Case 3:17-cv-05659-WHA Document 258 Filed 11/27/18 Page 1 of 6
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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.
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`
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`v.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`
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`Defendant.
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`Case No.: 3:17-cv-05659-WHA
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`PLAINTIFF’S FINJAN INC.’S MOTION
`IN LIMINE NO. 4 TO PRECLUDE
`DISCUSSION OF IRRELEVANT AND
`PREJUDICIAL INFORMATION
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`December 4, 2018
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`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. 4
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 258 Filed 11/27/18 Page 2 of 6
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`INTRODUCTION
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`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
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`evidence and arguments regarding Juniper’s patents, irrelevant legal proceedings, or the use of
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`pejorative terms against Finjan.
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`The Court should preclude Juniper from presenting any argument or evidence regarding any
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`Evidence and Arguments Regarding Juniper’s Patents
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`A.
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`Juniper patents or patent applications, because such evidence provides zero probative value to any of
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`the claims or defenses that will be tried in this case. See Fed. R. Evid. 401-403; Conceptus, Inc. v.
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`Hologic, Inc., No. C 09-02280 WHA, 2011 WL 13152795, at *3 (N.D. Cal. Sept. 27, 2011) (Judge
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`Alsup granting plaintiff’s motion in limine “to exclude evidence, testimony, and argument concerning
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`[defendant’s] patents … subject to a specific offer of proof at trial and a specific showing of relevance
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`and probativeness.”). The only patents that are relevant to this trial include the asserted ‘494 Patent
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`and the patents in the licenses to be presented at trial. Juniper’s own patents have no bearing on any
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`theory of validity, infringement, or damages in this case. The fact that Juniper may have rights to
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`other patents does not immunize its products from infringing the ‘494 Patent. See Bio-Tech. Gen.
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`Corp. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (“[T]he existence of one’s own patent
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`does not constitute a defense to infringement of someone else’s patent. It is elementary that a patent
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`grants only the right to exclude others and confers no right on its holder to make, use, or sell.”)
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`(citation omitted).
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`Moreover, such evidence should be precluded because any probative value (e.g., company
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`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
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`example, the jury could infer that the accused Juniper products do not infringe Finjan’s ‘494 Patent
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`merely because Juniper already owns patents that may touch on other aspects of the accused products.
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`See Declaration of Kristopher Kastens filed herewith, Ex. 16 at 2, Therasense, Inc. v. Noca Biomed.
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`Corp., No. C 04-02123 WHA, Order In Limine Excluding Reference to ‘299 Patent (N.D. Cal. July
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`21, 2008) (Judge Alsup excluding all reference to a patent with low probative value in order to avoid
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`PLAINTIFF’S MOTION IN LIMINE NO. 4
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 258 Filed 11/27/18 Page 3 of 6
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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
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`defendants do not expressly so argue), a bogus line of reasoning.”) (emphasis in original).
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`Since evidence of Juniper’s existing patent rights have no probative value and present a high
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`risk of jury confusion, the Court should grant Finjan’s motion to exclude all reference to Juniper’s
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`patents.
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`B.
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`Evidence and Arguments Regarding Irrelevant Proceedings
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`The Court should preclude Juniper from presenting any argument or evidence regarding co-
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`1.
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`Co-Pending Lawsuits that have Not Reached a Jury Verdict.
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`pending lawsuits involving Finjan, except to the extent any litigation has reached a jury verdict.
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`Specifically, Finjan is involved in multiple pending litigations with different defendants than Juniper
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`and different accused products. There have been no decisions on the merits of the claims or defenses
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`in these pending lawsuits, and fact discovery has yet to close in all but one of them. Thus, these
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`pending lawsuits have no bearing or relevance to the issues to be tried here, i.e., they do not have “any
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`tendency to make a fact more or less probable than it would be without the evidence.” See Fed. R.
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`Evid. 401; see also, e.g., In re Static Random Access Memory (SRAM) Antitrust Litig., No. 07-MD-
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`01819 CW, 2010 WL 10086747, at *2 (N.D. Cal. Dec. 16, 2010) (granting motion in limine to
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`exclude reference to party’s other litigation because “[s]uch evidence does not appear relevant.”).
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`Additionally, any probative value of these co-pending litigations is far outweighed by the risk
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`of prejudice. See Fed R. Evid. 403. Introducing evidence of pending proceedings carries a substantial
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`risk that the jury will be confused, react emotionally, and perceive Finjan in an unfavorable light
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`untethered to any facts in the case. See, e.g., In re Homestore.com, Inc., No. CV 01-11115 RSWL
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`CWX, 2011 WL 291176, at *1 (C.D. Cal. Jan. 25, 2011) (granting motion in limine to exclude
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`evidence of Plaintiff’s involvement in prior lawsuits because it’s “irrelevant and carries with it a high
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`risk of prejudice.”); see also Outley v. City of New York, 837 F.2d 587, 595 (2d Cir. 1988) (finding
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`that opening up the area of other litigation “invites detailed inquiries, denials, and explanations, likely
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`to lead to multifariousness and a confusion of the issues.”); Seals v. Mitchell, No. CV 04-3764 NJV,
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`2011 WL 1399245, at *5 (N.D. Cal. Apr. 13, 2011) (quoting Oatley, 837 F.2d at 592) (the slight
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`PLAINTIFF’S MOTION IN LIMINE NO. 4
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`Case 3:17-cv-05659-WHA Document 258 Filed 11/27/18 Page 4 of 6
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`probative value of plaintiff’s litigation history “outweighed by the substantial danger of jury bias
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`against the chronic litigant.”). If such evidence is permitted at trial, Juniper would undoubtedly argue
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`that Finjan does not have a valid business, that it only seeks monetary gain, or that its claims in this
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`litigation are meritless. These arguments will likely distract the jury from the fact that Finjan has a
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`lawful right to seek redress for infringement of its patents against Juniper, regardless of whether it has
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`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
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`reached a jury verdict.
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`2.
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`Pending PTAB Proceedings Where No Final Written Decision has been
`Issued.
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`The Court should preclude Juniper from presenting any argument or evidence regarding any
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`pending PTO inter partes review (“IPR”) proceedings where no final written decision or denial of
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`institution of trial has been rendered. An IPR proceeding is self-initiated by a third-party and the
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`mere filing of an IPR of a patent has no legally binding effect on the validity of a patent. Thus,
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`informing the jury that an entity has simply initiated IPR proceedings against any of Finjan’s patents
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`carries a high risk of confusing the jury into believing that these proceedings cast doubt on the validity
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`of the asserted patents, or conclude that Finjan is not entitled to a presumption of validity. Fed R.
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`Evid. 401-403.
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`“Several courts, including the Federal Circuit, have considered whether evidence of an
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`ongoing reexamination or IPR proceeding is admissible, with the majority concluding that the
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`evidence should be precluded.” Wisconsin Alumni Research Found. v. Apple, Inc., 135 F. Supp. 3d
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`865, 873 (W.D. Wis. 2015); Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir.
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`2009) (“The district court did not abuse its discretion in concluding that the prejudicial nature of
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`evidence concerning the ongoing parallel re-examination proceeding outweighed whatever marginal
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`probative or corrective value it might have had in this case.”). This Court is part of that majority. See
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`Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2012 WL 1189898, at *3 (N.D. Cal. Jan. 4,
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`2012) (Judge Alsup granting in part a motion in limine to exclude information regarding pending
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`reexamination proceedings under Rule 403 because “the probative value is outweighed by the time
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`PLAINTIFF’S MOTION IN LIMINE NO. 4
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 258 Filed 11/27/18 Page 5 of 6
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`and confusion that would be involved.”). For these reasons, pending IPR proceedings should be
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`excluded.
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`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”
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`C.
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`non-practicing entity (“NPE”), patent assertion entity (“PAE”), “patent troll,” or any other term that
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`has a derogatory or negative connotation at trial, as these terms readily conjure up the fact that Finjan
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`may be involved in other pending litigation. See Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197-WHO,
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`2016 WL 4560071, at *8 (N.D. Cal. Aug. 22, 2016) (granting Finjan’s motion in limine in part to
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`preclude uses of the terms “patent assertion entity” and “patent troll.”); see also Finjan, Inc. v. Blue
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`Coat Sys., Inc., No. 13-cv-03999-BLF, 2015 WL 4129193, at *2 n.1 (N.D. Cal. July 8, 2015)
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`(“Although the Court is aware that other courts have permitted use of the term “patent assertion
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`entity,” the Court finds that this term carries negative connotations similar to the term “patent troll.”)
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`(citation omitted). Finjan therefore moves to preclude Juniper from all references to the terms “patent
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`troll,” “patent assertion entity,” “non-practicing entity,” or any other derogatory terms that will
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`prejudice Finjan.
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`For the foregoing reasons, Finjan’s Motion in Limine No. 4 should be granted.
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`CONCLUSION
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`PLAINTIFF’S MOTION IN LIMINE NO. 4
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`Case 3:17-cv-05659-WHA Document 258 Filed 11/27/18 Page 6 of 6
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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. 4
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`CASE NO.: 3:17-cv-05659-WHA
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