-MN Document 162 Filed 07/01/20 Page 4 of 4 PageID #: 6530
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`
`The Honorable Judge Maryellen Noreika
`June 30, 2020
`Page 4
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`RLR/chp
`Attachments
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`Very truly yours,
`
`/s/ Richard L. Renck
`Richard L. Renck (#3893)
`
`Counsel for Rapid7, Inc. and Rapid7 LLC
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