Case 3:17-cv-05659-WHA Document 257 Filed 11/27/18 Page 1 of 9
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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. 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
`
`
`
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`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`Case 3:17-cv-05659-WHA Document 257 Filed 11/27/18 Page 2 of 9
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`INTRODUCTION
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`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
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`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
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`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.
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`ARGUMENT
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`A.
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`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
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`Patent is abstract, as this is not relevant to the jury’s deliberations on whether the claim has an
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`inventive concept. Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 134 S. Ct. 2347, 2355, 189 L.
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`Ed. 2d 296 (2014) (at step one, it must be determined whether the claims are directed to a patent-
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`ineligible concept, and at step two, it must be determined whether there was an inventive concept).
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`Any discussion of this determination would be confusing and misleading to the jury, as it is not
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`informative as to whether there is an inventive concept. While Dr. Rubin acknowledges that the
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`Court already ruled on this issue, he still provides opinions and analysis in his reports that Claim 10 is
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`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
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`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.
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`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`Case 3:17-cv-05659-WHA Document 257 Filed 11/27/18 Page 3 of 9
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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 257 Filed 11/27/18 Page 4 of 9
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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 257 Filed 11/27/18 Page 5 of 9
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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 257 Filed 11/27/18 Page 6 of 9
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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
`
`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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`
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`
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`Patent
`
`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”)
`
`January 10, 1997
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`July 11, 2000
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`October 2, 1996
`
`September 14,
`1999
`
`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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`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 establish what was “well-understood, routine, and conventional.”
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`2.
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`Undisclosed Systems Cannot Establish that Claim 10 Was “Well-known,
`Routine, and Conventional.”
`Dr. Rubin also generally opines that certain things were “well-known,” without providing
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`specific examples beyond his apparent experience. Ex. 5, 09/11 Rubin Rpt. at ¶¶ 31, 35, and 46. In
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`this regard, Dr. Rubin should be limited to the disclosure of his opening expert reports, and should be
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`precluded from identifying any additional systems that were not specifically named or identified in a
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`document. For example, Dr. Rubin should be precluded from naming systems that he has alleged
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`personal knowledge of, but which were not disclosed in his report, as Finjan had no opportunity to
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`respond in its rebuttal expert report.
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`E.
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`Evidence and Argument Regarding Piecemeal Portions of Claim Elements Should
`Be Excluded.
`Dr. Rubin should be excluded from providing testimony that ignores a complete claim
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`element, but instead breaks the claim element into individual words and asserts that these words were
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`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`well-known, routine, and conventional. Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
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`1315, 1328 (Fed. Cir. 2017) (holding that the features constituting the inventive concept in step two of
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`Mayo/Alice “must be more than ‘well-understood, routine, conventional activity’ ” (quoting Mayo
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`Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1298 (2012))). This type of
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`piecemeal analysis is improper, as patent claims are always written using individual words that were
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`known, and parsing an element into individual words would mean that any dictionary could render
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`well-known the claims of nearly every patent in existence. Instead of looking at entire claims
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`elements, Dr. Rubin often parses a single element into individual words, and does not consider the
`entire element. For example, with regard to the claim element “[a] Downloadable scanner coupled
`with said receiver, for deriving security profile data for the Downloadable, including a list of
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`suspicious computer operations that may be attempted by the Downloadable,” Dr. Rubin ignores in
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`much of his analysis that the disclosed Downloadable scanner must be communicatively coupled with
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`a receiver that receives Downloadables. Dkt. No. 1-6, ‘494 Patent, Claim 10; Ex. 5, 9/11 Rubin Rpt.
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`at ¶¶ 39-40 (describing scanners without analysis of connection to a receiver).
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`Additionally, Dr. Rubin argues that “databases” and “database managers” were individually
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`well known, without considering that the entire claim requires “a database manager coupled with said
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`Downloadable scanner, for storing the Downloadable security profile data in a database.” Dkt. No. 1-
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`6, ‘494 Patent, Claim 10. Further, for most of his analysis, Dr. Rubin ignores that the database
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`requires “security profile data” to be stored in it. Ex. 5, 9/11 Rubin Rpt. at ¶ 51 (“The use of a
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`database manager to store something in a database is also described in numerous articles and books
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`…”). Dr. Rubin should not be permitted to provide testimony in such a piecemeal fashion because it
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`is irrelevant, and would be highly confusing to the jury.
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`As such, Dr. Rubin’s testimony should be excluded from providing any testimony that
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`attempts to state that less than entire claim element was well-known, routine, and conventional, as this
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`is contrary to the law and would be confusing to the jury and prejudicial to Finjan.
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`For the foregoing reasons, Finjan’s Motion in Limine No. 3 should be granted.
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`CONCLUSION
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`PLAINTIFF’S MOTION IN LIMINE NO. 3
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`Case 3:17-cv-05659-WHA Document 257 Filed 11/27/18 Page 9 of 9
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`DATED: November 14, 2018
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`Respectfully submitted,
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`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. 3
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`CASE NO.: 3:17-cv-05659-WHA
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