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

PLAINTIFF FINJAN, INC.’S MOTION FOR LEAVE TO SUPPLEMENT ITS EXHIBIT LIST 

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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 

FISH & RICHARDSON P.C. 

12390 El Camino Real, Suite 100 

San Diego, CA 92130 

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

Aamir Kazi (Admitted Pro Hac Vice) kazi@fr.com 

Alana C. Mannige (CA SBN 313341) mannige@fr.com 

FISH & RICHARDSON P.C. 

1180 Peachtree Street NE, 21st Floor 

Atlanta, GA 30309 

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

Attorneys for Plaintiff 

FINJAN, 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 

PLAINTIFF FINJAN, INC.’S NOTICE OF 

MOTION AND MOTION FOR LEAVE TO 

SUPPLEMENT ITS EXHIBIT LIST 

Date: TBD 

Time: 9:00 a.m. 

Hon. Beth Labson Freeman 

Ctrm: 3, 5th Floor 

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PLAINTIFF FINJAN, INC.’S MOTION FOR LEAVE TO SUPPLEMENT ITS EXHIBIT LIST 

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NOTICE OF MOTION

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 

NOTICE IS HEREBY GIVEN that on a date to be determined by the Court at 9:00 a.m., or 

as soon as counsel may be heard by the Honorable Beth Labson Freeman in Courtroom 3, 5th

Floor, United States District Court of California, 280 South First Street, San Jose CA 95113 as 

requested by Plaintiff Finjan, Inc. (“Finjan”) in its accompanying Unopposed Administrative 

Motion to Change Time Pursuant to Civil L.R. 6-3(a) (“Motion to Change Time”), Finjan will and 

hereby does move the Court for an order granting Finjan leave to supplement its trial exhibit list 

filed as Appendix C-2 to the proposed joint pretrial statement (Dkt No. 547-4). This motion is 

based on this Notice of Motion, the following Memorandum of Points and Authorities, the 

Declaration of Megan A. Chacon (“Chacon Decl.”) submitted herewith, the proposed order 

submitted herewith, Finjan’s Motion to Change Time, the pleadings and papers on file in this 

action, any evidence and argument presented to the Court at or before the hearing on this motion, 

and all matters of which the Court may take juridical notice. 

STATEMENT OF ISSUES 

 Whether Finjan should be granted leave to file a supplement to its trial exhibit list to 

identify additional documents in support of its claims and defenses.

I. INTRODUCTION 

Pursuant to Civil Local Rule 7-1 and Section IV.A.4 of this Court’s Standing Order Re Civil 

Cases, Finjan respectfully submits this motion for leave to file a supplement to Plaintiff’s trial 

exhibit list, Appendix C-2 to the proposed joint pretrial statement (Dkt No. 547-4). Good cause 

exists for Finjan’s requested supplement as it includes a narrow and curated set of documents 

relevant to key disputed issues in this case, it poses no undue prejudice to Defendant Cisco Systems, 

Inc. (“Cisco”) as Finjan’s request comes five weeks prior to the beginning of trial and presents no 

issues conflicting with the pretrial conference that has already taken place, it comes prior to the 

Court’s issuance of the final pretrial order, and it is supported by the recent appearance of new 

counsel for Finjan and its diligence in seeking a timely supplement. 

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II. BACKGROUND 

On April 13, 2020, new counsel for Finjan entered an appearance in this matter. Less than 

three days later, the parties filed the proposed joint pretrial statement (Dkt No. 547) that included 

Finjan’s exhibit list as Appendix C-2 (Dkt No. 547-4). 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 May 7, 2020, counsel for Finjan reached out to Cisco’s counsel proposing that the 

parties agree to a mutual, reasonable supplementation of the parties’ respective exhibit lists to take

place on May 15, 2020. See Exh. 1 (Em. Chain between Chacon and Snedeker).1

 The next day, 

Cisco provided its initial response that it was not interested in supplementation and would not agree 

to Finjan’s proposal without further discussion. Id. On May 12, 2020, the parties met and conferred 

to further discuss the timing and scope of Finjan’s proposed supplement. During the meet and 

confer, Finjan informed Cisco of its intention to file a motion for leave to supplement its exhibit list 

if Cisco would not agree to Finjan’s supplementation proposal, which the parties discussed. Id. 

Cisco indicated it would consider Finjan’s request and provide its final position on May 15, 2020. 

Id. Prior to the filing of this motion, Cisco’s counsel confirmed it would not agree to Finjan’s 

proposal to supplement its exhibit list. Id. Thus, pursuant to Civil Local Rule 37-1(a), counsel for 

Finjan and Cisco have met and conferred regarding the instant motion and the relief requested 

herein. See Chacon Decl. at ¶ 2. 

III. GOOD CAUSE EXISTS FOR FINJAN’S PROPOSED SUPPLEMENTAL EXHIBIT 

LIST 

Finjan seeks leave of the Court to file a reasonable supplementation to its trial exhibit list 

well in advance of the commencement of trial on June 22, 2020. Finjan’s supplemental exhibit list 

 

1

 All references to “Exh.” herein refer to the Exhibits attached to the Chacon Decl. submitted 

herewith. 

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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. See Exh. 2 (Finjan’s Proposed 

2

nd Amended Exhibit List).2

 

This Court’s Standing Order Regarding Civil Jury Trials provides that “[n]o party shall be 

permitted to offer any exhibit at trial that is not disclosed in the Joint Pretrial Statement and Order 

without leave of the Court for good cause shown, unless it is offered solely for impeachment or 

rebuttal.” Exh. 3 (2019-05-30, Standing Order Re Civil Jury Trials at § III.B.4). Courts routinely 

allow for the amendment or supplementation of pretrial exhibit lists or modifications of the pretrial 

order upon a showing of good cause. 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 

Plaintiff’s motion to amend pretrial order to add exhibit); 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); Keen v. Bovie Med. Corp., No. 8:12-cv-305-

T-24EAJ, 2013 U.S. Dist. LEXIS 197375, *3 (June 26, 2013 M.D. Fla.) (granting defendant’s 

motion to amend pretrial order to add exhibits relevant to damages issues and finding no surprise or 

undue prejudice to plaintiff); see also Luong v. City & County of S.F., No. C 11-05661 MEJ, 2013 

U.S. Dist. LEXIS 39659, *17-19 (Mar. 21, 2013 N.D. Cal.) (denying Defendant’s motion to strike 

exhibit list where Plaintiff filed a second exhibit list after the filing of the joint pretrial conference 

statement). 

Good cause exists here because Finjan’s supplementation does not cause any undue 

prejudice to Cisco. First, the timing of Finjan’s proposed supplement is reasonable and Finjan 

demonstrated diligence in seeking it. Trial is now scheduled to begin June 22, 2020 in light of the 

ongoing COVID-19 pandemic. Within days of confirmation of the new trial date, counsel for Finjan 

reached out to Cisco’s counsel to propose the parties agree to a reasonable, mutual supplementation 

 

2

 Finjan’s supplement also removes duplicate exhibits in an effort to streamline its prior list. 

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of exhibit lists on May 15, 2020, approximately 5 weeks from the beginning of trial. The parties 

then met and conferred regarding Finjan’s proposal. Cisco did not then, nor could it now, articulate 

any alleged undue prejudice it would suffer by Finjan supplementing its exhibit list approximately 

5 weeks away from the start of trial. See Hoffman, 2018 U.S. Dist. LEXIS 42948, *3-5 (granting 

Plaintiff’s request to supplement exhibit list when the exhibits were identified prior to the pretrial

order being issued); Fresno Rock Taco, LLC v. Nat’l Sur. Corp., CASE No. 1:11-cv-00845-SKO, 

2013 U.S. Dist. LEXIS 101428, *16 (July 18, 2013 E.D. Cal.) (“As there remains time for Plaintiffs 

to review the documents ... Plaintiffs have adequate time to cure any prejudice that will arise from 

modifying the pretrial order to include ... [additional] potential trial exhibits.”); see also Holt v. 

Wesley Med. Ctr., LLC, Case No. 00-1318-JTM, 2006 U.S. Dist. LEXIS 100716, *11 (Jan. 25, 2006 

D. Kan.) (denying motion to strike supplemental expert disclosure where new trial date had been set 

and thus “plaintiffs [were] afforded additional time to review the disclosed material” and any 

prejudice was therefore “harmless.”). This is especially true in light of the narrow scope of Finjan’s 

proposed supplementation, the ample time for the parties to exchange objections and narrow 

objection issues, and the Court’s preference not to rule on exhibit objections before trial (see Exh. 

4 (2019-04-30 Pretrial Conf. Tr.) at 20:2-12; Exh. 3 (2019-05-30, Standing Order Re Civil Jury 

Trials at § III.B.1)). 

Second, the specific documents Finjan seeks to include in its exhibit list pose no undue 

prejudice to Cisco. Rather, if Finjan were not allowed to add the proposed narrow supplement of 

exhibits that were initially omitted from the April 16 joint pretrial statement, it would suffer undue

prejudice. Indeed, all of the documents Finjan seeks to add are documents either previously 

disclosed and/or produced to Cisco or documents produced by Cisco or Cisco-related third parties. 

See, e.g., Beare v. Millington, 2014 U.S. Dist. LEXIS 201197, *16 (E.D.N.Y. February 24, 2014) 

(“Because the defendant is already aware of such [already produced] documents, the Court finds 

that the prejudice to the defendant of allowing such amendments [to the exhibit list] is slight, if 

any.”) 

Finjan seeks to add several documents related to its damages case. Namely, these documents 

relate to updates or corrections stemming from the Court’s recent summary judgment and Daubert 

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orders that impact Finjan’s expert’s numerical analysis or address typographical errors that resulted 

in the exclusion of documents on Finjan’s previous exhibit list. See Exh. 2 at Exhibit Nos.1147-

1152. Other documents on Finjan’s proposed supplemental exhibit list relate to Finjan’s historical 

background and its relationship with Cisco. See Exh. 2 at Exhibit Nos. 1136-1146, 1153-1155, 

1160-1171. Each of these categories is essential to Finjan’s claims for infringement, willfulness, 

and/or damages. Moreover, the inclusion of these documents is important to Finjan’s telling of its 

origination story and the long and complicated history between the parties, which the Court has 

acknowledged may be of particular interest to the jury. See Exh. 4 (2019-04-30 Pretrial Conf. Tr.) 

at 65:19-24. To the extent Cisco claims prejudice by the inclusion of these types of documents 

based on how they may be presented at trial, such concerns were already addressed at the pretrial 

conference in the context of the presented motions in limine and are not ripe. See id. at 64:17-65:7. 

Additionally, Finjan seeks to add documents relevant to objective indicia of non-obviousness 

and its rebuttal to Cisco’s obviousness allegations. For example, some of these documents include 

information relevant to the nexus between the claimed inventions and objective indicia, information 

relevant to the state of the field at the time of the invention, or information relevant to objective 

indicia such as failure of others. See Exh. 2 at Exhibit Nos. 1156-1159. Other documents Finjan 

seeks to add pose no prejudice or controversy as they are the subject of undisputed facts to which 

the parties have stipulated (e.g., Finjan’s ownership of the patents-in-suit; see Exh. 2 at Exhibit Nos. 

1164-1168). Finally, several of the documents Finjan seeks to add are documents Cisco included 

on its exhibit list, thereby posing no prejudice to Cisco. See Exh. 2 at Exhibit Nos. 1149, 1151, 

1160-1163, and 1170. See Luong, 2013 U.S. Dist. LEXIS 39659 (finding no prejudice resulted from 

Plaintiff’s inclusion of documents in its supplemental exhibit list that Defendant included on its list); 

GPNE Corp. v. Apple, Inc., Case No.: 12-CV-02885-LHK 2014 U.S. Dist. LEXIS 142097, at *9 

(Oct. 5, 2014 N.D. Cal.) (same). 

Good cause to grant Finjan’s request for leave to file its supplemental exhibit list also exists 

due to the recent entry of new counsel for Finjan. Courts have found that in some circumstances 

the transition to new counsel may weigh in favor of a finding of good cause. See, e.g., Mighty 

Enters. v. She Hong Indus. Co., Case No. 2:14-cv-06516-ODW (GJS), 2015 U.S. Dist. LEXIS 

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194795, at *8 (Sept. 17, 2015 C.D. Cal.) (finding that the diligence in which new counsel was 

litigating the matter weighed in favor of a finding of good cause for relief); see also Fresno Rock 

Taco, 2013 U.S. Dist. LEXIS 101428, *16 (extending deadline to modify pretrial order to 

accommodate new counsel). The circumstances here weigh in favor of good cause. Until counsel 

for Finjan entered appearances on April 13, 2020, new counsel did not have access to certain case 

documents, including those produced by Cisco or third parties under the protective order. Upon 

obtaining full access, and in light of the Court’s recent rulings on Daubert, summary judgment, and 

in limine motions, counsel identified a narrow and curated set of additional documents for 

affirmative use at trial that are relevant to key issues in Finjan’s affirmative case as discussed above. 

Moreover, Finjan’s counsel acted diligently in requesting Cisco’s consent in hopes of reaching 

agreement on supplementation and in filing the instant motion for relief. See supra Section II. 

IV. CONCLUSION 

The Court has not yet issued a final pretrial order and the parties are five weeks away from 

the first day of trial. Moreover, Finjan’s request to supplement its exhibit list is consistent with the 

parties’ respective reservation of rights to amend or supplement exhibit lists as reflected in their 

exhibit list submissions attached to the proposed joint pretrial statement. See Dkt No. 547-4 

(Appendix C-2) at 2, Dkt No. 547-5 (Appendix C3) at 2. In light of the relevance of the 

aforementioned exhibits, the lack of any undue prejudice caused by their addition to Finjan’s exhibit 

list, and the recent substitution of new counsel, Finjan respectfully submits good cause exists and 

that its motion for leave to supplement its exhibit list be granted. 

Dated: May 15, 2020 Respectfully Submitted, 

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 

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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 

FISH & RICHARDSON P.C. 

12390 El Camino Real, Suite 100 

San Diego, CA 92130 

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

Aamir Kazi (Admitted Pro Hac Vice) 

kazi@fr.com 

Alana C. Mannige (CA SBN 313341) 

mannige@fr.com 

FISH & RICHARDSON P.C. 

1180 Peachtree Street NE, 21st Floor 

Atlanta, GA 30309 

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

Attorneys for Plaintiff FINJAN, INC. 

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CERTIFICATE OF SERVICE 

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

document has been served on May 15, 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 

Megan A. Chacon 

chacon@fr.com 

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