IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

AUSTIN DIVISION 

FINJAN, INC., a Delaware Corporation, 

Plaintiff, V. SONIC WALL, NC., a Delaware 

Corporation, 

Defendant. 

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2020 JUN 22 PH 12: 12 

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Pending Action No. 5:1 7-cv-4467 

United States District Court 

Northern District of California 

PLAINTIFF FD4JAN, INC.'S EXPEDITED OPPOSED MOTION 

TO COMPEL NONPARTY DELL, INC. TO COMPLY WITH 

DOCUMENT AND DEPOSITION SUBPOENAS 

Pursuant to Rules 37 and Rule 45 of the Federal Rules of Civil Procedure, Plaintiff 

Finjan, Inc. ("Finjan") seeks an order from the Court compelling non-party Dell, Inc. ("Dell") 

(former parent of Defendant) to produce documents and to make witnesses available for 

deposition under Rule 30(b)(6) of the Federal Rules of Civil Procedure in response to Finjan's 

subpoenas in the action Finjan, Inc. v. Sonic Wall, Inc., Case No. 5: 17-cv-04467 ("the Sonic Wall 

Litigation") currently pending in the Northern District of California. Declaration of Shannon 

Hedvat ("Hedvat Deci."), Ex. 1 (Document Subpoena); Ex. 2 (Deposition Subpoena). For the 

reasons stated below, Finjan requests expedited treatment of this motion. Fact discovery in the 

Sonic Wall Litigation is scheduled to close on July 31, 2020. 

I. BACKGROUND 

In the Sonic Wall Litigation, Finjan filed a Complaint against Defendant SonicWall, Inc. 

("SonicWall") for patent infringement. Federal courts, including the Court of Appeals for the 

Federal Circuit, have recognized Finjan as a pioneer in developing proactive security 

Case 1:20-mc-00652-RP Document 1 Filed 06/22/20 Page 1 of 12
technologies capable of detecting unknown and emerging computer security threats. Ex. 3 

("Complaint"), SonicWall Litigation, 5:17-cv-04467, Doc. 1 (N.D. Cal. Aug. 4,2017), ¶ 7; see, 

e.g., Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1304 (Fed. Cir. 2018). Finjan's 

innovative computer security technologies protect networks and endpoints by identifying 

unknown or previously undetected suspicious patterns and behaviors of content delivered over 

the Internet. Finjan has been awarded, and continues to prosecute, numerous patents covering 

innovations in the United States and around the world resulting directly from Finjan's more than 

decades-long research and development efforts, supported by a dozen inventors and over $65 

million in R&D investments. Id. 

Defendant SonicWall located in Northern California, manufactures and sells computer 

security products, including the Accused Products that Finjan asserts infringe its ten asserted 

patents ("Asserted Patents"). See Exs. 1-2, Attachment B; Ex. 3. Dell purchased SonicWall in 

2012 for over $1 billion and then sold SonicWall and other assets to private equity firm, 

Francisco Partners and Elliott Management, in November 2016, as part of a deal that was 

reported to be worth $2.4 billion. Ex. 3, ¶ 44; Ex. 4 

(https ://www . franci scopartners.com/news/francisco-partners-earns-private-eg uity-firm-of-theyear-for-a-stellar-20 16-that-included-buying-dell-s-software-group). 

Finjan first provided notice to Dell/SonicWall that its products infringe the Asserted 

Patents in June 2014, while SonicWall was still a subsidiary of Dell. Ex. 3, ¶ 39. Finjan 

provided Dell and its SonicWall subsidiary with a series of disclosures, including patent proof 

charts demonstrating SonicWall's infringement ofFinjan's patents. Id. Over the years, Finjan 

met with Dell/SonicWall multiple times explaining how its patents read on the Accused Products 

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and that a license is needed to practice Finjan's patented technologies. Id., ¶11 39-44. These 

discussions continued after Dell's sale of SonicWall. Id. 

Despite Finjan's consistent and earnest efforts from June 2014 to March 2017, 

Dell/Sonic Wall refused to take a license to Finjan's patents. Id., ¶ 44. Unable to resolve its 

claim, and to protect its valuable intellectual property, Finjan filed the Sonic Wall Litigation in 

the Northern District of California on August 4, 2017. Ex. 3. Since March 2018, Finjan has 

made diligent efforts to obtain discovery from SonicWall on, among other issues, relevant sales 

revenues prior to the divesture of SonicWall and related valuations. Hedvat Decl., ¶J 2-3, Exs. 

11-13 (see, e.g. Finjan's Requests for Production Nos. 20, 21, 41; Interrogatories Nos. 12, 14 and 

15). Despite Finjan pressing SonicWall for discovery, SonicWall has stated that it has produced 

all the responsive information that Finjan seeks, such as complete revenue information for the 

Accused Products during the period of time SonicWall was a Dell subsidiary, and Finjan should 

take this issue up with Dell. Id. 

Accordingly, after exhausting attempts to obtain this important discovery from 

SonicWall, Finjan served a subpoena for documents on Dell on March 13, 2020 and an amended 

subpoena for testimony on March 31, 2020, seeking discovery on a targeted list of topics highly 

relevant to the Sonic Wall Litigation. Ex. 1, Ex. 2 (collectively, "Subpoenas"). Dell responded, 

asserting boilerplate objections and refusing to produce any documents or make a witness 

available for deposition. Ex. 5 (3/27/20 Resp. to Document Subpoena), Ex. 6 (4/14/20 Resp. to 

Deposition Subpoena). 

Since serving the Subpoenas, Finjan conferred with Dell on multiple occasions by 

telephone and e-mail, but Dell continued to refuse to provide any substantive response to the 

Subpoenas, contending that the discovery Finjan seeks is in the possession of SonicWall or is 

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Case 1:20-mc-00652-RP Document 1 Filed 06/22/20 Page 3 of 12
publicly available, notwithstanding SonicWall's repeated representations that it does not have 

certain revenue and valuation information. Hedvat Decl., ¶J 2-3, 5; Ex. 7. On June 9, 2020, 

Finjan met and conferred again with SonicWall in an attempt to obtain revenue information from 

SonicWall and avoid bringing this motion to compel Dell, but SonicWall stated that it does not 

have any further information to produce, and Finjan should take up any issue with Dell. Hedvat 

Decl., ¶f 2-3. Fact discovery is scheduled to close July 31, 2020. Hedvat Deci., ¶ 4 

Finjan now brings this expedited motion to compel Dell to comply with the Subpoenas. 

II. ARGUMENT 

Finjan respectfully requests this Court to compel Dell to provide responsive documents 

and testimony to Finjan's narrowly tailored Subpoenas because they seek information which is 

highly relevant to multiple claims in its patent infringement case with SonicWall and which is 

only in Dell's possession. Kilmon v. Saulsbury Indus., Inc., No. MO: 1 7-CV-99, 2018 WL 

5800759, at *3 (W.D. Tex. Feb. 13, 2018) (Rule 45 requires that disputes related to non-party 

subpoenas be resolved locally to avoid imposing undue travel or expense burdens on non-parties 

who are challenging a subpoena). 

Despite diligent efforts by Finjan to obtain the requested revenue and valuation 

information from SonicWall and then to negotiate a resolution with Dell to avoid motion 

practice, Finjan now is forced to bring this expedited motion to compel because discovery is set 

to close in the SonicWall action in a month and a half. Without relief from the Court, Finjan will 

continue to be ping-ponged between SonicWall and Dell, with each pointing at the other as the 

source for the revenue and valuation information for the accused SonicWall products and other 

highly relevant damages discovery. Dell received over $2 billion for the sale involving 

SonicWall and is in sole possession of the highly relevant information sought through discovery 

by Finjan, such that the Subpoenas Finjan served on Dell are proportionate to the needs of the 

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Case 1:20-mc-00652-RP Document 1 Filed 06/22/20 Page 4 of 12
Sonic Wall Litigation and not unduly burdensome to Dell. Dell and SonicWall should not be 

allowed to hide relevant damages information and prevent Finjan from obtaining accurate 

accounting of infringing sales to support its damages claim. 

A. Finjan Seeks Hi2hIy Relevant and Targeted Discovery from Dell 

Finjan seeks targeted document production and deposition testimony from Dell that is 

highly relevant to the issues in the Sonic Wall Litigation, including: 

Revenue information for the Accused Products for the period of time Dell owned 

Sonic Wall, relevant to a reasonable royalty analysis for damages1. Ex. 1 at Request 

13; Ex. 2atTopic8; 

Knowledge of Finjan and Finjan's patents, which is evidence of the importance of the 

asserted patents and SonicWall's willful infringement, given the former parentsubsidiary relationship between Dell and SonicWall. Ex. 1 at Requests 1, 15; Ex. 2 at 

Topics 1, 2, 9, 10. 

Dell's acquisition and subsequent sale of SonicWall, including its valuation of 

SonicWall and the products accused of infringement. This is evidence of the value of 

Accused Products and asserted patents in 2012 and 2016, and damages. Ex. 1 at 

Requests 2-14; Ex. 2 at Topics 3-7. 2 Corporate relationship between Dell and SonicWall, including any indemnification 

agreements related to the SonicWall litigation and Dell's relationship with Quest that 

could have had an impact on the price Dell received from their 2016 sale of Dell 

Software division3, topics which are relevant to damages. Ex. 1 at Requests 15-17; 

Ex. 2 at Topics 9, 11-12. 

B. Finjan's Subpoenas Are Reasonable In Scope 

The scope of discovery allowed by a Rule 45 subpoena "is governed by Rule 26(b)," 

which permits discovery regarding "any non-privileged matter that is relevant to" Finjan's claims 

1 SonicWall produced some financial data for the Accused Products to Finjan, but it has failed to 

confirm that its production includes revenue information for the Dell-branded SonicWall 

Accused Products during the period of time when Sonic Wall was a subsidiary of Dell between 

2012 and 2016. Hedvat Decl., ¶J 2-3. 2 In an effort to streamline this motion to compel, Finjan has narrowed its Request for Production 

No. 14 as part of this motion, only seeking documents regarding the value of the Accused 

Products. 

In 2016, Dell sold Quest as part of the same transaction involving the sale of SonicWall. Ex. 9. 

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"and proportional to the needs of the case." Zamora v. GC Services, LP, EP-15-CV-00048- 

DCG, 2017 WL 1861843, at *3 (W.D. Tex. Feb. 17, 2017). 

The district court considers six factors in determining whether a subpoena is reasonable 

and unduly burdensome, all of which favor granting Finjan's motion to compel in this case: (1) 

relevance of the information requested; (2) the need of the party for the documents; (3) the 

breadth of the document request; (4) the time period covered by the request; (5) the particularity 

with which the party describes the requested documents; and (6) the burden imposed. Wiwa v. Royal Dutch Petroleum Co., 392 F.3d 812, 818 (5th Cir. 2004). Additionally, "[i]f the person to 

whom the document request is made is a non-party, the court may consider the expense and 

inconvenience," which, in this case, also falls in Finjan's favor, as discussed below. Id. 

Wiwa Factors (1) and (2): Relevance and Need of the Party for the Documents and 

Deposition: As set forth in Section 11(A), each category of documents and deposition testimony 

requested by the Subpoenas are directed to discovery that is highly relevant to the issues in the 

Sonic Wall Litigation. Finjan diligently sought to obtain the requested revenue and valuation 

discovery from SonicWall, a party in the Sonic Wall litigation, who maintains it does not have the 

information. Hedvat Decl., ¶J 2-3. 

Finjan is entitled to and seeks complete revenues of sales of the SonicWall infringing 

products during the 2012-2016 time period when Dell owned SonicWall and sold those products 

under the Dell brand, as this information is necessary to have an accurate accounting to identify 

the royalty base to calculate damages. Georgia-Pacflc Corp. v. US. Plywood Corp., 318 F. 

Supp. 1116, 1120 (S.D.N.Y. 1970) (considering sales of infringing products in determination of 

the reasonable royalty). During the time that Sonic Wall was a subsidiary of Dell, the infringing 

products were sold as Dell branded products, e.g. Dell SonicWall SuperMassive Series (see, e.g., 

6HG23 55.DOCX 

Case 1:20-mc-00652-RP Document 1 Filed 06/22/20 Page 6 of 12
Ex. 8), and Finjan seeks relevant discovery to understand the amount of revenues and profits 

obtained from sale of the infringing products during that time, including what was obtained by 

Dell. See Georgia-PacfIc, 318 F. Supp. at 1120. 

Revenues of the accused SonicWall products that were sold by Dell are also highly 

relevant to Finj an's damages case because this information speaks to the impact on the 

commercial success, profitability, and selling price of the infringing products, including how 

Dell valued SonicWall around $1 billion in 2012 and then as part of a deal worth around $2.4 

billion in 2016. See, e.g., Georgia-PacifIc Corp, 318 F. Supp. 1116 (factor 8 (the profitability 

and commercial success of the product made under the patent), factor 12 (the portion of profit or 

selling price that is customary to be paid for the patent), which are used to reasonable royalty 

determine damages in patent infringement cases. 

SonicWall has repeatedly stated that it does not have this discovery, and that Finjan 

should take this issue up with Dell. See, e.g., Hedvat Decl., ¶f 2-3. 

Wiwa Factors (3), (4) and (5): Breadth of the Discovery Requested, Time Period 

Covered by the Request, and the Particularity with Which the Party Describes the 

Requested Documents and Deposition Topics: Finjan served narrowly-tailored, specific 

document requests and deposition topics as to Dell's knowledge and information related to 

Finjan, the asserted patents, the infringing products, valuation of SonicWall, revenue information 

for the accused SonicWall products, and the corporate relationship between Dell and 

SonicWallall topics that are directly relevant to the underlying Sonic Wall litigation and 

damages, as discussed above. Exs. 1-2. Finjan engaged in several meet and confers with Dell to 

discuss the particular discovery that is requested, and explained to Dell the relevance of the 

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requests. Hedvat Dee!., ¶ 5; Ex. 7. Finjan informed Dell that it is limiting its discovery requests 

to a reasonable time frame, i.e., the 2012-20 16 time period when Dell owned SonicWall. Id. 

Wiwa Factor (6): Burden, Expense, and Inconvenience: The burden, expense and 

inconvenience imposed by the Subpoenas is proportional to the needs of the SonicWall 

Litigation, which is a complex patent litigation with ten asserted patents and Accused Products 

sold when SonicWall was a subsidiary of Dell. See Exs 1, 2 at Attachment B. Over the last 

several months, Finjan has given Dell more than ample time to consider the requests set forth in 

the Subpoenas, as it has made continuous and multiple efforts to meet and confer with both Dell 

and SonicWall. Hedvat Decl., at ¶ 5; Ex.7. Dell unilaterally limited its response to searching 

for and producing non-privileged documents solely regarding any internal "valuations" of the 

technology accused of infringement by Finjan in its lawsuit against SonicWall (for which it 

stated did not exist), and it has refused to make any reasonable efforts to search for and collect 

other documents responsive to Finjan's other relevant requests. Ex. 7 (5/15 correspondence from 

Dell confirming that it will not search for materials outside of internal valuations of SonicWall). 

To limit the burden and inconvenience to Dell, Finjan informed Dell that it was willing to 

meet and confer regarding the deposition subpoena after Dell's production of documents, but 

recently, Dell has outright refused any deposition based on its failure to reasonably search for 

responsive documents. Ex. 7 (5/5 correspondence stating Finjan's intention upon Dell's 

production of documents, that the parties will meet and confer regarding Finj an's subpoena for a 

deposition; 5/20 Dell response). Given the circumstances of the COVTD-19 pandemic, Finjan 

intends to accommodate the witness as much as reasonably possible and conduct the deposition 

remotely by video at a location and time convenient to Dell before the close of fact discovery. 

Hedvat Decl., ¶ 5. 

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Case 1:20-mc-00652-RP Document 1 Filed 06/22/20 Page 8 of 12
C. Dell's Objections to Compliance are Without Merit 

Dell's staunch refusal to attempt to comply with Finjan's focused Subpoenas are without 

merit, and contrary to established law. See Fed. R. Civ. P. 45(a)(1)(A)(iii) ("a party may serve a 

subpoena commanding a nonparty "to whom it is directed to ... produce designated documents, 

electronically stored information, or tangible things in that person's possession, custody, or 

control."). Dell's objections consist of nearly identical boilerplate objections repeated as to 

every request and topic in the Subpoenas. See Ex. 5; Ex. 6. Dell's objections under Rule 45 are 

subject to "the same prohibition on general or boiler-plate [or unsupported] objections" that 

applies under Rule 34(b)(1), as well as to that Rule's "requirements that the objections must be 

made with specificity and that the responding party must explain and support its objections." 

MetroPCSv. Thomas, 327 F.R.D. 600, 607 (N.D. Tex. 2018) (quoting Am. Fed'n of Musicians of 

the US. & Canada v. Skodam Films, LLC, 313 F.R.D. 39, 57-59 (ND. Tex. 2015)). Dell failed 

to do so. 

For example, Dell claims every single request is overbroad (without explaining why), 

seeks publicly available documents (none of the requested discovery is publicly available), and 

discovery "equally available to Plaintiff or already in Plaintiff's custody or control" (which is 

incorrect), and asserts other vague boilerplate objections that are untethered to the discovery 

actually requested by the subpoena. Exs. 5-7. 

Dell does not deny having the requested discovery, with the exception of documents 

reflecting the value of SonicWall. See Ex. 7 (5/15 Fulghum correspondence from Dell 

confirming that they will not search for materials outside of internal valuations of SonicWall); 

see Nerium Skincare, Inc. v. Olson, No. 3:16-CV-1217-B, 2016 WL 10827701, at *4 (N.D. Tex. 

Oct. 26, 2016) (overruling nonparty's objections to produce responsive documents by mere 

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Case 1:20-mc-00652-RP Document 1 Filed 06/22/20 Page 9 of 12
disagreement with claims). It is simply incredible that Dell, a large publicly traded company, 

would purchase SonicWall for over $1 billion and then sell it as part of a deal for around $2.4 

billion without have a single page of analysis regarding the value of the company or the ability to 

provide a witness to testify as to how Dell valued SonicWall during these transactions. Ex. 9. 

As to the other categories of requested discovery, Dell's own public statements support 

SonicWall's representations that the relevant financial discovery is in Dell's possession. E.g., 

Ex. 10 (2013 Dell 10-K) at 54-56 ("During Fiscal 2013, servers and networking revenue 

increased 11%. This increase was primarily attributable to our Fiscal 2012 and Fiscal 2013 

acquisitions ofForcelO Networks, Inc., SonicWALL, and Quest Software, which are included in 

servers and networking revenue from their respective acquisition dates"). These public filings 

prove that Dell has data for the revenues generated by the accused SonicWall products. 

In sum, Finjan is entitled to the fair and relevant discovery sought here. Dell has failed to 

provide any reasonable and specific objections that warrant denial of the motion to compel. 

III. CONCLUSION 

For these reasons, Finjan respectfully requests the Court issue an Order compelling Dell 

to search for and produce all documents responsive to Finjan's Requests for Production Nos. 1- 

17 in the document subpoena and to provide a witness under Rule 30(b)(6) of the Federal Rules 

of Civil Procedure pursuant to Topics 1-12 in the subpoena for testimony. Since discovery 

closes in the underlying Sonic Wall litigation on July 31, 2020, Finjan requests the Court order 

Dell to produce documents responsive to Finjan's requests by July 1, 2020, and a deposition by 

July 15, 2020. 

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Case 1:20-mc-00652-RP Document 1 Filed 06/22/20 Page 10 of 12
Dated: June 22, 2020 Respectfully submitted, 

By: /s/ John P. Palmer 

John P. Palmer 

Texas Bar No. 15430600 

palmer@namanhowell.com 

Jacqueline P. Altman 

Texas Bar No. 24087010 

j altman@narnanhowell. corn 

NAMAN, HOWELL, SMITH & LEE, PLLC 

400 Austin Avenue, 8th Floor 

Waco, Texas 76701 

(254) 755 4100 

FAX (254) 754 6331 

Hannah Lee (pro hac vice to be filed) 

KRAMER LEVIN NAFTALIS 

& FRANKEL LLP 

990 Marsh Road 

Menlo Park, CA 94025 

Telephone: (650) 752-1700 

Facsimile: (650) 752-1800 

hlee@kramerlevin.com 

Shannon Hedvat (pro hac vice to be filed) 

KRAMER LEVIN NAFTALIS 

& FRANKEL LLP 

1177 Avenue of the Americas 

New York, NY 10036 

Telephone: (212) 7793 

shedvat@kramerlevin.com 

A ttorneys for Plaint iff FINJAN, INC. 

6HG2355.DOCX 11 

Case 1:20-mc-00652-RP Document 1 Filed 06/22/20 Page 11 of 12
CERTIFICATE OF SERVICE 

This is to certifi that a copy of the foregoing document has been served on the 22nd day 

of June, 2020, on all parties by the method indicated below: 

Via US. Postal Service and electronic mail: 

Roger Fulghum 

Baker Botts 

910 Louisiana Street 

Houston, Texas 77002 

Roger.FulghumB akerBotts.com 

Counsel for Dell, Inc. 

Via electronic mail: 

Ronald M. Daignault David C. Dotson 

Polsinelli PC Jennifer H. Forte 

600 Third Aye, 42nd Floor Matthew C. Gaudet 

New York, NY 10016 Robin L. McGrath 

rdaignault@polsinelli.com Duane Morris LLP 

1075 Peachtree Street, N.E. 

Colby Brian Springer Suite 2000 

Margaux A. Savee Atlanta, GA 303 09-3448 

Hannah T. Yang dcdotson@duanemorris.com 

Polsinelli LLP jhforte@duanemorris.com 

Three Embarcadero Center mcgaudet@duanemorris.com 

Suite 2400 rlmcgrath@duanemorris.com 

San Francisco, CA 94111 

cspringerpolsinelli.com Jarrad M. Gunther 

msavee@polsinelli.com Joseph A. Powers 

hyang@polsinelli.com Duane Morris LLP 

30 South 1 7th Street 

Patrick S. Salceda Philadelphia, PA 19103 

Duane Morris LLP jmguntherduanemorris. com 

Spear Tower japowers@duanemorris.com 

One Market Plaza, Suite 2200 

San Francisco, CA 94105-1127 

psalceda@duanemorris.com 

Counsel for SonicWall, Inc. 

By: /s/ John P. Palmer 

John P. Palmer 

6HG2355.DOCX 12 

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