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

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Juanita R. Brooks (CA SBN 75934) 

brooks@fr.com 

Roger A. Denning (CA SBN 228998) 

denning@fr.com 

Frank J. Albert (CA SBN 247741) 

albert@fr.com 

FISH & RICHARDSON P.C. 

12390 El Camino Real, Suite 100 

San Diego, CA 92130 

Telephone: (858) 678-5070 / Fax: (858) 678-

5099 

Additional attorneys on signature page 

Attorneys for Plaintiff 

FINJAN, INC. 

D. Stuart Bartow (CA SBN 233107) 

dsbartow@duanemorris.com 

Nicole E. Grigg (CA SBN 307733) 

negrigg@duanemorris.com 

DUANE MORRIS LLP 

2475 Hanover Street 

Palo Alto, CA 94304-1194 

Telephone: 650.847.4146 

Facsimile: 650.847.4151 

Additional attorneys on signature page 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

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 

JOINT MOTION FOR LEAVE TO 

AMEND PROPOSED JOINT PRETRIAL 

STATEMENT 

Date: September 10, 2020 

Time: 9:00 a.m. 

Hon. Beth Labson Freeman 

Ctrm: 3, 5th Floor 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 1 of 10
1 Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

I. INTRODUCTION 

Pursuant to Civil Local Rules 7-1 and 7-12 and Section IV.A.4 of this Court’s Standing 

Order Re Civil Cases, Plaintiff Finjan, Inc. (“Finjan”) and Defendant Cisco Systems, Inc. (“Cisco”) 

jointly move this Court for leave to file an amended proposed joint pretrial statement limited to 

minor supplementation of the parties’ joint exhibit list, respective exhibit lists, and deposition 

designations. No other amendment or supplementation to the proposed joint pretrial statement is 

requested at this time. Good cause exists for the parties’ requested leave. First, the parties’ 

requested amendment includes supplements to exhibit lists and deposition designations that are 

narrowly tailored in scope. See Exhs. 1-4 (Appx. C-1, C-2, C-3, D). Finjan, however, notes its 

objection to Cisco’s inclusion of proposed exhibits (Nos. 2843-2872) related to Finjan’s recent 

agreement to be acquired by Fortress Investment Group LLC affiliates CFIP Goldfish Holdings 

LLC and CFIP Goldfish Merger Sub Inc. (“Fortress affiliates”) as it has no relevance to any disputed 

issue in the case and would cause undue prejudice to Finjan. Second, the parties’ requested 

amendment is consistent with the Court’s guidance at the May 26, 2020 status conference for the 

parties to work together with respect to pretrial statement supplements. And third, the timing of the

parties’ joint motion for leave comes more than 11 weeks away from the start of trial, which is 

currently slated to begin on October 19, 2020. It further comes prior to the entry of a final joint 

pretrial statement by the Court. The parties therefore respectfully request that the Court grant them

leave to file an amended proposed joint pretrial statement. 

II. BACKGROUND 

On April 16, 2020, the parties filed the proposed joint pretrial statement (Dkt No. 547) with 

appendices that included the parties’ joint exhibit list (Exh. 1 (Appx. C-1)), Finjan’s exhibit list 

(Exh. 2 (Appx. C-2)), Cisco’s exhibit list (Exh. 3 (Appx. C-3)), and Finjan’s deposition designations 

(Exh. 4 (Appx. D)). See Dkt No. 547-3-6, 547-8. At the time the parties filed the proposed joint 

pretrial statement, trial was scheduled to commence on June 1, 2020. On April 30, 2020, the Court 

held a pretrial conference with the parties in which the trial date was discussed in light of the ongoing 

COVID-19 pandemic. On May 1, 2020, the Court confirmed that the first day of trial will commence 

on June 22, 2020, three weeks later than originally scheduled. See Dkt No. 595 (Minute Entry). On 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 2 of 10
2 Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

May 15, 2020, Finjan filed a motion for leave to supplement its pretrial exhibit list. See Dkt. No. 

628. On May 26, 2020, the Court held a status teleconference with the parties regarding trial in 

view of the ongoing COVID-19 pandemic resulting in trial being reset for October 19, 2020. During 

the teleconference with respect to supplementation of the proposed joint pretrial statement, the Court

urged the parties “to talk about it and see what you can work out so that it’s just easier on everyone.” 

Exh. 5 (05/26/2020 Hearing Tr. at 10:8-16). In light of the Court’s guidance, counsel for the parties

diligently met and conferred on multiple occasions in accordance with Civil Local Rule 37-1(a) to 

discuss mutual supplementation, devising a schedule for accomplishing the requisite exchanges, and 

filing of the instant joint motion requesting leave. 

Since the parties’ May 26, 2020 status teleconference with the Court, Finjan announced that 

it was in the process of being acquired by CFIP Goldfish Holdings LLC and CFIP Goldfish Merger 

Sub Inc. During the course of the parties’ communications, Cisco asked Finjan, within days of the 

announced acquisition, to supplement under Federal Rule of Civil Procedure 26(e) its responses to 

certain discovery requests with information and/or documents regarding Finjan’s then-pending 

acquisition. During a meet and confer on this issue, Finjan informed Cisco, among other things, 

that any non-public information would likely be privileged. Following this meeting and the 

exchange of additional written communications setting forth Cisco’s position and Finjan’s 

objections, Cisco informed Finjan that it would rely on the public documents and information related 

to the acquisition in order to avoid burdening this Court with a discovery dispute. Exh. 6 (7/15/2020

E-mail Communication). Cisco will shortly file a motion for leave to supplement Dr. Becker’s 

damages report related to Fortress affiliates’ acquisition of Finjan, which will address how the 

acquisition is relevant, good cause for the supplement, and the lack of prejudice to Finjan. Finjan 

intends to oppose Cisco’s motion for leave to supplement Dr. Becker’s report. 

It is Finjan’s position, which was previously communicated to Cisco, that any information 

regarding this acquisition, including publicly available information, is irrelevant to any of the 

pending claims or defenses at issue and is unduly prejudicial to Finjan. It is further Finjan’s position 

that, to the extent Cisco alleges that this acquisition is relevant to its damages position, it is not and 

would not have been a consideration of the parties at the hypothetical negotiation, nor would the 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 3 of 10
3 Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

“book of wisdom” apply in light of the unprecedented effect of the ongoing COVID-19 global 

pandemic on businesses. Moreover, introduction of such facts now would unduly prejudice Finjan 

as they stand to mislead the jury and potentially cause further delay in adjudicating this 3-year case. 

Finjan thus objects to Cisco’s inclusion of Ex. Nos. 2843-2872 in its proposed supplement to Exh. 

3 (Appendix C-3) and will request briefing and a hearing on those objections should Cisco attempt 

to admit them at trial. 

It is Cisco’s position, which was previously communicated to Finjan, that information 

regarding this acquisition is highly relevant to damages, is well within the scope of the “book of 

wisdom”, and is not unduly prejudicial to Finjan. These issues will be fully addressed in Cisco’s 

motion for leave, as referenced above. 

III. GOOD CAUSE EXISTS FOR LEAVE TO AMEND THE PROPOSED PRETRIAL 

STATEMENT 

To amend the proposed joint pretrial statement that was filed in accordance with the Court’s 

Scheduling and Standing Orders, the parties must demonstrate good cause and obtain leave of the 

Court. See J. Freeman Standing Order Re Civil Jury Trials at Section III.B.4; Fed. R. Civ. P. 16(b). 

Good cause exists for the parties’ requested leave to file an amended pretrial statement. First, the 

parties’ requested amendment includes supplements that are narrowly tailored. Courts often grant 

requests for leave to amend pretrial statements where the proposed amendment is limited, such as 

the case here. See, e.g., Xiong v. Lincoln Nat'l Life Ins. Co., NO. Civ. 2:08-345 WBS JFM, 2009 

U.S. Dist. LEXIS 100786, *3-4, 6 (Oct. 16, 2009 E.D. Cal.) (granting motion to amend pretrial order 

with limited supplement to exhibit list). The parties’ supplemental joint exhibit list identifies the

five patents-in-suit in an effort to promote efficiency at trial. Exh. 1 (Appx. C-1). Finjan’s 

supplemental exhibit list identifies 36 documents for affirmative use related to key issues in dispute

between the parties, such as Finjan’s history, the relationship between Finjan and Cisco, damages, 

and validity. Finjan’s proposed supplements to its exhibit list are Exhibit Nos. 1136-1171.1 Exh. 2 

 

1

 Finjan incorporates by reference its discussion of the relevance of these exhibits as stated in its 

previous Motion for Leave to Supplement its Exhibit List (Dkt. No. 628). Finjan further notes that 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 4 of 10
4 Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

(Appx. C-2). Cisco’s supplemental exhibit list identifies 35 documents for affirmative use related 

to source code, non-infringement, damages, and Fortress affiliates’ acquisition of Finjan. Cisco’s 

proposed supplements to its exhibit list are Exhibit Nos. 2838-2872. Exh. 3 (Appx. C-3). The 

parties have exchanged objections and objection responses to these supplemental exhibits. Finjan 

has objected to each of Cisco’s proposed exhibits related to Finjan’s acquisition and reiterates such 

objections here, as discussed above. In addition to supplemental exhibit lists, Finjan seeks to amend

the proposed joint pretrial statement with a limited supplement to its deposition designations, which 

Cisco does not oppose. See Exh. 4 (Appx. D). Cisco presently does not seek to supplement its 

deposition designations. The parties have further agreed to allow for the correction of scrivener’s 

errors within the deposition designations that may be discovered as the parties are finalizing 

designations shortly before or during trial. 

The parties’ requested leave to file an amended pretrial statement is further supported by 

good cause as it is consistent with the Court’s guidance at the May 26, 2020 status conference. As 

the Court urged, the parties have worked diligently since the status conference to discuss the scope 

of their proposed supplements and to limit the scope of any disputes. See Exh. 5 (05/26/2020 

Hearing Tr. at 10:8-16). 

Finally, good cause is further supported by the timing of the parties’ joint motion for leave 

in view of the start of trial. The parties request comes more than 11 weeks away from the start of 

trial, which is currently slated to begin on October 19, 2020. Cf. Insite Vision Inc. v. Sandoz, Inc., 

783 F.3d 853, 864-65 (Fed. Cir. 2015) (affirming district court’s denial of party’s motion to modify 

a pretrial order when the motion was filed “on the eve of trial.”). The parties’ request follows 

diligent efforts to amend the proposed joint pretrial statement in timely manner in an effort to 

alleviate any burden on the Court. The timing of the parties’ filing allows for sufficient time for the 

Court’s consideration prior to any future status or pretrial conferences between the Court and the 

parties. The parties’ request also comes prior to the entry of a final pretrial statement by the Court, 

 

if this motion is granted, its previous motion can be denied as moot, as set forth in the proposed 

order. 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 5 of 10
5 Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

modifications of which are subject to a demonstration of “manifest injustice” under Fed. R. Civ. P. 

16(e). Courts routinely grant motions for leave to amend or supplement that come prior to the 

Court’s entry of a final pretrial order. See Hoffman v. Lassen Adult Det. Facility, No. 2:15-cv-1558 

JAM KJN P, 2018 U.S. Dist. LEXIS 42948, *3-5 (Mar. 15, 2018 E.D. Cal.) (granting Plaintiff’s 

request to supplement exhibit list when the exhibits were identified prior to the pretrial order being

issued). 

IV. CONCLUSION 

The Court has not yet issued a final joint pretrial statement and the parties are 11 weeks away 

from the first day of trial, October 19, 2020. Moreover, the parties’ request for leave to amend the 

proposed joint pretrial statement is consistent with the Court’s guidance for the parties to work 

together regarding supplementation and presents narrowly tailored supplements to the proposed 

joint pretrial statement. The parties thus respectfully submit good cause exists and that their motion 

for leave be granted. 

Dated: July 31, 2020 Respectfully Submitted, 

FISH & RICHARDSON P.C. 

By: /s/ Megan A. Chacon 

Juanita R. Brooks (CA SBN 75934) 

brooks@fr.com 

Roger A. Denning (CA SBN 228998) 

denning@fr.com 

Frank J. Albert (CA SBN 247741) 

albert@fr.com 

Megan A. Chacon (CA SBN 304912) 

chacon@fr.com 

K. Nicole Williams (CA SBN 291900) 

nwilliams@fr.com 

Oliver J. Richards (CA SBN 310972) 

ojr@fr.com 

Jared A. Smith (CA SBN 306576) 

jasmith@fr.com 

Tucker N. Terhufen (CA SBN 311038) 

terhufen@fr.com 

12390 El Camino Real, Suite 100 

San Diego, CA 92130 

Phone: (858) 678-5070 / Fax: (858) 678-5099 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 6 of 10
6 Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Aamir Kazi (Admitted Pro Hac Vice) 

kazi@fr.com 

Alana C. Mannige (CA SBN 313341) 

mannige@fr.com 

1180 Peachtree Street NE, 21st Floor 

Atlanta, GA 30309 

Phone: (404) 892-5005 / Fax: (404) 892-5002 

Attorneys for Plaintiff FINJAN, INC. 

Dated: July 31, 2020 Respectfully Submitted, 

DUANE MORRIS LLP

By: /s/ Alice E. Snedeker 

D. Stuart Bartow (CA SBN 233107) 

dsbartow@duanemorris.com 

Nicole E. Grigg (CA SBN 307733) 

negrigg@duanemorris.com 

2475 Hanover Street 

Palo Alto, CA 94304-1194 

Telephone: 650.847.4146 

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 

Robin L. McGrath (admitted pro hac vice) 

Email: rlmcgrath@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 

Alice E. Snedeker (admitted pro hac vice) 

Email: aesnedeker@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 

Jarrad M. Gunther (admitted pro hac vice) 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 7 of 10
7 Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

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 681 Filed 07/31/20 Page 8 of 10
8 Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

ATTESTATION PURSUANT TO CIVIL L.R. 5-1(i) 

In accordance with Civil Local Rule 5-1(i)(3), I attest that concurrence in the filing of this 

document has been obtained from any other signatory to this document. 

/s/ Megan A. Chacon 

chacon@fr.com 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 9 of 10
Case No. 5:17-cv-00072-BLF-SVK

JOINT MOTION FOR LEAVE TO AMEND PROPOSED JOINT PRETRIAL STATEMENT 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

CERTIFICATE OF SERVICE 

The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served on July 31, 2020 to all counsel of record who are deemed to have 

consented to electronic service via the Court’s CM/ECF system. Any other counsel of record will 

be served by electronic mail and regular mail. 

/s/ Megan A. Chacon 

chacon@fr.com 

Case 5:17-cv-00072-BLF Document 681 Filed 07/31/20 Page 10 of 10