Case 3:17-cv-05659-WHA Document 175 Filed 08/06/18 Page 1 of 116
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` Pages 1 - 115
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`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`Before The Honorable William H. Alsup, Judge
`
`)
`FINJAN, INC.,
` )
` Plaintiff, )
` )
` VS. ) NO. C 17-05659 WHA
` )
`JUNIPER NETWORK, INC.,
`)
` )
` Defendant.
`)
` )
` San Francisco, California
` Thursday, July 26, 2018
`
`
`TRANSCRIPT OF PROCEEDINGS
`
`
`APPEARANCES:
`For Plaintiff:
` KRAMER, LEVIN, NAFTALIS & FRANKEL LLP
` 990 Marsh Road
` Menlo Park, California 94025
` BY: PAUL J. ANDRE, ATTORNEY AT LAW
` KRISTOPHER KASTENS, ATTORNEY AT LAW
` JAMES HANNAH, ATTORNEY AT LAW
` PHUONG (STEPHANIE) NGUYEN, ATTORNEY AT LAW
`
`For Defendant:
` IRELL & MANELLA LLP
` 1800 Avenue of the Stars - Suite 900
` Los Angeles, California 90067
` BY: JONATHAN S. KAGAN, ATTORNEY AT LAW
` CASEY CURRAN, ATTORNEY AT LAW
` JOSHUA GLUCOFT, ATTORNEY AT LAW
` SHARON SONG, ATTORNEY AT LAW
`
` IRELL & MANELLA LLP
` 840 Newport Center Drive - Suite 400
` Newport Beach, California 92660
` BY: REBECCA CARSON, ATTORNEY AT LAW
`
`Reported By: Jo Ann Bryce, CSR No. 3321, RMR, CRR, FCRR
` Official Reporter
`
`
`
` Pages 1 - 115
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`Before The Honorable William H. Alsup, Judge
`
`)
`FINJAN, INC.,
` )
` Plaintiff, )
` )
` VS. ) NO. C 17-05659 WHA
` )
`JUNIPER NETWORK, INC.,
`)
` )
` Defendant.
`)
` )
` San Francisco, California
` Thursday, July 26, 2018
`
`
`TRANSCRIPT OF PROCEEDINGS
`
`
`APPEARANCES:
`For Plaintiff:
` KRAMER, LEVIN, NAFTALIS & FRANKEL LLP
` 990 Marsh Road
` Menlo Park, California 94025
` BY: PAUL J. ANDRE, ATTORNEY AT LAW
` KRISTOPHER KASTENS, ATTORNEY AT LAW
` JAMES HANNAH, ATTORNEY AT LAW
` PHUONG (STEPHANIE) NGUYEN, ATTORNEY AT LAW
`
`For Defendant:
` IRELL & MANELLA LLP
` 1800 Avenue of the Stars - Suite 900
` Los Angeles, California 90067
` BY: JONATHAN S. KAGAN, ATTORNEY AT LAW
` CASEY CURRAN, ATTORNEY AT LAW
` JOSHUA GLUCOFT, ATTORNEY AT LAW
` SHARON SONG, ATTORNEY AT LAW
`
` IRELL & MANELLA LLP
` 840 Newport Center Drive - Suite 400
` Newport Beach, California 92660
` BY: REBECCA CARSON, ATTORNEY AT LAW
`
`Reported By: Jo Ann Bryce, CSR No. 3321, RMR, CRR, FCRR
` Official Reporter
`
`
`
`Case 3:17-cv-05659-WHA Document 175 Filed 08/06/18 Page 2 of 116
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` 2
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`Thursday - July 26, 2018
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` 8:23 a.m.
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`P R O C E E D I N G S
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`---000---
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`THE CLERK: Calling civil action 17-5659, Finjan,
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`Inc., versus Juniper Network, Inc.
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`Counsel, please approach the podium and state your
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`appearances for the record.
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`MR. ANDRE: Good morning, Your Honor. Paul Andre for
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`Finjan.
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`THE COURT: Welcome.
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`MR. ANDRE: Thank you.
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`MR. KAGAN: Good morning, Your Honor. Happy to be
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`here in federal court. Jonathan Kagan of Irell & Manella
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`representing defendant Juniper Networks. With me is Rebecca
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`Carson. Then we also have a number of more junior attorneys
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`that we've brought who will -- we'd like to handle various
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`portions of the argument. They are Casey Curran, who I believe
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`you've already had the pleasure of entertaining argument from.
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`She's a 2015 grad from UCLA. We have Josh Glucoft, who is in
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`the back, is a 2014 Stanford grad. And we have Sharon Song,
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`who is a 2016 Harvard grad who will be addressing the motion to
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`dismiss if Your Honor wishes to hear argument on that.
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`THE COURT: I hope we can get to everything that the
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`young people are going to argue. There's so much briefing,
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`there's no way I can hear everything so we'll just have to see
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`how things develop.
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`Okay. Welcome on your side.
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`And let's get your appearances.
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`MR. KASTENS: Kristopher Kastens here from Kramer,
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`Levin, Naftalis & Frankel on behalf of Finjan, Inc.
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`MR. HANNAH: Good morning, Your Honor. James Hannah
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`on behalf of Finjan.
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`THE COURT: What year did you graduate?
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`MR. HANNAH: I graduated back in 2005.
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`THE COURT: Okay. You don't count anymore.
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`MS. NGUYEN: Good morning, Your Honor. My name is
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`Phuong Nguyen. I'm here on behalf of Finjan, Inc., and I'm a
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`2015 grad.
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`THE COURT: Okay. Good. I hope you get to argue
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`something.
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`So we have two -- actually three motions; right? There's
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`a motion about the pleadings, and then there are two summary
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`judgment motions; am I right?
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`MR. ANDRE: That's correct, Your Honor.
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`MR. KAGAN: Yes, Your Honor.
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`THE COURT: Well, let's start with the motion to
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`dismiss. Let's see, it's your motion; right?
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`MR. ANDRE: That's correct, Your Honor.
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`THE COURT: And you're trying to knock out inequitable
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`conduct.
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`MR. ANDRE: That's correct, Your Honor. And we have
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`our junior associate who is going to be arguing this one,
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`Your Honor, Ms. Nguyen.
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`THE COURT: Okay. Let's hear that.
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`But I don't have tons of time so you've got to come to the
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`main points. Please go ahead.
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`MS. NGUYEN: Good morning, Your Honor. May it please
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`the Court: Finjan seeks to dismiss and strike --
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`THE COURT: Point that thing a little more towards
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`your voice --
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`MS. NGUYEN: I'm a little short. Sorry.
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`THE COURT: -- so that everybody in the back can hear
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`you. They're straining to hear you.
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`Okay. Go ahead.
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`MS. NGUYEN: Finjan seeks to dismiss and strike
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`Juniper's allegations of prosecution laches, inequitable
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`conduct, unclean hands, and ensnarement.
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`With regard to Juniper's allegations of prosecution
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`laches, Juniper merely identifies the earliest date of the
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`priority application that was filed and then the filing date of
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`the patents at issue here.
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`THE COURT: I'm going to stop you. I'm going to tell
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`you how I understand the allegations, and then this is on
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`inequitable conduct, not the laches part. Let's just stick
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`with that for a minute.
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`So which patent is this? What number is this?
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`MS. NGUYEN: It's the '494 and the '154 that are at
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`issue for the inequitable conduct claims.
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`THE COURT: All right, '494.
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`What was the name of that inventor who swore behind the
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`prior art?
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`MS. NGUYEN: Mr. Shlomo Touboul.
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`THE COURT: Touboul. T-O-U-B-O-L?
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`MS. NGUYEN: T-O-U-B-O-U-L.
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`THE COURT: All right. So he says -- in the
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`prosecution history he filed a declaration saying that he had
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`invented the thing before the prior art, and then the patent
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`was issued thereafter. Is that part true?
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`MS. NGUYEN: Mostly, Your Honor. Mr. Touboul
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`specifically identified the claims that he was the sole
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`inventor of. He did not --
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`THE COURT: All right. Which claims were those?
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`MS. NGUYEN: Those were Claims 1, 3, 4 through 6, 9,
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`10, 12 through 15, and 18.
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`THE COURT: And how many other claims are there?
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`MS. NGUYEN: I don't have an exact number.
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`THE COURT: Give me a ballpark idea. Are there 25
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`other claims? 50? 100?
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`MS. NGUYEN: There are 18 total claims. So about, I
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`think, six or so other claims that were not solely invented by
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`Mr. Touboul.
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`THE COURT: All right. So then the other side says --
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`so far that's not inequitable what I've heard; but the other
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`side says, "But wait a minute. This patent was applied for by
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`a number of people." Not just Touboul but three or four
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`others; right?
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`MS. NGUYEN: Yes, Your Honor.
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`THE COURT: And they didn't even come to work at
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`Finjan until after that prior art.
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`MS. NGUYEN: Yes, Your Honor.
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`THE COURT: So they could not possibly have been
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`co-inventors on anything after the prior art. So the alleged
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`inequitable conduct is you've got a patent that is issued to a
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`number of co-inventors, but it's mathematically impossible for
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`all of them to have been present at the creation prior to the
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`prior art; and, therefore, the argument is that Touboul lied
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`when he said that he was the sole inventor prior to the prior
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`art.
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`Now, all I'm trying to do now is lay out what I understand
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`the argument to be. So have I accurately laid it out do you
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`think or not? I mean, I want to make sure I understand what
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`the argument is.
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`MS. NGUYEN: So, again, most of that is correct,
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`Your Honor, in that these other co-inventors did not join
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`Finjan until later. However, Juniper is pointing to Finjan's
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`interrogatory response in another litigation, Finjan v.
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`Symantec, in which Finjan responded regarding the conception
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`and reduction to practice date of the '494 patent.
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`Now, what's at issue is that when Finjan --
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`THE COURT: I don't see what that's got to do with the
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`point that they're making, which is that it would be
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`mathematically impossible for Touboul to have been the inventor
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`by himself. What do you say to that point?
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`Is it -- so that leads to a legal question. Whenever
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`you -- that nobody bothered to tell me the answer to. When you
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`apply for a patent and there are multiple inventors, are you
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`required by the rules of the PTO or by rules of the
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`Federal Circuit to identify which parts of the claimed
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`inventions were joint, which ones were individual; or is it
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`just assumed as a matter of law that everybody invented
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`everything?
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`If everybody had to invent everything, then you're in a
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`lot of trouble in this case, I'll tell you that now; but I
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`cannot find the answer in the short time that I've had to get
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`on this. Maybe the law is that you can wiggle out of it after
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`the fact by mixing and matching and so forth.
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`So what is the law on that point?
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`MS. NGUYEN: Your Honor, in Lucent Text, which is
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`cited in Finjan's opening brief, that -- the Federal Circuit
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`indicated that patent claims are awarded on a claim-by-claim
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`basis. So given that there are multiple claims at issue, there
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`could be different inventors on different claims, and the
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`priority would be --
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`THE COURT: But what's the name of that decision?
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`Would my law clerk go get that decision for me? I want to
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`first get to the bottom of this now.
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`What's your name over there? Ms. Song?
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`MS. SONG: Yes.
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`THE COURT: What's the answer to the question I asked?
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`MS. SONG: So I believe that at the time of filing the
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`application, they did not identify which inventor conceived of
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`specific claims, but the subsequent declaration by Mr. Touboul
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`identified a specific subset of those claims that he said he
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`was the sole inventor for.
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`THE COURT: Then answer my question. Is that okay to
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`do after the fact, or is it required that the -- see, your
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`whole inequitable misconduct problem or allegation is based on
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`the theory that there were multiple inventors, and they didn't
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`even come to work there until after the prior art.
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`Well, that's a good point unless it turns out it's okay
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`for one inventor to say "I did all the work and I invented it
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`way before those other people ever showed up for work."
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`So what is the law? What does the law say about whether
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`or not you can do that?
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`MS. SONG: So I'll have to -- I have not yet -- I do
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`not -- I cannot provide a legal answer for that, but --
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`THE COURT: This is the time to tell me the answer.
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`It's obvious on the face of the problem that this is a legal
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`issue.
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`MS. SONG: So I think our inequitable conduct
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`allegations rely on the fact that Mr. Touboul's subsequent
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`declaration identified a subset of the claims that he stated he
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`was the sole inventor for.
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`THE COURT: What do you mean "subset of the claims"?
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`MS. SONG: He identified a certain -- Claims 1, 3 to
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`6, 9, 10.
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`THE COURT: All right. So that's a subset of the
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`total claims, but he's saying he invented all of those,
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`everything within Claim 1. Just take Claim 1. Everything
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`within Claim 1, he claims he invented all of the elements in
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`some earlier point in time.
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`MS. SONG: So in the Symantec litigation the then
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`asserted claims were within the specific subset that
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`Mr. Touboul had identified in his declaration, and so that's
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`where we're alleging that the misrepresentation was made, in
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`his subsequent declaration after the original application was
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`filed.
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`THE COURT: You're saying that he -- the swearing
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`behind was in the Symantec litigation or the swearing behind
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`was in the PTO?
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`MS. SONG: So the misrepresentation that he made was
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`to the PTO, and that was evidenced by the interrogatory
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`response in the Symantec litigation.
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`THE COURT: All right.
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`MS. SONG: And that's specifically to the --
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`THE COURT: All right. What did he say to the PTO and
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`then what did he say in the interrogatory answer?
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`MS. SONG: So in front of the PTO he filed a
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`declaration stating that he was the sole inventor for a certain
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`number of claims, specifically Claims 1, 3 to 6, 9, 10, 12 to
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`15, and 18.
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`THE COURT: All right.
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`MS. SONG: In the Symantec litigation, when the
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`supplemental interrogatory response was filed, the then
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`asserted claims in that litigation was within that subset of
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`claims that Mr. Touboul stated to the PTO that he was the sole
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`inventor for, and he stated that there were multiple inventors
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`for that.
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`And so that means that what he represented to the PTO,
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`that he was the sole inventor for and that what he conceived
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`and invented in I believe 1996, was a misrepresentation made so
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`that they can get behind the prior art.
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`THE COURT: Now, isn't there something, though, in the
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`same litigation where he fixed that inconsistency of? They
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`changed the answer?
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`MS. SONG: But that was after the parties met and
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`conferred over the fact that they were seeking to move to amend
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`to add the inequitable conduct defense. And so that was in
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`response to the fact that there was a threat of the addition of
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`the inequitable conduct allegations.
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`THE COURT: Okay. See if I've got this right. In the
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`PTO, during the prosecution history, Touboul says, "I was the
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`sole inventor." So far so good?
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`MS. SONG: Yes.
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`THE COURT: Second step, in the Symantec litigation,
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`he says, "I had co-inventors."
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`Third step, he takes that back after -- well, third step
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`is that the inequitable conduct is going to be raised so they
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`meet and confer and Finjan changes the answer to say, "No. I
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`was wrong. There weren't co-inventors. They were co-inventors
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`on these other claims." Is that at least the correct scenario?
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`MS. SONG: Yes, that's correct.
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`THE COURT: All right. So what in your -- you want to
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`say the original interrogatory answer should be enough to save
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`your inequitable conduct theory because the changed answer came
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`up only as a way to wiggle out of the inequitable conduct
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`problem?
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`MS. SONG: Yes. And I would also like to point out,
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`Your Honor, that our inequitable conduct defense doesn't rely
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`only on that misrepresentation, but we've alleged a product
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`prosecution scheme where there were --
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`THE COURT: All right. I know, but I've got to
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`understand each step at a time.
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`So have I accurately said what your theory is?
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`MS. SONG: Yes.
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`THE COURT: At least on that one part?
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`MS. SONG: Yes.
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`THE COURT: Okay. Good.
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`Now, what do you say to that response? That it may be
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`true that you changed the answer, but just like in all other
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`litigation, if somebody says -- let's take a simpler case.
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`Something I can actually understand.
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`Let's say somebody says, "The light was red," and then
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`they realize, "Oh, that was a mistake. I'm changing it to the
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`light was green." This happens.
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`So then they get to trial and the other side wants to put
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`in the first statement, "The light was red." And then you jump
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`up and say, "Oh, no, but we changed it to the light was green."
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`Then you get to the answer is both sides get to make their
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`point to the jury and the jury gets to decide whether or not
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`they were telling the truth the first time.
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`So why isn't that the answer here, is that you -- yes, you
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`did try to fix it up once the problem came to your attention;
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`but maybe the other side is entitled to argue you had it right
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`the first time, there were co-inventors, and he just lied to
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`Case 3:17-cv-05659-WHA Document 175 Filed 08/06/18 Page 13 of 116
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`the PTO. So why isn't that the way this ought to come out?
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`In other words, it will be a question for the jury, or I
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`guess inequitable conduct is for the judge, but, nevertheless,
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`it would be after a full hearing on all the facts and
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`circumstances.
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`Go ahead.
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`MS. NGUYEN: So, Your Honor, the situation is very
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`different than the red-light/green-light situation that you
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`just --
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`THE COURT: Why is it so different?
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`MS. NGUYEN: Because Finjan did not in its
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`interrogatory response say that all of the inventors identified
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`on the '494 patent co-invented every single claim.
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`So if I could refer --
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`THE COURT: Read it. Yeah, it would be helpful to
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`read the exact -- the first statement and then the second
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`statement.
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`In other words, read to me the interrogatory answer that
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`got you in trouble and then read to me how it was fixed up.
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`That would be good to hear.
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`MS. NGUYEN: So in our interrogatory response, which
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`is attached as Exhibit 8 at page 15, Finjan stated that the
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`date of constructive reduction to practice of the asserted
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`claims of the '494 patent --
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`THE COURT: Wait. Wait. Wait. That's so fast.
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`MS. NGUYEN: Sorry. I'll slow down.
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`THE COURT: Wait. I want -- read slowly so I can
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`absorb it.
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`MS. NGUYEN: (reading)
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`"The date of constructive reduction to practice of the
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`asserted claims of the '494 patent is no later than
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`November 7th, 2011. Yigal Edery, Nimrod Vered, David
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`Kroll, and Shlomo Touboul were involved with and may have
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`knowledge related to the conception and reduction to
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`practice of the claims of the '494 patent."
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`So nowhere in there does Finjan indicate that all of the
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`inventors were involved with the invention of every single
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`claim of the asserted patents.
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`THE COURT: Okay. So -- all right. Let me -- I think
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`my law clerks handed it to me.
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`(Pause in proceedings.)
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`THE COURT: There's November 30, 2005.
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`MS. NGUYEN: Oh, it's the paragraph above that for the
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`'494 patent, Your Honor.
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`THE COURT: Oh, I see.
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`Okay. The date of conception for the asserted claim of
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`patent '494 is November 8th, 1996. Now, is that the date that
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`he swore behind the prior art to get to, or is that the date of
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`the patent application?
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`MS. NGUYEN: I'm sorry. Which date did you just
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`state?
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`THE COURT: I'm reading from line 10. Do you see line
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`10 on page 8?
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`MS. NGUYEN: Oh.
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`THE COURT: It says the date of conception for the
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`asserted claims of the U.S. Patent Number '494 is November 8th,
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`1996. Is that the one you want me to look at? I just want to
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`make sure I'm reading the right one.
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`MS. NGUYEN: Yes. Yes. I was reading from another
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`one but, yes, page 8.
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`THE COURT: Well, wait. Here. I'm going to hand down
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`to you. I'm going to tag the paragraph so let's just make sure
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`we -- I'm going to hand down what I'm reading off of and you
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`then tell me if I'm looking at the right paragraph.
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`(Pause in proceedings.)
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`MS. NGUYEN: Yes, Your Honor, that's one.
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`THE COURT: Okay. So hand it back so I can see if I
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`understand this argument.
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`MS. NGUYEN: But, Your Honor, can I --
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`THE COURT: Wait. Let me read it, and then -- it says
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`(reading):
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`"The date of conception for the asserted claims of
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`'494 is November 8th, 1996."
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`Now, was that the date that he got on account of having
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`sworn behind the prior art?
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`MS. NGUYEN: No, Your Honor. I believe that's based
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`on the patent application date.
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`THE COURT: All right. Let's pause there.
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`Is that true? Is that based on the November 8th date, the
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`patent application date?
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`MS. SONG: I'm sorry. The patent application date of
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`the '494 patent?
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`THE COURT: Yeah. Isn't that the one we're talking
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`about, the '494?
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`MS. SONG: Yes.
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`THE COURT: Okay. So was the patent application date
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`November 8th, 1996? Can't we just look and see?
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`MS. SONG: That's the date of the provisional
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`application for the '494 patent, yes, Your Honor.
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`THE COURT: All right. Okay. So then he says "The
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`date of reduction to practice of the asserted claims of the
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`'494 is November 8th, 1996." That's simply because the --
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`under the scheme as it then existed, the date of application
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`was the date of reduction to practice as well as the presumed
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`conception date.
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`Well, so where is the part where he says something in that
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`paragraph that is inconsistent with what he later says that
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`would be -- let me rephrase that.
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`Where is the part in that paragraph that is inconsistent
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`with what he told the PTO?
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`Case 3:17-cv-05659-WHA Document 175 Filed 08/06/18 Page 17 of 116
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`MS. SONG: So I have a response to that, Your Honor,
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`but before I make that response, I would just like to point out
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`Finjan's arguments go to the factual issue as to whether
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`Mr. Touboul was lying or not.
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`And on this pleadings motion where the well-pleaded
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`allegation should be accepted as true and construed in the
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`light most favorable to Juniper, this is not an issue that
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`should be addressed with regard to this motion.
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`THE COURT: Maybe. Maybe. But they're asking for
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`judicial -- I mean, you're relying on something for which I can
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`take judicial notice; and they want me to take judicial notice
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`of the rest of the record, and maybe I should. I don't know.
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`I haven't decided that yet.
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`But, all right, now, you made that point, but what do you
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`say on the merits?
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`MS. SONG: Yes, sir. In response to where
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`Mr. Touboul's misrepresentation was -- so which docket
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`number -- which brief document are you looking at?
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`THE COURT: I'm looking at -- here. I'll hand it down
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`to you. Where the red tag is is the paragraph that I thought
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`was the important paragraph.
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`(Pause in proceedings.)
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`THE COURT: Am I reading -- is this the paragraph that
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`you rely upon in part for your inequitable conduct?
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`MS. SONG: Yes, Your Honor.
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`Case 3:17-cv-05659-WHA Document 175 Filed 08/06/18 Page 18 of 116
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`THE COURT: Okay.
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`MS. SONG: So --
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`THE COURT: So my question is: Which part of that
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`paragraph shows that it was a lie to say that he had invented
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`something earlier by himself?
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`MS. SONG: So in that supplemental response, it states
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`that the date of constructive reduction of practice of asserted
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`claims of the '494 patent is no later than November 7th, 2011.
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`Then they identified the four inventors, including
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`Mr. Touboul, who were involved with and may have knowledge
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`related to the conception and reduction to practice of the '494
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`patent.
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`At that time the then asserted patents -- I apologize --
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`the then asserted claims of the '494 patent were within the
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`subset that Mr. Touboul had previously testified as being the
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`sole inventor for to the PTO, and that information is in
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`Juniper's answer, Docket Number 92, paragraph 189.
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`THE COURT: Well, but did the litigation against
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`Symantec involve claims beyond those that he had said that he
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`was the sole inventor of?
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`MS. SONG: Yes. The then asserted claims of the '494
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`patent in the Symantec litigation were wholly within the subset
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`of claims that Mr. Touboul had identified as being the sole
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`inventor for.
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`THE COURT: Okay. All right. Let me ask it again
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`because I think you misunderstood me.
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`He had identified certain claims before the PTO that he
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`was the sole inventor of; correct?
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`MS. SONG: Correct.
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`THE COURT: All right. Now, those were asserted in
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`the Symantec litigation, I assume, but in addition were other
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`claims that he was not the sole inventor on also asserted in
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`the Symantec?
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`MS. SONG: Initially, yes, and they were later
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`dropped. At the time this supplemental interrogatory response
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`was provided, the only asserted claims of the '494 patent were
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`the ones that Mr. Touboul had indicated he was the sole
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`inventor for.
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`THE COURT: All right. That's the key point that I
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`did not understand.
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`Is that true?
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`MS. NGUYEN: Yes, Your Honor.
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`If I may address a couple of points that were mentioned
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`earlier.
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`So you had asked whether an inventor -- all inventors have
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`to contribute to all claims. I don't have the particular MPEP
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`number, but an inventor just has to contribute to one aspect of
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`one claim.
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`THE COURT: Say that again.
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`MS. NGUYEN: An inventor just has to contribute to one
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`aspect of one claim to be considered a co-inventor of a patent.
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`THE COURT: But in the -- that's fine, but does that
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`have to be disclosed somewhere in the application that one
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`inventor is just a tagalong on the very -- you know, say the
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`last claim, or does it have to be disclosed at all? Do they
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`just -- how does that part work?
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`MS. NGUYEN: Your Honor, it does not have to be
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`disclosed.
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`THE COURT: Is that right?
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`MS. SONG: We'll have to look further into that and
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`get back to you. But I think our inequitable conduct
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`allegations don't depend on whether the original application
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`identified which inventor invented which claim. It was -- it's
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`based on the declaration that Mr. Touboul submitted to the PTO
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`thereafter.
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`And, Your Honor, on your point about judicial notice, you
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`can take judicial notice; but on a pleadings motion, one cannot
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`take judicial notice of facts favorable to defendants that
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`could be reasonably disputed, and in this case I believe that
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`these facts are reasonably disputed. And so on this pleadings
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`motion they should be accepted as -- Juniper's allegations
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`should be accepted as true and construed in favor of.
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`THE COURT: Well, that could be right, but I'm just
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`trying to understand.
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`Where can I find in all these documents where you
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`Case 3:17-cv-05659-WHA Document 175 Filed 08/06/18 Page 21 of 116
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`corrected this answer?
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`MS. NGUYEN: Your Honor, that would be at 15 in
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`Exhibit 8.
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`THE COURT: Number Tab 15?
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`MS. NGUYEN: Sorry. Exhibit 8. So Tab 8, page 15.
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`And in the Symantec litigation, Finjan --
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`THE COURT: I'm on page 15. What part of that?
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`MS. NGUYEN: Pages 1 -- or, sorry -- lines 1 through
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`6.
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`(Pause in proceedings.)
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`THE COURT: I don't see how that changed any -- what
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`is the part there that fixed up the inconsistency?
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`MS. NGUYEN: Your Honor, it's the use of the words
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`"currently asserted claims." In the Symantec litigation,
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`Finjan at the outset was asserting additional claims from the
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`'494 patent; and because of the dispute that arose where
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`Symantec indicated that there was some sort of purported
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`inequitable conduct, Finjan supplemented its interrogatory
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`response to indicate that this response refers to the currently
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`asserted claims, which are the same claims that Mr. Touboul
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`identified in his declaration.
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`THE COURT: Is that a typo where it says "Reduction to
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`practice is no later than November 7th, 2011"? How could that
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`be? The patent issued way before that, didn't it?
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`MS. NGUYEN: The November 7th, 2011, date, Your Honor,
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`Case 3:17-cv-05659-WHA Document 175 Filed 08/06/18 Page 22 of 116
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`is, I believe, the filing date of the '494 patent. So there
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`Finjan is just indicating the latest possible date.
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`THE COURT: I thought the '494 was applied for back in
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`1996.
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`MS. NGUYEN: No, Your Honor. The '494 patent was
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`filed on November 7th, 2011. However, the priority goes back
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`to November of 1996.
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`THE COURT: That's because of the parent?
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`MS. NGUYEN: Yes, Your Honor.
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`THE COURT: Oh. Okay.
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`So what was the date of this supplement versus the date of
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`the original statement? Is there a way to figure that out from
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`this record?
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`MS. NGUYEN: I believe this supplement, this latest
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`one was from August 14th, 2017.
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`THE COURT: Yeah, I see that date. Okay. That's
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`helpful.
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`Okay. And what was the date of the original?
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`MS. SONG: It was June 7th, 2017, Your Honor.
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`THE COURT: June -- say it again. June what?
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`MS. SONG: June 7th, 2017.
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`THE COURT: All right. So there's about a two-month
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`problem. All right.
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`MS. SONG: Yes. And in August 2017 was when Symantec
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`threatened to add the inequitable conduct allegations to its
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`complaint.
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`THE COURT: All right.
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`MS. SONG: Or to its answer.
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`THE COURT: All right. I think I understand this
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`problem.
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`All right. Now, you say -- Ms. Song, you had another
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`element to your inequitable conduct, and I cut you off because
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`I wanted to -- now I want to give you a chance to go back into
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`that and explain what the next string to your bow is.
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`MS. SONG: Yeah. So our answer alleged a series of
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`facts where we seek to demonstrate Finjan's patent prosecution
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`scheme that is comprised of them attempting to improperly
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`extend the life of its patents by delaying patents -- delaying
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`the filing -- delaying the claim of priority to the patents.
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`So what they're -- so, in essence, what they're trying to
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`do is they initially file an application with a certain
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`priority date. Once they realize that there exists prior art
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`that predates that priority date, they file a petition to claim
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`an earlier priority date that predates that prior art in order
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`to remove that prior art from being considered.
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`THE COURT: I thought that's what they did with the
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`swearing behind. Isn't that the same problem or is this a
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`different problem?
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`MS. SONG: So it's a serial -- Finjan has had multiple
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`instances. We provide five examples in our answer where
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`they've done the exact same thing. And so we're saying that
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`this demonstrates and evidences a scheme, not just one isolated
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`instance.
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`THE COURT: Well, what did they do in this case? What
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`was -- I don't follow what they did in this case that's
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`different from the swearing behind the prior art.
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`MS. SONG: So what they did with regard to the '494
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`patent is just one example of the overall scheme, but the
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`overall scheme further supports
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