Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 1 of 9
`
`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@irell.com
`Joshua Glucoft (SBN 301249)
`jglucoft@irell.com
`Casey Curran (SBN 305210)
`ccuran@irell.com
`Sharon Song (SBN 313535)
`ssong@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Rebecca Carson (SBN 254105)
`rcarson@irell.com
`Kevin Wang (SBN 318024)
`kwang@irell.com
`840 Newport Center Drive, Suite 400
`Newport Beach, California 92660-6324
`Telephone: (949) 760-0991
`Facsimile: (949) 760-5200
`
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`)
`Case No. 3:17-cv-05659-WHA
`FINJAN, INC., a Delaware Corporation,
`)
`
`
`DEFENDANT JUNIPER NETWORKS,
`)
`)
`INC.’S OPPOSITION TO PLAINTIFF
`)
`FINJAN INC.’S MOTION IN LIMINE
`)
`NO. 1 TO PRECLUDE THE LATE
`)
`DISCLOSURE AND RELIANCE ON
`)
`DOCUMENTS, WITNESSES OR
`)
`THEORIES/OPINIONS NOT TIMELY
`)
`)
`DISCLOSED
`)
`
`)
`Date: December 4, 2018
`)
`Time: 9:00 a.m.
`)
`Courtroom: Courtroom 12, 19th Floor
`)
`Before: Hon. William Alsup
`)
`
`
`Plaintiff,
`
`vs.
`
`
`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`
`Defendant.
`
`10610840
`
`
`
`
`
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`

`

`Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 2 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Finjan failed to fulfill its burden to ascertain and seek the evidence it needed to prove
`damages in this case. Faced with the potential exclusion of its damages expert, Finjan now accuses
`Juniper of violating its discovery obligations and seeks exclusion of various relevant evidence that
`undermines its damages theory. Given that fact discovery does not close until March 2019, and
`given that Finjan’s broad discovery requests apply to all of its claims (not just the ones at issue in
`this early trial), Juniper focused its efforts on the categories that Finjan told Juniper to prioritize.
`Juniper should not be penalized for failing to read Finjan’s mind about the information it needed in
`advance of trial; Juniper had no way to anticipate Finjan’s far-fetched damages theory.
`I.
`JUNIPER DISCLOSED ALL WITNESSES IN A TIMELY MANNER
`Finjan first argues that Juniper witnesses Shelly Gupta and Alex Icasiano should not be
`allowed to testify at trial because they “were not disclosed in a timely manner.” MIL1 at 1. Finjan’s
`argument mischaracterizes the factual record and fails to establish any alleged prejudice.
`Shelly Gupta: Under Rule 26(e), a party is required to supplement a disclosure or response
`“in a timely manner if the party learns that in some material respect the disclosure or response is
`incomplete or incorrect.” Fed. R. Civ. P. 26(e)(1); see also Gomo v. NetApp, Inc., 2018 WL
`6002322, at *2 (N.D. Cal. Nov. 15, 2018). Juniper served its initial disclosures on February 28,
`2018, and identified Anthony Pham as its financial witness. Mr. Pham left Juniper in August 2018.
`See Ex. 1 (Pham LinkedIn). Upon his departure, Juniper promptly amended its disclosures to
`substitute Shelly Gupta as its financial witness. Ex. 2 (9/10/18 Amended Disclosures). Thus, there
`is no basis for Finjan’s allegation that Juniper’s disclosure of Ms. Gupta was untimely.
`Moreover, Finjan’s claim that it was prejudiced because it could not take Ms. Gupta’s
`deposition is not true. Prior to serving its expert report, Finjan never requested a Rule 30(b)(6)
`deposition on financial topics; nor did it seek to depose Mr. Pham in his personal capacity.
`Moreover, Finjan did not even request Ms. Gupta’s deposition until October 24, 2018—over a
`month after Juniper served the amended disclosures. Juniper promptly produced her for deposition
`on November 16, 2018. Accordingly, Finjan suffered no prejudice from the timing of Juniper’s
`amended disclosure and there is no legitimate basis to exclude Ms. Gupta.
`
`10610840
`
`
`
`- 1 -
`
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`

`

`Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 3 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Alex Icassiano: Mr. Icasiano is a Juniper employee who is familiar with the operational
`details of Sky ATP, including low-level details of Sky ATP’s use of Amazon Web Services
`(“AWS”) and
`. Prior to serving its damages expert report on September 11, 2018, Finjan did
`not provide Juniper with any indication that this information would be relevant to the case. For
`example, Finjan did not serve any interrogatories requesting information about the percentage of
`samples that are subjected to dynamic analysis, nor did it request details on the content and scope
`of Juniper’s Amazon invoices. Moreover, Finjan did not request a Rule 30(b)(6) deposition notice
`on these issues until October 16, 2018, which was over a month after it served its expert report.
`Upon receiving Finjan’s expert report—which contains a far-fetched “cost savings” theory
`that Juniper could not have anticipated—as well as Finjan’s Rule 30(b)(6) notice on October 16,
`Juniper investigated to determine the person at Juniper who is most knowledgeable about these
`issues. Juniper then promptly amended its Rule 26 disclosures to add Mr. Icasiano, and offered dates
`for Mr. Icasiano’s deposition. Ex. 3 (Second Amended Disclosures); Ex. 4 (Email regarding Rule
`30(b)(6) deposition). Prior to this time, Juniper had no reason to believe that Mr. Icasiano had
`relevant information that was not cumulative of the other witnesses on Juniper’s Rule 26 disclosure.
`The role Mr. Icassiano plays in Juniper’s rebuttal damages expert reports (highlighted in Finjan’s
`motion) serves as evidence of this very fact. In view of this record, it is disingenuous for Finjan to
`claim prejudice.
`II.
`JUNIPER COMPLIED WITH ITS DISCOVERY OBLIGATIONS TO PRODUCE
`RESPONSIVE DOCUMENTS AND FINJAN FAILED TO SEEK THE
`INFORMATION NEEDED TO SUPPORT ITS EXPERTS
`Finjan next argues that Juniper should be precluded from “relying on confidential internal
`Juniper documents that were not produced at least a month before Finjan submitted its opening
`expert reports.” Finjan’s arbitrary one-month deadline makes no sense.
`Finjan served broad discovery requests that pertain to all of its claims—not just those at issue
`in the early summary judgment proceedings—in March 2018. To accommodate the early summary
`judgment proceedings, the parties specifically identified categories of discovery that should be
`prioritized. Juniper made diligent efforts to accommodate all such requests from Finjan. Finjan
`elected to focus on technical discovery, and did not make any specific requests for Juniper to
`
`10610840
`
`
`
`- 2 -
`
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`

`

`Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 4 of 9
`
`prioritize its production of damages-related documents pertaining to cost and financial information
`before the summary judgment hearing. Nor did Finjan follow up with any requests for Juniper to
`prioritize the production of the specific evidence Finjan believed it needed to support its damages
`case in advance of serving its expert report. Juniper did not and could not have predicted the
`nonsensical damages theory Finjan now advances and was thus not aware of Finjan’s need for the
`documents it claims were produced too late.
`Specifically, Finjan made no attempt to seek additional information concerning Juniper’s
`AWS or
` Juniper made clear in its discovery responses that dynamic analysis is
`hosted on i
`. See Ex. 5 (Juniper’s Resp. To Interrogatory No. 11). To the extent Finjan desired
`to present a damages theory revolving around costs incurred by additional dynamic analysis, Finjan
`should have sought the discovery it needed—at minimum, by raising this issue with Juniper. Instead,
`Finjan remained silent and chose to serve an ill-informed damages report. Further, Finjan cannot
`credibly claim any prejudice resulting from the timing of Juniper’s production of its
`
`given that its expert who opined that Juniper’s AWS invoices reflect cost savings did not review the
`produced AWS invoices. See Ex. 6 (Cole Dep) at 149:3-8 (“Q. Did you review Juniper’s AWS
`invoices? A.·I believe they were discussed on the phone call. Q.·Did you personally review them?
`A. I would have to check, but I do not think that I did.”)(emphasis added). There is no reason to
`believe Dr. Cole would have changed course and reviewed the
` had they been
`provided in advance of his report.
`Additionally, as Finjan concedes, on September 7, 2018, Juniper produced a financial
`spreadsheet evidencing revenues resulting from sales of SRX devices which were enabled with a
`free Sky ATP licenses. Accordingly, this information was provided before Finjan’s damages report
`was due.1 Again, Finjan failed to request a deposition concerning the produced spreadsheet or serve
`additional interrogatories until well after service of its expert report. Thus, the record shows that
`Finjan was the one that was not diligent, not Juniper.
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`1 Juniper offered Finjan with an extension for its damages expert report in exchange for an
`extension for Juniper’s rebuttal damages report but Finjan decided to forge ahead and serve its
`expert report without the evidence needed to support its chosen theories. See Ex. 7.
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`10610840
`
`
`
`- 3 -
`
`

`

`Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 5 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Finjan did not voice any complaint about the adequacy of Juniper’s discovery responses until
`November 7, 2018—well after serving its expert’s damages report. Upon first complaint Juniper
`offered to meet and confer with Finjan should it feel the need to supplement its expert report. See
`Ex. 4. Finjan never followed up on Juniper’s offer. Further, Finjan issued a series of additional
`discovery requests in mid-October—undercutting any argument that Juniper should have completed
`fact discovery pertaining to the December trial prior to Finjan’s expert reports.
`Finjan’s lack of diligence in discovery cannot excuse Finjan’s decision to serve a speculative
`damages opinion that is inconsistent with the factual record. Northern District case law provides
`helpful guidance.
`In Monolithic Power Sys., Inc. v. O2 Micro Int’l Ltd., 476 F. Supp. 2d 1143, 1155 (N.D. Cal.
`2007), clarified on denial of reconsideration, 2007 WL 1108615 (N.D. Cal. Apr. 11, 2007), the
`court granted the defendant’s motion for summary judgment on the ground that plaintiff had failed
`to prove damages. The court rejected the plaintiff’s argument that it was unable to properly calculate
`damages due to the defendant’s failure to produce evidence allowing for a more precise calculation.
`Id. The court reasoned that “the patent holder bears the burden of proving its damages” and if the
`defendant “refused to produce information that [plaintiff’s damages expert] required to determine
`the reasonable royalty, then [plaintiff] needed to get that information, if necessary through a motion
`to compel.” Id. Further, “[plaintiff] fails to show any effort it took to get all the information
`necessary for its expert to provide a reasonable royalty calculation that does not rely on unreasonable
`inferences or speculation.” Id.
`Similarly, in Microsoft Corp. v. Corel Corp., 2017 WL 6492468, at *1-*3 (N.D. Cal. 2017),
`the court excluded portions of the patentee’s damages expert’s opinion that were based on the
`patentee’s version of the cost to design around the patent. The court found that the expert was unable
`to explain why the defendant would rationally pay more than its own design-around costs. Id. at *2.
`The court rejected the expert’s argument that she had “no choice but to rely on [the irrelevant
`evidence] because [defendant’s] witnesses could not provide a comparable estimate.” Id. The court
`found that if the patentee “believed that [defendant’s] provided insufficient information about
`[defendant’s] design-around time estimates, [defendant] could have conducted discovery on that
`
`10610840
`
`
`
`- 4 -
`
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`

`

`Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 6 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`issue; and if [patentee] believed [defendant’s] responses to those discovery requests were
`inadequate, [patentee] could have moved to compel.” Id.
`Here, Finjan similarly failed to meet its burden to obtain the evidence needed to prove its
`damages case. Finjan did not even request that Juniper prioritize the discovery about which Finjan
`now complains, despite Juniper’s offer to do so. Finjan’s complaints lack merit.
`III.
`JUNIPER ADEQUATELY DISCLOSED ITS NON-INFRINGING
`ALTERNATIVES
`Finjan next claims that Juniper should be precluded from presenting Dr. Rubin’s opinion on
`non-infringing alternatives because Juniper did not disclose the details of its non-infringing
`alternatives during discovery. Mot. at 5. But the interrogatory response quoted in Finjan’s brief
`shows just the opposite—Juniper did in fact contend during discovery that non-infringing
`alternatives existed and included implementations of the prior art systems or other systems that were
`“within the knowledge or capabilities of Juniper or others in the industry.” See Dkt. 231-10
`(Juniper’s Resp. to Finjan’s Interrogatory 9). Juniper further stated that it “will timely provide expert
`disclosures” with regard to the non-infringing alternatives in accordance with the case schedule. Id.
`at 35, 34. Juniper fulfilled its promise by timely serving the opinions of its experts Dr. Rubin and
`Dr. Ugone. Prior to filing its motion in limine, Finjan never objected to Juniper’s response and failed
`to request that Juniper supplement its response. Nor did it request a Rule 30(b)(6) deposition on this
`topic, or ask any of the four Juniper engineers that it deposed about non-infringing alternatives.
`The case Finjan relies on is inapposite. In Applera Corp.-Applied Biosystems Grp. v.
`Illumina, Inc., 2008 WL 4810541, at *1 (N.D. Cal. Oct. 27, 2008), the plaintiff moved to exclude
`expert testimony “based on the ground [the expert] had relied on a never-before identified expert
`opinion written by” one of defendant’s employees. The Court initially excluded the testimony but
`granted defendant the opportunity to submit a supplemental expert report relating to any alleged
`non-infringing alternative and the defendant declined. Id. Defendant then apparently reversed course
`and submitted an expert report concerning non-infringing alternatives without providing any
`warning or additional discovery. Id. Here, Dr. Rubin does not rely on any undisclosed expert opinion
`but instead performs his own analysis. Moreover, Finjan’s argument that Finjan “had no opportunity
`
`10610840
`
`
`
`- 5 -
`
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`

`

`Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 7 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`to address these alleged alternatives, [in] its opening expert report” should be given little credence;
`rebuttal expert reports are by the very nature always served after opening reports. And there is no
`dispute that Juniper provided Dr. Rubin’s report in a timely manner.
`IV. DR. RUBIN’S DEMONSTRATIVES WERE TIMELY DISCLOSED
`Finjan’s contention that Dr. Rubin should not be allowed to use the demonstratives attached
`to his October 11 report is unfounded. While this court requires that “[i]llustrative animations,
`diagrams, charts and models may be used on direct examination only if they were part of the expert’s
`report,” this is precisely what Dr. Rubin did.
`Finjan argues that Dr. Rubin should not have been allowed to provide slides on § 101 issues
`with his rebuttal report because Dr. Cole did “not use the term ‘inventiveness’ and does not perform
`a § 101 analysis.” This is not true. The challenged demonstratives accompanying Dr. Rubin’s
`October 11 report are directly responsive to Dr. Cole’s September 11 report in which Dr. Cole
`opines on the novelty of the elements of Claim 10, as well as the “ordered combination of claim
`elements.” See, e.g., Dkt. 238-6 (Cole Rpt.) ¶¶ 23-24 (“Claim 10 of the ’494 Patent includes an
`ordered combination of elements that were novel in 1996.”).3
`Further, Finjan does not and cannot reasonably claim that it suffered any prejudice. Finjan
`received the disputed demonstratives on October 11—nearly two months before trial is set to
`commence and nearly a month before Dr. Rubin’s deposition, which occurred on November 9.
`Finjan was thus given a full and fair opportunity to cross-examine Dr. Rubin on the content of the
`identified slides well in advance of trial.
`V.
`DR. RUBIN’S REPORT IS PROPERLY WITHIN THE SCOPE OF REBUTTAL
`Finjan’s final complaint is that Dr. Rubin should be precluded from providing opinions on
`§ 101 that were included in his October 11 rebuttal report. Mot. at 6-7. “The test of whether an
`expert’s opinion constitutes rebuttal or a ‘new’ opinion . . . is not ‘whether a rebuttal expert employs
`
`
`3 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (quoting Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)) (The second step of analyzing
`a Section 101 defense requires that the court must “consider the elements of each claim both
`individually and ‘as an ordered combination’ to determine whether the additional elements
`‘transform the nature of the claim’ into a patent-eligible application.”)
`
`10610840
`
`
`
`- 6 -
`
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`

`

`Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 8 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`new testing or methodologies’ but instead, whether ‘a rebuttal attempts to put forward new theories
`outside the scope of the report it claims to rebut.’” Huawei Techs., Co, Ltd v. Samsung Elecs. Co,
`Ltd., 2018 WL 4904895, at *49 (N.D. Cal. Sept. 25, 2018). Here, Dr. Rubin’s opinions fall directly
`within the scope of Dr. Cole’s report. Indeed, Dr. Rubin’s October report responds to Dr. Cole’s
`argument that the elements and ordered combination of Claim 10 were novel at the time of invention.
`Accordingly, unlike in Matthew Enter., Inc. v. Chrysler Grp. LLC, 2016 WL 4272430, at *7 (N.D.
`Cal. Aug. 15, 2016), Dr. Rubin is not “offering new evidence and analysis to support an argument
`previously made” but is instead providing a tailored response to arguments advanced by Dr. Cole.
`Further, unlike in In re High-Tech Employee Antitrust Litig., 2014 WL 1351040, at *12 (N.D. Cal.
`Apr. 4, 2014), Dr. Rubin has not “sandbag[ged]” Defendants with new analysis and new theories
`but instead directly addresses Dr. Cole’s arguments, as is permitted in a rebuttal report. If Finjan did
`not want Juniper to provide a rebuttal report on § 101 issues, it should not have had Dr. Cole opine
`on § 101.
`As to Dr. Rubin’s November 7 report, Dr. Rubin’s opinions are directed to damages, not
`§ 101 issues. Indeed, as noted above, his opinions are offered in direct response to Dr. Cole’s
`opinions concerning the benefits of Claim 10 of the ’494 Patent and support Juniper’s damages case.
`See Finjan Ex. 5 (11/7 Rubin Rpt) at ¶ 20 (“In my opinion, Finjan’s technical experts drastically
`overstate the alleged technical benefits of Claim 10 of the ‘494 Patent because they do not link their
`analysis to the actual claim language or the actual scope of the alleged invention.”); Id. ¶ 22 (“While
`Claim 10 could be viewed as an example of one particular implementation of behavior based
`analysis, Finjan did not invent behavior based malware analysis. As such, it is inappropriate to
`attribute the general benefits of behavior based malware analysis to Claim 10 of the ‘494 Patent,
`which is what they do.”). Dr. Rubin’s analysis of Claim 10’s limited benefit is relevant to Juniper’s
`bargaining position in the hypothetical negotiation and is thus properly included within his rebuttal
`damages report. See Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116,
`1119-20 (S.D.N.Y. 1970), modified and aff'd, 446 F.2d 295 (2d Cir.) (Factor 11: “[t]he extent to
`which the infringer has made use of the invention; and any evidence probative of the value of that
`use.”) (emphasis added).
`
`10610840
`
`
`
`- 7 -
`
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`

`

`Case 3:17-cv-05659-WHA Document 255-2 Filed 11/27/18 Page 9 of 9
`
`Dated: November 23, 2018
`
`IRELL & MANELLA LLP
`
`By: /s/ Rebecca L. Carson
`Rebecca L. Carson
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`10610840
`
`
`
`- 8 -
`
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 1
`(Case No. 3:17-cv-05659-WHA)
`
`
`