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DEFENDANT CISCO SYSTEMS, INC.’S MTN FOR LEAVE TO SUPPLEMENT 

ITS REPORT ON DAMAGES | CASE NO. 5:17-CV-00072-BLF-SVK 

DUANE MORRIS LLP

Nicole E. Grigg (CA SBN 307733) 

negrigg@duanemorris.com 

D. Stuart Bartow (CA SBN 233107)

dsbartow@duanemorris.com

2475 Hanover Street

Palo Alto, CA 94304-1194

Telephone: 650.847.4146

Facsimile: 650.847.4151

DUANE MORRIS LLP 

Joseph A. Powers (PA SBN 84590) 

Admitted Pro Hac Vice 

japowers@duanemorris.com 

Jarrad M. Gunther (PA SBN 207038) 

Admitted Pro Hac Vice 

jmgunther@duanemorris.com 

30 South 17th Street 

Philadelphia, PA 19103 

Telephone: 215.979.1000 

Facsimile: 215.979.1020 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

DUANE MORRIS LLP 

L. Norwood Jameson (GA SBN 003970)

Admitted Pro Hac Vice

wjameson@duanemorris.com

Matthew C. Gaudet (GA SBN 287789)

Admitted Pro Hac Vice

mcgaudet@duanemorris.com

David C. Dotson (GA SBN 138040)

Admitted Pro Hac Vice

dcdotson@duanemorris.com

John R. Gibson (GA SBN 454507)

Admitted Pro Hac Vice

jrgibson@duanemorris.com

Jennifer H. Forte (GA SBN 940650)

Admitted Pro Hac Vice

jhforte@duanemorris.com

1075 Peachtree NE, Suite 2000

Atlanta, GA 30309

Telephone: 404.253.6900

Facsimile: 404.253.6901

IN THE UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION

FINJAN, INC., a Delaware Corporation, 

Plaintiff, 

v. 

CISCO SYSTEMS, INC., a California 

Corporation, 

Defendant. 

Case No.: 5:17-cv-00072-BLF-SVK 

CISCO SYSTEMS, INC.’S NOTICE OF 

MOTION AND MOTION FOR LEAVE TO 

SUPPLEMENT STEPHEN L. BECKER’S 

EXPERT REPORT ON DAMAGES 

Date: October 29, 2020 

Time: 9:00 a.m. 

Courtroom: 3, 5th Floor 

Judge: Hon. Beth Labson Freeman 

 REDACTED

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NOTICE OF MOTION AND MOTION 

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 

PLEASE TAKE NOTICE that on October 29, 2020 at 9:00 a.m., in Courtroom 3, 5th Floor, 

United States District Court for the Northern District of California, San Jose Courthouse, 280 South 

1st Street, San Jose, CA 95113, Defendant Cisco Systems, Inc. (“Cisco”) moves for an Order 

granting leave to supplement Dr. Stephen L. Becker’s expert report on damages to include newly 

discovered documents and information related to the acquisition of Finjan, Inc. (“Finjan”) by 

Fortress Investment Group LLC (“Fortress”). Cisco requests that the Court advance the hearing date 

for this motion so it can be held prior to the beginning of trial, currently set for October 19, 2020. 

This motion is supported by the following Memorandum of Points and Authorities and the 

Declaration of Nicole Grigg, filed concurrently herewith, and such other written or oral argument as 

may be presented at or before the time this motion is heard by the Court. 

STATEMENT OF ISSUES TO BE DECIDED 

Whether Cisco should be granted leave to supplement Dr. Stephen L. Becker’s expert report 

on damages to include newly discovered documents and information related to the acquisition of 

Finjan by Fortress.

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DEFENDANT CISCO SYSTEMS, INC.’S MTN FOR LEAVE TO SUPPLEMENT 

ITS REPORT ON DAMAGES | CASE NO. 5:17-CV-00072-BLF-SVK 

MEMORANDUM OF POINTS AND AUTHORITIES 

I. INTRODUCTION 

Pursuant to Federal Rules of Civil Procedure 16(b)(4) and 26(a)(2)(e), Cisco respectfully 

submits this motion for leave to supplement Stephen L. Becker’s expert report on damages to 

include newly created documents and information related to the acquisition of Finjan by Fortress. 

Ex. 1 to Grigg Decl. Good cause exists for Cisco’s requested supplement. First, the supplementation 

involves material highly relevant to Cisco’s damages calculations that did not exist—and thus was 

not known to Cisco—prior to the deadline for supplementation under Rule 26(e)(2). Second, the 

supplementation poses no undue prejudice to Finjan, as Finjan was aware of the acquisition before 

Cisco obtained publicly available documents related to it; the supplementation comes nearly three 

months prior to the currently scheduled beginning of trial; and the supplementation comes prior to 

the Court’s final pre-trial conference. 

II. BACKGROUND 

Affiliates of Fortress Investment Group LLC recently completed their acquisition of Finjan 

Holdings, Inc. (“Finjan”) (the “Acquisition”). Ex. 2. Fortress Investment Group LLC is a global 

investment management group that does not develop, manufacture, or sell products. This transaction 

was first announced on June 10, 2020, and Finjan did not make any disclosure in the litigation of this 

transaction or its possibility before Cisco learned of it through public reports. According to Finjan’s 

public reports, Fortress acquired Finjan at a purchase price equal to $1.55 per share in an all-cash 

tender offer, representing an aggregate equity value of approximately $43.9M. Ex. 3. On July 23, 

2020, the number of shares tendered satisfied the minimum condition, all conditions to the offer 

were satisfied or waived, and Fortress accepted for payment, and will promptly pay for, all shares 

that were validly tendered. Ex. 4. 

It also appears from public filings that, in return, for the $43.9M cash purchase price, Finjan 

has agreed to transfer to Fortress, among other things, all of Finjan’s tangible assets, which are 

valued at approximately $35M, including approximately $32M in cash. Ex. 1, ¶ 4. Thus, the implied 

value of the intangible assets―including Finjan’s entire Finjan intellectual property portfolio―is 

less than $12M. These intangible assets include (i) all of the legacy Finjan patent portfolio, 

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including the five patents-in-suit; plus (ii) the rights to the claims in all existing lawsuits, including 

against Cisco; plus (iii) the IBM patent portfolio that Finjan had acquired for approximately . 

Id. 

The amount it would cost to outright acquire Finjan (and thus outright acquire all five of the 

patents-in-suit) is relevant to damages in this case, and a non-exclusive license to the five patents-insuit against Cisco should be a fraction of the effective cash price to purchase all of Finjan. The 

acquisition is also relevant to Finjan’s corporate history and its position that Finjan is more than a 

patent licensing entity. 

Cisco learned about the acquisition of Finjan by Fortress when it was announced on or about 

June 10, 2020. Ex. 3. Cisco met and conferred with Finjan regarding the Fortress acquisition. 

Following Cisco’s request that Finjan supplement its responses to the relevant discovery requests 

with documents and information related to the Acquisition and Finjan’s objections to doing so based 

on relevance and privilege, Cisco agreed to rely on public information regarding the Acquisition in 

order to avoid a discovery dispute. Ex. 5. 

Months before the public disclosure of the Fortress acquisition, the parties were required to 

submit pre-trial disclosures. See Dkt. 449 (April 16, 2020 deadline for pretrial disclosures). The 

parties agreed to amend their exhibit lists on or before May 1, 2020 to account for deposition 

transcripts and exhibits that Finjan produced to Cisco after the deadline for fact discovery, as well as 

Cisco’s updated financial information through the second quarter of 2020, as requested by Finjan. 

Dkt. 547 at VII.9. At the time the parties submitted the pre-trial disclosures, trial was scheduled to 

begin on June 1, 2020. Dkts. 70, 547. On April 30, 2020, the Court held a pre-trial conference with 

the parties in which the trial date was discussed in light of the ongoing COVID-19 pandemic. Dkt. 

613 pp. 116-121. On May 1, the Court determined that trial would commence on June 22, 2020. See 

Dkt 595 (Minute Entry). The Court held a case management conference on May 26, 2020 and 

determined that trial would be postponed until October 19, 2020 due to the COVID-19 pandemic. 

Dkt. 646. 

III. LEGAL STANDARD 

Case deadlines may be modified for good cause and with the judge’s consent. FED. R. CIV. P. 

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16(b)(4). In analyzing good cause required by Rule 16, “courts primarily consider the diligence of 

the party seeking the modification.” Rodarte v. Alameda Cnty., No. 14-cv-00468-KAW, 2015 U.S. 

Dist. LEXIS 123900, at *4-5 (N.D. Cal. Sep. 15, 2015); see also Johnson v. Mammoth Recreations, 

Inc., 975 F.2d 604, 609 (9th Cir. 1992) (same). A party must timely supplement if it learns that in 

some material respect a disclosure or response is incomplete and the additional information has not 

otherwise been made known to the other parties during the discovery process or in writing. FED. R.

CIV. P. 26(e). 

IV. GOOD CAUSE EXISTS FOR CISCO’S REQUESTED SUPPLEMENTATION 

A. The supplementation includes material highly relevant to Cisco’s damages 

calculations and Finjan’s corporate history that did not exist and thus was not 

known to Cisco prior to the deadline for supplementation 

Cisco has been diligent in seeking these supplementation, having brought this motion as soon 

as possible after it learned of the Acquisition on June 10, 2020 and the Acquisition being completed 

on or about July 24, 2020; working to resolve Finjan’s objections to producing relevant discovery 

without burdening the court; and approximately three months before trial. 

Less than a week after Cisco learned of the Acquisition, Cisco sent a letter to Finjan 

requesting production of all relevant documents related thereto under Rule 26(e). Ex. 6. Following 

Finjan’s objections to these requests, which the parties discussed during a meet and confer, Cisco 

agreed to avoid a discovery dispute by relying on the publicly available documents related to the 

Acquisition on July 16, 2020. Ex. 5. Cisco now seeks leave to supplement its expert report on 

damages to include this new, highly relevant information. 

The Acquisition necessarily includes the purchase of the patents-in-suit, as well as the very 

claims at issue in this litigation. Ex. 1 at ¶ 4. Thus, the Acquisition involves information relevant to 

damages and to the analysis by Cisco’s expert, Dr. Becker. See, e.g., Spectralytics, Inc. v. Cordis 

Corp., 650 F. Supp. 2d 900, 914 (D. Minn. 2009), aff'd in part, vacated in part, 649 F.3d 1336 (Fed. 

Cir. 2011) (sale of plaintiff in 2003 “unquestionably relevant” to hypothetical license negotiation in 

1998); Comcast Cable Commc’ns, LLC v. Sprint Commc’ns Co., LP, 262 F. Supp. 3d 118, 144-146 

(E.D. Pa. 2017) (sale of the asserted patent in 2010 was “plainly relevant to the hypothetical 

negotiation” in 2005 and constituted sufficient evidence to sustain jury’s acceptance of defendant’s 

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damages theory); Pers. Audio, LLC v. Apple, Inc., No. 9:09CV111, 2011 U.S. Dist. LEXIS 83746, 

2011 WL 3269330, at *10 (E.D. Tex. July 29, 2011) (“[T]he jury could, and should, have given 

substantial weight” to the patentee’s “2008 offer to sell, not merely to license, the actual patents-insuit, not merely comparable technology” when evaluating the 2001 hypothetical negotiation.). 

Although this post-dates the hypothetical negotiation, “[p]ost-infringement information can be 

helpful in assessing whether a royalty is reasonable.” Oracle Am., Inc. v. Google Inc., 2012 WL 

877125, at *3 (N.D. Cal. Mar. 15, 2012) (permitting expert opinion based on company valuation 

four years after hypothetical negotiation) (citing Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 

1333–34 (2009)). 

Further, a damages analysis “may also consider the panoply of events and facts that occurred 

thereafter and that could not have been known to or predicted by the hypothesized negotiators.” 

ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 872 (Fed. Cir. 2010) (quotation omitted). Indeed, 

Finjan’s own damages expert acknowledges this theory in her opening report, and Finjan used this 

“book of wisdom” principle during the Pre-Trial Conference to argue to the Court the jury should be 

allowed to hear testimony about IPR institution decisions many years after the hypothetical 

negotiation, despite their admitted prejudice. See Dkt. 564 Ex. G at 171, n.701; Dkt. 613 at 72:4-12 

(“. . . Here’s what Cisco is going to know sitting at that hypothetical negotiation table: they are going 

to know that these patents that are looking to license to Finjan have been battle tested, that they have 

been subjected to challenge after challenge and that they have come through each time... and that is 

something that is going to be in the mind of a reasonable licensee . . .”). By the same token, Cisco 

would have known—under the same “book of wisdom”—the effective cash purchase price of Finjan, 

including its entire patent portfolio, and would have concluded that a mere non-exclusive license to 

the five patents-in-suit is necessarily less valuable. Dr. Becker’s proposed supplement succinctly sets 

forth what Cisco would have known and considered using the public documents supporting that 

knowledge. 

Cisco could have sought discovery beyond the publicly available information related to the 

Acquisition, and courts have reopened discovery where post-discovery—but pre-trial—a corporate 

acquisition required the supplementation of discovery responses under Rule 26(e) and the pursuit of 

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limited third party discovery. See Zest IP Holdings, LLC v. Implant Direct Mfg., 2013 WL 5211940, 

at *2 (S.D. Cal. Sept. 13, 2013) (reopening discovery for patentee’s sale to third party because 

“information sought by Defendants is relevant to the issues of damages in this action and may affect 

the opinions of Plaintiffs’ and Defendants’ expert witnesses on damages.”); Llewellyn v. N. Am. 

Trading, 1997 U.S. Dist. LEXIS 4621, at *15-16 (S.D.N.Y April 9, 1997) (requiring defendants to 

supplement discovery responses regarding corporate documents when it merged with another 

company); Ortiz v. Cybex Int’l, Inc., 2018 U.S. Dist. LEXIS 92447, at *19-23 (D.P.R. May 30, 

2018) (extending fact discovery because defendant failed to update discovery responses regarding 

post-suit acquisition). Cisco thus seeks even less relief than could be justified by these 

circumstances: Cisco seeks only the limited supplementation of its expert report on damages to 

account for this new, highly relevant information. This focused request should be granted. See 

Walker v. Life Ins. Co. of the Sw., No. CV 10-09198-JVS (RNBx), 2018 U.S. Dist. LEXIS 223874, 

at *12-13 (C.D. Cal. Nov. 9, 2018) (finding good cause existed where the plaintiff delayed in 

providing necessary information for the defendant’s expert report and granting the defendant leave 

to supplement its expert report). 

B. Finjan will not Suffer Undue Prejudice as a Result of the Supplementation 

Finjan has been aware of the pending acquisition by Fortress well before the June 2020 press 

release, Ex. 7 pp. 12-24, and Dr. Becker and Cisco are relying upon press releases issued and SEC 

filings filed by Finjan. Thus, Finjan cannot allege that it is prejudiced or surprised by the information 

in the publicly available documents or Dr. Becker’s supplementation based upon that information. 

See Lanard Toys, Ltd. v. Novelty, Inc., 375 Fed. Appx. 705, 713 (9th Cir. 2010) (“Not only was [the 

expert’s] anticipated testimony not a ‘surprise’ to appellants, they were obviously able to take steps 

they thought necessary to contend with his testimony at trial.”); Walker, 2018 U.S. Dist. LEXIS 

223874, at *17-18 (finding no prejudice to the plaintiffs in granting the defendant leave to file a 

supplemental expert report, which was untimely due to the plaintiffs’ own delays in production). 

Further, pre-trial disclosures and supplementation of expert reports are due “at least 30 days 

before trial” “[u]nless the court orders otherwise.” FED. R. CIV. P. 26(a)(3). While the Court required 

pre-trial disclosures to be submitted by April 16, 2020, this requirement was set when trial was to 

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begin on June 1, 2020. Since then, trial has been postponed until the latter half of October 2020, so 

supplementation of Cisco’s expert report on damages almost three months before trial should be 

considered, at the very least, non-prejudicial to Finjan. See Ex. 8 at 6-7, 10; Enplas Display Device 

Corp. v. Seoul Semiconductor Co., No. 13-cv-05038 NC, 2015 U.S. Dist. LEXIS 189098, at *5 

(N.D. Cal. Dec. 21, 2015) (“Because the expert reports were supplemented more than 30 days before 

trial, the reports were timely.”) Likewise, the timing of the supplementation should not be 

considered unduly prejudicial to Finjan, as it comes prior to the Court’s final pre-trial conference. 

Further, Cisco does not object to Finjan’s damages expert supplementing her report, which would 

address any prejudice that Finjan may contend it will suffer if this motion were granted. 

IV. CONCLUSION 

Because good cause exists for Cisco’s requested supplementation to address newly 

discovered, highly relevant information regarding Fortress’s acquisition of Finjan, Cisco respectfully 

requests that the Court grant its motion for leave to supplement its expert report on damages. 

Dated: July 31, 2020 Respectfully submitted, 

/s/ Nicole E. Grigg 

Nicole E. Grigg (CA SBN 307733) 

negrigg@duanemorris.com 

2475 Hanover Street 

Palo Alto, CA 94304-1194 

Telephone: 650.847.4150 

Facsimile: 650.847.4151 

L. Norwood Jameson (admitted pro hac vice) 

Email: wjameson@duanemorris.com 

Matthew C. Gaudet (admitted pro hac vice) 

Email: mcgaudet@duanemorris.com 

David C. Dotson (admitted pro hac vice) 

Email: dcdotson@duanemorris.com 

John R. Gibson (admitted pro hac vice) 

Email: jrgibson@duanemorris.com 

Jennifer H. Forte (admitted pro hac vice) 

Email: jhforte@duanemorris.com 

1075 Peachtree Street, Ste. 2000 

Atlanta, GA 30309 

Telephone: 404.253.6900 

Facsimile: 404.253.6901 

Joseph A. Powers (admitted pro hac vice) 

Email: japowers@duanemorris.com 

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DEFENDANT CISCO SYSTEMS, INC.’S MTN FOR LEAVE TO SUPPLEMENT 

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Jarrad M. Gunther (admitted pro hac vice) 

Email: jmgunther@duanemorris.com 

30 South 17th Street 

Philadelphia, PA 19103 

Telephone: 215.979.1000 

Facsimile: 215.979.1020 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

Case 5:17-cv-00072-BLF Document 683 Filed 07/31/20 Page 9 of 9