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United States District Court

Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

FINJAN, INC.,

Plaintiff,

v.

CISCO SYSTEMS INC.,

Defendant.

Case No. 17-cv-00072-BLF 

ORDER DENYING REMAINDER OF

PLAINTIFF’S MOTION FOR RELIEF 

FROM NONDISPOSITIVE PRETRIAL 

ORDER OF MAGISTRATE JUDGE

[Re: ECF 292]

Before the Court is Plaintiff’s Motion for Relief from Nondispositive Pretrial Order of 

Magistrate Judge (ECF 274). Motion, ECF 292. Plaintiff’s motion requests relief from three 

aspects of Magistrate Judge Susan van Keulen’s order at ECF 274: 

(1) Denial of Plaintiff’s motion for leave to supplement its infringement contentions with 

(a) internal code names of software components and (b) a new infringement contention 

concerning Talos; 

(2) Striking Plaintiff’s supplemental interrogatory response to Cisco’s Interrogatory 

No. 10; and

(3) Compelling Plaintiff to produce further documents relating to its subsidiary’s 

relationship with IBM. 

See generally Motion. The Court previously denied Plaintiff’s motion with respect to issues (2) 

and (3) and requested an opposition brief from Defendant regarding issue (1). See ECF 293. 

Defendant has submitted its opposition brief, see Opp’n, ECF 300, and this matter is suitable for 

submission without oral argument, see ECF 293. 

I. LEGAL STANDARD

A district court may refer nondispositive pretrial matters to a magistrate judge under 28 

U.S.C. § 636(b)(1)(A). The district court “may reconsider any pretrial matter under this 
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subparagraph (A) where it has been shown that the magistrate judge’s order is clearly erroneous or 

contrary to law.” 28 U.S.C. § 636(b)(1)(A); see also Fed. R. Civ. P. 72(a). On review of a 

nondispositive order, “the magistrate’s factual determinations are reviewed for clear error, and the 

magistrate’s legal conclusions are reviewed to determine whether they are contrary to law.” Perry 

v. Schwarzenegger, 268 F.R.D. 344, 348 (N.D. Cal. 2010). This standard is highly deferential—

the district judge may not simply substitute his or her judgment for that of the magistrate judge. 

Grimes v. City & Cnty. of S.F., 951 F.2d 236, 241 (9th Cir. 1991). 

II. DISCUSSION

The remaining issue consists of two subparts: (a) Judge van Keulen’s denial of Plaintiff’s 

motion for leave to supplement its infringement contentions with internal code names of software 

components; and (b) Judge van Keulen’s denial of Plaintiff’s motion for leave to supplement its 

infringement contentions with a new contention concerning Talos. See Motion at 1–3. The Court 

addresses each subpart in turn. 

A. Request to Supplement with Internal Code Names of Software Components 

During discovery, Plaintiff filed a motion for leave to supplement its infringement 

contentions with internal code names of software components. See ECF 231 at 2. Judge van 

Keulen denied this request based on her finding that “Finjan’s showing of diligence [was] 

insufficient.” See van Keulen Order at 7, ECF 274. 

Plaintiff argues that Judge van Keulen’s order on this point should be reversed “because 

Finjan promptly notified Cisco of the internal code names accused of infringement and diligently 

sought to supplement its infringement contentions with this new information, as this Court 

indicated was appropriate in [Finjan, Inc. v. Blue Coat Sys., LLC, No. 15-cv-03295-BLF, 2017

U.S. Dist. LEXIS 220192, at *23 n.1 (N.D. Cal. July 28, 2017) (“Blue Coat II”)]. See Motion at 2. 

Defendant counters that Judge van Keulen properly considered the relevant law, that Blue Coat II

does not support Plaintiff’s position, and that “[none] of the ‘internal names’ [were] new to 

Finjan.” See Opp’n at 1, ECF 300. 

Having reviewed the parties’ arguments with respect to the internal code names issue, the 

Court now better understands the controversy between the parties and concurs with Judge van 
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United States District Court

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Keulen’s determination that the issue is more complex than initially presented by Finjan. The 

Court would have expected Finjan to present a list of newly identified internal code names to be 

swapped out for less precise designations in the infringement contentions. Having been advised of 

this deficiency by Judge van Keulen, Finjan has done nothing to persuade this Court that the true 

effect of its request is as benign as suggested in the moving papers. Thus, the Court finds no 

“clear error” in Judge van Keulen’s factual determinations and does not find that Judge van 

Keulen’s legal conclusions are “contrary to law.” See Perry, 268 F.R.D. at 348. The Court will 

not substitute its judgment for the considered judgment of Judge van Keulen. See Grimes, 951 

F.2d at 241. Accordingly, Plaintiff’s motion for relief from the portion of Judge van Keulen’s 

order denying Plaintiff’s motion for leave to supplement its infringement contentions with internal 

code names of software components is DENIED. 

B. Request to Supplement with New Contention concerning Talos 

During discovery, Plaintiff also sought to supplement its infringement contentions with a 

new infringement contention that Talos, by itself, infringed certain patents-in-suit. See ECF 231

at 5. In her order denying this request, Judge van Keulen noted Finjan’s admission “that its 

‘standalone Talos’ contention is a new theory” and ruled that “[i]t is too late for Finjan to add this 

new theory to its infringement contentions.” See van Keulen Order at 8. Judge van Keulen 

considered Finjan’s argument “that Cisco misrepresented the nature of Talos” but found that “a 

review of the proffered evidence on this point is not persuasive.” See id. at 8. Judge van Keulen 

explained that “[the] evidence, including produced documents and deposition testimony, indicates 

that enough of Talos’s functionality was revealed to Finjan to enable it to seek discovery on these 

issues earlier” and that “Finjan’s showing of diligence [was] insufficient given the significance of 

its proposed amendment/supplementation.” See id. 

In the instant motion, Plaintiff argues that Judge van Keulen’s order on this point should be 

reversed “because Finjan promptly sought leave to add [Talos as a new infringement contention] 

upon learning that Talos included infringing software . . . . [and] was [not merely] a group of 

people.” See Motion at 2. Finjan contends it only learned in February 2019 that Talos included 

software “when it took the deposition of Talos’ head of engineering, who testified that Talos 
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actually included software that performed analysis of malicious code.” See Motion at 2; see also

2/19/2019 Watchinski Depo. at 44:15–19, Ex. 5 to Hannah Decl., ECF 258-14. Defendant 

counters that its counsel’s statements at an October 2017 hearing before Judge van Keulen “are 

near-verbatim” to portions of the 2/19/2019 Watchinski testimony that supposedly revealed to 

Plaintiff for the first time that Talos included software. See Opp’n at 2–3; see also 10/10/2017 

Hearing Tr. at 8:4–25, Ex. 8 to Hannah Decl., ECF 258-20; 2/19/2019 Watchinski Depo. at 26:6–

23. Defendant also contends that “Finjan made this same [misrepresentation] allegation to Judge 

van Keulen . . . [which] Judge van Keulen flatly rejected.” See Opp’n at 2 (citing van Keulen 

Order at 8). 

Having reviewed the parties’ arguments with respect to Plaintiff’s “Talos only” theory, the 

Court finds no “clear error” in Judge van Keulen’s factual determinations and does not find that 

Judge van Keulen’s legal conclusions are “contrary to law.” See Perry, 268 F.R.D. at 348. Judge 

van Keulen considered the same arguments now before the Court and—relying on multiple 

citations to the record—explained that “[t]he nature and characteristics of Talos have long been 

the subject of discovery and argument between the[] parties.” See van Keulen Order at 8. Judge 

van Keulen considered the evidence and record and ruled that “enough of Talos’s functionality 

was revealed to Finjan to enable it to seek discovery on these issues earlier.” See id. at 8. Thus, 

the Court will not substitute its judgment for the reasoned judgment of Judge van Keulen. See

Grimes, 951 F.2d at 241. Accordingly, Plaintiff’s motion for relief from the portion of Judge van 

Keulen’s order denying Plaintiff’s motion for leave to supplement its infringement contentions 

with a “Talos only” theory is DENIED. 

III. ORDER

For the foregoing reasons, the remainder of Plaintiff’s motion for relief from 

nondispositive pretrial order of magistrate judge is DENIED. 

IT IS SO ORDERED.

Dated: July 17, 2019

______________________________________

BETH LABSON FREEMAN

United States District Judge