Finjan, LLC v. Qualys Inc.

Background

The parties submitted a joint letter brief raising three discovery issues: Finjan’s request for Qualys’s foreign-sales data; whether Finjan had exceeded the limit of 25 written interrogatories, including discrete subparts; and whether Finjan had to produce expert reports from prior or pending lawsuits involving one or more patents-in-suit.

Foreign-Sales Data

The court found Finjan’s arguments about foreign sales too cursory to evaluate. Finjan had asserted that Qualys’s worldwide sales were part of the relevant royalty base because of patent infringement under the “making” provision of 35 U.S.C. § 271(a), but it also said the court did not need to decide that issue. Finjan separately argued that foreign sales were relevant to a reasonable-royalty inquiry, induced-infringement claims, and other issues.

The court did not resolve whether the foreign-sales data was relevant. Instead, it ordered the parties to file another joint discovery letter brief within 14 days, limited to five pages, addressing the court’s concerns. Finjan was required to explain its theories of relevance logically and, concerning the notice for a deposition of an organization’s representative under Rule 30(b)(6), to identify which topics were at issue.

Interrogatory Count

The court applied the general rule that a single interrogatory may include facts, people who know those facts, and documents reflecting those facts when they relate to the same primary question. It rejected Qualys’s contrary argument. The court also noted that Qualys had not argued that the accused products or patents were sufficiently different to make certain “each product” or “each patent” requests count as multiple interrogatories.

The court counted interrogatories 2, 3, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and the modified interrogatory 16 as one each. It counted interrogatory 1 as two because patent validity or enforceability was a different subject from infringement or efforts to avoid infringement. It counted interrogatory 4 as two because it separately addressed infringement and whether source-code portions were prior art.

The court found interrogatory 17—seeking the legal and factual basis for Qualys’s defenses—to cover 10 primary subjects: failure to state a claim, non-infringement, invalidity, limitations on damages, 28 U.S.C. § 1498, failure to mark, ensnarement, prosecution-history estoppel, prosecution laches, and inequitable conduct. The court treated modified interrogatory 16 as interrogatory 18 and concluded that Finjan was out of interrogatories. The court expressly stated that the parties had not briefed, and the court had not decided, the merits of the individual discovery requests.

Prior Expert Reports

Finjan objected to producing infringement-analysis reports from other cases involving the patents-in-suit, while not refusing to produce reports containing invalidity analysis. Finjan argued that the other cases involved third-party products not at issue here.

The court found the infringement reports relevant because such reports can explain an expert’s interpretation of the patents and claims, define a person of ordinary skill in the art, and address other issues beyond the particular accused product. The court also found it relevant that experts in this case had previously offered opinions about the same patents. It concluded that it would be unfair for Finjan to possess potentially useful cross-examination material that Qualys did not have.

The court ordered Finjan to produce the infringement reports. It directed Finjan to follow section 11 of the protective order, which requires notice to nonparties and gives them an opportunity to seek protection. Nonparties could designate reports as highly confidential attorney-eyes-only under the protective order and could ask Qualys to accept redactions concerning their technology.