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`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 1 of 14
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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)
`ccurran@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.
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`FINJAN, INC., a Delaware Corporation,
`
`
`Plaintiff,
`
`vs.
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`
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
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`Defendant.
`
`
`
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`
`
`
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`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`Case No. 3:17-cv-05659-WHA
`
`JUNIPER NETWORKS, INC.’S MOTION
`IN LIMINE NO. 2 TO EXCLUDE
`EVIDENCE AND ARGUMENT
`ON OUTCOMES FROM
`FINJAN’S PRIOR LITIGATION
`
`December 4, 2018
`
`Date:
`9:00 a.m.
`Time:
`Courtroom: Courtroom 12, 19th Floor
`Before:
`Hon. William Alsup
`
`
`
`JUNIPER’S MIL NO. 2 TO EXCLUDE
`EVIDENCE AND ARGUMENT ON OUTCOMES
` FROM FINJAN’S PRIOR LITIGATION
`(Case No. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 2 of 14
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`Defendant Juniper Networks, Inc. (“Juniper”) respectfully moves the Court for an order in
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`limine precluding Plaintiff Finjan, Inc. (“Finjan”) from presenting argument or evidence of verdicts
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`and orders from Finjan’s prior litigations, including but not limited to the following orders: Finjan,
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`Inc. v. Blue Coat Systems, LLC, 2016 WL 7212322 (N.D. Cal. Dec. 13, 2016) (“Blue Coat I”) and
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`Finjan, Inc. v. Sophos, 244 F.Supp.3d at 1016 (N.D. Cal. 2016) (“Sophos”), and Finjan, Inc. v. Blue
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`Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) (“Blue Coat II”). Such argument and evidence
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`is irrelevant, prejudicial, confusing, and misleading, and is hearsay. Fed. R. Evid. 402, 403, 802.
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`Finjan’s expert reports and demonstratives make clear that Finjan intends to improperly
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`introduce argument and evidence from prior litigation against other defendants, involving other
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`products, and in some instances involving entirely different patents. The following examples from
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`Finjan’s trial demonstratives are illustrative:
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`Ex. 4 (Orso Appendix C – Demonstratives) at 13, 20.
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`- 1 -
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`JUNIPER’S MIL NO. 2 TO EXCLUDE
`EVIDENCE AND ARGUMENT ON OUTCOMES
` FROM FINJAN’S PRIOR LITIGATION
`(Case No. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 3 of 14
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`Similar examples permeate Finjan’s expert reports, which in addition to discussion of the
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`Sophos I, Blue Coat I, and Blue Coat II orders also repeatedly reference prior verdicts and the
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`amounts of damages paid by third parties. Ex. 3 (Orso Report) at ¶ 61 (“Finjan has had success
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`licensing its patents for years . . . 2008 – Verdict against Secure Computing . . . 2015 – Verdict
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`against Blue Coat . . . 2016 – Verdict against Sophos”); Ex. 2 (Arst Report) at 8 (“In June 2006,
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`Finjan, as successor to its parent FSI, filed a patent infringement lawsuit against Secure
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`Computing Corp. (“Secure”) and its subsidiaries in the United States District Court for the District
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`of Delaware, resulting in a judgment of approximately $37.3 million”).1 Such argument and
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`evidence is inadmissible, for at least three reasons:
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`First, orders issued in Finjan’s prior litigation involving different parties, different factual
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`questions about different products, and in some instances different patents, are not relevant to the
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`issues for trial. Fed. R. Evid. 401 (“Evidence is relevant if: (a) it has any tendency to make a fact
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`more or less probable than it would be without the evidence; and (b) the fact is of consequence in
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`determining the action”); Fed. R. Evid. 402 (“Evidence which is not relevant is not admissible.”).
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`Finjan cannot credibly contend that the outcomes of its prior litigations with other entities have
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`any bearing on the infringement or damages issues that the jury is being asked to decide. To the
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`contrary, Finjan’s own damages expert takes the opposite position, relying on a “Cost Approach”
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`to damages and arguing that the fact that Finjan’s licenses arose from litigation “undermine[s] the
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`use of Finjan’s licensing practices and historical agreements as a reliable starting point for
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`determining a reasonable royalty… .” Ex. 2 (Arst Report) at 33.
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`Second, any tangential relevance that these prior litigation orders or verdicts may have to
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`any issue in the case is substantially outweighed by concerns of prejudice, jury confusion, and
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`undue consumption of time. Finjan’s tactics amount to a sleight of hand, designed to mislead the
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`jury into thinking that validity or infringement of the ’494 Patent is more likely in this case
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`because various Finjan patents were found to be valid or infringed (by other companies unrelated
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`1 See also, e.g., Ex. 3 (Orso Report) at ¶¶ 53-58, 61, 67; Ex. 4 (Orso Appendix C –
`Demonstratives) at 13, 15, 20; Ex. 2 (Arst Report) at Section 6.1, 6.1.1.
`
`
`
`
`- 2 -
`
`JUNIPER’S MIL NO. 2 TO EXCLUDE
`EVIDENCE AND ARGUMENT ON OUTCOMES
` FROM FINJAN’S PRIOR LITIGATION
`(Case No. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 4 of 14
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`to Juniper) in other cases, or that damages should be awarded because damages were awarded
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`against another company in prior litigation.
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`For example, the Blue Coat I and Sophos orders that Finjan seeks to inject into the trial
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`present a clear risk of misleading the jury into believing a court has previously decided the subject
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`matter eligibility issue being presented to them. Not only would that be incredibly prejudicial to
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`Juniper, it would also be entirely incorrect. Neither order decided any of the factual issues that the
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`jury is being asked to decide. Rather, they addressed motions for summary judgment and
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`judgment on the pleadings, where the evidence is viewed in the light most favorable to the
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`nonmoving party (Finjan). See Sophos, 244 F.Supp.3d at 1060 (“While viewing the ’494 patent in
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`the light most favorable to Finjan, the patent is innovative . . .”); Blue Coat I, 2016 WL 7212322
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`at *12 (“viewed in the light most favorable to Finjan, the Court concludes that the claims recite an
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`inventive concept . . .”). In sharp contrast, the jury is being asked to actually resolve factual
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`disputes. Indeed, this Court previously declined to grant Finjan’s motion for summary judgment
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`partly because of the factual issues presented in Juniper’s Section 101 invalidity defense. See Dkt.
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`No. 189 (Order Regarding ’494 Patent) at 20. As such, evidence or argument on the decisions in
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`Blue Coat I and Sophos would result in an unwarranted, confusing, and highly burdensome side
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`show, the result of which would almost certainly be to prejudice Juniper by leaving the jury with a
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`misleading impression that a court had previously weighed in and found favor with Finjan’s
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`position.
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`The same problems would be yet further magnified if Finjan is permitted to introduce
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`argument and evidence regarding Federal Circuit’s patent eligibility decision in Blue Coat II,
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`which did not even involve the patent at issue, but instead the ’844 patent. For example, Finjan
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`intends to introduce such evidence through the testimony of its technical expert, Dr. Alessandro
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`Orso. The essence of Finjan’s argument to be presented through Dr. Orso is that, since the Federal
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`Circuit found the ’844 Patent eligible for patentability, the ’494 Patent is also eligible for
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`patentability. See Ex. 3 (Orso Report) at ¶¶ 53-54 (arguing that claim 10 of the ’494 patent is
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`- 3 -
`
`JUNIPER’S MIL NO. 2 TO EXCLUDE
`EVIDENCE AND ARGUMENT ON OUTCOMES
` FROM FINJAN’S PRIOR LITIGATION
`(Case No. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 5 of 14
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`subject matter eligible “for the reasons described by the Federal Circuit for the ’844 Patent”).2
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`This testimony serves no purpose other than to confuse and mislead the jury. The ’844 and ’494
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`Patents are different inventions with different claim limitations. As one example, in upholding the
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`validity of the ’844 Patent the Federal Circuit explained the claims “recite specific steps—
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`generating a security profile that identifies suspicious code and linking it to a downloadable—that
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`accomplish the desired result.” Blue Coat II, 879 F.3d at 1305-06 (emphasis added). By contrast,
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`the ’494 Patent makes no mention of “linking.” Attempting to educate the jury about the
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`differences between the two patents would yet further contribute to a confusing, time-consuming
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`side show separate from the actual issues for the upcoming trial.
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`As numerous prior courts have recognized, the tactic Finjan seeks to employ presents
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`unacceptable dangers of prejudice and jury confusion. Courts routinely exclude evidence of prior
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`litigation outcomes, particularly where different defendants, products, or patents were involved.
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`See, e.g., Odetics, Inc. v. Storage Tech. Corp., 185 F. 3d 1259, 1276 (Fed. Cir. 1999) (“[T]he
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`introduction of evidence of an earlier trial . . . had significant potential to confuse the jury. The
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`district court did not abuse its discretion in excluding this evidence.”) (citations omitted);
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`Mendenhall v. Cedarrapids Inc., 5 F.3d 1557, 1575 (Fed. Cir. 1993) (“In sum, we agree with [the
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`district court]’s assessment that the possibility of prejudice to the defendant and confusion of the
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`jury was very high if [the prior] opinion were admitted inasmuch as the opinion was not fact
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`evidence on the myriad issues in the second case. Moreover, prejudice is not merely in its
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`possible improper treatment as evidence of the facts. Confusion could well have arisen by
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`exposing the jury to another judge’s statement on the law.”) (emphasis added); Engquist v. Oregon
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`Dept. of Agriculture, 478 F.3d 985, 1009 (9th Cir. 2007) (“most courts forbid the mention of
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`verdicts or damage amounts obtained in former or related cases.”); AVM Technologies LLC v. Intel
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`Corporation, 2017 WL 2938191 at *1 (D. Del. April 19, 2017) (excluding references to decisions
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`and outcomes in prior litigation and noting “[t]hat it is unfairly prejudicial cannot, in my opinion,
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`be denied.”); Datatreasury Corporation v. Wells Fargo & Company, 2010 WL 11468934 at *19
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`2 See also Ex. 3 (Orso Report) at ¶ 67; Ex. 4 (Orso Appendix C – Demonstratives) at 13,
`15, 20; Ex. 2 (Arst Report) at 4.
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`- 4 -
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`JUNIPER’S MIL NO. 2 TO EXCLUDE
`EVIDENCE AND ARGUMENT ON OUTCOMES
` FROM FINJAN’S PRIOR LITIGATION
`(Case No. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 6 of 14
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`(E.D. Tex. October 5, 2010) (precluding any reference to the outcome of a plaintiff’s previous trial
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`involving different defendants and noting that “[a]llowing the discussion of the outcome of the
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`[previous] trial would be unfairly prejudicial . . .”).
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`Third, the judicial opinions issued in prior cases are hearsay—out of court statements
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`offered for their purported truth. See, e.g., Ex. 3 (Orso Report) at ¶¶ 55-58 (“I understand that two
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`District Court judges have determined that the Claim 10 contains an inventive concept and are
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`patentable under Step 2, and I agree. . . .”). As hearsay, the prior orders and verdicts are
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`inadmissible, even independent of the serious relevance, prejudice, and confusion issues described
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`above. Fed. R. Evid. 802.
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`This fundamental hearsay problem is in no way resolved by Finjan’s apparent plan to
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`channel the content of the judicial opinions through its experts. Federal Rule of Evidence 703
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`specifically forecloses this approach of using an expert as a conduit for inadmissible hearsay. Fed.
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`R. Evid. 703, advisory committee’s note to 2000 amendment (“Rule 703 has been amended to
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`emphasize that when an expert reasonably relies on inadmissible information to form an opinion
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`or inference, the underlying information is not admissible simply because the opinion or inference
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`is admitted.”); Paddack v. Dave Christensen, Inc., 745 F.2d 1254 (9th Cir. 1984). In fact, Rule
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`703 prevents an expert from even referring to (much less showing or introducing) hearsay
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`evidence unless the proponent of the expert first demonstrates that the “probative value in helping
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`the jury evaluate the opinion substantially outweighs the[] prejudicial effect.” Fed. R. Evid. 703;
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`Paddack, 745 F.2d at 1262.
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`For the three reasons discussed above, Juniper respectfully requests that this Court grant its
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`motion and enter an order in limine precluding Finjan from presenting evidence or argument of
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`orders and verdicts from Finjan’s prior litigations, including but not limited to the following
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`orders: Finjan, Inc. v. Blue Coat Systems, LLC, 2016 WL 7212322 (N.D. Cal. Dec. 13, 2016)
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`(“Blue Coat I”) and Finjan, Inc. v. Sophos, 244 F.Supp.3d at 1016 (N.D. Cal. 2016) (“Sophos”),
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`and Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) (“Blue Coat II”).
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`- 5 -
`
`JUNIPER’S MIL NO. 2 TO EXCLUDE
`EVIDENCE AND ARGUMENT ON OUTCOMES
` FROM FINJAN’S PRIOR LITIGATION
`(Case No. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 7 of 14
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`
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`Dated: November 14, 2018
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`Respectfully submitted,
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`IRELL & MANELLA LLP
`
`By: /s/ Rebecca Carson
`Rebecca L. Carson (SBN 254105)
`rcarson@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.
`
`- 6 -
`
`JUNIPER’S MIL NO. 2 TO EXCLUDE
`EVIDENCE AND ARGUMENT ON OUTCOMES
` FROM FINJAN’S PRIOR LITIGATION
`(Case No. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 8 of 14
`
`
`
`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
`OPPOSITION TO DEFENDANT’S
`MOTION IN LIMINE NO. 2 TO
`EXCLUDE EVIDENCE AND
`ARGUMENT ON OUTCOMES FROM
`FINJAN’S PRIOR LITIGATION
`
`December 4, 2018
`
`Date:
`9:00 a.m.
`Time:
`Courtroom: Courtroom 12, 19th Floor
`Before:
` Hon. William Alsup
`
`
`
`
`
`FINJAN’S OPP. TO DEF’S MOTION IN LIMINE NO. 2
`
`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 9 of 14
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`INTRODUCTION
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`The Court should deny Juniper’s Motion in Limine No. 2 under Federal Circuit precedent,
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`which holds that evidence of orders and verdicts from Finjan’s prior litigations is relevant and
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`admissible to prove damages. Such evidence is also highly probative to validity and there is no risk of
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`prejudice because the Court can fashion limiting orders to prevent any confusion or misuse. Further,
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`Finjan will not use any of the evidence described in Juniper’s motion to prove infringement. Finally,
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`this evidence is not hearsay and Courts routinely admit evidence of prior challenges to a patent’s
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`validity, especially where the prior challenge is identical to the current challenge, as it is here.
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`ARGUMENT
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`Verdicts and Orders from Finjan’s Prior Litigations Are Relevant to Damages
`A.
`The Federal Circuit holds that verdicts and orders from prior litigations are probative and
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`admissible, especially to the issue of damages. Applied Med. Resources Corp. v. U.S. Surgical Corp.,
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`435 F.3d 1356, 1365–66 (Fed. Cir. 2006) (affirming the admission of a prior verdict as relevant to the
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`reasonable royalty analysis and the Defendant’s state of mind); Maxwell v. J. Baker, Inc., 86 F.3d
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`1098, 1109-10 (Fed. Cir. 1996) (holding “[t]he objective of the reasonable royalty calculation is to
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`determine the amount necessary to adequately compensate for an infringement” and it is proper for
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`the fact finder to consider additional factors outside of Georgia-Pacific, including “[t]he fact that an
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`infringer had to be ordered by a court to pay damages, rather than agreeing to a reasonable royalty”).
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`Courts in this District have also allowed evidence of Finjan’s prior verdicts at trial. See Finjan, Inc. v.
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`Blue Coat Sys., Inc., No. 13-cv-03999-BLF, 2015 WL 4129193, at *8 (N.D. Cal. July 8, 2015)
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`(“Particularly to the extent that Defendant was aware of the Secure Computing litigation at the time,
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`the outcome from that litigation is relevant to Defendant’s state of mind entering the hypothetical
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`negotiation and to the parties’ relative bargaining strength.”). Here, Juniper admits that it is involved
`with a joint defense group and has been following and studying Finjan’s litigations for years. Ex. 111
`Coonan Nov. 16, 2018 Tr. at 173:2-174:7 (Juniper’s Senior Director of IP Litigation admitting he
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`discussed the joint defense group and followed Finjan’s prior litigations). Juniper is well aware of all
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`1 Unless otherwise noted, all exhibits are attached to the Declaration of Austin Manes in Support of
`Finjan’s Oppositions to Juniper’s Motions in Limine Nos. 1-3.
`1
`FINJAN’S OPP. TO DEF’S MOTION IN LIMINE NO. 2
`
`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 10 of 14
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`of Finjan’s prior verdicts and orders, and such awareness necessarily affected Juniper’s mindset
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`regarding its relative bargaining strength. Id.,. at 51:13-25 (admitting Juniper performed a validity
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`analysis on Finjan’s patents); see also Ex. 12, JNPR-FNJN_29011_00960426 (November 2016
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`Newsletter notifying Mr. Coonan of Finjan’s prior verdicts against Sophos, Inc. and Blue Coat
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`Systems, LLC); Ex. 13, JNPR-FNJN_29011_00960480 (March 2016 Newsletter to Mr. Coonan
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`discussing the PTAB’s denial of Symantec’s IPR petitions, including petitions against the ‘494
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`Patent). Juniper’s awareness includes the fact that the Federal Circuit found a related patent, which
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`shares an application number, inventor, and subject matter with the ’494 Patent, was valid and not
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`abstract. Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018). Juniper’s awareness
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`also includes the fact that two District Courts found the ’494 Patent had an inventive concept. Finjan,
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`Inc. v. Blue Coat Systems, LLC, No. 15-cv-03295-BLF, 2016 WL 7212322 (N.D. Cal. Dec. 13, 2016);
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`Finjan, Inc. v. Sophos, Inc., 244 F. Supp. 3d 1016 (N.D. Cal. 2017). Thus, evidence of these orders,
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`and of Finjan’s prior verdicts, are admissible at least to prove Finjan’s damages case.
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`Evidence of verdicts and orders from prior litigations are also relevant because experts on both
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`sides rely on them. Finjan’s damages expert, Kevin Arst, relies on Finjan’s litigation history and the
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`fact that many licenses were negotiated in the context of litigation against the backdrop of widespread
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`infringement in the industry. Mr. Arst relies on this evidence to explain his preference for the Cost
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`Approach as a reliable means of quantifying a baseline royalty range while evaluating the hypothetical
`negotiation. See Dkt. No. 228-72, Arst Report, pp. 29-32, 45-46. The outcomes of Finjan’s prior
`litigations are probative to the reliability of the Cost Approach and Finjan should be allowed to use
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`this evidence to rebut Juniper’s efforts to attack this methodology. Similarly, Juniper’s damages
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`expert relies on Finjan’s verdicts and litigation history to evaluate Finjan’s negotiating position in the
`hypothetical negotiation. See Dkt. No. 229-63, Ugone Report, Section IX, ¶ 70, Table 7, and at ¶¶ 60,
`79-80 (distinguishing Finjan’s jury award from the hypothetical negotiation); id., Section XI, ¶ 128
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`(referencing multiple prior Finjan orders as value indicators for the ‘494 Patent). Experts may rely on
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`2 Mr. Arst’s Report is attached as Exhibit 1 to Juniper’s Motion to Exclude, filed on November 12,
`2018.
`3 Dr. Ugone’s Report is attached as Exhibit 1 to Finjan’s Motion to Exclude, filed on November 12,
`2018.
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`FINJAN’S OPP. TO DEF’S MOTION IN LIMINE NO. 2
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 11 of 14
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`prior verdicts to support their positions. Sprint Commc'ns Co. L.P. v. Comcast Cable Commc'ns LLC,
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`225 F. Supp. 3d 1233, 1248 (D. Kan. 2016) (“The Court first rejects defendants’ argument that an
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`expert may never rely on a jury verdict. The Federal Circuit has not prohibited such reliance.”); 2-
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`Way Computing, Inc. v. Sprint Sols., Inc., No. 2:11-cv-12 JCM (PAL), 2015 WL 2365648, at *5 (D.
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`Nev. May 18, 2015) (“the court has found no rule that prohibits an expert from considering a jury
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`verdict in his royalty rate calculations if that jury verdict pertains to a matter that is sufficiently
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`comparable to the instant matter”). Thus, considering that many of Finjan’s prior orders directly
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`concern the ‘494 Patent, they are relevant and admissible and the Court should deny Juniper’s Motion
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`in Limine No. 2.
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`Verdicts and Orders from Finjan’s Prior Litigations Are Relevant to Validity
`B.
`The fact that the ‘494 Patent has withstood numerous validity challenges is also relevant and
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`admissible. This is especially true because Juniper brings the exact same challenge to validity under
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`35 U.S.C. § 101 that two prior defendants unsuccessfully argued in Blue Coat, 2016 WL 7212322, at
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`*8-12 and Sophos, 244 F.Supp.3d at 1052-61. The presumption of validity applies to all aspects of
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`patent validity, including under 35 U.S.C. § 101. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
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`1561, 1570 (Fed. Cir. 1987) (“The presumption mandated by § 282 is applicable to all of the many
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`bases for challenging a patent's validity.”). That presumption is heightened when a patent has already
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`survived a validity challenge on the same grounds. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d
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`1299, 1304 (Fed. Cir. 2008). Thus, Courts routinely allow evidence of prior challenges to a patent’s
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`validity, particularly where the prior and current challenges assert the same argument. Volterra
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`Semiconductor Corp. v. Primarion, Inc., No. C-08-05129 JCS, 2011 WL 4079223, at *6 (N. D. Cal.
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`Sept. 12, 2011) (holding the plaintiff was “entitled to introduce evidence that the PTO upheld the
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`claims of the [asserted] patents over the same prior art”). Finjan should not be precluded from
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`offering evidence of the validity challenges that the ‘494 Patent has endured, particularly where those
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`challenges overlap with the instant challenge.
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`The relevance to validity of Finjan’s prior orders is further shown by the fact that experts on
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`both sides rely on them. Juniper’s expert relies heavily on prior District Court decisions regarding the
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`3
`FINJAN’S OPP. TO DEF’S MOTION IN LIMINE NO. 2
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`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 12 of 14
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`validity of the ‘494 Patent under 35 U.S.C. § 101, including this Court’s order regarding Alice Step 1.
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`See Ex. 5 to Finjan’s MILs, 9/11 Rubin Report at ¶ 24 (citing the Court’s order on Alice Step 1) and at
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`¶¶ 25, 57-61 (citing Blue Coat, 2016 WL 7212322 and Sophos, 244 F. Supp. 3d 1016). Juniper’s
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`expert also relies on the PTAB’s final written decision invalidating claim 1 of the ‘494 Patent in order
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`to opine that claim 10 is invalid. Id., 9/11 Rubin Report ¶ 30 (“[I]t is my opinion that the Board’s
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`previous finding that Swimmer teaches all of the limitations in Claim 1 applies to this proceeding as
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`well.”); id., ¶¶ 32, 36, 47-48; see also Ex. 6 to Finjan’s MILs, 10/11 Rubin Report, ¶ 67 (citing
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`IPR2015-01892, “Other than those two structural limitations, however, the Board found that
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`Swimmer taught the rest of the claim.”), ¶ 68 (“The Board in IPR2016-00159 (in which I testified)
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`reached effectively the same holding.”).
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`Further, Juniper cites to evidence presented during Finjan’s prior PTAB proceedings to argue
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`claim construction, non-infringement, lack of technical benefits, and non-infringing alternatives. Ex.
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`6 to Finjan’s MILs, 10/11 Rubin Report, ¶¶ 29-30, 137-138, 156; see also Ex. 3 to Finjan’s MILs,
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`11/7 Rubin Report, ¶¶ 33-36, 86. Finjan’s rebuttal expert also relies on the prior District Court cases
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`rejecting a challenge to the ‘494 Patent’s validity under 35 U.S.C. § 101, and on the Federal Circuit’s
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`decision in Blue Coat, 879 F.3d 1299. Ex. 14, Orso Report, ¶¶ 35, 53-58 (“I note that Dr. Rubin does
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`not fully address Judge Orrick’s opinion at Step 2 in his Report.”); id., Demonstrative slide 13, 15, 20.
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`Just as Juniper seeks to introduce evidence of past orders on validity, including with regard to a
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`different claim, Dr. Orso relies on the fact that the Federal Circuit found the “behavior-based”
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`approach made the ‘844 Patent innovative and opines that the ‘494 Patent is similar. Therefore, all of
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`the orders that Juniper seeks to exclude are relevant to both Dr. Orso’s and Dr. Rubin’s opinions on
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`validity. If Juniper is allowed to present evidence of this Court’s order at Alice Step 1, then Finjan
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`must be able to present evidence on prior District Court determinations regarding Alice Step 2.
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`C.
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`Finjan’s Prior Verdicts and Orders are Not Hearsay and their Probative Value
`Outweighs Any Potential Prejudice
`As shown above, verdicts and orders from Finjan’s prior litigations are highly probative to
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`damages and validity. PowerOasis, 522 F.3d at 1304 (holding evidence of overcoming prior
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`challenges to validity must be considered); Applied Med., 435 F.3d at 1365–66 (holding prior verdicts
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`4
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`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 13 of 14
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`are relevant to damages). There is no rule against admitting evidence of prior litigations, so long as
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`the probative value outweighs any prejudice. Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1573
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`(Fed. Cir. 1993) (“it may be appropriate to admit evidence of prior litigation, but such evidence must
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`pass muster.”); Trovata, Inc v. Forever 21, Inc., No. SACV 07-01196 JVS (MLGx), 2009 WL
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`10671582, at *4 (C.D. Cal. Mar. 4, 2009) (“The Court does not believe that prior litigation is so
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`prejudicial that it should be categorically excluded under Rule 403 of the Federal Rules of
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`Evidence.”). Further, exclusion of relevant evidence is “an extraordinary remedy to be used
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`sparingly.” Gametech Int'l Inc. v. Trend Gaming Sys., L.L.C., 232 F. App’x 676, 678 (9th Cir. 2007)
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`(citation omitted). “Cross-examination, presentation of contrary evidence, and careful instruction on
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`the burden of proof, rather than wholesale exclusion” are appropriate means of mitigating risk of
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`prejudice. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 580 (1993). There is no likelihood
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`of confusion or prejudice because the Court can provide appropriate jury instructions explaining the
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`import of prior orders and verdicts, while preserving their probative value. Halo Elecs., Inc. v. Pulse
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`Elecs., Inc., No. 2:07-cv-00331-PMP, 2013 WL 4458754, at *15 (D. Nev. Aug. 16, 2013), aff'd, 769
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`F.3d 1371 (Fed. Cir. 2014) (“[t]he Court’s instructions [regarding final PTO decisions on reexam]
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`during trial and at the close of evidence cured the potential prejudice”); Mendenhall, 5 F.3d at 1563-
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`64 (upholding the district court’s jury instruction on “what weight to give the Patent Office’s
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`determinations” and “the evidence presented to the Patent Office.”).
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`For the same reasons, the Court should not exclude such highly probative prior orders and
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`verdicts as hearsay. Courts routinely admit evidence of prior validity challenges that were made on
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`similar grounds. See Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No. C 03-1431 SBA,
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`2006 WL 1330003, at *3 (N.D. Cal. May 15, 2006) (holding defendant “does not cite a single case in
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`support of its Motion where a court has excluded PTO documents as inadmissible hearsay. To the
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`contrary, courts regularly consider such documents when construing claims for the purposes of
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`infringement and validity analyses”) (citing Terlep v. Brinkmann Corp., 418 F.3d 1368, 1382 (Fed.
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`Cir. 2005)). Given their probative value, at minimum these verdicts and orders fall under the residual
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`exception to the hearsay rule because they are undeniably trustworthy and the interests of justice will
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`5
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`Case 3:17-cv-05659-WHA Document 265 Filed 11/27/18 Page 14 of 14
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`be best served by admitting them into evidence. Fed. R. Evid. 807; Beverly Hills Fan Co. v. Royal
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`Sovereign Corp., 21 F.3d 1558, 1562 (Fed. Cir. 1994) (“the evidence bears circumstantial indicia of
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`reliability so that it very well could be admissible at trial notwithstanding its hearsay nature”). The
`Court should deny Juniper’s Motion in Limine No. 2.4
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`
`
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`DATED: November 23, 2018
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`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.
`
`
`
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`
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`4 If the Court does not deny this MIL, it should limit the scope of any excluded evidence only to the
`specific items of evidence identified and argued against in the MIL. See Conceptus, Inc. v. Hologic,
`Inc., No. C 09-02280 WHA, 2011 WL 13152795, at *3–4 (N.D. Cal. Sept. 27, 2011) (denying, in part,
`a motion in limine to exclude evidence of a prior litigation because the request was overbroad).
`6
`FINJAN’S OPP. TO DEF’S MOTION IN LIMINE NO. 2
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