Case 1:18-cv-01519-MN Document 166 Filed 07/06/20 Page 1 of 3 PageID #: 6537
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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: July 1, 2020
`
`

`

`Case 1:18-cv-01519-MN Document 166 Filed 07/06/20 Page 2 of 3 PageID #: 6538
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`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19899-0951
`302 984 6000
`www.potteranderson.com
`
`Philip A. Rovner
`Partner
`provner@potteranderson.com
`302 984-6140 Direct Phone
`302 658-1192 Firm Fax
`
`July 1, 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
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`
`
`Dear Judge Noreika:
`
`Plaintiff Finjan, Inc. produced to Rapid7 a Patent Assignment and Support Agreement
`between IBM and non-party Finjan Blue, Inc. (D.I. 160-1, Ex. C, the “IBM Agreement”).
`Rapid7 now seeks to compel Finjan to produce its emails and documents relating to the IBM
`Agreement (the “IBM Documents”).
`
`Finjan has never objected to producing the IBM Documents; however, as Rapid7 knows,
`
` Finjan promptly notified Rapid7 that “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 litigations.” D.I. 161 at Ex. A.
`Finjan explained that it “is only withholding those documents at the direction of IBM.” D.I. 161,
`Ex. G.
`Rapid7’s motion to
`compel Finjan is misplaced as it ignores that IBM is the party objecting to the production of such
`information.
`
`In an effort to resolve this dispute regarding the production of IBM’s information, Finjan
`introduced IBM’s in-house counsel to Rapid7’s litigation counsel. D.I. 161 at Ex. M, (“I am
`copying … counsel for IBM [who] has asked to participate in the meet and confer along with
`national and local counsel for the parties.”). IBM’s counsel participated in meet and confer
`discussions with the parties and reiterated IBM’s objections to Rapid7’s document requests,
`contending that Rapid7’s requests are overbroad and seek irrelevant documents. IBM recently
`retained outside counsel to represent it in connection with this issue and Finjan apprised IBM’s
`
`,
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`

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`Case 1:18-cv-01519-MN Document 166 Filed 07/06/20 Page 3 of 3 PageID #: 6539
`
`The Honorable Maryellen Noreika
`July 1, 2020
`Page 2
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`outside counsel in good faith that Rapid7 brought this motion to compel and that the Court
`scheduled a hearing for July 7, 2020.
`
`Because this dispute is really between Rapid7 and non-party IBM, the bulk of Rapid7’s
`letter is irrelevant, but nonetheless amounts to nothing more than baseless criticism of Finjan.
`For example, while Rapid7’s motion was filed four months after the close of fact discovery,
`Rapid7’s counsel was well aware of the IBM Agreement for more than a year (and many months
`before the close of fact discovery in this case) and also knew that Finjan objected to producing
`IBM Documents in the Finjan, Inc. v. Cisco Systems Inc. case, where Finjan did not agree to the
`discovery requests for IBM Documents from Cisco (who is represented by the same counsel as
`Rapid7). See D.I. 161, Ex. D at 10-11 (June 11, 2019 Order in Cisco case regarding IBM
`Document). Rapid7’s awareness of this issue is confirmed by the fact that Rapid7 asked
`questions during depositions in this case about the IBM Agreement and relationship. See, e.g.,
`D.I. 161-1, Ex. I. Yet Rapid7 did not pursue this issue in this case until after the February 21,
`2020 close of fact discovery. See, e.g., D.I. 160, Ex. K (April 6, 2020 email). Thus, Rapid7 has
`only its own inexplicable lack of diligence to blame for the timing of this motion.
`
`Furthermore, Rapid7 has provided nothing to support its alleged need for the IBM
`Documents, as it points to no evidence for its unsubstantiated and inaccurate claim that Finjan
`used, much less, mischaracterized its relationship with IBM at any previous trial. To the
`contrary, in the very deposition testimony to which Rapid7 cites, Finjan’s corporate designee
`testified that Finjan
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`D.I. 161-1, I at 22-23.
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`Finjan respectfully suggests that the Court offer IBM an opportunity to oppose Rapid7’s
`motion to compel production of the IBM Documents. Should the Court overrule IBM’s
`objections and order Finjan to produce the IBM Documents, Finjan will promptly do so.
`
`Respectfully,
`
`/s/ Philip A. Rovner
`
`Philip A. Rovner (#3215)
`
`cc: All Counsel of Record – by CM/ECF
`6784536
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`