Case 1:20-cv-00371-LPS Document 105 Filed 09/17/21 Page 1 of 3 PageID #: 3627
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`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`
`JACK B. BLUMENFELD
`(302) 351-9291
`(302) 425-3012 FAX
`jblumenfeld@morrisnichols.com
`
`
`VIA ELECTRONIC FILING
`
`The Honorable Leonard P. Stark
`United States District Court
` For the District of Delaware
`844 North King Street
`Wilmington, DE 19801
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`September 17, 2021
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`
`
`Re:
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`Finjan, Inc. v. Trustwave Holdings, Inc., et al.
`C.A. No. 20-371 (LPS)
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`
`Dear Judge Stark:
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`Plaintiff Finjan LLC and Defendant Singapore Telecommunications Ltd. hereby
`provide a status report as requested by the Court during the September 13, 2021 hearing.
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`Singtel’s Position
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`Defendant Singapore Telecommunications Ltd. (“Singtel”) hereby provides its portion of the
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`joint status report requested by Your Honor during the September 13, 2021 oral argument on
`Singtel’s Renewed Motion to Dismiss for lack personal jurisdiction (D.I. 31) (“Motion to Dismiss”)
`and Singtel’s alternative Motion to Stay Plaintiff Finjan, LLC’s (“Finjan”) Claim for Breach of
`Contract (D.I. 64) (“Motion to Stay”).
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`At the conclusion of the oral argument on Monday, September 13, Your Honor asked Singtel
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`if it would agree to an alternative manner of the Court addressing Singtel’s motions. Singtel
`respectfully accepts Your Honor’s suggestion1 whereby Singtel will agree to a stay on further
`proceedings and ruling on Singtel’s Motion to Dismiss concerning the Breach of Contract claim if
`the Court grants Singtel’s Motion to Dismiss with respect to Finjan’s claim for infringement of the
`’154 Patent and stays further proceedings on Finjan’s claim for breach of contract pending final
`adjudication of the Superior Court case Finjan, Inc. v. Trustwave Holdings, Inc., C.A. No. N18C-04-
`006-WCC [CCLD].
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`1
`Finjan disagrees that the Court suggested this manner of addressing the two motions in
`lieu of the Court issuing a ruling at this time.
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`

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`Case 1:20-cv-00371-LPS Document 105 Filed 09/17/21 Page 2 of 3 PageID #: 3628
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`The Honorable Leonard P. Stark
`September 17, 2021
`Page 2
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`Singtel understood Your Honor’s request during the hearing to be limited to potential
`resolution of the Motion to Dismiss and Motion to Stay, not yet another round of briefing on these
`motions. Finjan had ample opportunity to raise its points during the multiple rounds of briefing and
`multiple arguments on Singtel’s Motion to Dismiss. Finjan’s position does not represent an effort to
`reach an extrajudicial resolution of the pending motions, which was what Your Honor
`requested. Instead, Finjan’s position reargues both motions and notably fails to include any hint of
`compromise.
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`Finjan’s Position
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`Plaintiff Finjan LLC (“Finjan”) respectfully requests that the Court deny Singtel’s motion to
`dismiss in its entirety and to dismiss Singtel’s motion to stay.
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`Finjan understands Singtel’s proposal above to be that: (1) The Court will stay its ruling on
`Singtel’s personal jurisdiction motion to the extent it applies to Finjan’s breach of contract claim; (2)
`The Court will grant Singtel’s personal jurisdiction motion to the extent it applies to Finjan’s patent
`infringement claim; and (3) the Court will grant Singtel’s motion to stay Finjan’s breach of contract
`claim.
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`If Finjan’s understanding is correct, Singtel’s proposal is unacceptable for a number of
`reasons.
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`First, Singtel makes no meaningful concessions. It essentially gets all its requested relief,
`and Finjan is left unable to proceed against Singtel in either federal or state court.
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`Second, under Singtel’s proposal, Singtel unilaterally controls the scope and order of
`litigation in both courts. Singtel has yet to represent that it will join, fully participate in, and be
`bound by the Superior Court action. Instead, Singtel wants to remain on the sidelines while
`Trustwave litigates, but as Finjan noted at the hearing, Singtel’s liability is broader than Trustwave’s
`and includes Singtel sales outside of Trustwave.
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`Third, even if the comments of Singtel’s counsel suggesting that Trustwave would provide
`discovery regarding Singtel's sales in the Superior Court action and that Trustwave would satisfy any
`money judgment against Trustwave including royalties on Singtel and Trustwave sales under the
`Finjan-Trustwave license were binding and accurate, the parties have been instructed by Judge
`Carpenter that Singtel’s liability needs to be resolved in federal court. There is no reason to believe
`his views on that point have changed.
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`Fourth, if personal jurisdiction over Singtel on the contract claim remains undecided, it is
`unclear how the Court could grant Singtel’s motion to stay that contract claim.
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`Finally, even if Finjan attempted to pursue claims against Singtel directly in Superior Court,
`Singtel would certainly challenge jurisdiction on the same grounds it has here, resulting in an
`inefficient use of the parties’ and both courts’ resources and time.
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`Case 1:20-cv-00371-LPS Document 105 Filed 09/17/21 Page 3 of 3 PageID #: 3629
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`The Honorable Leonard P. Stark
`September 17, 2021
`Page 3
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`If Finjan cannot pursue a breach of contract claim against Singtel in this Court (either
`because the Court’s decision on Singtel’s motion to dismiss is stayed, or because the breach claim
`against Singtel is stayed), Finjan will be effectively deprived of its ability to obtain a remedy for
`Singtel's ongoing, wide-ranging breach of the 2012 Contract. Thus, nothing raised at the September
`13 hearing, or otherwise raised after the parties' briefing, has changed Finjan's view that its contract
`and patent claims against Singtel should proceed in this Court. There is no reason to delay ruling on
`Singtel’s motion to dismiss for an indeterminate amount of time, or to stay Finjan’s breach claim
`against Singtel, while narrower claims against another party go forward in another court.
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`For these reasons, Finjan proposes that the Court decide Singtel’s personal jurisdiction
`motion with respect to both of Finjan’s claims (breach of contract and patent infringement), and
`Singtel’s motion to stay. Finjan respectfully requests that the Court deny both motions, for the
`reasons stated in its briefing, at argument, and above.
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`Respectfully,
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`/s/ Jack B. Blumenfeld
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`Jack B. Blumenfeld (#1014)
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`cc:
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`All Counsel of Record (via electronic mail)
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