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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 DISCOVERY LETTER 

BRIEFS

Re: Dkt. Nos. 241, 242, 243

Now before the Court are three joint letters concerning discovery disputes in this case: 

(1) a dispute between Plaintiff Finjan, Inc. and third party RPX Corporation regarding whether 

RPX must respond to Finjan’s document subpoena (ECF 241); (2) a dispute between Finjan, on 

the one hand, and Defendant Cisco Systems Inc. and third party Charles Giancarlo, on the other 

hand, regarding whether Finjan’s deposition subpoena to Mr. Giancarlo should be quashed (ECF 

242); and (3) a dispute between Finjan, on the one hand, and Cisco and third party Neal Rubin, on 

the other hand, regarding whether Finjan’s deposition subpoena to Mr. Rubin should be quashed 

(ECF 243). At a telephonic status conference on May 1, 2019, the parties and counsel for RPX 

agreed that these motions could be decided on the papers, without a hearing. The Court finds the 

first of these two disputes, ECF 241 and 242, suitable for resolution without oral argument 

pursuant to Civil Local Rule 7-1(b). The Court will defer ruling on the third dispute, ECF 243, 

until the hearing on other motions scheduled for June 6, 2019.

Based on consideration of the parties’ submissions, the case file, and relevant law, the 

Court ORDERS as follows:

ECF 241: Finjan Subpoena to RPX

On April 5, 2019, Finjan issued a subpoena to third party RPX requesting the production of 

documents on April 15, 2019. See ECF 241 at 2 n.1. Finjan subsequently amended the subpoena 
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United States District Court

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to request production on April 18. Id. at 2. Before attempting service on RPX, Finjan served 

Cisco with a notice of the RPX subpoena on April 5, 2019. ECF 241. 

Cisco’s process server states that he attempted service on RPX four times between April 5 

and 12, 2019. ECF 241-6. On April 5, 10, and 11, the process server spoke to the receptionist, 

who told him that there was no one available to accept service at that time. Id. On April 12, after 

receiving the name of RPX’s registered agent from Finjan, the process server spoke to the security 

guard but was told that the registered agent no longer worked at RPX. Id. The security guard 

would not allow the process server to go to the RPX office to speak with someone in charge. Id. 

Following these attempts to personally serve RPX, Finjan sent the subpoena to RPX by both 

Federal Express and registered mail on April 15, 2019. ECF 241 at 2; ECF 241-3; ECF 241-4. 

On April 17, 2019, RPX served objections to the subpoena, which included an objection to 

the fact that the subpoena was not personally served. ECF 241-2.

RPX now seeks to quash the subpoena for improper service and on other grounds. ECF 

241 at 3-4. On the issue of service, Finjan argues that it was diligent in its efforts to personally 

serve RPX and thus service by other means was permitted. Id. at 2.

Federal Rule of Civil Procedure 45(b)(1) states that a subpoena under the rule “requires 

delivering a copy to the named person.” “The majority of courts understand ‘delivering’ to require 

personal service of the subpoena.” Fujikuru Ltd. v. Finisar Corp., No. 15-mc-80110-HRL (JSC), 

2015 WL 5782351, at *5 (N.D. Cal. Oct. 5, 2015). However, Finjan points out that courts 

sometimes permit service of a Rule 45 subpoena by other means where a subpoenaing party has 

failed to effect personal service despite diligent attempts. ECF 241 at 2 (citing Chambers v. 

Whirlpool Corp., No. SA CV 11-1733, 2016 WL 9451361, at *2-3 (C.D. Cal. Aug. 12, 2016); 

Toni Brattin & Co. v. Mosaic Int’l, LLC, No. 15-mc-80090-MEJ, 2015 WL 1844056, at *3-4 

(N.D. Cal. Apr. 9, 2015)). A court in this district has explained that this view, although growing, 

remains the minority view. Fujikuru, 2015 WL 5782351, at *5. Moreover, in Toni Brattin and 

similar cases in this district, the subpoenaing party obtained court permission before effecting 

service by other means. Although the Central District of California in Chambers found that 

alternative service was sufficient, without requiring advance permission from the court for such 
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service, Finjan has not cited any cases from this district so holding. 

If Finjan believed it was unable, despite reasonable diligence, to serve RPX personally, the 

proper course would have been for Finjan to seek advance permission from the Court to serve 

RPX by other means. See Toni Brattin, 2015 WL 1844056, at *3. Because Finjan did not seek or 

receive such permission, the Court hereby quashes the subpoena to RPX based on improper 

service under Rule 45(b)(1).

ECF 242: Finjan Subpoena to Charles Giancarlo

On April 10, 2019, Finjan served a subpoena on third party Charles Giancarlo, Cisco’s 

former Executive Vice President, Chief Technology and Development Officer, demanding that he 

appear for deposition five days later, on April 15, 2019. ECF 242. Finjan seeks Mr. Giancarlo’s 

deposition because of his position at Cisco at the time Cisco invested in Finjan and because Mr. 

Giancarlo has allegedly made statements “about his view of smaller companies and investors who 

attempt to assert their patents.” Id. at 3. 

Mr. Giancarlo left Cisco twelve years ago. According to Cisco and Mr. Giancarlo, he has 

no recollection of Cisco making an investment in Finjan, and the accused products were not 

developed or acquired until five years after he left Cisco. Id. at 1. 

The Court finds that Mr. Giancarlo’s connection to the issues in this case is too attenuated 

to require his deposition, and Finjan’s attempt to depose him is not proportional to the needs of 

this case. Fed. R. Civ. Proc. 26(b)(1). Finjan has not presented any evidence of Mr. Giancarlo’s 

alleged statements that Finjan claims justify a deposition. Finjan’s argument that “[i]t is unlikely 

that Mr. Giancarlo, given his former position at Cisco, has zero knowledge about Cisco’s views on 

patent rights” (id. at 4) has at least two standards backwards. First, Finjan must demonstrate that

Mr. Giancarlo has relevant information; it is not his obligation to prove otherwise. Second, 

“unlikely to have zero knowledge” is nowhere near the standard to compel a third party 

deposition. 

The Court also finds that the subpoena to Mr. Giancarlo is procedurally defective because 

it was served only five days before the date of the deposition and did not allow a reasonable time 

to comply given Mr. Giancarlo’s long absence from Cisco and his current job responsibilities as 
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Chairman and CEO of a Fortune 500 company. See Rule 45(d)(3)(A)(i).

Accordingly, the Court hereby quashes the subpoena to Mr. Giancarlo because it does not 

seek relevant evidence, is not proportional to the needs of the case, and did not allow a reasonable 

time to comply.

ECF 243: Finjan Subpoena to Neal Rubin

Cisco and third party Neal Rubin argue that Finjan’s deposition subpoena to Mr. Rubin 

should be quashed because it seeks testimony regarding Cisco-Finjan licensing discussions that 

are inadmissible under Rule 408 and the non-disclosure agreement (“NDA”) between the parties.

Because issues regarding the parties’ licensing discussions and NDA are also presented in 

Cisco’s pending motion to strike Finjan’s second supplemental objections and responses to 

Cisco’s interrogatory number 10 (ECF 209), the Court defers a ruling on the discovery letter brief 

at ECF 243 until it considers the motion to strike at ECF 209. That motion is set for hearing on 

June 6, 2019.

CONCLUSION

For the reasons discussed above:

1. Finjan’s subpoena to RPX is QUASHED;

2. Finjan’s subpoena to Charles Giancarlo is QUASHED; and

3. A ruling on the dispute concerning Finjan’s subpoena to Neal Rubin is DEFERRED 

until the Court considers Cisco’s motion to strike at ECF 209.

SO ORDERED.

Dated: May 3, 2019

SUSAN VAN KEULEN

United States Magistrate Judge