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`I R E L L & M A N E L L A L L P
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
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`R C a r s o n @ i r e l l . c o m
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`November 16, 2018
`
`
`
`Hon. William Alsup
`
`U.S. District Court, Northern District of California
`Re:
`Finjan, Inc. v. Juniper Networks, Inc., Case No. 3:17-cv-05659-WHA
`
`
`
`
`Dear Judge Alsup:
`Defendant Juniper Networks, Inc. (“Juniper”) writes to request that the Court order Finjan
`to comply with paragraph 2(f) of the Guidelines for Trial and Final Pretrial Conference in Civil
`Jury Cases Before the Honorable William Alsup. Paragraph 2(f) requests that the parties limit
`motions to “five or fewer motions per side” and notes that “[e]ach motion should address a single
`topic.”
`
`On November 14, 2018, Finjan served four motions in limine, two of which violate the
`single topic requirement. For example, Finjan’s Motion in Limine No. 4 (Attached as Exhibit A)
`purports to seek to preclude “any argument or evidence regarding irrelevant information.” It then
`addresses three separate topics under the following headings:
`• “Evidence and Arguments Regarding Juniper’s Patents,”
`• “Evidence and Arguments Regarding Irrelevant Proceedings” which addresses
`pending Finjan lawsuits and PTAB proceedings, and
`• “Statements that Finjan is a Non-Practicing Entity or ‘Patent Troll.’”
`Similarly, Finjan’s Motion in Limine No. 3 (Attached as Exhibit B) broadly seeks to
`preclude Juniper and Dr. Rubin “from providing opinions that are irrelevant,” and then addresses
`five separate topics under the following subheadings:
`• “Juniper Should be Excluded from Providing Opinions that Claim 10 is Abstract
`Because the Court Has Already Decided This,”
`• “Prejudicial and Legally Irrelevant Arguments Regarding the Prosecution History,”
`• “Dr. Rubin Should Be Excluded From Providing Opinions of Anticipation and
`Obviousness in the Guise of Damages or § 101 Analysis,”
`• “Dr. Rubin Should Be Excluded from Relying Documents or Systems that Cannot
`Establish what was “Well-known, Routine, and Conventional,” and
`• “Evidence and Argument Regarding Piecemeal Portions of Claim Elements Should
`Be Excluded.”
`
`10610643
`
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 2 of 22
`I R E L L & M A N E L L A L L P
`
`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
`
`
`
`
`
`
`Juniper requested that Finjan re-serve proper motions that comply with the Court’s single
`topic rule, but Finjan rejected Juniper’s request and refused to make anyone available to meet and
`confer until Monday. Exhibit C. Given that Juniper’s responses to Finjan’s motions are due next
`Friday (i.e., the day after Thanksgiving), Juniper requests that the Court direct Finjan to comply
`with Paragraph 2(f) by re-serving motions that address a single topic no later than noon tomorrow
`(November 17, 2018).
`
`
`
`Respectfully submitted,
`
`/s/ Rebecca L. Carson
`Rebecca L. Carson
`IRELL & MANELLA LLP
`Attorneys for Defendant
`Juniper Networks, Inc.
`
`
`
`
`
`10610643
`
`
`- 2 -
`
`

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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 3 of 22
`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 3 of 22
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`EXHIBIT A
`EXHIBIT A
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 4 of 22
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`
`
`PAUL ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`FINJAN, INC., a Delaware Corporation,
`
`
`
`
`
`
`Plaintiff,
`
`v.
`
`
`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`
`
`
`
`Defendant.
`
`
`Case No.: 3:17-cv-05659-WHA
`
`PLAINTIFF’S FINJAN INC.’S MOTION
`IN LIMINE NO. 4 TO PRECLUDE
`DISCUSSION OF IRRELEVANT AND
`PREJUDICIAL INFORMATION
`
`December 4, 2018
`
`Date:
`9:00 a.m.
`Time:
`Courtroom: Courtroom 12, 19th Floor
`Before:
` Hon. William Alsup
`
`
`
`
`
`PLAINTIFF’S MOTION IN LIMINE NO. 4
`
`CASE NO.: 3:17-cv-05659-WHA
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`1 2 3 4 5 6 7 8 9
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 5 of 22
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`INTRODUCTION
`
`Pursuant to Federal Rules of Evidence 401 and 403 Finjan moves to exclude from trial any
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`argument or evidence regarding irrelevant information. Specifically, Finjan moves to exclude
`
`evidence and arguments regarding Juniper’s patents, irrelevant legal proceedings, or the use of
`
`pejorative terms against Finjan.
`
`The Court should preclude Juniper from presenting any argument or evidence regarding any
`
`Evidence and Arguments Regarding Juniper’s Patents
`
`A.
`
`Juniper patents or patent applications, because such evidence provides zero probative value to any of
`
`the claims or defenses that will be tried in this case. See Fed. R. Evid. 401-403; Conceptus, Inc. v.
`
`Hologic, Inc., No. C 09-02280 WHA, 2011 WL 13152795, at *3 (N.D. Cal. Sept. 27, 2011) (Judge
`
`Alsup granting plaintiff’s motion in limine “to exclude evidence, testimony, and argument concerning
`
`[defendant’s] patents … subject to a specific offer of proof at trial and a specific showing of relevance
`
`and probativeness.”). The only patents that are relevant to this trial include the asserted ‘494 Patent
`
`and the patents in the licenses to be presented at trial. Juniper’s own patents have no bearing on any
`
`theory of validity, infringement, or damages in this case. The fact that Juniper may have rights to
`
`other patents does not immunize its products from infringing the ‘494 Patent. See Bio-Tech. Gen.
`
`Corp. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (“[T]he existence of one’s own patent
`
`does not constitute a defense to infringement of someone else’s patent. It is elementary that a patent
`
`grants only the right to exclude others and confers no right on its holder to make, use, or sell.”)
`
`(citation omitted).
`
`Moreover, such evidence should be precluded because any probative value (e.g., company
`
`background) would be substantially outweighed by its risk of unfair prejudice and the strong potential
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`to mislead the jury into thinking that Juniper’s products cannot infringe. See Fed. R. Evid. 403. For
`
`example, the jury could infer that the accused Juniper products do not infringe Finjan’s ‘494 Patent
`
`merely because Juniper already owns patents that may touch on other aspects of the accused products.
`
`See Declaration of Kristopher Kastens filed herewith, Ex. 16 at 2, Therasense, Inc. v. Noca Biomed.
`
`Corp., No. C 04-02123 WHA, Order In Limine Excluding Reference to ‘299 Patent (N.D. Cal. July
`
`21, 2008) (Judge Alsup excluding all reference to a patent with low probative value in order to avoid
`1
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`PLAINTIFF’S MOTION IN LIMINE NO. 4
`
`CASE NO.: 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 6 of 22
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`the “certain confusion that would arise from its placement before the jury. . . . Members of the jury
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`would likely think that the accused product has its own patent and therefore must not infringe (even if
`
`defendants do not expressly so argue), a bogus line of reasoning.”) (emphasis in original).
`
`Since evidence of Juniper’s existing patent rights have no probative value and present a high
`
`risk of jury confusion, the Court should grant Finjan’s motion to exclude all reference to Juniper’s
`
`patents.
`
`B.
`
`
`
`Evidence and Arguments Regarding Irrelevant Proceedings
`
`The Court should preclude Juniper from presenting any argument or evidence regarding co-
`
`1.
`
`Co-Pending Lawsuits that have Not Reached a Jury Verdict.
`
`pending lawsuits involving Finjan, except to the extent any litigation has reached a jury verdict.
`
`Specifically, Finjan is involved in multiple pending litigations with different defendants than Juniper
`
`and different accused products. There have been no decisions on the merits of the claims or defenses
`
`in these pending lawsuits, and fact discovery has yet to close in all but one of them. Thus, these
`
`pending lawsuits have no bearing or relevance to the issues to be tried here, i.e., they do not have “any
`
`tendency to make a fact more or less probable than it would be without the evidence.” See Fed. R.
`
`Evid. 401; see also, e.g., In re Static Random Access Memory (SRAM) Antitrust Litig., No. 07-MD-
`
`01819 CW, 2010 WL 10086747, at *2 (N.D. Cal. Dec. 16, 2010) (granting motion in limine to
`
`exclude reference to party’s other litigation because “[s]uch evidence does not appear relevant.”).
`
`Additionally, any probative value of these co-pending litigations is far outweighed by the risk
`
`of prejudice. See Fed R. Evid. 403. Introducing evidence of pending proceedings carries a substantial
`
`risk that the jury will be confused, react emotionally, and perceive Finjan in an unfavorable light
`
`untethered to any facts in the case. See, e.g., In re Homestore.com, Inc., No. CV 01-11115 RSWL
`
`CWX, 2011 WL 291176, at *1 (C.D. Cal. Jan. 25, 2011) (granting motion in limine to exclude
`
`evidence of Plaintiff’s involvement in prior lawsuits because it’s “irrelevant and carries with it a high
`
`risk of prejudice.”); see also Outley v. City of New York, 837 F.2d 587, 595 (2d Cir. 1988) (finding
`
`that opening up the area of other litigation “invites detailed inquiries, denials, and explanations, likely
`
`to lead to multifariousness and a confusion of the issues.”); Seals v. Mitchell, No. CV 04-3764 NJV,
`
`2011 WL 1399245, at *5 (N.D. Cal. Apr. 13, 2011) (quoting Oatley, 837 F.2d at 592) (the slight
`2
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`PLAINTIFF’S MOTION IN LIMINE NO. 4
`
`CASE NO.: 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
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`10
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`11
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`12
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 7 of 22
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`probative value of plaintiff’s litigation history “outweighed by the substantial danger of jury bias
`
`against the chronic litigant.”). If such evidence is permitted at trial, Juniper would undoubtedly argue
`
`that Finjan does not have a valid business, that it only seeks monetary gain, or that its claims in this
`
`litigation are meritless. These arguments will likely distract the jury from the fact that Finjan has a
`
`lawful right to seek redress for infringement of its patents against Juniper, regardless of whether it has
`
`filed lawsuits against other companies. Accordingly, Finjan moves to preclude Juniper from
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`introducing evidence or arguments regarding any of Finjan’s pending litigations that have not yet
`
`reached a jury verdict.
`
`2.
`
`
`
`Pending PTAB Proceedings Where No Final Written Decision has been
`Issued.
`
`The Court should preclude Juniper from presenting any argument or evidence regarding any
`
`pending PTO inter partes review (“IPR”) proceedings where no final written decision or denial of
`
`institution of trial has been rendered. An IPR proceeding is self-initiated by a third-party and the
`
`mere filing of an IPR of a patent has no legally binding effect on the validity of a patent. Thus,
`
`informing the jury that an entity has simply initiated IPR proceedings against any of Finjan’s patents
`
`carries a high risk of confusing the jury into believing that these proceedings cast doubt on the validity
`
`of the asserted patents, or conclude that Finjan is not entitled to a presumption of validity. Fed R.
`
`Evid. 401-403.
`
`“Several courts, including the Federal Circuit, have considered whether evidence of an
`
`ongoing reexamination or IPR proceeding is admissible, with the majority concluding that the
`
`evidence should be precluded.” Wisconsin Alumni Research Found. v. Apple, Inc., 135 F. Supp. 3d
`
`865, 873 (W.D. Wis. 2015); Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir.
`
`2009) (“The district court did not abuse its discretion in concluding that the prejudicial nature of
`
`evidence concerning the ongoing parallel re-examination proceeding outweighed whatever marginal
`
`probative or corrective value it might have had in this case.”). This Court is part of that majority. See
`
`Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2012 WL 1189898, at *3 (N.D. Cal. Jan. 4,
`
`2012) (Judge Alsup granting in part a motion in limine to exclude information regarding pending
`
`reexamination proceedings under Rule 403 because “the probative value is outweighed by the time
`3
`
`PLAINTIFF’S MOTION IN LIMINE NO. 4
`
`CASE NO.: 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
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`10
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`11
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 8 of 22
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`and confusion that would be involved.”). For these reasons, pending IPR proceedings should be
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`excluded.
`
`To that end, the Court should also preclude Juniper from making any references to Finjan as a
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`Statements that Finjan is a Non-Practicing Entity or “Patent Troll”
`
`C.
`
`non-practicing entity (“NPE”), patent assertion entity (“PAE”), “patent troll,” or any other term that
`
`has a derogatory or negative connotation at trial, as these terms readily conjure up the fact that Finjan
`
`may be involved in other pending litigation. See Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197-WHO,
`
`2016 WL 4560071, at *8 (N.D. Cal. Aug. 22, 2016) (granting Finjan’s motion in limine in part to
`
`preclude uses of the terms “patent assertion entity” and “patent troll.”); see also Finjan, Inc. v. Blue
`
`Coat Sys., Inc., No. 13-cv-03999-BLF, 2015 WL 4129193, at *2 n.1 (N.D. Cal. July 8, 2015)
`
`(“Although the Court is aware that other courts have permitted use of the term “patent assertion
`
`entity,” the Court finds that this term carries negative connotations similar to the term “patent troll.”)
`
`(citation omitted). Finjan therefore moves to preclude Juniper from all references to the terms “patent
`
`troll,” “patent assertion entity,” “non-practicing entity,” or any other derogatory terms that will
`
`prejudice Finjan.
`
`For the foregoing reasons, Finjan’s Motion in Limine No. 4 should be granted.
`
`CONCLUSION
`
`
`
`
`
`PLAINTIFF’S MOTION IN LIMINE NO. 4
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`4
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`CASE NO.: 3:17-cv-05659-WHA
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`1 2 3 4 5 6 7 8 9
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 9 of 22
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`DATED: November 14, 2018
`
`
`
`Respectfully submitted,
`
`By: /s/ Kristopher Kastens
`
`
`Paul J. Andre (State Bar No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`Kristopher Kastens (State Bar No. 254797)
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`kkastens@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`PLAINTIFF’S MOTION IN LIMINE NO. 4
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`5
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`CASE NO.: 3:17-cv-05659-WHA
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`

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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 10 of 22
`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 10 of 22
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`EXHIBIT B
`EXHIBIT B
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 11 of 22
`
`
`
`PAUL ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`FINJAN, INC., a Delaware Corporation,
`
`
`
`
`
`
`Plaintiff,
`
`v.
`
`
`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`
`
`
`
`Defendant.
`
`
`Case No.: 3:17-cv-05659-WHA
`
`PLAINTIFF’S FINJAN INC.’S MOTION
`IN LIMINE NO. 3 TO EXCLUDE
`IRRELEVANT TESTIMONY FROM
`DR. AVIEL RUBIN
`
`December 4, 2018
`
`Date:
`9:00 a.m.
`Time:
`Courtroom: Courtroom 12, 19th Floor
`Before:
` Hon. William Alsup
`
`
`
`
`PLAINTIFF’S MOTION IN LIMINE NO. 3
`
`CASE NO.: 3:17-cv-05659-WHA
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`1 2 3 4 5 6 7 8 9
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 12 of 22
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`
`
`INTRODUCTION
`
`Juniper and Dr. Rubin should be precluded from providing opinions that are irrelevant,
`prejudicial, or were not properly disclosed. First, Juniper should be precluded from mentioning the
`Court’s finding that Claim 10 of the ‘494 Patent was abstract, as this is irrelevant to the December 10th
`trial. Second, Dr. Rubin should be precluded from providing opinions and material that only relate to
`prosecution laches and inequitable conduct, which are similarly not at issue in the December 10th trial.
`Third, Dr. Rubin should be prohibited from providing opinions on anticipation and obviousness in the
`guise of §101 and damages analysis. Fourth, Dr. Rubin should not be permitted to provide testimony
`
`on references that he cannot establish were “well-known” at the relevant time frame for Claim 10 of
`the ‘494 Patent, a requirement under the second prong of §101 analysis. Fifth, Dr. Rubin should be
`
`precluded from providing testimony that individual words in an element are well-known, as this is
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`contrary to the law, which requires that the entire element be considered.
`
`ARGUMENT
`
`A.
`
`Juniper Should be Excluded from Providing Opinions that Claim 10 is Abstract
`Because the Court Has Already Decided This.
`Juniper should be excluded from discussing the Court’s finding that Claim 10 of the ‘494
`
`Patent is abstract, as this is not relevant to the jury’s deliberations on whether the claim has an
`
`inventive concept. Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 134 S. Ct. 2347, 2355, 189 L.
`
`Ed. 2d 296 (2014) (at step one, it must be determined whether the claims are directed to a patent-
`
`ineligible concept, and at step two, it must be determined whether there was an inventive concept).
`
`Any discussion of this determination would be confusing and misleading to the jury, as it is not
`
`informative as to whether there is an inventive concept. While Dr. Rubin acknowledges that the
`
`Court already ruled on this issue, he still provides opinions and analysis in his reports that Claim 10 is
`
`abstract. In particular, Dr. Rubin discusses the rationale of the Court’s decision and previous
`decisions regarding whether the ‘494 Patent is abstract. Ex. 5,1 9/11 Rubin Rpt. at ¶¶ 24, 25.
`Similarly, he disclosed—belatedly in a subsequent report—slides quoting the Court’s decision on
`
`
`1 Unless otherwise noted, all exhibits are attached to the Declaration of Kristopher Kastens in Support
`of Finjan’s Motions in Limine Nos. 1-4.
`
`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`1
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 13 of 22
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`summary judgment. Ex. 6, 10/11 Rubin Rpt. at Slides 24-26 (slides describing the Court’s
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`determination that claim was abstract). As Juniper has already admitted that this issue is not at issue
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`for trial, this analysis is irrelevant and would be highly prejudicial to present to the jury. Dkt. No. 222
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`at 1. Therefore, Juniper, and by extension Dr. Rubin, should be precluded from offering any opinions
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`regarding whether Claim 10 is abstract.
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`B.
`Prejudicial and Legally Irrelevant Arguments Regarding the Prosecution History.
`The Court should preclude Juniper from presenting any argument or evidence regarding
`prosecution laches and inequitable conduct, as these are not at issue in the December 10th trial and
`would be irrelevant, a waste of time, and highly prejudicial to Finjan. Despite the limited issues for
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`the upcoming trial, Dr. Rubin disclosed opinions and demonstrative slides that are only relevant to
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`prosecution laches and inequitable conduct. First, Dr. Rubin disclosed in his report that he intends to
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`discuss the time that elapsed between the priority date of the ‘494 Patent and the date when the
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`proximate application that resulted in the ‘494 Patent was filed, referring to this as an “Unexplained
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`15 Year Delay.” Ex. 6, 10/11 Rubin Rpt. at ¶¶ 52-60 and Slide 16. This argument is irrelevant to any
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`issue in the case, and is simply an attempt to argue prosecution laches to the jury. See Dkt. No. 189 at
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`20-21. Next, Dr. Rubin discloses that he will present the testimony of two of inventors, Mr. Kroll and
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`Mr. Touboul, as being inconsistent, apparently in order to create doubt regarding the inventorship of
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`the ‘494 Patent. Ex. 6, 10/11 Rubin Rpt. at ¶¶ 52-60 and Slides 17, 18. In particular, Dr. Rubin
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`includes a slide that describes that Mr. Touboul stated that he invented Claim 10 of the ‘494 Patent in
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`1996, while Mr. Kroll started his employment in 1999. Id. at Slide 18. Testimony about who
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`invented Claim 10 of the ‘494 Patent is simply not relevant, as this is not an issue that is to be decided
`at the December 10th trial. Accordingly, Dr. Rubin’s opinions that are only relevant to prosecution
`laches and inequitable conduct would only serve to mislead the jury regarding the ‘494 Patent.
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`To the extent that Juniper argues testimony regarding inventorship of Claim 10 of the ‘494
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`Patent is relevant to the priority date of the ‘494 Patent, that is not at issue for trial, as Dr. Rubin has
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`already conceded that he is accepting “November 8, 1996” as the proper priority date of claim 10 of
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`the ‘494 Patent. Ex. 5, 09/11 Rubin Rpt. at ¶ 20 (“I understand that Finjan has asserted that Claim 10
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`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 14 of 22
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`of the ‘494 Patent is entitled to a priority date of November 8, 1996 …. For purposes of my analysis,
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`I have assumed that this priority date applies ….”). Furthermore, the statements of the inventors are
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`irrelevant for determination of priority, which is instead addressed by the disclosures within the filed
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`applications. Yeda Research & Dev. Co. v. Abbott GmbH & Co. KG, 837 F.3d 1341, 1346 (Fed. Cir.
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`2016) (affirming district court’s that patent entitled to priority date based on adequate written
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`description in application). Finally, even if this testimony was relevant to priority—which it is not—
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`the prejudice to Finjan outweighs any relevance, as this has a high likelihood of confusing the jury, as
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`it suggests that all named inventors must contribute to every claim, which is incorrect as a matter of
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`law. 35 U.S.C. § 116(a) (“Inventors may apply for a patent jointly even though (1) they did not
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`physically work together or at the same time, (2) each did not make the same type or amount of
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`contribution, or (3) each did not make a contribution to the subject matter of every claim of the
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`patent.”).
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`Thus, the Court should exclude any testimony from Juniper’s witnesses regarding these topics.
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`C.
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`Dr. Rubin Should Be Excluded From Providing Opinions of Anticipation and
`Obviousness in the Guise of Damages or § 101 Analysis.
`Dr. Rubin should also be precluded from offering opinions regarding obviousness and
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`anticipation under the guise of being relevant to damages, non-infringement, or whether there is an
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`inventive concept. Juniper’s assertion that it is not offering opinions on anticipation and obviousness
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`is belied by its expert’s reports and demonstratives.
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`Dr. Rubin includes many specious arguments that directly touch on anticipation and
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`obviousness, but are couched as being relevant to damages and non-infringement. This is best shown
`through Dr. Rubin’s belated demonstratives served with his rebuttal report, which bear titles such as:
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` “Finjan Did Not Invent ‘Behavior-Base’ Analysis” Ex. 4, 11/7 Rubin Rpt. at Slide 13;
` “‘Behavior-Based’ Analysis Existed Before 1996” Id. at Slides 14-19;
` “Finjan did not Invent Detecting Unknown Viruses” Id. at Slides 20-23.
` “Claim 10 Has Minimal Benefits Over Prior Art” Id. at Slide 28.
`In each of these slides and associated disclosures in his expert report, Dr. Rubin attempts to
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`show that elements of the ‘494 Patent were already known in alleged prior art references, and
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`therefore performs a de facto invalidity analysis of the claims. Such testimony should be excluded as
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`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 15 of 22
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`irrelevant and more prejudicial than probative.
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`Similarly, this anticipation and obviousness analysis is irrelevant to §101 to show Claim 10
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`was “well-understood, routine, and conventional” because whether a disclosure constitutes an
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`inventive concept is subject to a higher standard than simply showing a concept existed in purported
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`prior art. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether a particular
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`technology is well-understood, routine, and conventional goes beyond what was simply known in the
`prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not
`mean it was well-understood, routine, and conventional.”) (emphasis added). Indeed, the search for
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`an inventive concept should not be confused with a novelty or non-obviousness determination.
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`Despite this, Dr. Rubin includes material that is directed to anticipation and obviousness, such as
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`findings at the PTAB regarding Claim 1 of the ‘494 Patent and the Swimmer reference. Ex. 5, 09/11
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`Rubin Rpt. at ¶¶ 29-30. Any findings from the PTAB regarding what is disclosed in Swimmer vis-à-
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`vis the claims of the ‘494 Patent cannot show the material was “well-understood, routine and
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`conventional,” because what constitutes “prior art” for purposes of §102 and §103 analysis, is a lower
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`standard. Berkheimer, 881 F.3d at 1369. As such, Juniper and Dr. Rubin should be precluded from
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`opining that an obviousness or anticipation determination shows that something was well-understood.
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`D.
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`Dr. Rubin Should Be Excluded from Relying Documents or Systems that Cannot
`Establish what was “Well-known, Routine, and Conventional.”
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`1.
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`Documents that Cannot Establish that Claim 10 Was “Well-known,
`Routine, and Conventional.”
`Dr. Rubin relies on specific documents that were not publicly available at the relevant time of
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`November 8, 1996, does not assert that they relate to the general state of the art, and therefore cannot
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`establish what was well-known, routine, and conventional at that time. The mere fact that something
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`is disclosed in a document does not mean it was well-understood, routine, and conventional under §
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`101, which has a higher standard for disclosure. Berkheimer, 881 F.3d at 1369 (“Whether a particular
`technology is well-understood, routine, and conventional goes beyond what was simply known in the
`prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not
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`mean it was well-understood, routine, and conventional.”) (emphasis added); see also Affinity Labs of
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`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 16 of 22
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`Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (same); Bascom Glob. Internet
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`Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (“[I]t is of course now
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`standard for a § 101 inquiry to consider whether various claim elements simply recite ‘well-
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`understood, routine, conventional activit[ies].’” (second alteration in original) (quoting Alice, 134
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`S.Ct. at 2359)). Accordingly, whether a particular technology is well-understood, routine, and
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`conventional requires more than merely showing what was included in a document. Rather, it
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`requires showing that the material was well-known at that time.
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`However, Dr. Rubin relies on numerous documents for his §101 analysis, like patent
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`applications and research papers, which describe what were new technologies. In fact, Dr. Rubin
`attempts to rely on eight references, seven of which are patents, that were not public prior to the
`agreed upon November 8, 1996 critical date of the ‘494 Patent. Ex. 5, 9/11 Rubin Rpt. at ¶ 20 (“For
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`purposes of my analysis, I have assumed that [the November 8, 1996] priority date applies and
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`considered the state of the art as it existed prior to that time.”). Disclosures in the body of a patent—
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`one that was not even published before the critical date—cannot be used to establish this material was
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`well-known. In fact, it tends to show the opposite because parties filing a patent believed that this
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`material was novel. As such, these references that were not published before the priority date of the
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`‘494 Patent cannot be relied on to show that Claim 10 lacks an inventive concept since they were not
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`published until after the critical date of Claim 10 of the ‘494 Patent:
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`Reference
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`Date of Purported
`Publication
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`Gryaznov: Proceedings of the
`Fifth International Virus
`Bulletin, pp. 225-234
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`1999
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`Citation in Rubin Report
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`Ex. 5, 9/11 Rubin Rpt.,
`Exhibit 5 (cited in ¶ 39)
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`Patent
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`Filing Date
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`Issuance Date
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`1 U.S. Patent No.
`6,088,801 (“Grecsek”)
`2 U.S. Patent No.
`5,951,698 (“Chen”)
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`January 10, 1997
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`July 11, 2000
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`October 2, 1996
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`September 14,
`1999
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`Citation in Rubin
`Report
`Ex. 5, 9/11 Rubin Rpt.,
`Exhibit 6 (cited in ¶ 40)
`Id., Exhibit 7 (cited in
`¶ 41)
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`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`Case 3:17-cv-05659-WHA Document 232 Filed 11/16/18 Page 17 of 22
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`3 U.S. Patent No.
`5,615,367 (“Bennett”)
`4 U.S. Patent No.
`5,623,600 (“Ji”)
`5 U.S. Patent No.
`5,649,095 (“Cozza”)
`6 U.S. Patent No.
`5,802,275 (“Blonder”)
`7 U.S. Patent No.
`6,065,118 (“Bull”)
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`May 25, 1993
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`March 25, 1997
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`September 26,
`1995
`October 4, 1993
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`April 22, 1997
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`July 15, 1997
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`June 22, 1994
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`September 1, 1998
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`September 24,
`1996
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`May 16, 2000
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`Id., Exhibit 26 (cited in
`¶ 51)
`Id., Exhibit 27 (cited in
`¶ 60)
`Id., Exhibit 28 (cited in
`¶ 52)
`Id., Exhibit 29 (cited in
`¶ 33)
`Id., Exhibit 30 (cited in
`¶¶ 33, 34)
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`To allow Dr. Rubin to provide testimony on references that post-date the agreed priority date,
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`and that are not described as providing a history or background of the subject matter, would be highly
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`prejudicial to Finjan and misleading to the jury. The jury will mistakenly believe that the bare fact
`that a third-party, non-public, patent application contained language regarding the alleged new
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`technologies would necessarily mean that the ‘494 Patent is not inventive. Therefore, Dr. Rubin
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`should not be permitted to backdoor in anticipation and obviousness arguments which are contrary to
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`law because they are irrelevant and will cause confusion to the jury. As such, he should be precluded
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`from relying on these references to estab