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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 1 of 32
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`
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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.
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`FINJAN, INC., a Delaware Corporation,
`
`
`Plaintiff,
`
`
`
`vs.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`
`Defendant.
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`10612714
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`Case No. 3:17-cv-05659-WHA
`
`DEFENDANT JUNIPER NETWORKS,
`INC.’S MEMORANDUM OF LAW IN
`SUPPORT OF ITS PROPOSED JURY
`INSTRUCTIONS
`
`Date: December 4, 2018
`Time: 9:00 a.m.
`Courtroom: Courtroom 12, 19th Floor
`Before: Hon. William Alsup
`
`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
`
`

`

`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 2 of 32
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`TABLE OF CONTENTS
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`Page
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`DISPUTED INSTRUCTION NO. 3 RE SUMMARY OF CONTENTIONS .................... 1
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`1
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`I.
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`2
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`3
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`II.
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`DISPUTED INSTRUCTION ON CLAIM CONSTRUCTIONS ....................................... 5
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`4
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`III.
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`DISPUTED INSTRUCTION NO. 5 RE OUTLINE OF TRIAL ........................................ 6
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`5
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`IV.
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`DISPUTED INSTRUCTION NO. 6 RE SUMMARY OF CONTENTIONS .................... 8
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`6
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`V.
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`DISPUTED INSTRUCTION NO. 9 RE DIRECT INFRINGEMENT ............................. 10
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`7
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`VI.
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`DISPUTED INSTRUCTION NO. 10 RE LITERAL INFRINGEMENT ........................ 11
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`VII. DISPUTED INSTRUCTION NO. 11 RE INFRINGEMENT UNDER THE
`DOCTRINE OF EQUIVALENTS .................................................................................... 13
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`8
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`9
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`VIII. DISPUTED INSTRUCTION NO. 14 RE INVALIDITY—PATENT
`ELIGIBILITY ................................................................................................................... 14
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`10
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`11
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`IX.
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`DISPUTED INSTRUCTION NO. 15 RE DAMAGES—BURDEN OF
`PROOF .............................................................................................................................. 16
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`15
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`16
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`X.
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`DISPUTED INSTRUCTION NO. 16 RE DATE OF COMMENCEMENT
`OF DAMAGES – PRODUCTS & NOTICE .................................................................... 17
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`A.
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`B.
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`C.
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`Marking ................................................................................................................. 17
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`Actual Notice ......................................................................................................... 19
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`Expiration Date ..................................................................................................... 26
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`17
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`XI.
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`DISPUTED INSTRUCTION NO. 17 RE REASONABLE ROYALTY ......................... 27
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`18
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`20
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`XII. DISPUTED INSTRUCTION NO. 19 RE REASONABLE ROYALTY—
`AVAILABILITY OF A NON-INFRINGING SUBSTITUTES ....................................... 28
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`XIII. DISPUTED INSTRUCTION NO. 20 RE DAMAGES—COMPARABLE
`LICENSES ........................................................................................................................ 30
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`10612714
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 3 of 32
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`I.
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`DISPUTED INSTRUCTION NO. 3 RE SUMMARY OF CONTENTIONS
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`With regard to the “Summary of Contentions” instruction, Juniper proposes that the Court
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`adopt the language of the Northern District of California’s (“N.D. Cal.”) Model Patent Jury
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`Instruction A.3, with the only substantive change being the addition of the defenses that will be
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`tried in addition to invalidity, which is contemplated by the bracketed text in the model instruction
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`(“[Add other defenses, if applicable]”).
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`Finjan, on the other hand, has proposed that the Court use Federal Circuit Bar Association
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`Model Patent Jury Instruction No. A.2 as a starting point, with the following substantive additional
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`modifications: (1) delete the language noting that infringing conduct must occur in the U.S.,
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`10
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`(2) delete the suggested language concerning invalidity, (3) omit any mention of Juniper’s other
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`11
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`defenses, and (4) insert self-serving language about infringement and invalidity. In addition,
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`12
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`Finjan attempts to reframe the accused products in a way that is not consistent with the Court’s
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`13
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`Summary Judgment Order.
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`14
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`As an initial matter, where the parties do not agree on which model instruction to use,
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`15
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`courts in the Northern District of California have expressed a strong preference to use the
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`16
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`Northern District of California Model Patent Jury Instructions. See Apple, Inc. v. Samsung
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`17
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`Electronics Co., Ltd., 5:11-cv-01846-LHK, Dkt. No. 1296 at 1-2 (N.D. Cal. July 23, 2012) (Order
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`18
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`Requiring Lead Trial Counsel to Meet and Confer for Final Jury Instructions) (“In addition, to
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`19
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`give the parties further guidance, the Court has a strong preference for the use of the Ninth Circuit
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`20
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`Model Jury Instructions and the Northern District of California Model Patent Jury Instructions.”);
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`21
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`Fujifilm Corporation v. Motorola Mobility LLC, 3:12-cv-03587-WHO, Dkt. No. 316 at 19 (N.D.
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`22
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`Cal. April 28, 2015) (tentative order regarding final jury instructions rejecting proposed
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`23
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`instructions that unnecessarily deviate from the Northern District model instruction) (“Note: This
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`24
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`is Fujifilm’s proposed version. Motorola’s proposed version unnecessarily deviates from the
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`Northern District model instruction.”) (emphasis in original). Finjan has provided no explanation
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`for its departure and the Court should not adopt Finjan’s proposal.1
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`28
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`1 As a general matter, Juniper has consistently proposed the use of the N.D. Cal. Model
`Patent Jury instructions with any alterations limited to addressing the unique circumstances of this
`case. Finjan, on the other hand, has selectively chosen between a hodgepodge of the N.D. Cal
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`10612714
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 4 of 32
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`To the extent that the Court chooses to adopt the language of the Federal Circuit Bar
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`Association Model Patent Jury Instruction instead, Juniper respectfully requests that the Court
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`reject Finjan’s inappropriate modifications.
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`First, Finjan’s proposal contains an inaccurate description of the Accused Products. As
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`noted in the parties’ Daubert briefing, Finjan is making an untimely attempt to expand its
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`infringement theory to encompass SRX devices that were never used with Sky ATP, as well as
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`SRX devices that are not even compatible with Sky ATP. See Dkt. No. 230 at 12-15. To avoid
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`confusion, the Accused Products should be defined using the language that Finjan used in its
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`Motion for Summary Judgment, and which the Court used in its Order. Dkt. No. 98 at 1; Dkt. No.
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`10
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`189 at 3. In particular, the Accused Products should be defined as “(1) Juniper’s SRX Gateways
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`11
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`used in combination with Sky ATP, and (2) Sky ATP alone.” It is important to properly define the
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`12
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`Accused Products for purposes of infringement, notice under § 287, and damages.
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`13
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`Second, Finjan’s deletion of the language making clear that the conduct comprising direct
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`14
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`infringement must occur in the United States, and providing a more detailed description of
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`15
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`invalidity is inappropriate and self-serving. If Finjan wants to use the Federal Circuit Bar
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`16
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`Association Model Patent Jury Instruction, it should not be allowed to delete the portions it does
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`17
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`not like.
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`18
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`Third, Finjan’s description of Juniper’s defense under § 287 is too abbreviated and fails to
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`19
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`adequately inform the jury on the scope of the issues that need to be decided. During summary
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`20
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`judgment briefing, Juniper expressly raised Finjan’s failure to comply with the marking and notice
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`21
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`requirements of § 287, and explained that this failure precluded Finjan from recovering any
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`22
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`damages in this case because the ’494 Patent expired before Finjan filed its lawsuit. In particular,
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`23
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`Juniper argued Finjan incurred a notice obligation pursuant to § 287 because it and its licensees
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`24
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`sold products that embody the ’494 Patent, but failed to mark those products. Because (and only
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`27
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`28
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`Model Patent Jury Instructions, the Federal Circuit Bar Association Model Patent Jury
`Instructions, and the American Intellectual Property Law Association Model Patent Jury
`Instructions. Juniper has agreed to some of Finjan’s proposals under these other instructions in an
`effort to compromise and narrow the issues, but maintains that cherry picking between model
`instructions is inappropriate.
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`10612714
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 5 of 32
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`because) of this failure to mark, Finjan is permitted to collect damages only after it provided
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`Juniper with actual and specific notice of infringement pursuant to § 287. Finjan disputed this
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`issue on summary judgment, and the Court determined that there were factual issues that needed to
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`be determined by the jury. Dkt. No. 189 at 20.
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`Finjan now seems to be taking the position that it will not contest that it failed to mark its
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`products (thus triggering an actual notice requirement pursuant to § 287), but it has not been clear
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`or forthright about its new position. Specifically, when Finjan sent Juniper a draft of the joint jury
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`instructions it noted in the draft that “No instruction on marking is appropriate because marking is
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`not an issue for trial.” When Juniper asked Finjan to clarify why it believed that marking is not an
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`10
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`issue for trial, it stated that “Finjan is not asserting constructive notice of the ’494 Patent at trial”
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`11
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`and took the position that only actual notice will be addressed. But actual notice is only an issue if
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`12
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`Finjan did not mark products embodying the ’494 Patent. Thus, it appears that Finjan is
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`13
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`conceding that it or its licensees had an obligation to mark and failed to do so. See § 287 (“In the
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`14
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`event of failure so to mark, no damages shall be recovered by the patentee in any action for
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`15
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`infringement, except on proof that the infringer was notified of the infringement and continued to
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`16
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`infringe thereafter”) (emphasis added).
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`When Juniper pressed Finjan on this issue, it changed course, and provided an abbreviated
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`18
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`“constructive notice” instruction that addresses only the issue of whether a single Finjan-related
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`19
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`product, the Vital Security product offered by Finjan Mobile (a related entity) was marked.
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`20
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`Finjan’s proposed instructions do not address Finjan’s other products or products sold by its
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`21
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`licensees, which make up the vast majority of products sold that purportedly practice the ’494
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`22
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`Patent. In an attempt to clarify Finjan’s shifting position on marking, Juniper asked Finjan to
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`23
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`directly answer the following two questions: (1) Does Finjan intend to present evidence at trial
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`24
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`that its licensees’ products do not practice the ’494 Patent? And (2) Does Finjan intend to present
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`25
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`evidence at trial that it made reasonable efforts to ensure that its licensees complied with the
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`26
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`marking requirements of Section 287? Finjan refused to state its position on whether or not it
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`27
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`complied with § 287 with regard to its licensees. During summary judgment briefing, Finjan
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`argued that there were factual issues preventing summary adjudication on this topic. Does Finjan
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`10612714
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 6 of 32
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`believe there are still factual issues regarding its compliance with § 287? If so, the issue will need
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`to be decided by a jury. If not, the jury should simply be instructed that Finjan did not comply
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`with § 287 and therefore incurred an obligation to provide actual notice to collect damages. While
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`it is fine for Finjan to change its position, it must clearly state its position so that the Court can
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`enter an order on the issue and the jury can be properly instructed. Instead, Finjan is playing
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`games by trying to unilaterally remove the issue of marking from the trial without formally
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`acknowledging that it is no longer contesting the issue.
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`In particular, it is important that the jury be instructed that the Patent Act imposes notice
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`requirements on patentees who sell products that embody the asserted patent (or whose licensees
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`10
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`sell such products), and that Juniper contends that Finjan did not meet its burden to show that it
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`complied with either the constructive or actual notice requirements.
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`12
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`Fourth, Finjan’s attempt to add details regarding the sub-issues that the jury is to decide
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`13
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`(e.g., that the jury need only decide the “database” limitation” and need only decide whether
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`14
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`Claim 10 contains an “inventive concept”) is confusing and should not be part of the high level
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`15
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`summary of contentions. In order for Finjan’s additions to make sense, the Court would need to
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`16
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`add details about the limitations of the ’494 Patent, and would also need to explain the complete
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`17
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`standard for applying 35 U.S.C. § 101. These issues are better addressed in the more detailed
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`instructions on infringement and invalidity.
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 7 of 32
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`II.
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`DISPUTED INSTRUCTION ON CLAIM CONSTRUCTIONS
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`The parties dispute the claim construction instruction as to one term—“database.”
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`Consistent with the Court’s order on Finjan’s Motion for Summary Judgment, Juniper proposes
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`that the instruction indicate that the Court will provide further instruction after the trial. Dkt. No.
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`189 at 16-17 (“The Court will postpone any further claim construction on this limitation until the
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`jury is instructed so the Court will have the benefit of the trial record before construing the
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`term.”).
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 8 of 32
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`III. DISPUTED INSTRUCTION NO. 5 RE OUTLINE OF TRIAL
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`Both parties present the N.D. Cal Model Patent Jury Instructions for their instructions, but
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`Finjan unnecessarily deletes the model’s explanatory language, as evidenced in the struck
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`passages:
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`Finjan’s Proposal:
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`After Finjan has presented its witnesses, Juniper will call its witnesses, who will also be
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`examined and subject to cross-examination and redirect. Juniper will present its evidence that
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`claim 10 of the ’494 patent is invalid. To prove invalidity of claim 10, Juniper must persuade
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`you that it is highly probable that the claim is invalid. In addition to presenting its evidence of
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`invalidity, [alleged infringer] will put on evidence responding to [patent holder]’s infringement.
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`Further, Juniper will respond to Finjan’s evidence regarding damages and notice.
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`[Patent holder] will then return and will put on evidence responding to [alleged
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`infringer]’s contention that the claims of the [ ] patent are invalid. [Patent holder] will also have
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`the option to put on what is referred to as “rebuttal” evidence to any evidence offered by
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`[alleged infringer] of non-infringement. Finjan will then put on evidence responding to Juniper’s
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`contentions.
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`Finally, [alleged infringer] will have the option to put on “rebuttal” evidence to any
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`evidence offered by [patent holder] on the validity of [some] [the] claims of the [ ] patent.
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`The purpose of this instruction is to inform the jury of the order in which evidence will be
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`presented at trial. There is no reason to delete the portion of the model instruction that explains
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`when Juniper will present its non-infringement evidence. In addition, Juniper will be presenting
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`evidence that Finjan neither marked its products pursuant to § 287 nor provided Juniper with
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`actual notice that the accused products (“SRX Gateways used in combination with Sky ATP and
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`Sky ATP alone”) infringed the ’494 patent before the patent expired on January 29, 2017.
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`Although Finjan’s position has changed a number of times, Juniper understands that Finjan
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`currently intends to present evidence that it did mark in compliance with § 287. Accordingly,
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
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`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 9 of 32
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`Juniper’s proposed instruction explains that each party will be presenting evidence relevant to
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`2
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`§ 287:
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`Finjan’s Proposal
`For damages, Finjan must persuade you that it
`is more likely than not that Finjan put Juniper
`on notice of the ’494 Patent before January 29,
`2017.
`
`Juniper’s Proposal
`Finjan will also present evidence that it
`complied with the notice requirements of the
`Patent Act. The parties have stipulated that
`Finjan failed to provide constructive notice
`because Finjan and its licensees did not
`sufficiently mark the products they made,
`offered for sale, or sold under the ’494 patent.
`Thus, to obtain damages Finjan must prove
`that it provided actual written notice to Juniper
`that it believed Juniper was infringing the ’494
`patent through the SRX Gateways used in
`combination with Sky ATP and Sky ATP
`alone before January 29, 2017.
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`Finjan’s discussion of the type of notice required by § 287 is incorrect, as set forth below
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`in the section regarding Disputed Instruction No. 16.
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`JUNIPER'S MEMORANDUM OF LAW ISO
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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 10 of 32
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`IV. DISPUTED INSTRUCTION NO. 6 RE SUMMARY OF CONTENTIONS
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`Juniper’s proposed instruction is based off the N.D. Cal. Model Patent Jury Instructions,
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`while Finjan inexplicably deviates from them and opts for the FCBA Model Patent Jury
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`Instructions. As explained in the section regarding Disputed Instruction No. 3, this is
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`inappropriate and courts in this District have consistently expressed a strong preference for
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`adopting the N.D. Cal. Model Patent Jury Instructions. Moreover, and more significantly, Finjan’s
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`proposed instruction inappropriately attempts to re-characterize the accused products in this case
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`to try to encompass SRX Gateways alone (i.e., when they are not being used “in combination with
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`Sky ATP”). This is a significant deviation from what Finjan argued in summary judgment and
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`10
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`what its own expert defined as the “Accused Products” in this case:
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`Finjan’s Motion for Summary Judgment
`(Dkt. No. 98 at 1) (emphasis added)
`“Finjan seeks an Order that Juniper infringes
`Claim 10 of the ’494 Patent because it uses
`and sells in the United States the following
`Juniper products:
`(1) Juniper’s SRX
`Gateways used in combination with Sky ATP
`and
`(2) Sky ATP
`alone
`(“Accused
`Products”).”
`
`
`Cole Declaration ISO Finjan’s Motion for
`Summary Judgment (Dkt. No. 98-1 at ¶ 23)
`(emphasis added)
`“Juniper sells, builds, and operates SRX
`Gateways and the Sky ATP in the United
`States. Juniper infringes Claim 10 of the ‘494
`Patent because the combination of the SRX
`Gateways and Sky ATP meet every element of
`the claim and Sky ATP on its own meets every
`element of the claim.”
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`Finjan’s Motion for Summary Judgment
`(Dkt. No. 98 at 2) (emphasis added)
`“Whether summary judgment of infringement
`should be granted as to claim 10 of the ’494
`Patent with respect to: (1) Juniper’s SRX
`Gateways in combination with Sky ATP and
`(2) Sky ATP alone.”
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`Cole Report (9/10/2018) at ¶ 43. (emphasis
`added)
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`“Juniper sells, builds, and operates SRX
`Gateways and the Sky ATP in the United
`States. Juniper infringes Claim 10 of the ’494
`Patent because the combination of the SRX
`Gateways and Sky ATP meet every element of
`the claim and Sky ATP on its own meets every
`element of the claim.”
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`In fact, Finjan’s new description of the Accused Products deviates from this Court’s own
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`Order regarding the products at issue on summary judgment (which, of course, was based on the
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`Accused Products in Finjan’s motion):
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 11 of 32
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`The Court’s Order (Dkt. No. 189 at 3)
`(emphasis added)
`Finjan now moves for summary judgment of direct
`infringement of Claim 10 based on
`(1) Juniper’s SRX Gateways used in combination
`with Sky ATP; and (2) Sky ATP alone (Dkt. No.
`98 at 1).
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`in
`Finjan’s New Characterization
`Proposed Instruction (emphasis added)
`The products that are alleged to infringe
`the Asserted Claim are Juniper’s SRX
`Gateway Products with Sky ATP and Sky
`ATP by itself.
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`Finjan is trying to change its definition of accused products now so it can argue to the jury
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`that SRX Gateways that were not nor could not have been used in combination with Sky ATP
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`during the damages period. This issue is discussed in greater detail in connection with Disputed
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`Instruction No. 3, above. Finjan also provides a misleading and inaccurate instruction regarding
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`notice under § 287, as discussed in further detail in connection with Disputed Instruction No. 16.
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
`
`

`

`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 12 of 32
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`V.
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`DISPUTED INSTRUCTION NO. 9 RE DIRECT INFRINGEMENT
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`Juniper proposes to adopt the N.D. Cal. Model Patent Jury Instruction practically verbatim,
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`with the exception of the following language: “Whether or not [alleged infringer] knew its
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`[product][method] infringed or even knew of the patent does not matter in determining direct
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`infringement.” Such language is inappropriate because it is prone to mislead and confuse the jury
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`in light of the unique facts of this case. Here, Juniper has raised a § 287 defense. Unless Finjan
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`can demonstrate that it provided notice that satisfies the requirements of § 287, Finjan will be
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`barred from recovering any damages because the ’494 Patent expired before the filing of the
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`lawsuit. As a result, including language in this instruction that suggests knowledge of
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`infringement “does not matter” is likely to confuse the jury, because the jury will be instructed just
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`the opposite in the instruction on Juniper’s § 287 defense. Moreover, Juniper has not—and will
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`not—present any evidence or argument to suggest that Juniper’s knowledge (or lack thereof)
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`somehow affects the infringement analysis.
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`On the other hand, Finjan deviates from the N.D. Cal. Model Patent Jury Instructions by
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`incorporating additional language that conflates this instruction with the instruction on literal
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`infringement, which is provided in Disputed Instruction No. 10. Finjan’s proposal is confusing.
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`For example, Finjan’s proposal contemplates both literal infringement and infringement under the
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`doctrine of equivalents, stating “[t]he following instructions will provide more detail on these two
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`types of infringement.” However, Finjan then states in Disputed Instruction No. 10 that an
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`instruction on literal infringement is not necessary.
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`Moreover, Finjan’s characterization of the infringement issues the jury must decide are
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`inaccurate and misleading. First, Finjan attempts to re-characterize the accused product as
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`“Juniper’s SRX Gateways Products with Sky ATP,” contradicting the Court’s Order as explained
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`in the section regarding Disputed Instruction No. 3. Second, Finjan attempts to limit the
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`infringement analysis to whether the accused products “has satisfied the limitation of a
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`‘database.’” This reductive characterization is inaccurate and misleading, as explained in the
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`section regarding Disputed Instruction No. 10.
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 13 of 32
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`VI. DISPUTED INSTRUCTION NO. 10 RE LITERAL INFRINGEMENT
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`Throughout the jury instructions, Finjan attempts to reduce the issue of infringement to
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`whether Juniper’s products simply contain a “database.” The parties’ dispute on how to
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`characterize the infringement issue the jury must decide is summarized below:
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`Finjan’s Proposal (emphasis added)
`To decide whether Juniper’s product literally
`infringes Claim 10 of the ’494 Patent, you must
`determine whether
`that product has
`the
`“database” recited in Claim 10. If Juniper’s
`products contain a “database,” Juniper
`literally infringes that claim. If, however,
`Juniper’s products do not meet contain a
`“database,” Juniper’s products do not literally
`infringe that claim.
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`Juniper’s Proposal
`In this case, I have found that Juniper’s SRX
`Gateways used in combination with Sky ATP
`and Sky ATP alone meet the elements of “a
`receiver
`for
`receiving
`an
`incoming
`Downloadable” and “a Downloadable scanner
`coupled with said receiver, for deriving security
`profile data for the Downloadable, including a
`list of suspicious computer operations that may
`be attempted by the Downloadable.” Your job
`is to decide whether Juniper’s SRX Gateways
`used in combination with Sky ATP and Sky
`ATP alone meet the limitation of “a database
`manager coupled with said Downloadable
`scanner, for storing the Downloadable security
`profile data in a database.” If so, Juniper’s
`product literally infringes that claim.
` If,
`however, Juniper’s product does not meet this
`limitation of claim 10, Juniper’s product does
`not literally infringe that claim.
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`Finjan’s proposal is an overly reductive characterization of the infringement issue before
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`the jury. Juniper does not infringe simply because somewhere in its accused products there is a
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`“database.” Rather, the issue is whether the accused products contain a “database” within the
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`meaning of the entire claim. See Weber-Stephen Products LLC v. Sears Holding Corporation,
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`2015 WL 9304343, at *10 (N.D. Ill. Dec. 22, 2015) (“Where Sears goes wrong is in taking the
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`‘tank blocking structure’ limitation out of context; specifically, reading it in isolation from the
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`‘frame assembly’ limitation of which it is a part.”); Perkin-Elmer Corp. v. Westinghouse Elec.
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`Corp., 822 F.2d 1528, 1533 (Fed. Cir. 1987) (“That statement also was a recognition that, in
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`applying the doctrine of equivalents, each limitation must be viewed in the context of the entire
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`claim.”). In order to find infringement, the jury must determine that the component that the Court
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 14 of 32
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`found met the database manager limitation (i.e., the ResultsDB interface) stores the component
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`that the Court found meets the security profile data limitation (i.e., the JSON results) in what
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`Finjan has identified as the alleged database (i.e., the so-called “ResultsDB database”), and that
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`the alleged database meets the construction of “database.” Finjan’s proposal to simply instruct the
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`jury that all it needs to do is determine whether the accused products contain a “database” is
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`misleading and incomplete because it ignores the particular requirements of the database recited in
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`the claim. As such, Juniper’s proposed instruction should be adopted so that the jury appropriately
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`considers all of the requirement limitations of the database, namely, “a database manager coupled
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`with said Downloadable scanner, for storing the Downloadable security profile data in a
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`database.”
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
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`Case 3:17-cv-05659-WHA Document 272 Filed 11/27/18 Page 15 of 32
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`VII. DISPUTED INSTRUCTION NO. 11 RE INFRINGEMENT UNDER THE
`DOCTRINE OF EQUIVALENTS
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`Juniper offers the N.D. Cal. Model Patent Jury Instruction on the doctrine of equivalents
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`verbatim. As noted in the section regarding Disputed Instruction No. 3, courts in the Northern
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`District have a strong preference for adopting the N.D. Cal. Model Patent Jury Instructions and the
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`Court should do so here.
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`Finjan, on the other hand, inexplicably deviates from the N.D. Cal. Model Patent Jury
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`Instructions by opting for the instructions from the FCBA, and then inserts the following
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`additional language: “Finjan must prove the equivalency of the actions to a claim element by a
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`preponderance of the evidence, i.e., that it is more likely than not that the actions are
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`equivalent.” (Finjan’s additional language emphasized). Finjan’s instruction misstates the
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`standard for doctrine of equivalents. Merely proving that the “actions” are equivalent is
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`insufficient to prove infringement under the doctrine of equivalents. It is not even clear what
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`Finjan means by “actions”; but whatever it means, Finjan’s proposal could easily mislead the jury
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`into thinking that the doctrine of equivalents is satisfied provided the accused product merely
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`performs an equivalent function. But this, of course, is not the law, as it ignores the required
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`equivalence in the “way” and “result. The correct standard is whether “the part of the product
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`performed substantially the same function, in substantially the same way, to achieve substantially
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`the same result as the requirement in the patent claim.” Abraxis Bioscience, Inc. v. Mayne Pharma
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`(USA) Inc., 467 F.3d 1370, 1379 (Fed. Cir. 2006).
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`JUNIPER'S MEMORANDUM OF LAW ISO
`ITS PROPOSED JURY INSTRUCTIONS
`(Case No. 3:17-cv-0