Case 3:17-cv-05659-WHA Document 256 Filed 11/27/18 Page 1 of 8
`
`
`
`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. 2 TO EXCLUDE
`IMPROPER CLAIM CONSTRUCTION
`TESTIMONY
`
`December 4, 2018
`
`Date:
`9:00 a.m.
`Time:
`Courtroom: Courtroom 12, 19th Floor
`Before:
` Hon. William Alsup
`
`
`
`
`
`PLAINTIFF’S MOTION IN LIMINE NO. 2
`
`CASE NO.: 3:17-cv-05659-WHA
`
`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
`
`

`

`Case 3:17-cv-05659-WHA Document 256 Filed 11/27/18 Page 2 of 8
`
`
`
`INTRODUCTION
`
`Dr. Rubin should be excluded from providing opinions regarding the construction of claim
`
`terms, as these arguments are not proper for the jury to consider, and are therefore irrelevant (FRE
`
`401) and more prejudicial than prohibitive (FRE 403). In particular, Dr. Rubin has disclosed in his
`
`expert report that he intends to argue in front of the jury the proper construction of the term
`
`“database” and “database schema.” Dr. Rubin should also be excluded from providing arguments that
`
`the use of “a” or “the” for an article means “one or more” of that article, i.e. “a database” should be
`
`construed only as a single unified database, as this is contrary to the law of claim interpretation. As
`
`such, the Court should exclude Dr. Rubin’s rebuttal report and trial testimony because (i) claim
`
`construction is a matter of law for the Court, not a question of fact for the jury, and (ii) Dr. Rubin’s
`
`rebuttal report applies terms in a manner that is inconsistent with the law of claim interpretation.
`
`BACKGROUND
`
`On June 22, 2018, Finjan and Defendant filed a joint claim construction statement pursuant to
`
`Patent Local Rule 4-3, where they agreed that “database” would be construed as “a collection of
`
`interrelated data organized according to a database schema to serve one or more applications.” Dkt.
`
`No. 115; see also Dkt. No. 224. Juniper confirmed in response to a Request for Admission, that this
`was the proper construction of “database” in the context of claim 10 of the ‘494 Patent. Ex. 151 at
`Resp. to RFA No. 1. Despite this apparent agreement between the parties, in its Opposition to
`
`Finjan’s motion for early summary judgment, Juniper argued that “database,” in fact, should be
`
`further construed and premised non-infringement arguments entirely on shoehorning many additional
`
`limitations into this single well understood term. See, e.g., Dkt. No. 125-4 at 29 (Juniper’s Opp.
`
`Finjan’s MSJ) (“does not square with the definition of database as requiring data being organized
`according to ‘a database schema’ not multiple different schemas.”). When the Court issued a ruling
`
`on an early motion for summary judgment on the ‘494 Patent, it determined that there were still issues
`
`
`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. 2
`
`1
`
`CASE NO.: 3:17-cv-05659-WHA
`
`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
`
`

`

`Case 3:17-cv-05659-WHA Document 256 Filed 11/27/18 Page 3 of 8
`
`
`
`of fact to determine with respect to database, and it postponed construction of the terms within
`
`“database” until when it was instructing the jury at trial. Dkt. No. 185 at 17.
`
`On October 11, 2018, Juniper served the rebuttal report of its infringement expert, Dr. Rubin,
`
`where it shows that it intends Dr. Rubin to argue claim construction to the jury and to make legally
`
`incorrect claim interpretation arguments. First, Dr. Rubin argues that statements made during the IPR
`
`proceedings require that “database” be additionally construed as including a “table” and that this table
`
`must have “rows and columns,” even though this was not in the agreed construction. Ex. 6, 10/11
`Rubin Rpt., ¶¶ 30, 156-159; see also id., Rubin Demonstrative slide 21.2 Next, Dr. Rubin argued that
`the term “database schema” within the agreed construction must be construed (a construction of the
`
`construction) as “a description of a database to a database management system (DBMS) in the
`
`language provided by the DBMS.” Id.,¶¶ 29, 137, 149, Rubin Demonstrative slides 12, 21, 61.
`
`Finally, Dr. Rubin disclosed that he intends to provide testimony that is contrary to the law of claim
`
`interpretation, namely that the use of “a database” and “a database schema” are limited to a single
`
`database and a single database schema. See id., 10/11 Rubin Rpt., ¶¶ 120-122, 129-131, 135, 136-
`
`138, 144, 148, 149-151. For the Court’s ease of reference, Dr. Rubin makes the following legally
`
`incorrect claim construction and claim interpretation arguments:
`
`
`
`“database”
`
`Agreed Construction: “a collection of interrelated data organized
`
`according to a database schema to serve one or more applications.”
`
`Rubin’s Improper Construction 1: “a database” should be additionally
`
`construed as requiring only a single database. See Ex. 6, 10/11 Rubin Rpt.,
`
`¶¶ 120-122, 129-131.
`
`Rubin’s Improper Construction 2: “a database” should be additionally
`
`construed as being a table. Id.,¶¶ 30, 156-159; see also id., Rubin
`
`Demonstrative slides 21, 66-67.
`
`
`2 Dr. Rubin’s demonstratives are attached at the end of his October 11th report.
`
`PLAINTIFF’S MOTION IN LIMINE NO. 2
`
`2
`
`CASE NO.: 3:17-cv-05659-WHA
`
`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
`
`

`

`Case 3:17-cv-05659-WHA Document 256 Filed 11/27/18 Page 4 of 8
`
`
`
`
`
`Rubin’s Improper Construction 3: “a table” in Rubin’s improper
`
`construction of “database” should be additionally construed as requiring
`
`only a single table. Id.,¶¶ 30, 156-159, demonstrative slide 21, 66-67.
`
`Rubin’s Improper Construction 4: “a table” in Rubin’s improper
`
`construction of “database” should be additionally construed as requiring
`
`rows and columns. Id.,¶¶ 30, 157, 159.
`
`Rubin’s Improper Construction 5: a “database schema” in the agreed
`
`construction should be additionally construed as “a description of a database
`
`to a database management system (DBMS) in the language provided by the
`
`DBMS.” Id.,¶¶ 29, 137, 149, 165; see also id., Demonstrative slide 12, 21,
`
`61.
`
`Rubin’s Improper Construction 6: “the database schema” in the agreed
`
`construction should be additionally construed as requiring only a single
`
`database schema. See id., ¶¶ 129, 138, 144, 148, 149-151.
`
`Rubin’s Improper Construction 7: “the language provided by the DBMS”
`
`in the Rubin’s improper construction of “the database schema” should be
`
`additionally construed as requiring only a single language. Id.,¶¶ 137, 149-
`
`151, 165, 168.
`
`Exclusion of Dr. Rubin’s Improper Claim Construction Testimony
`
`A.
`The construction of patent claims in light of the specification and prosecution history is a
`
`question of law for the Court, not a question of fact for the jury. Icon-IP Pty Ltd. v. Specialized
`
`Bicycle Components, Inc., 87 F. Supp. 3d 928, 945 (N.D. Cal. 2015) (citing Markman v. Westview
`
`Instruments, Inc., 517 U.S. 370, 387 (1996)). As is the case here, courts are permitted to construe
`
`claim terms on a rolling basis if they so desire and provide final constructions of specific limitations
`
`in the form of jury instructions. See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d
`
`PLAINTIFF’S MOTION IN LIMINE NO. 2
`
`3
`
`CASE NO.: 3:17-cv-05659-WHA
`
`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
`
`

`

`Case 3:17-cv-05659-WHA Document 256 Filed 11/27/18 Page 5 of 8
`
`
`
`1308, 1316 (Fed. Cir. 2010) (“district courts may engage in a rolling claim construction, in which the
`
`court revisits and alters its interpretation of the claim terms as its understanding of the technology
`
`evolves.”) (citations omitted); see also MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-cv-
`
`5341 YGR, 2014 WL 971765, at *2 (N.D. Cal. Mar. 5, 2014)(“[T]he final determination of the
`
`construction of any claim occurs at the close of trial and manifests itself in the form of jury
`
`instructions.”). Consequently, the parties are strictly forbidden from presenting evidence that amounts
`
`to arguing claim construction to the jury, as this will be decided by the Court.
`
`Making these legal claim construction arguments in front of the jury would be highly
`
`confusing and potentially misleading. Courts uniformly agree that “[a]rguing claim construction to
`
`the jury is inappropriate because it risks confusion and the likelihood that a jury will render a verdict
`
`not supported by substantial evidence.” Apple, Inc. v. Samsung Elecs. Co., No. 12-cv-00630-LHK,
`
`2014 WL 660857, at *3 (N.D. Cal. Feb. 20, 2014) (citing CytoLogix Corp. v. Ventana Medical Sys.,
`
`Inc., 424 F.3d 1168, 1173 (Fed. Cir. 2005)). This prejudicial effect on the jury verdict is not remedied
`
`through proper instruction by the Court. See CytoLogix Corp., 424 F.3d at 1172-73 (“The risk of
`
`confusing the jury is high when experts opine on claim construction before the jury even when, as
`
`here, the district court makes it clear that the district court’s claim constructions control.”).
`
`To that end, Courts should exclude experts from presenting evidence (including evidence
`
`based on prosecution history, specification, and provisional applications) when using it to “explain
`
`and expound upon a specific meaning and/or requirements of the terms identified” to the jury, even if
`
`such testimony would aid the Court in understanding the true meaning of the terms. MediaTek Inc.,
`
`2014 WL 971765, at *5; see Icon-IP Pty Ltd., 87 F. Supp. 3d at 945 (granting a motion to exclude
`
`portions of rebuttal expert report relying on specifications and preferred embodiments of the patent
`
`because they amounted to improper claim construction arguments).
`
`Here, Dr. Rubin’s rebuttal report and attached demonstratives reveal a clear intent to
`
`improperly argue claim construction to the jury, and should therefore be excluded. Dr. Rubin tries to
`
`import his desired construction of “database” and “database schema” into evidence by using his
`
`rebuttal to cite to papers submitted during IPR proceedings in order to argue narrowing of the scope of
`
`PLAINTIFF’S MOTION IN LIMINE NO. 2
`
`4
`
`CASE NO.: 3:17-cv-05659-WHA
`
`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
`
`

`

`Case 3:17-cv-05659-WHA Document 256 Filed 11/27/18 Page 6 of 8
`
`
`
`each term. Specifically, Dr. Rubin improperly cites to materials from IPR2016-00159 to construe
`
`“database schema” to mean “a description of a database to a database management system (DBMS) in
`
`the language provided by the DBMS.” Ex. 6, 10/11 Rubin Rpt., ¶¶ 29, 137, 138 (“it is my opinion
`
`that none of them constitute a ‘database schema’ under the definition of ‘database schema’ provided
`
`by Finjan during the IPR ….”); id., Rubin Demonstrative slide 61. Additionally, Dr. Rubin cites to
`
`materials from IPR2016-00159 to suggest that “database schema” means organization “in the form of
`
`a table” (id., ¶ 30), and cites to materials from IPR2015-01892 to argue that a “database” must “take
`
`the form of a table, where only one table can be used for each database.” Id.,10/11 Rubin Rpt., ¶ 156,
`
`Demonstrative slide 66. Dr. Rubin uses all this improper claim construction evidence to opine that
`
`“Dr. Cole’s ‘ResultsDB Database’ would not meet the claim.” Id., 10/11 Rubin Rpt., ¶ 156; see also
`
`id., ¶¶ 135, 138. Each of these arguments are claim construction arguments, and should not be made
`
`in front of the jury.
`
`Since the Court has yet to provide a final construction of the term “database,” Dr. Rubin’s
`
`testimony which attempts to explain and expound upon its meaning should be excluded at trial
`
`because, even if proper instruction is given, it “risks confusion and the likelihood that a jury will
`
`render a verdict not supported by substantial evidence.” Apple, Inc., 2014 WL 660857 at *3.
`
`Therefore, the Court should grant the motion.
`B.
`In addition to improperly construing claim terms in his rebuttal report, Dr. Rubin applies “a
`
`Exclusion of Claim Applications that are Contrary to the Law
`
`database,” “a database schema,” and other terms in a manner that is wholly inconsistent with
`
`generally accepted rules of claim interpretation, namely that using the indefinite article such as “a” or
`
`“an” means “one or more.” TiVo, Inc. v. EchoStar Commc'ns Corp., 516 F.3d 1290, 1303 (Fed. Cir.
`
`2008)(“As a general rule, the words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one or
`
`more.’”); see also WundaFormer, LLC v. Flex Studios, Inc., 680 F. App’x 925, 931 (Fed. Cir. 2017).
`
`The exception to this rule is extremely limited, and only applies when the patentee expresses a clear
`
`intent to limit “a” or “an” to mean “one.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
`
`PLAINTIFF’S MOTION IN LIMINE NO. 2
`
`5
`
`CASE NO.: 3:17-cv-05659-WHA
`
`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
`
`

`

`Case 3:17-cv-05659-WHA Document 256 Filed 11/27/18 Page 7 of 8
`
`
`
`1342 (Fed. Cir. 2008) (“That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a rule, rather than
`
`merely as a presumption or even a convention”).
`
`Dr. Rubin breaks this rule throughout his report. First, Dr. Rubin argues that the claims call
`
`for a “single unified database.” See Ex. 6, 10/11 Rubin Rpt., ¶¶ 119-120. Second, Dr. Rubin’s
`
`rebuttal report argues that “a database schema” means only a single database schema, as opposed to
`
`what he refers to as Dr. Cole’s “hodge-podge of different ‘schemas.’” Id., ¶ 138. Third, Dr. Rubin
`
`builds upon this construction to argue that a database schema requires the use of a single language
`
`(“the language”) to describe and query the data, and that therefore, “ResultsDB Database” does not
`
`meet the database schema limitation. Id., ¶ 149. Fourth, Dr. Rubin argues that the “database”
`
`limitation is construed as a table “where only one table can be used for each database,” and attempts
`
`to call out Dr. Cole because “what [he] is pointing to would be considered ‘tables,’ there are multiple
`
`‘tables,’ not one.” Id., ¶¶ 156, 159. Finally, in Dr. Rubin’s incorrect construction of “a database
`
`schema” as “a description of a database to a database management system (DBMS) in the language
`
`provided by the DBMS,” Dr. Rubin goes beyond this improper construction to argue that “the
`
`language” is construed as “one language,” and that “ResultsDB Database” cannot meet the database
`
`limitation. Id., ¶¶ 29, 137, 149-151.
`
`In each of these instances Dr. Rubin contravenes the general rule that the indefinite article is
`
`construed to mean “more than one.” This means that Dr. Rubin’s narrowing of “a database,” a
`
`“database schema,” “the language,” and “a table,” to mean “one database,” “one database schema,”
`
`“one language,” and “one table” is legally improper. Dr. Rubin’s opinion that these elements can only
`
`refer to single component improperly interprets claims in a manner inconsistent with the law by
`
`limiting the indefinite article, and Dr. Rubin’s testimony should be excluded. Therefore, the Court
`
`should grant Finjan’s motion to exclude Dr. Rubin from making these legally unsupported arguments.
`
`For the foregoing reasons, Finjan’s Motion in Limine No. 2 should be granted.
`
`CONCLUSION
`
`
`
`PLAINTIFF’S MOTION IN LIMINE NO. 2
`
`6
`
`CASE NO.: 3:17-cv-05659-WHA
`
`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
`
`

`

`Case 3:17-cv-05659-WHA Document 256 Filed 11/27/18 Page 8 of 8
`
`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.
`
`
`
`
`
`
`
`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
`
`PLAINTIFF’S MOTION IN LIMINE NO. 2
`
`7
`
`CASE NO.: 3:17-cv-05659-WHA
`
`