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United States District Court

Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

FINJAN, INC.,

Plaintiff,

v.

CISCO SYSTEMS INC.,

Defendant.

Case No. 17-cv-00072-BLF (SVK)

ORDER ON JOINT DISCOVERY 

LETTER BRIEF RE EXPERT 

DEPOSITIONS OF DRS. 

MITZENMACHER, JAEGER, AND 

ORSO

Re: Dkt. No. 350

Before the Court is the parties’ joint discovery letter brief regarding disputes that have 

arisen in connection with Defendant Cisco Systems, Inc.’s depositions of certain expert witnesses 

for Plaintiff Finjan, Inc. Dkt. 350. Specifically, the parties disagree about (1) whether Cisco may 

have more than one attorney ask questions at the depositions of Drs. Mitzenmacher, Jaeger, and 

Orso; (2) whether Finjan must make Dr. Mitzenmacher available to continue his deposition 

following Finjan’s termination of the deposition before the seven-hour limit was reached; and 

(3) whether Finjan should be ordered to pay Cisco’s costs and fees associated with the discovery 

letter and the continued deposition of Dr. Mitzenmacher. Id. Pursuant to Civil Local Rule 7-1(b),

the Court deems this matter suitable for determination without oral argument. For the reasons 

discussed below, the Court orders that (1) only one attorney for Cisco shall conduct the deposition 

of each Finjan expert, unless the parties agree otherwise; (2) Finjan shall make Dr. Mitzenmacher 

available to continue his deposition by the same Cisco attorney who questioned him at his initial 

deposition until the time limit of seven hours is reached; and (3) Cisco’s request for sanctions is 

denied.

1. Deposition questioning by more than one attorney

Cisco argues that it should be permitted to have two attorneys ask questions at the 

depositions of Drs. Mitzenmacher, Jaeger, and Orso. The parties’ submission indicates that 

Dr. Mitzenmacher prepared a 2,000-page expert report (not including exhibits) concerning 

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infringement of the ’780 and ’154 patents, and Drs. Jaeger and Orso prepared expert reports on 

validity. Cisco claims that the ’780 and ’154 patents are unrelated, and Cisco had different 

attorneys handle those patents and different experts address the patents in rebuttal reports. 

According to Cisco, it is “not aware of any case law or rule preventing questioning by two 

attorneys under this circumstance, nor is there a prohibition in any standing Order applicable to 

this case.” Dkt. 350 at 2. Cisco notes that Finjan agreed to allow Cisco to have two attorneys 

question a different expert, Dr. Medvidovic.

Finjan argues that it is customary in this District for judges to require a single attorney to 

question a witness at trial. According to Finjan, the parties have followed that procedure in 45 

depositions taken in this case. Finjan notes that Cisco did not inform Finjan of the plan to have

two Cisco attorneys question Dr. Mitzenmacher until 6:50 p.m. on the night before the deposition, 

even though Cisco had Dr. Mitzenmacher’s expert report for more than a month before the 

deposition. Finjan also disagrees with Cisco’s contention that the circumstances here warrant 

using two attorneys at deposition. The parties stipulated to a single deposition on each issue, such 

as infringement and validity. Finjan also argues that Cisco is being inconsistent because Cisco 

used a single attorney to question Dr .Cole, an expert who opined on infringement of two different 

patents in a 1,700 page report, where the patents were related, but wants to have multiple attorneys 

question Dr. Jaeger, whose validity opinion relates to three related patents. Finjan argues that it 

permitted Cisco to have two attorneys question the other expert discussed in Cisco’s portion of the 

brief, Dr. Medvidovic, because he had submitted a report that covered two issues: (1) a tutorial on 

all Asserted Patents, and (2) an opinion regarding infringement of the ’633 patent.

Having considered the parties’ arguments, the Court will not permit two Cisco attorneys to 

question Drs. Mitzenmacher, Jaeger, and Orso absent agreement of the parties. Although Cisco is 

correct that there is no written rule categorically prohibiting deposition questioning by more than 

one attorney, it is the typical practice in this District for only one attorney to question a witness at 

deposition. The parties both at least tacitly acknowledge this practice and appear to have followed 

it, with the exception of Finjan’s agreement to permit Dr. Medvidovic to be questioned by two 

Cisco attorneys. Circumstances may warrant allowing more than one attorney to ask questions at 

a deposition, such as where the witness is being deposed on clearly distinct claims. See, e.g., 

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Rockwell Int’l, Inc. v. Pos-A-Traction Indus., Inc., 712 F.2d 1324, 1325 (9th Cir. 1983) (holding 

that it was “not a per se abuse” to have two attorneys question a fact witness being deposed in 

connection with both state and federal actions). However, the distinction between issues is not so 

clear in this case, or in patent cases in general, and a rule that multi-attorney questioning is 

permitted on “unrelated” patents is likely to instigate more disputes than it resolves.

Furthermore, Cisco apparently did not inform Finjan of its intention to have more than one 

attorney question Dr. Mitzenmacher until the night before the deposition. This strategy led to the 

suspension of Dr. Mitzenmacher’s deposition and the filing of the discovery brief now before the 

Court. The far better approach is for parties who believe that a case warrants departure from the 

general practice of single-attorney questioning to discuss that issue during the Rule 16 or Rule 26 

conferences and, if necessary, raise the issue with the Court sufficiently in advance of the 

deposition to permit for an orderly resolution of the issue. See generally Fed. R. Civ. P. 

16(c)(2)(L) (identifying as an appropriate topic for any pretrial conference “adopting special 

procedures for managing potentially difficult or protracted actions that may involve complex 

issues, multiple parties, difficult legal questions, or unusual proof problems”); Fed. R. Civ. P. 

26(f) (requiring parties to confer on a proposed discovery plan); Standing Order for All Judges of 

the Northern District of California re Contents of Joint Case Management Statement (requiring 

parties to include in their joint case management statement “any proposed limitations or 

modifications of the discovery rules,” “a proposed discovery plan pursuant to Fed. R. Civ. P. 

26(f),” and “any identified discovery disputes.”). 

In light of the facts and circumstances of this case, the Court will not permit Cisco to have 

more than one attorney question Drs. Mitzenmacher, Jaeger, and Orso at deposition absent an 

agreement by the parties.

2. Continued deposition of Dr. Mitzenmacher

Dr. Mitzenmacher had been deposed for under seven hours when Finjan terminated the 

deposition in light of the dispute over whether a second Cisco attorney would be permitted to 

question him. The Court denies Finjan’s request to forego the continued deposition of 

Dr. Mitzenmacher. Finjan must make Dr. Mitzenmacher available before the close of expert 

discovery to complete his deposition by the Cisco attorney who conducted the initial deposition 

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for whatever portion of the seven-hour limit remains. 

3. Request for sanctions

Cisco requests that the Court exercise its authority under Rule 37 and its inherent power to 

sanction Finjan by ordering it to pay the fees and costs incurred in connection with this discovery 

letter brief and the continued deposition of Dr. Mitzenmacher. In light of the Court’s ruling and 

considering the other facts and circumstances giving rise to the current dispute, the request for 

sanctions is denied.

SO ORDERED.

Dated: September 9, 2019

SUSAN VAN KEULEN

United States Magistrate Judge

Case 5:17-cv-00072-BLF Document 354 Filed 09/09/19 Page 4 of 4