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`Case 3:17-cv-05659-WHA Document 258-2 Filed 11/27/18 Page 1 of 7
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`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.
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`UNITED STATES DISTRICT COURT
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`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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`vs.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`Defendant.
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`10610898
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`Case No. 3:17-cv-05659-WHA
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`DEFENDANT JUNIPER NETWORKS,
`INC.’S OPPOSITION TO PLAINTIFF
`FINJAN INC.’S MOTION IN LIMINE
`NO. 4 TO PRECLUDE DISCUSSION OF
`IRRELEVANT AND PREJUDICIAL
`INFORMATION
`
`Date: December 4, 2018
`Time: 9:00 a.m.
`Courtroom: Courtroom 12, 19th Floor
`Before: Hon. William Alsup
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`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 4
`(Case No. 3:17-cv-05659-WHA)
`
`
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`

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`Case 3:17-cv-05659-WHA Document 258-2 Filed 11/27/18 Page 2 of 7
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`I.
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`INTRODUCTION
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`Although Finjan has violated paragraph 2(f) of the Court’s guidelines, Juniper submits this
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`opposition to each of the multiple topics included in Finjan’s Motion in Limine No. 4 in
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`accordance with the Court’s guidance in Docket 232: “The Court agrees with Juniper that each of
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`the motions at issue covers multiple topics in violation of paragraph 2(f). Juniper, however, shall
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`please help the Court by responding to the motions at issue in any event.” Dkt. 232.
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`A.
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`Evidence and Argument Regarding Other Patents
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`Finjan’s request to exclude evidence and argument of other patents should be denied for
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`other Juniper patents (as these are relevant to the relative importance of Finjan’s sole patent in the
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`hypothetical negotiation), but references to other Finjan patents should be excluded subject to a
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`specific showing of relevance. Finjan cites cases holding that a blanket exclusion on evidence of
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`unasserted patents (such as a defendant’s patents) is inappropriate when evidence of other patents
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`is shown to be relevant and probative. See Finjan’s Motion in Limine No. 4 at 1 (citing
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`Conceptus, Inc. v. Hologic, Inc., 2011 WL 13152795 at *3 (N.D. Cal. Sep. 27, 2011) (“Judge
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`Alsup granting plaintiff’s motion in limine ‘to exclude evidence, testimony, and argument
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`concerning [defendant’s] patents … subject to a specific offer of proof at trial and a specific
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`showing of relevance and probativeness.’”) (alterations in original) (emphasis added).
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`Here, evidence of Juniper’s own patents is relevant to the hypothetical negotiation between
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`the parties for purposes of calculating damages. Juniper’s damages expert, Dr. Keith Ugone,
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`relied on evidence of Juniper’s patents and intellectual property to help establish the relative value
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`of Finjan’s patent in a hypothetical negotiation. Dr. Ugone stated: “[a]t the hypothetical
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`negotiation, Juniper would emphasize that Juniper’s contributions and features unrelated to the
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`claimed invention drove (and drive) the commercial success of the Accused Products.” Ex. 21
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`(Ugone Report) ¶ 106. One aspect of Juniper’s contributions is that “Juniper has a strong
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`intellectual property portfolio, with over 3,300 patents worldwide as of December 31, 2017.” Id.
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`at ¶ 104. Dr. Ugone explains:
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`“At the hypothetical negotiation, the parties would be aware that
`innovation is an important contributing factor to commercial success
`in the security networks market. Juniper (and Finjan) would recognize
`that Juniper had incurred significant R&D expenses to develop the
`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 4
`(Case No. 3:17-cv-05659-WHA)
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`- 1 -
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`Case 3:17-cv-05659-WHA Document 258-2 Filed 11/27/18 Page 3 of 7
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`Accused Products, and likely would need to incur future R&D
`expenses to continually enhance and improve the Accused Products.
`These R&D expenses would be borne by Juniper alone, and represent
`significant contributions to the commercial success of the Accused
`Products unrelated to the claimed teachings of the ’494 Patent.”
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`Id. at ¶ 105. Because Juniper’s damages expert relies on evidence of Juniper’s patents and
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`intellectual property portfolio—and explains that Juniper would actually discuss this during the
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`hypothetical negotiation—it is clear that the underlying data about these patents and intellectual
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`property is relevant and probative. Moreover, they underscore the unreasonableness of the
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`opinion of Finjan’s damages expert, Mr Arst—who does not account for those contributions in any
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`As such, the fact that Juniper has invested significant resources to develop its own patented
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`technology is relevant to damages and admissible. Other courts have admitted evidence of the
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`defendant’s own patents for this same reason. Wonderland NurseryGoods Co. v. Thorley Indus.,
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`LLC, No. 12-196, 2014 WL 241751, at *2 (W.D. Pa. Jan. 22, 2014) (denying patentee’s motion in
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`limine seeking to exclude evidence of defendant’s patents because they were “relevant in the
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`calculation of an appropriate reasonable royalty”); Carnegie Mellon Univ. v. Marvell Tech. Grp.,
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`Ltd., No. CIV.A. 09-290, 2012 WL 5416440, at *1-2 (W.D. Pa. Nov. 2, 2012) (finding the size
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`and scope of an alleged infringer’s patent portfolio relevant to “calculation of alleged damages by
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`a reasonable royalty analysis”); Retractable Techs., Inc. v. Becton, Dickinson & Co., No. 07-CV-
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`250, 2009 WL 8725107, at *8 (E.D. Tex. Oct. 8, 2009) (denying motion in limine seeking to
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`exclude evidence of the defendant’s patents because “evidence of [d]efendant’s development
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`efforts and intellectual property, including patents, may be relevant to a reasonable royalty
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`analysis”).
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`In addition, Finjan’s claims of prejudice are fabricated. Juniper has never sought to argue
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`that Juniper’s products do not infringe the ’494 Patent because Juniper has its own patents.
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`Indeed, Finjan fails to cite any Juniper brief, expert report, or testimony to support this absurd
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`contention.
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`10610898
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`- 2 -
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`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 4
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 258-2 Filed 11/27/18 Page 4 of 7
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`While Juniper has made a specific showing of how Juniper’s patents and intellectual
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`property portfolio are relevant, there is no reason why any of Finjan’s patents that are not asserted
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`in the upcoming trial would be relevant. To the contrary, Finjan’s damages expert has already
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`rejected the relevance of other patents and licenses for evaluating the hypothetical negotiation and
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`instead “concluded that the Cost Approach provides the best available indicator of the economic
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`footprint of the ’494 Patent for purposes of evaluating the hypothetical negotiation in this case.”
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`Ex. 16 (Arst Report) at 45.
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`But while Finjan’s damages expert fails to show the relevance of Finjan’s other patents and
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`portfolio, it is apparent that Finjan still attempts to introduce evidence of them for inappropriate,
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`prejudicial purposes. For example, Finjan repeatedly references its other patents and patent
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`portfolio to push a narrative that it “pioneered” behavior-based analysis to support the
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`patentability of the ’494 Patent. Ex. 22 (Orso Report) at ¶¶ 48-53 (discussing various market
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`reports dated between 2003-2010 that discuss Finjan and its technology generally when the ’494
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`Patent did not issue until 2014). Whether Finjan’s other patents are innovative is irrelevant to
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`whether the recited claims in the ’494 Patent are sufficiently inventive to be patent eligible. In
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`another example, Finjan seeks to introduce evidence of the ’844 Patent and the Federal Circuit’s
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`decision in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) to argue that
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`the ’494 patent is inventive. Ex. 22 (Orso Report) at ¶¶ 53-54. For the same reasons explained in
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`Juniper’s Motion in Limine No. 2, such evidence is improper under Fed. R. Evid. 403 and is
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`inadmissible hearsay under Fed. R. Evid. 801 and 802.
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`B.
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`Evidence and Argument Regarding Irrelevant Proceedings
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`Finjan takes a hypocritical approach to evidence of its other litigations. On the one hand,
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`Finjan asks the Court to exclude evidence of Finjan’s pending litigation that reflects negatively on
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`Finjan, while asking the Court to allow evidence of resolved litigations that were favorable to
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`Finjan. But if Finjan’s co-pending litigation and PTAB proceedings are irrelevant and
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`inadmissible, then so too are the resolved outcomes of Finjan’s other litigation and PTAB
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`proceedings.
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`10610898
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`- 3 -
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`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 4
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 258-2 Filed 11/27/18 Page 5 of 7
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`Tellingly, Finjan recognizes that other litigations and proceedings involve “different
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`defendants than Juniper and different accused products” and thus “have no bearing or relevance to
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`the issues to be tried here, i.e., they do not have ‘any tendency to make a fact more or less
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`probable that it would be without the evidence.’” Finjan’s Motion in Limine No. 4 at 2. Yet,
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`Finjan would like to carve out an exception for its resolved cases—presumably to introduce
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`evidence of past infringement or validity findings in attempt to mislead the jury into thinking that
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`infringement or validity is thus more likely in this case. As explained in Juniper’s Motion in
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`Limine No. 2, such evidence and argument is not only hearsay, but sleight of hand that is
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`substantially prejudicial and irrelevant. Indeed, each case involved unique facts with different
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`defendants, different products, and often entirely different patents.
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`In addition, Finjan’s motion fails to explain any legitimate distinction for why Finjan’s
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`resolved litigation and proceedings should be admissible while its co-pending litigation and
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`proceedings should not be. For example, Finjan notes that IPR proceedings “where no final
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`written decision or denial of institution of trial has been rendered” should be excluded because
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`“[a]n IPR proceeding is self-initiated by a third-party and the mere filing of an IPR of a patent has
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`no legally binding effect on the validity of a patent.” Finjan’s Motion in Limine No. 4 at 3.
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`Likewise, resolved IPR proceedings where the PTAB chose not to invalidate a claim as anticipated
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`or obvious under 35 U.S.C. §§ 102 and 103 have “no legally binding effect on the validity of a
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`patent.”1 Yet, Finjan attempts to have its expert confuse the jury into thinking that because Claim
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`10 survived IPR §§ 102/103 challenges, Claim 10 should survive Juniper’s § 101 defense as well.
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`See Ex. 22 (Orso Report) at ¶ 45. For the same reasons explained in Juniper’s Motion in Limine
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`No. 2, such evidence is inadmissible for being substantially prejudicial and irrelevant.
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`1 Juniper notes that the prosecution history of the ’494 Patent, including the invalidation of
`Claim 1 (which has substantial overlap to the limitations of Claim 10) during IPR, is relevant to
`the issues that will be litigated at trial and is thus admissible. The invalidation of a patent claim
`during IPR is a legally binding, affirmative determination by the PTAB that a claim is not
`patentable. By contrast, a failed IPR challenge does not represent an affirmative determination
`that a patent claim is valid—a third party challenger simply failed to meet its burden of proving
`invalidity. Thus, the invalidation of Claim 1 is relevant to the upcoming trial as a legally binding
`decision impacting the ’494 Patent while failed invalidity challenges are not.
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`10610898
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`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 4
`(Case No. 3:17-cv-05659-WHA)
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`

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`C.
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`Statements that Finjan is a Non-Practicing Entity or “Patent Troll”
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`Finjan’s request to exclude the moniker “patent troll” is inappropriate and a clear attempt
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`to take back damaging admissions from John Garland, Finjan’s own 30(b)(6) witness. Indeed, at
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`deposition Mr. Garland explained that Finjan is, in fact, a non-practicing entity:
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`“Q: You mentioned that Finjan likes to distinguish itself from others
`in the industry. Which industry is that?
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`ATTORNEY KASTENS: Objection, form.
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`THE WITNESS: I use the term patent monetization. Some people
`have used, you know, patent trolls, where the company derives the
`majority of their revenue from intellectual property.”
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`Ex. 23 (November 2, 2018 Deposition of John Garland) at 26:10-19 (emphasis added).
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`Finjan wants the jury to believe that it is not in the business of deriving the majority of its
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`money from licensing intellectual property, but is instead a leading innovator in the field of
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`network security. Finjan is trying to re-make itself for trial in this case. Juniper should be
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`permitted to inform the jury about the nature of Finjan’s business model. Federal Rule of
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`Evidence 403 guards against unfair prejudice, and there is nothing unfair about explaining how
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`Finjan’s own 30(b)(6) witness describes Finjan’s business. If Finjan presents a rosy version of its
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`own business model at trial, Juniper has every right to present a contrary view of that business,
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`including by cross examining Finjan’s witnesses with their own descriptions of that business.
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`Moreover, Finjan’s business model as a non-practicing entity is directly relevant to the
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`hypothetical negotiation when calculating damages. Indeed, “[t]he commercial relationship
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`between the licensor and the licensee, such as whether they are competitors in the same territory in
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`the same line of business” is an explicit Georgia-Pacific factor routinely recognized as being
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`relevant to calculating damages. Georgia-Pacific, Corp v. U.S. Plywood Corp., 318 F.Supp. 1116,
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`1120 (S.D.N.Y. 1970); see also Digital Reg of Texas, LLC v. Adobe Systems, Inc., 2014 WL
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`4090550 at *12 (N.D. Cal. Aug. 19, 2014) (“Digital Reg’s status as a non-practicing entity is
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`relevant to damages and the Georgia-Pacific factors.”); Finjan, Inc. v. Blue Coat Systems, Inc.,
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`2015 WL 4129193 at *2, *2 n.1 (N.D. Cal. July 8, 2015) (Finjan’s own cited case holding that
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`“both parties have a right to introduce their respective companies to the jury and to provide factual
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`10610898
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`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 4
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 258-2 Filed 11/27/18 Page 7 of 7
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`background information concerning the companies” and specifically allowing the use of the term
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`“non-practicing entity.”).
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`Dated: November 23, 2018
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`IRELL & MANELLA LLP
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`By: /s/ Rebecca L. Carson
`Rebecca L. Carson
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
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`JUNIPER'S OPPOSITION TO
`FINJAN'S MOTION IN LIMINE NO. 4
`(Case No. 3:17-cv-05659-WHA)
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