Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 1 of 138
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` Pages 1 - 137
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`BEFORE THE HONORABLE WILLIAM H. ALSUP, JUDGE
`
`FINJAN, INC., )
` )
` Plaintiff, )
` )
` VS. ) NO. C 17-5659 WHA
` )
`JUNIPER NETWORKS, INC., )
` ) San Francisco, California
` Defendant. )
` )
`___________________________________)
`
` Tuesday, December 4, 2018
`
`TRANSCRIPT OF PROCEEDINGS
`
`APPEARANCES:
`
`For Plaintiff:
` KRAMER LEVIN NAFTALIS & FRANKEL, LLP
` 990 Marsh Road
` Menlo Park, California 94025
` BY: PAUL ANDRE, ESQ.
` LISA KOBIALKA, ESQ.
` AUSTIN MANES, ESQ.
` YURIDIA CAIRE, ESQ.
` KRISTOPHER B. KASTENS, ESQ.
`
`For Defendant:
`
` IRELL & MANELLA, LLP
` 840 Newport Center Drive
` Suite 400
` Newport Beach, California 92660
` BY: REBECCA L. CARSON, ESQ.
` KEVIN X. WANG, ESQ.
`
`Reported By: BELLE BALL, CSR 8785, CRR, RDR
` Official Reporter, U.S. District Court
`
`(Appearances continued, next page)
`
`
`
` Pages 1 - 137
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`BEFORE THE HONORABLE WILLIAM H. ALSUP, JUDGE
`
`FINJAN, INC., )
` )
` Plaintiff, )
` )
` VS. ) NO. C 17-5659 WHA
` )
`JUNIPER NETWORKS, INC., )
` ) San Francisco, California
` Defendant. )
` )
`___________________________________)
`
` Tuesday, December 4, 2018
`
`TRANSCRIPT OF PROCEEDINGS
`
`APPEARANCES:
`
`For Plaintiff:
` KRAMER LEVIN NAFTALIS & FRANKEL, LLP
` 990 Marsh Road
` Menlo Park, California 94025
` BY: PAUL ANDRE, ESQ.
` LISA KOBIALKA, ESQ.
` AUSTIN MANES, ESQ.
` YURIDIA CAIRE, ESQ.
` KRISTOPHER B. KASTENS, ESQ.
`
`For Defendant:
`
` IRELL & MANELLA, LLP
` 840 Newport Center Drive
` Suite 400
` Newport Beach, California 92660
` BY: REBECCA L. CARSON, ESQ.
` KEVIN X. WANG, ESQ.
`
`Reported By: BELLE BALL, CSR 8785, CRR, RDR
` Official Reporter, U.S. District Court
`
`(Appearances continued, next page)
`
`
`
`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 2 of 138
`
`APPEARANCES, CONTINUED:
`
`For Defendant:
` IRELL & MANELLA, LLP
` 1800 Avenue of the Stars
` Suite 900
` Los Angeles, California 90024
` BY: JONATHAN S. KAGAN, ESQ.
` CASEY M. CURRAN, ESQ.
` ALAN HEINRICH, ESQ.
` SHARON SONG, ESQ.
` JOSHUA GLUCOFT, ESQ.
`
`Also Present: JULIE ANN MAR-SPINOLA
` ANN TAYLOR
`
`
`
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`Tuesday - December 4, 2018
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` 9:02 a.m.
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`P R O C E E D I N G S
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`THE CLERK: Calling Civil Action, 17-5659, Finjan
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`Inc. versus Juniper Networks, Inc.
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`Counsel, please step forward and state your appearances
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`for the record.
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`THE COURT: Good morning.
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`MR. ANDRE: Good morning, Your Honor. Paul Andre for
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`Finjan. And I have my client representatives here today,
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`Julie Mar-Spinola and Ann Taylor in the back (Indicating).
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`And with me -- they're back there (Indicating).
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`THE COURT: Okay. Welcome to all of you.
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`MR. ANDRE: And I would introduce the attorneys, if
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`that's okay.
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`THE COURT: Sure.
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`MR. ANDRE: Kristopher Kastens, Austin Manes, Lisa
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`Kobialka and Cristina Martinez.
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`THE COURT: Thank you.
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`Welcome to all of you.
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`MR. ANDRE: Thank you, Your Honor.
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`MR. KAGAN: Good morning, Your Honor. Jonathan Kagan
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`of Irell & Manella for Juniper Networks. And with me are
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`Rebecca Carson --
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`MS. CARSON: Good morning.
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`THE COURT: Alan Heinrich.
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`
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`MR. HEINRICH: Good morning.
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`MR. KAGAN: Kevin Wang, Casey Curran, Sharon Song and
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`Josh Glucoft.
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`THE COURT: Welcome to all of you.
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`MR. KAGAN: Thank you, Your Honor.
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`THE COURT: We are here for a final pretrial
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`conference for a trial that starts on Monday. And, just jump
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`right in.
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`So we have a jury selection process -- ready?
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`MR. KAGAN: Your Honor, there's one issue we thought
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`we might raise as a preliminary matter with your -- it relates
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`to a filing that Finjan made last night.
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`THE COURT: I haven't seen it.
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`MR. KAGAN: So --
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`THE COURT: Did we look? I thought we looked.
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`THE LAW CLERK: Yeah.
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`THE COURT: Was there any filing?
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`THE LAW CLERK: Witness lists, exhibits --
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`THE COURT: I didn't see, I don't know anything about
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`it. So what is the issue?
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`MR. KAGAN: So the issue is we understood from the
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`Court's ruling yesterday that plaintiffs' damages expert
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`Mr. Arst would be excluded, based on the Daubert ruling.
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`And we received -- and we thought the process would then
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`be the parties would try to streamline their witness list to
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`remove witnesses that were no longer necessary in order to
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`relate to Mr. Arst's testimony and his theory.
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`But when we got the amended witness list from Finjan, it
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`included Mr. Arst again, notwithstanding that the Court had
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`excluded all of his testimony.
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`And so we'd asked -- I asked last night when we received
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`this: What portions of Mr. Arst's testimony do you think
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`survive?
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`I never got a response from Finjan on that. They simply
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`filed the list.
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`So I guess the -- as a preliminary, as a preliminary
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`matter maybe we should take up that because I think it would
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`affect the scope of the case. But also, we would certainly at
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`this point, given the positions they have taken and the fact
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`they refuse to disclose to us what they intend to put on as a
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`damages case, we request a formal offer of proof on what their
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`damages case will look like, in light of this Court's Daubert
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`order.
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`THE COURT: All right. That's your position.
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`What do you have to say, Mister --
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`MR. ANDRE: Your Honor, we amended the witness list
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`based on a deposition we took of Mr. Icasiano, a defendant
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`witness that was disclosed light and subject to these MILs.
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`And we amended it conditionally that if he's not excluded,
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`that we designate his deposition and the exhibits that were
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`used in his deposition, which was just taken last week. We
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`just got the transcript in.
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`So we amended the witness list before the pretrial
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`conference --
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`THE COURT: Can somebody hand this thing up to me?
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`My law clerk didn't give it to me.
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`Did you give it to me? I don't remember seeing this.
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`THE LAW CLERK: (Inaudible)
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`MR. KAGAN: Your Honor, with regard to the issue of
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`Mr. Icasiano, given the Court's Daubert order, we agreed to
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`withdraw him. This is a moot issue. He was relevant only to
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`rebut the damages theory that has now been excluded.
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`(Document handed up to the Court)
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`MR. KAGAN: And we informed Finjan of this as well.
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`There is a motion in limine to exclude Mr. Icasiano's
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`testimony. In light of the Daubert, we -- there's no reason
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`to oppose it. We're withdrawing him.
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`(Reporter interruption)
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`THE COURT: I don't even see his name on this list.
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`MR. ANDRE: It should be at the bottom, Your Honor.
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`By deposition only.
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`THE COURT: It says Philip Hartstein.
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`MR. ANDRE: Probably on the back. It's probably
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`two-sided, Your Honor.
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`THE COURT: Oh, I see.
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`MR. ANDRE: I'm sorry.
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`(The Court examines document)
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`THE COURT: Well, the -- the Court's Daubert order
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`did exclude Arst. So --
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`MR. ANDRE: Your Honor, with respect to Mr. Arst, you
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`his cost savings opinion. We would still like to offer him
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`into testimony to provide issues he did not address like the
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`Georgia-Pacific factors. He can give him the jury a framework
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`that they can use to determine a reasonable royalty.
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`So it -- it's not uncommon to have an expert get up and
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`not give an opinion as to what damages will be, but to give the
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`jury a framework they can use to determine a reasonable
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`royalty.
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`So we would still propose that Mr. Arst would testify to
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`that limited extent, you didn't address it in your Daubert, you
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`said that his cost savings model where he gave a 60- to $70
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`million figure was unreliable due to the size of it, based on
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`the revenues. But the rest of his opinion, which he goes and
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`talks about how one decides a reasonable royalty, for example,
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`hypothetical negotiation, where the parties are sitting, all
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`that kind of stuff, I think that's still in the case. You
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`didn't address that. And I think that would be beneficial to
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`the jury to get that framework in our case-in-chief. But he
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`would not give the opinion.
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`THE COURT: What do you say on that?
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`MR. KAGAN: Well, to the extent you're talking about
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`the framework, that's got to be a subject for jury
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`instructions. You don't need the expert to come in and
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`explain what the framework is.
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`What -- what they're trying do now is to use Mr. Arst to
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`give essentially not the framework, but their opinion on how
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`the framework should be implemented. And on that point, we'd
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`just like to know that in Mr. Arst's opinion, he essentially
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`said the hypothetical framework doesn't make sense, which is
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`why he chose his cost approach. So this was a framework that
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`he essentially injected.
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`So for example, in his report, he said (As read):
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`"Finjan's historical licensing practices were derived
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`from historical jury verdicts, and they have no
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`reason to assume or conclude that would apply to
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`Juniper in this case."
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`And there's numerous examples of this throughout his
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`report. So what he did was the very framework that they now
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`want to introduce through Mr. Arst is exactly what he rejected
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`in his report in favor of this cost statements analysis.
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`And I would suggest that that is simply not right. They
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`took their chance with Mr. Arst. They chose not to have him
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`apply a traditional royalty analysis and instead, they want to
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`swing for the fences but they struck out. They don't get to
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`come back now and say: Okay, now let's let him bring up this
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`other theory that he never really introduced. And there's
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`nothing in Court's order that would support that. His
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`testimony is excluded. He is considered to be an unreliable
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`expert.
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`MR. ANDRE: May I address that, Your Honor?
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`THE COURT: Sure.
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`MR. ANDRE: Okay. I disagree. He's not an
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`unreliable expert. His opinion as to the cost savings was
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`unreliable (sic). His qualifications as an expert are
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`impeccable. As far as the Georgia-Pacific analysis, he
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`actually has several pages in his report, starting on Page 45,
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`where he goes through each one of the Georgia-Pacific factors,
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`and just says this is a framework --
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`THE COURT: Give me the paragraph numbers in his
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`report that you believe are not affected by the Court's
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`Daubert order, and that you still think could -- may be
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`coherent testimony before the jury. Give it to me by
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`paragraph number.
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`MR. ANDRE: Your Honor, unfortunately they're not
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`numbered paragraphs or pages. And they have section numbers.
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`I can give that to you, that's acceptable.
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`THE COURT: All right. Give it to me in that format.
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`MR. ANDRE: Okay. So first is Page 4, Section 6.1,
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`where he talks about Finjan and who they are, and how they
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`handle their negotiations. 6.1.1 on Page 7, it's Finjan's
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`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 10 of 138
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`licensed technology.
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`THE COURT: I'm sorry. Wait, wait. I've got Page 4,
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`6.1. Then what?
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`MR. ANDRE: Page 7, 6.1.1.
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`THE COURT: All right.
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`MR. ANDRE: And then Page 12, 6.1.2.
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`THE COURT: Okay, then what?
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`MR. ANDRE: Then Page 15, 6.1.3.
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`(Off-the-Record discussion between counsel)
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`MR. ANDRE: Page 18, 6.2. Page 19, 6.3 and 6.3.1.
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`(Off-the-Record discussion)
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`MR. ANDRE: Page 27, 6.4.
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`THE COURT: Does 6.3.1 go all the way to 27?
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`MR. ANDRE: No. I think there's a section there that
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`would probably be very close to what you excluded. There's
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`overlaps, so I don't want to run the risk of overlapping
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`anywhere.
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`So 6.3.1 ends on Page --
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`THE COURT: All right. So just -- I'm going to
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`just -- the section numbers are the key parts. All right.
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`MR. ANDRE: Yeah.
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`THE COURT: And then what else?
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`MR. ANDRE: 6.4, which is the timeline of events. In
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`Section 7 he talks about the reasonable royalty damages.
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`THE COURT: Wait a minute. What goes there?
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`MR. ANDRE: Page 27, Section 7.
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`(Off-the-Record discussion between counsel)
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`MR. ANDRE: He talks about the statute of the
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`reasonable royalty. And the hypothetical negotiation, the
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`framework.
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`THE COURT: I'm not saying yes yet, but tell me what
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`you think can be salvaged.
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`MR. ANDRE: Section 29, 7.1, the date of the parties
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`to the hypothetical negotiation. Section 7.2 on Page 29, and
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`7.3 on Page 30.
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`Excluded several of this stuff. And then you get to
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`Georgia-Pacific factors. First of all, the -- the income
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`approach on 7.3.3 on Page 44.
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`THE COURT: 7.3.3?
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`MR. ANDRE: Uh-huh.
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`THE COURT: On Page 34?
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`MR. ANDRE: Page 44. And on Page 45, Section 7.5,
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`that's the Georgia-Pacific analysis, and that goes for several
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`pages, up to Page 52.
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`THE COURT: Is that it?
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`MR. ANDRE: That's it, Your Honor.
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`THE COURT: So I don't have an answer for you on
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`this.
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`What does the other side say?
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`MR. KAGAN: So there are two points, Your Honor. The
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`first is that although Mr. Arst did mention the
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`Georgia-Pacific factors in his opinion, he said that they had
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`zero influence or neutral influence on his opinion.
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`Specifically, if you look in Section 7.5, which is where
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`he discusses the Georgia-Pacific analysis, he says (As read):
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`"In determining a reasonable royalty for Juniper's
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`alleged use of the '494 patent, I've undertaken an
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`assessment of the 15 factors set forth in the
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`Georgia-Pacific case."
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`He then says -- I'm going skip -- he says:
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`"For this reason, the Georgia-Pacific factors are
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`frequently used by my peers who evaluate damages in
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`the context of commercial litigation. However, it is
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`important to bear in mind that the relative weight
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`and importance of the factors can and do vary from
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`case to case."
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`And he then stated, towards the end that section:
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`"As I previously discussed, I've concluded that the
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`cost approach provides the best available indicator
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`of the economic footprint of the '494 patent for
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`purposes of evaluating the hypothetical negotiation
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`in this case."
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`THE COURT: But where does he say he rejects the
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`Georgia-Pacific factors?
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`MR. KAGAN: He doesn't. What he says is that they
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`would have a neutral impact on this, on his analysis.
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`THE COURT: What would?
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`MR. KAGAN: The Georgia-Pacific factors. So in other
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`words, he has his cost approach. And he says: I've looked at
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`the Georgia-Pacific factors, but they don't affect my
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`analysis.
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`So, he has his cost approach. And he says the
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`Georgia-Pacific factors neither raise it nor lower it, so they
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`have zero impact on his opinion. That's what he says.
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`The second point which I think is dispositive as well is
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`that in none of the sections of Mr. Arst's report that they
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`have cited, and they want to include, does Mr. Arst do an
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`apportionment of damages.
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`And this is important because, as I think -- I think Mr.
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`Andre, himself, personally argued the Blue Coat case on behalf
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`of Finjan, where the Federal Circuit actually injected a -- a
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`damages award where Finjan had failed to show apportionment of
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`the damage.
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`And this means when you have a product where all of the
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`value is not derived from the patented invention -- now, that
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`would obviously include the products in this case -- it is the
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`plaintiff's burden to apportion and to say: This is the
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`incremental value that is caused by the patent. Versus: This
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`is the rest of the value that is attributable to other factors.
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`Juniper's patents, other intellectual property, brand name,
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`et cetera.
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`There's nothing in the cited sections of Mr. Arst's report
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`that addresses the apportionment issue. And if Finjan cannot
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`present apportionment testimony, they cannot present a damages
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`case. Their damages case fails, as a matter of law.
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`And assuming, given Mr. Andre's familiarity with the Blue
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`Coat case, I don't think he would dispute that principle of
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`law.
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`THE COURT: "Blue" what?
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`MR. KAGAN: Finjan versus Blue Coat.
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`THE COURT: "Coat," like --
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`MS. CARSON: C-O-A-T. Like a jacket (Indicating).
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`THE COURT: Blue Coat. That says you have to
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`apportion?
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`MR. KAGAN: That, among other cases. It's applying
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`another set of cases.
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`But, you know, given the closeness and the familiarity of
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`the counsel in this case with the Blue Coat case, I think it's
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`-- it's very apt. And specifically, I can read a couple
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`portions of the case if the Court --
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`THE COURT: No, I understand the apportionment
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`concept. But, look, did -- all right. We've had enough on
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`this. I'm not going to make a ruling now.
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`I may or may not allow Arst to testify. We will see. We
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`have a trial coming on Monday. We're going to get ready for
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`it.
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`You do have a problem. It is true, you swung for the
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`fences and struck out. So that was the gamble you took. If
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`you had won the gamble, it would have been a home run, maybe
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`the World Series. But, God bless you for trying, but it was
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`like Babe Ruth sometimes did hit a home run. He had more
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`strikeouts than anybody at the time. But he also had a lot of
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`home runs. This time you got a strikeout, at least in the
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`District Court.
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`But I am not prepared to say that -- you know, you
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`big-firm people think that you've got to have an expert or you
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`don't get damages. It's not quite true. You can present a
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`damages case sometimes without an expert. It happens all the
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`time in other kinds of cases.
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`Is there a Federal Court -- a Federal Circuit decision
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`somewhere that says if you don't have an expert, you get no
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`damages? I doubt it.
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`MR. KAGAN: There is not.
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`MR. ANDRE: Just the opposite, Your Honor.
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`THE COURT: So I feel like maybe Mr. Andre --
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`sometimes -- Babe Ruth could come up again. Maybe he gets --
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`get a second bite at the apple during the trial. Maybe he can
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`ambush your guy. What's your guy's name? Rubin?
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`MR. KAGAN: Ugone.
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`THE COURT: Yeah. That guy. Maybe he will
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`
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`cross-examine him so skillfully that the jury will award
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`$70 million.
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`MR. KAGAN: Your Honor, given that they're stuck with
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`a $1.8 million base, I think that's unlikely.
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`THE COURT: Yeah, I think so, too. But I'm -- that's
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`why I enjoy this. Because he's going to get maybe a shot,
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`shot to try.
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`MR. KAGAN: Your Honor --
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`THE COURT: No, I'm not going to be talked out of
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`this. You're not going to just get to the end of the case
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`because I exclude their expert. There's other ways to prove
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`damages. And I'm not prepared to say he doesn't have a
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`damages case at all.
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`MR. KAGAN: I wasn't going to argue that. What I was
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`going to ask, though, is if we could get a formal offer of
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`proof --
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`THE COURT: He has. He went through each section
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`that he wants to prove.
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`That's the offer of proof, right?
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`MR. ANDRE: Your Honor, it is for Mr. Arst. That's
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`what he will testify to. And Your Honor is absolutely
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`correct. We will put on a fact-based case.
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`I've tried several cases the last two days without a
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`damages expert.
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`THE COURT: That's good. Actually, it heartens me to
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`hear that. Because these experts are all bought and paid for.
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`You don't have to admit it, but they are. And it's good to
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`know that some lawyer, somewhere, can still try a case without
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`an expert.
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`MR. ANDRE: We've done it several times, Your Honor.
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`And I personally prefer it. I know some courts don't like it,
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`but I think it's the way we should do it in the future because
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`I think these experts are --
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`THE COURT: Bought and paid for. You don't have to
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`say it.
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`MR. ANDRE: Well, I won't say that, but --
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`THE COURT: Okay. That's all I'm going to say on
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`this subject for now. I may -- I've got to look at these
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`sections and see if I think there is something coherent there,
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`that, that the jury ought to -- so if you're going to put
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`anything -- how many lawyers you got there? One, two, three
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`four, five, six, seven lawyers at that table.
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`So by 5:00 today, if you have anything to say on these
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`subjects, these sections, it's due by 5:00 p.m. So one of
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`those lawyers -- five of them, seven -- better get cracking if
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`you want to explain why this is not a coherent thing.
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`Okay. Now we have some other motions in limine that I
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`want to take up. Let's start with the ones that are directed
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`at the plaintiff's case.
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`So Motion No. 1 to exclude evidence regarding Cyphort and
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`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 18 of 138
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`the ATP appliance product.
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`So first let me ask Finjan to explain the relevance of
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`whatever that testimony is, and then I'll get the other side to
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`explain why it should be excluded.
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`So give me your offer of proof on those subjects, and then
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`why you think it's relevant. Go ahead.
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`MS. KOBIALKA: So first and foremost, it's relevant
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`because it goes to the issue of damages, and in particular,
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`notice. Cyphort received specific notice regarding the '494
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`patent which is at issue here, for the same class of products
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`that we're talking about here. This is this ATP class of
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`products. That knowledge is imputed to Juniper, who later
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`then -- who acquired Cyphort.
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`So first and foremost is it relates to the fact that they
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`can't say -- and this is a disputed issue -- that they didn't
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`know about the '494 patent, they were not aware that there were
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`infringement allegations --
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`THE COURT: Why do you say -- why would knowledge by
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`Cyphort put Juniper on notice?
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`MS. KOBIALKA: Because Juniper acquired Cyphort, and
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`so that knowledge is imputed to Juniper.
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`THE COURT: And when, when did that acquisition
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`occur?
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`MS. KOBIALKA: I believe it occurred in 2017.
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`THE COURT: After the patent expired.
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`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 19 of 138
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`MS. KOBIALKA: That may be correct. That's correct.
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`THE COURT: So you're saying that knowledge that was
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`acquired after the patent expired can retroactively constitute
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`notice for purposes of the marking statute?
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`MS. KOBIALKA: Well, for purposes of the due
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`diligence. The closing of the deal -- I mean, it takes a long
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`time for these type of acquisitions to occur. And my
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`understanding, the closing of the deal was after the patent
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`expired. But the notification process had happened around the
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`time that Juniper was actually doing the due diligence of
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`Cyphort. So --
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`THE COURT: So your theory is somebody going in there
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`do due diligence to decide whether to buy Cyphort and seeing a
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`letter in there from Finjan saying: You infringed the '494
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`patent would have put the acquiring company on notice, even
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`before the acquisition, that maybe the acquiring company's own
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`product --
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`MS. KOBIALKA: Well, this is in addition to the
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`notice that we also provided to Juniper. So I'm not saying
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`that fact, in and of itself. There is -- you know, this is a
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`fact issue. Actual notice is a factual dispute that the jury
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`can decide. And so this is part of that notice that was
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`provided.
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`There was additional conversations, direct conversations
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`which were recorded --
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`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 20 of 138
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`THE COURT: What does the notice have to be? Under
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`the statute, what does the law from the Federal Circuit say
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`that the notice has to be?
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`MS. KOBIALKA: There has to be an affirmative
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`representation that -- of: This particular patent's infringed
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`by the accused. And generally, it will require some
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`identification of the technology at issue. So the
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`functionality would be sufficient. If you identify the
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`functionality --
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`THE COURT: So then don't have you to have a letter
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`from Finjan directly to Juniper saying: Your thing infringes?
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`MS. KOBIALKA: Absolutely not.
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`THE COURT: Say it again, then. I misunderstood what
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`the statute requires.
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`MS. KOBIALKA: So the statute just requires -- and
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`the interpretations, the Berkheimer cases, from the Federal
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`Circuit -- is just some affirmative representation. That can
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`be by oral notice. It is not required to be written.
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`There are other portions of the statute, for example, when
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`you're dealing with a foreign entity under 271(g), where you
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`are required written notice. But most instances, there is
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`written notice. And that's why a lot of the cases talk about
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`written notice.
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`However, actual notice goes not require a writing. It can
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`come in many different forms --
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`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 21 of 138
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`THE COURT: Actual notice of what, though?
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`MS. KOBIALKA: Oh. Of the infringement of the
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`patent.
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`THE COURT: So it's not enough to know the patent
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`exists. It has to be that your side thinks that it --
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`accuses. Is that it?
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`MS. KOBIALKA: Absolutely. So --
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`THE COURT: But you don't have such a letter. You
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`don't even have such a conversation, do you?
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`MS. KOBIALKA: Yes, we do.
`
`THE COURT: What is your conversation?
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`MS. KOBIALKA: The conversation took -- well, there
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`was first notification about licensing the portfolio,
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`February 9, 2017. The '494 patent wasn't specifically
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`identified there.
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`THE COURT: Was? Or was not?
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`MS. KOBIALKA: Was not.
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`THE COURT: Okay.
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`MS. KOBIALKA: However, subsequently, there were
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`discussions between John Garland who works for Finjan, and
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`Scott Coonan, who works for Juniper, who is, I believe, their
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`head of IP. And Mr. Coonan recorded these phone calls.
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`In all the deposition testimony -- and I can quote that --
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`the '494 was specifically identified. This class of products
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`that ATP class of products, whether it's a box or if it's in
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`
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`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 22 of 138
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`the cloud, was identified as infringing.
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`And Mr. Garland --
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`THE COURT: And this was in a phone call?
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`MS. KOBIALKA: That was -- yes.
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`THE COURT: Recorded.
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`MS. KOBIALKA: It turns out Mr. Coonan recorded it,
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`unbeknownst to us.
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`THE COURT: So when we hear the recording it will say
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`something like -- this is one that you want to exclude, I
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`think.
`
`MS. KOBIALKA: (Nods head)
`
`THE COURT: But if the jury hears it, it would say
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`something like: Oh, the '494. Oh, your ATP system infringes
`
`it.
`
`MS. KOBIALKA: Yeah. We think you need a license to
`
`the '494 patent in addition to these other ones.
`
`And in particular, the types of technologies that were at
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`issue that they were talking about in that conversation.
`
`THE COURT: All right. So the statute -- you say
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`that would be -- that, alone, would be enough to provide
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`notice.
`
`When did that conversation occur?
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`MS. KOBIALKA: November, 2015.
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`THE COURT: And what is our damages period here?
`
`MS. KOBIALKA: It ends January 29, 2017.
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`
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`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 23 of 138
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`THE COURT: And when does it begin.
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`MS. KOBIALKA: Issued in 2014. I think March, 2014.
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`THE COURT: What issue?
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`MS. KOBIALKA: The patent at issue. The '494 patent.
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`THE COURT: Okay. How come it's such a short patent?
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`MS. KOBIALKA: This particular patent -- oh, the
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`priority goes way back. It is a continuation of some earlier
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`patent.
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`THE COURT: Okay.
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`MS. KOBIALKA: And I think there was a number of
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`challenges to it over time, but it withstood all those
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`changes.
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`THE COURT: All right. 2014 to when, 2017?
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`MS. KOBIALKA: I have the exact date. March 18, 2014
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`through January -- I believe it's 29, 2017.
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`THE COURT: And that's the damages period.
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`MS. KOBIALKA: Yes.
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`THE COURT: And when did this phone call take place?
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`MS. KOBIALKA: November, 2015.
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`THE COURT: All right. So, let's just pause right
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`there for a second.
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`I want to hear from the other side on the phone call, and
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`why that would not have been enough notice, and what does the
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`statute require for notice and so forth.
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`Go ahead.
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`
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`Case 3:17-cv-05659-WHA Document 300 Filed 12/06/18 Page 24 of 138
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`MS. CARSON: Well, Your Honor, the Federal Circuit
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`has found that what is required for the notice is that there's
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`an affirmative communication to the alleged infringer of a
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`specific charge of infringement by a specific accused product
`
`or device.
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`So Finjan is trying to broaden this requirement or to
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`loosen this requirement to not require the identification of a
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`specific accused product or device.
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`Whether in oral or written notice, Finjan never identified
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`Sky ATP or SRX used in combination with Sky ATP.
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`THE COURT: I'm sorry; your name, again, is what?
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`MS. KOBIALKA: Kobialka. Lisa Kobialka.
`
`THE COURT: Can -- do I have a list? Is this --
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`where's my list?
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`(Off-the-Record discussion between the Court and Clerk)
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`THE COURT: Oh, here we go. "Kobialki."
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`MS. KOBIALKA: Kobialka. Yes.
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`THE COURT: And your name over there is --
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`MS. CARSON: Ms. Carson.
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`THE COURT: Sorry, I just don't see -- would you
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`highlight it on here? I can't find the names on there.
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`(Document handed down)
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`THE COURT: Okay. There's so much information, I
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`can't find what I need.
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`All right. So, Ms. K -- K-o-b, and I'll get it right in a
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`
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`minute; I apologize -- says you don't need to have what you
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`just told me. That you're -- you're amplifying on what's
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`required. She said that the telephone call identified your
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`product, said you needed a license.
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`What, what am I missing?
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`MS. CARSON: Well, Your Honor, I think she is not
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`accurately describing what occurred during the phone call.
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`Mr. Gardner never specifically identified Sky ATP. The only
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`product that he specifically mentioned was the SRX.
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`And they have not ac
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