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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 1 of 26
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`PAUL J. 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
`
`
`
`Case No.: 3:17-cv-05659-WHA
`
`MEMORANDUM OF LAW IN SUPPORT
`OF FINJAN’S JURY INSTRUCTIONS
`
`
`Trial Date: December 10, 2018
`Time:
` 7:30 a.m.
` Courtroom 12 – 19th Floor
`Place:
`Judge:
` Hon. William Alsup
`
`
`
`
`FINJAN, INC.,
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`Plaintiff,
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`v.
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`JUNIPER NETWORKS, INC.,
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`Defendant.
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`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
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`CASE NO. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 2 of 26
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`Pursuant to the Court’s Guidelines for Trial and Final Pretrial Conference in Civil Jury
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`
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`Cases, Finjan, Inc. (“Finjan”) submits this Memorandum of Law in support of its proposed
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`language for Disputed Jury Instructions, which are Jury Instruction Nos. 3, 5, 6, 9-11, 14-17 and
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`19-20.
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`I.
`
`DISPUTED INSTRUCTION NO. 3 REGARDING SUMMARY OF
`CONTENTIONS
`Finjan’s Preliminary Instruction No. 3 follows the language of the Federal Circuit Bar
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`Association Model Patent Jury Instructions, July 2016, No. A.2. It is a concise and non-
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`argumentative instruction that identifies the parties’ respective positions to the jury and accurately
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`reflects the law. The only language that Finjan added to the model instruction is an explanation
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`that the jury will need to determine (1) whether the accused products meet the “database”
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`limitation and (2) whether Claim 10 contains an inventive concept, which are specific to the
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`upcoming trial. Finjan focused this instruction to the limited issues to be tried regarding the ‘494
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`Patent and provides an overview of the contentions in the case.
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`By contrast, Juniper’s proposed instruction modifies the language of the Northern District
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`of California’s model instructions that distorts the law, is argumentative, includes details that are
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`repetitive of later instructions, and adds extraneous instructions that do not apply to this case.
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`Thus, Juniper’s proposed instruction is an improper, particularly for a preliminary instruction that
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`is only intended to generally identify the parties’ contentions in the case.
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`Most notably, Juniper’s proposed instruction refers to “notice” of the patent to Juniper at
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`least four times. In the fourth paragraph of Juniper’s proposed preliminary instruction, Juniper
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`attempts to obtain a favorable instruction regarding Juniper’s arguments regarding constructive
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`notice, which is unnecessary at this stage of the case. The second reference is in the same
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`paragraph, whereby Juniper misstates law, claiming that Finjan was required to give “actual
`written notice.” This is not the law for 35 U.S.C. § 271(a), which is the only portion of the
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`infringement statute at issue for trial. Actual notice can be met even with oral communications,
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`as the actual notice requirement is met when the accused infringer is notified with sufficient
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`specificity that the patent holder believes the accused infringer may infringe its patent. See SRI
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`
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`1
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
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`CASE NO. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 3 of 26
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`Int'l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997) (“[a]lthough there
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`are numerous possible variations in form and content, the purpose of the actual notice
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`requirement is met when the recipient is notified, with sufficient specificity, that the patent holder
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`believes that the recipient of the notice may be an infringer.”).
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`The only time “written” notice is required for actual notice is when infringement is being
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`considered under 35 U.S.C. § 271(g). Thus, Juniper is attempting to recite law that applies to a
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`different portion of Section 271, namely 271(g). See 35 U.S.C. § 271(g) (“Whoever without
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`authority imports into the United States or offers to sell, sells, or uses within the United States a
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`product which is made by a process patented in the United States shall be liable as an infringer, if
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`the importation, offer to sell, sale, or use of the product occurs during the term of such process
`patent.”) The only written notice requirement in section 287 refers to specialized notice
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`procedures for patentees seeking to obtain damages for infringement of a patented process
`pursuant to section 271(g). 35 U.S.C. § 287(b)(2) (“No remedies for infringement under section
`271(g) shall be available with respect to any product in the possession of, or in transit to, the
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`person subject to liability under such section before that person had notice of infringement with
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`respect to that product.”) (emphasis added); see also 35 U.S.C. § 287(b)(5) (defining that “notice
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`of infringement means actual knowledge, or receipt by a person of a written notification, or a
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`combination thereof, of information sufficient to persuade a reasonable person that it is likely that
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`a product was made by a process patented in the United States.”) Even then, section 287(b)(5)
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`considers “actual knowledge” or a combination of actual knowledge with written notification to
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`constitute notice. Id. A written notice requirement is conspicuously absent from section 287(a),
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`which governs the general notice requirements for all types of infringement, and Section 271(g) is
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`not at issue for trial.
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`Juniper’s third and fourth reference to notice is in its summary of what the jury will need
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`to decide. Juniper’s continued reference to notice in its proposed instruction favors Juniper’s
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`arguments in the case and is unnecessarily argumentative for a preliminary instruction. In fact,
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`there is no need to refer the different types of notice in this preliminary instruction. At most, a
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`2
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
`
`CASE NO. 3:17-cv-05659-WHA
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`

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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 4 of 26
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`general statement, as Finjan has, regarding notice of the patent at issue is sufficient for this
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`instruction.
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`Furthermore, Juniper’s proposed instruction refers to specific infringement allegations,
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`which it repeats in its proposed instruction Nos. 5 and 6. Specifically, Juniper improperly
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`characterizes Finjan’s infringement contention. Because Claim 10 is a system claim, Finjan’s
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`contention is that (i) SRX Gateways with Sky ATP and (ii) Sky ATP by itself are the systems that
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`infringe. Juniper, however, attempts to instruct that SRX Gateways must be “used” in
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`combination with Sky ATP. This is not the law because a system claim can be infringed if the
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`system has all the elements. As stated in Finjan, Inc. v. Secure Computing Corp., 626 F. 3d 1197,
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`1205 (Fed. Cir. 2010), the Federal Circuit found that activation or “use” is not necessary, as long
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`as the infringing code is present. Specifically, the Federal Circuit stated:
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`“Rejecting this contention, we explained that "although a user must activate the
`functions programmed into a piece of software by selecting those options, the user
`that are already present
`in
`the underlying
`is only activating means
`software." Id. at 1118. Infringement occurred because the code "was written in
`such a way as to enable a user of that software to utilize the function... without
`having to modify that code." Id. That analysis applies here. The code for proactive
`scanning was "already present" in Defendants' accused products when sold. There
`is no evidence that customers needed to modify the underlying code to unlock any
`software modules. The fact that users needed to "activate the functions
`programmed" by purchasing keys does not detract from or somehow nullify the
`existence of the claimed structure in the accused software. Therefore, the jury's
`infringement verdict on the system and media claims was based on a "legally
`sufficient evidentiary basis" and consistent with
`the "weight of
`the
`evidence." Pediatrix, 602 F.3d at 545-46 & n. 9. That portion of the verdict is
`affirmed.”
`Id. at 1205. In light of the law, Juniper should not be instructing regarding the
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`requirements of infringement of a system claim in its preliminary instructions, and
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`mischaracterizing Finjan’s contentions in this case. There is no need to repeat these
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`allegations in such a manner as set forth by Juniper.
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`Additionally, Juniper’s proposal instructs regarding other patents and how that may be
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`“relevant to some issues you will be asked to decide.” Other patents, including any Juniper
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`patents, are not relevant to the limited issues being presented in this trial. This is the subject of
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`Finjan’s Motion in limine No. 4. As such, Juniper’s instruction includes extraneous information
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`3
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
`
`CASE NO. 3:17-cv-05659-WHA
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`

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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 5 of 26
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`that is not necessary for a preliminary instruction. For these reasons, Finjan’s straightforward
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`statement of the parties’ contentions is appropriate for this preliminary jury instruction.
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`DISPUTED INSTRUCTION ON CLAIM CONSTRUCTIONS
`II.
`There should not be any dispute regarding the claim construction at this point of the
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`case. The only difference between the parties’ construction regarding “database” is
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`Juniper’s addition of the following statement: “the court will provide further construction
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`after the trial.” There is no reason to instruct the jury on such a statement, as the jury is not
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`normally instructed regarding what the Court will do or not do after they render their verdict.
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`It is confusing and unnecessary for a preliminary instruction.
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`By way of background, Juniper stipulated and agreed with Finjan that “database”
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`should be construed as “a collection of interrelated data organized according to a database
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`schema to serve one or more applications.” See Dkt. No. 189 at 16. For this reason, the
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`parties agree on the construction for purposes of the instruction. The Court’s Summary
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`Judgment Order held that whether there is a “database” literally or under the doctrine of
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`equivalents will be tried to a jury. Id. at 17. It also stated that, to the extent Juniper insists
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`on continuing its belated reversal of position regarding the meaning of “database,” the Court
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`will “postpone any further claim construction on this limitation until the jury is instructed so
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`that the Court will have the benefit of the trial record before construing the term.” Id. Thus,
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`Finjan’s instruction provides the information that is appropriate for the jury to consider and
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`there should not be any instruction regarding what the Court might do after the jury renders
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`its verdict.
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`III. DISPUTED INSTRUCTION NO. 5 REGARDING THE OUTLINE OF
`TRIAL
`Both parties’ Preliminary Instruction No. 5 is based on the Northern District of
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`
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`California’s Model Patent Jury Instructions. See N.D. Cal. Model Patent Jury Instruction No.
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`A.5. Finjan’s Preliminary Instruction No. 5 provides a straightforward explanation of the outline
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`of trial and includes a non-argumentative overview of what the parties will present in their
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`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
`
`CASE NO. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 6 of 26
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`respective portions of the case. The simple explanation is appropriate for this preliminary
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`instruction regarding the stages of the trial for the jury.
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`
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`There are numerous issues with Juniper’s proposed preliminary instruction regarding the
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`outline of the trial. First, Juniper’s proposed instruction improperly describes how the trial will
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`proceed, suggesting that there will be four stages of trial. Specifically, Juniper states that it will
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`“have the option to put on ‘rebuttal’ evidence to any evidence offered by Finjan on the validity of
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`claim 10 of the ‘494 patent,” suggesting that Juniper can present evidence after Finjan presents its
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`rebuttal case. Juniper’s entire case regarding invalidity, however, is based on its expert, Dr.
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`Rubin, who only presented an opening report regarding 35 U.S.C. § 101 (“Section 101”). Juniper
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`never served any “reply” report to Finjan’s rebuttal report regarding Section 101, and has never
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`identified any fact witness that could present any testimony or evidence regarding Section 101.
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`Thus, there should not be any reference to some purported “rebuttal” case that Juniper is
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`attempting to bootstrap into the case with its proposed instruction.
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`Second, Juniper’s proposed instruction delves into details of the parties’ contentions,
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`which is unnecessary, and is argumentative. It also adds misleading language that distorts the law
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`regarding actual and constructive notice. For example, as addressed above with respect to
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`Preliminary Instruction No. 3, there is no need to get into actual and constructive notice at this
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`stage of the case. The different types of notice is something that can be appropriately instructed
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`at the end of the case and the notice requirement does not need to be repeated, as Juniper has
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`proposed, in a single instruction over five times. Additionally, as explained with respect to
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`Preliminary Instruction No. 3, Juniper repeats its misstatement of the law that actual notice must
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`be in “written” form. There is no such requirement for infringement pursuant to Section 271(a).
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`Furthermore, Juniper’s proposed instruction includes argument, such as its statement that Finjan
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`can rebut “Finjan’s failure to comply with the construction and actual written notice requirements
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`of the Patent Act.” Such an argumentative characterization is improper for jury instructions.
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`Third, with the detailed contentions Juniper injects into its proposed instruction, Juniper
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`mischaracterizes Finjan’s contentions in the case. Finjan is asserting that it gave Juniper actual
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`notice. To the extent there is any dispute that Finjan gave actual notice, Finjan is asserting, in the
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`5
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
`
`CASE NO. 3:17-cv-05659-WHA
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`

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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 7 of 26
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`alternative, that Juniper had constructive notice. This is misstated in Juniper’s proposed
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`instruction. All of these issues with Juniper’s proposed instruction makes unfairly unbalanced
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`and prejudicial to Finjan, as opposed to a neutral instruction.
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`Fourth, Juniper’s description of the infringement contentions in its proposal simply repeat
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`what it already has in its proposed instructions No. 3, such as Claim 10 is being asserted against
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`SRX Gateways in combination with Sky ATP and against Sky ATP by itself. As described above
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`with respect to Preliminary Instruction No. 3, Finjan’s contention is that SRX Gateways with Sky
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`ATP and Sky ATP by itself infringe. See supra regarding Finjan, Inc. v. Secure Computing Corp.,
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`626 F. 3d 1197, 1205 (Fed. Cir. 2010). There should not be an instruction which misstates
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`Finjan’s contention in the case or any instruction regarding the requirements for finding
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`infringement of a system claim in this preliminary instruction.
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`Thus, Finjan’s Preliminary Instruction No. 5 strikes the right balance and information
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`for the jury regarding the stages of trial.
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`IV. DISPUTED INSTRUCTION NO. 6 REGARDING A SUMMARY OF
`CONTENTIONS
`Finjan’s proposed instruction follows the language of the Federal Circuit Bar Association
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`
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`Model Patent Jury Instructions, July 2016, No. B.1. The only language Finjan added to the model
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`instruction is a half-sentence explaining to the jury that, if it finds the patent is valid and
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`infringed, it will “need to decide whether Finjan put Juniper on notice of its infringement of the
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`‘494 Patent.” Nothing further is necessary, in light of the previous instructions that include an
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`overview of the parties’ contentions in the case. See e.g., Preliminary Instruction Nos. 3 and 5.
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`Moreover, since this is a summary of the contentions, this is the appropriate place to address
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`Finjan’s contention that SRX Gateways with Sky ATP and Sky ATP by itself infringes Claim 10
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`as part of the final instruction given the jury after hearing all the evidence.
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`Juniper’s proposal substantially modifies the model instruction, adding the same
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`objectionable and argumentative language noted above with respect to Preliminary Instruction
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`Nos. 3 and 5. In this proposed instruction, Juniper reiterates its misstatement of law regarding
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`actual notice, it repeats the notice requirement four times, it delves into the different types of
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`6
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
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`CASE NO. 3:17-cv-05659-WHA
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`

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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 8 of 26
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`
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`notice, and it misstates Finjan’s contention regarding notice, namely that Finjan contends that it
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`gave Juniper actual notice and, in the alternative, constructive notice. Additionally, Juniper
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`misstates the infringement case, asserting that SRX Gateways must be used in combination with
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`Sky ATP. See supra above regarding Finjan, Inc. v. Secure Computing Corp., 626 F. 3d 1197,
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`1205 (Fed. Cir. 2010). Finjan incorporates its argument from Preliminary Instruction Nos. 3 and
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`5 above regarding Juniper’s proposed instruction.
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`Additionally, Juniper’s instruction is repetitive of previous instructions and such detailed
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`instructions are not necessary given the general contentions already covered in Preliminary
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`Instruction Nos. 3 and 5.
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`V.
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`DISPUTED INSTRUCTION NO. 9 REGARDING DIRECT
`INFRINGEMENT
`Finjan and Juniper largely agree with most of the content of Final Jury Instruction No. 9.
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`There are two primary differences. First, Finjan’s Final Jury Instruction No. 9 explains to the jury
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`that their infringement determination in this case is limited to determining whether a “database” is
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`present in Juniper’s accused systems. It is important for the jury to be instructed regarding what
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`their infringement determination will entail as they will hear about all the elements of Claim 10.
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`To ensure the jury is focused on what it needs to decide, the jury needs to be instructed prior to
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`the presentation of evidence what it needs to address for infringement.
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`Additionally, if the jury is instructed about what it needs to determine for infringement,
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`there is no need for the additional instruction that Juniper proposes as instruction No. 10 (which is
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`entitled “Literal Infringement”), and no need to repeat what is at issue for infringement. In fact, it
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`does not make sense to put this information in the very next instruction because Final Instruction
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`No. 9 frames all the issues for direct infringement, both under literal infringement and doctrine of
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`equivalents (“DOE”). Notably, Final Instruction No. 11 does not instruct the jury that it only
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`needs to determine whether there is DOE infringement of the “database” element. Given the
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`completeness of Finjan’s Final Instruction No. 9, it is most efficient to include this instruction
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`here.
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`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
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`CASE NO. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 9 of 26
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`The second difference is that the jury should be instructed that Juniper does not need to
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`know that its product infringed or know of the asserted patent in determining infringement. This
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`is a standard instruction and once again, focuses the jury on what it should be considering in
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`making its determination for infringement.
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`Given the foregoing, Finjan’s Final Instruction No. 9 removes the need for Preliminary
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`Instruction No. 10 and for instructing the jury that DOE infringement needs to only focus on the
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`“database” element.
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`VI. DISPUTED INSTRUCTION NO. 10. REGARDING LITERAL
`INFRINGEMENT
`With Finjan’s Final Instruction No. 9, there is no need for an additional instruction
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`regarding literal infringement, which is Juniper’s proposed instruction No. 10. To the extent that
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`Finjan’s Final Instruction No. 9 is not given regarding what the jury should focus upon for
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`infringement, then Finjan has prepared a counterproposal to Juniper’s proposed instruction No.
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`10, which simply sets forth that the jury needs to focus its attention on the “database” element.
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`Juniper’s proposal misstates what the jury is to find and is inconsistent with the Court’s
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`Summary Judgment Order. As set forth in the Court’s Summary Judgment Order, the jury is to
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`determine whether Juniper’s accused products have a “database.” Dkt. No. 189 at 16. Juniper
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`misstates what the jury is to find with the following statement: “Your job is to decide whether
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`Juniper’s SRX Gateways used in combination with Sky ATP and Sky ATP alone meet the
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`limitation of ‘a database manager coupled with said Downloadable scanner, for storing the
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`Downloadable security profile data in a database.’” The Court’s Summary Judgment Order,
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`however, found that Juniper’s accused systems meet the database manager element, i.e., the
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`database manager coupled with said Downloadable for storing the Downloadable security profile
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`data. Dkt. No. 189 at 15-16. Thus, the only element at issue is the “database” element and not
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`the entire phrase that Juniper’s proposed instruction asserts. Id. at 16. Thus, Juniper’s proposal is
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`improper.
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`Juniper’s proposal misstates Finjan’s infringement case, asserting that SRX Gateways
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`must be used in combination with Sky ATP, which is an incorrect instruction for purposes of
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`8
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
`
`CASE NO. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 10 of 26
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`finding infringement of a system claim, like Claim 10. Finjan incorporates its arguments from
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`Preliminary Instruction No. 3 and 5 herein with respect to Juniper’s misstatement regarding
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`Finjan’s infringement contentions. See supra above regarding Finjan, Inc. v. Secure Computing
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`Corp., 626 F. 3d 1197, 1205 (Fed. Cir. 2010).
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`Additionally, the last paragraph of Juniper’s proposed instruction includes law that is not
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`at issue in this case. First, this paragraph includes the statement that “Juniper cannot be liable for
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`infringement merely because other parties supplied the missing elements, unless Juniper directed
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`or controlled the acts by the parties.” This is not an issue in the case, as the Court has already
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`found that Juniper infringes by making, using, and selling its SRX Gateways with Sky ATP. See
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`Dkt. No. 189. Here, Juniper provides all the pieces as the SRX Gateway with Sky ATP. Also,
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`Sky ATP are Juniper’s products that it develops and sells. As such, there is no “other parties”
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`that would supply missing element.
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`Further, Juniper does not dispute that it controls Sky ATP, including by developing and
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`source code that is run on the system. As such, there is no reason for such an instruction other
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`than to confuse the jury. And any suggestion that Juniper is attempting to improperly imply that
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`because it uses third-party platforms to host its software for Sky ATP, it does not infringe is
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`contrary to the Court’s Summary Judgment Order that Juniper satisfies all elements of Claim 10
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`other than the “database” element which is being tried to the jury. Similarly, Juniper improperly
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`includes the following instruction: “Instead, Juniper must specifically instruct or cause that other
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`person to perform each step in an infringing manner, so that every step is attributable to Juniper
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`as controlling party.” Juniper never disputed this point and infringement has already been
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`determined, with the only issue remaining for infringement being the determination of whether
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`there is a “database,” as set forth in claim 10 of the ‘494 Patent. See Dkt. No. 189. Juniper’s
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`proposed instruction improperly implies that Finjan must prove Juniper’s control over its hosting
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`partners, when this has not been raised as a disputed issue and was already decided by the Court.
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`Accordingly, the final paragraph of Juniper’s proposed instruction is unnecessary and will only
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`serve to confuse the jury regarding the narrow issue of infringement that it must decide.
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`9
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
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`CASE NO. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 11 of 26
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`VII. DISPUTED INSTRUCTION NO. 11 REGARDING INFRINGEMENT
`UNDER THE DOCTRINE OF EQUIVALENTS
`Finjan’s Final Instruction No. 11 succinctly instructs the jury regarding the law of
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`infringement under DOE. Finjan’s instruction is nearly identical to the Federal Circuit Bar
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`Association Model Patent Jury Instruction, which is appropriate in this case given the limited
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`issues for infringement that the jury is addressing. For example, the Northern District of
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`California Model Patent Jury Instructions has law that does not apply in this case, which will be
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`confusing for the jury.
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`Finjan’s Final Instruction No. 11 articulates the seminal Federal Circuit tests that the
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`Supreme Court has approved, namely, the insubstantial differences test and the
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`function/way/result test for determining DOE infringement. Warner-Jenkinson Co. v. Hilton
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`Davis Chem. Co., 520 U.S. 17, 40 (1997) (“An analysis of the role played by each element in the
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`context of the specific patent claim will thus inform the inquiry as to whether a substitute element
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`matches the function, way, and result of the claimed element, or whether the substitute element
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`plays a role substantially different from the claimed element.”); ViaTech Techs. Inc. v. Microsoft
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`Corp., 733 F. App’x 542, 552 (Fed. Cir. 2018) (“To prove infringement under the doctrine of
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`equivalents, a plaintiff must show that an asserted equivalent represents an ‘insubstantial
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`difference’ from the claimed element, or ‘whether the substitute element matches the function,
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`way, and result of the claimed element.’ ”); Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356
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`(Fed. Cir. 2012) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40
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`(1997); Opticurrent, LLC v. Power Integrations, Inc., No. 17-CV-03597-WHO, 2018 WL
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`1730326, at *7 (N.D. Cal. Apr. 10, 2018), on reconsideration, No. 17-CV-03597-WHO, 2018 WL
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`3956423 (N.D. Cal. Aug. 17, 2018) (“To prevail, the plaintiff must establish by a preponderance
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`of the evidence that the accused device infringes one or more claims of the patent either literally
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`or under the doctrine of equivalents.”); Regents of Univ. of California v. Dako N. Am., Inc., 615
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`F. Supp. 2d 1087, 1097 (N.D. Cal. 2009) (“The case law makes clear that the interchangeability
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`between the claimed and the accused elements must be something that one of ordinary skill in the
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`art would know at the time of infringement.” (citing Warner-Jenkinson Co. v. Hilton Davis Chem.
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`10
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
`
`CASE NO. 3:17-cv-05659-WHA
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`

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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 12 of 26
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`Co., 520 U.S. 17, 37 (1997) (explaining that “the proper time for evaluating equivalency—and
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`thus knowledge of interchangeability between elements—is at the time of infringement”)).
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`The last three paragraphs of Juniper’s proposed Instruction No. 11 are unnecessary and
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`confusing. First, there is no need for Juniper’s instruction on “interchangeability” to establish
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`DOE because Finjan is not alleging interchangeability of the elements as a basis for DOE. In
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`fact, neither party has alleged that it was known or not known that one structure for the required
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`“database” element was equivalent to another structure. Chiuminatta Concrete Concepts, Inc. v.
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`Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998) (“Almost by definition, two
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`structures that perform the same function may be substituted for one another. The question of
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`known interchangeability is not whether both structures serve the same function, but whether it
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`was known that one structure was an equivalent of another.”). The DOE standard at issue for this
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`trial is the function/way/result test as provided in Finjan’s instruction and including the
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`“interchangeability” test, which is not at issue and a different test, will only serve to confuse the
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`jury.
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`Second, Juniper has not asserted any prior art with respect to Finjan’s DOE infringement
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`claims. Thus, there is no need to for Juniper’s instruction that states with “[y]ou may not use the
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`doctrine of equivalents to find infringement if you find that Juniper’s product is the same as what
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`was in the prior art before the application for the ‘494 Patent or what would have been obvious to
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`persons of ordinary skill in light of what was in the prior art.” This is not at issue that Juniper has
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`introduced, as Juniper’s non-infringement expert has not alleged that Finjan’s application of
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`Claim 10 of the ‘494 Patent under DOE would be the same as the prior art.
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`Third, the Court should reject the paragraph in Juniper’s construction that states: “You
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`may not use the doctrine of equivalents to find infringement if you find that the subject matter
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`alleged to be equivalent to a requirement of the patent claim was described in the ’494 patent but
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`not covered by any of its claims.” This instruction is confusing and unclear. More important,
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`Juniper’s non-infringement expert did not allege that the equivalent Finjan has asserted was
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`disclosed in the specification of the ‘494 Patent, but was not claimed. As such, this is not an issue
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`before the jury. Any instruction is unnecessary and would only confuse the jury.
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`11
`MEMORANDUM OF LAW IN SUPPORT OF
`FINJAN’S JURY INSTRUCTIONS
`
`CASE NO. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 275 Filed 11/27/18 Page 13 of 26
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`VIII. DISPUTED INSTRUCTION NO. 14. REGARDING INVALIDITY—
`PATENT ELIGIBILITY
`Finjan’s Final Instruction No. 14 plainly and accurately explains the law, unlike Juniper’s
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`proposed instruction. See N.D. Cal. Model Patent Jury Instructions, August 2017, Preface (model
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`instructions are “prepared to assist judges in communicating effectively and in plain English with
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`jurors”). Finjan’s instruction con