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`I R E L L & M A N E L L A L L P
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
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`December 11, 2018
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`Hon. William Alsup
`U.S. District Court
`Northern District of California
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`
`Re:
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`Finjan, Inc. v. Juniper Networks, Inc., Case No. 3:17-cv-05659-WHA
`
`Dear Judge Alsup:
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`Finjan’s letter regarding 35 U.S.C. § 282 (Dkt. No. 312) is baseless. It appears that Finjan
`seeks to create some “purely formalistic” notice requirement under Section 282 wherein expert
`reports somehow do not constitute sufficient notice, but that is simply not the law. See Eaton
`Corp. v. Appliance Valves Corp., 790 F.2d 874, 879 (Fed. Cir. 1986).
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`As background, Finjan objects to Juniper’s disclosure of several prior art references for use
`with Juniper’s expert Dr. Rubin because, according to Finjan, Juniper did not provide any
`disclosure regarding such prior art as required under 35 U.S.C. § 282. See Dkt. No. 312.
`Section 282(c) requires the party asserting invalidity to “give notice in the pleadings or otherwise
`in writing to the adverse party at least thirty days before the trial [of the documents] showing the
`state of the art….” The Federal Circuit has noted that “section 282 does not dictate an arbitrary or
`absolute rule barring introduction of relevant, material evidence on the purely formalistic fact that
`notice of reliance was lacking.” See Eaton, 790 F.2d at 879. The ultimate question is “whether a
`party has been deprived of an adequate opportunity to present its case.” Id.
`
`Although Finjan never explicitly identifies exactly which prior art references Finjan claims
`were not properly noticed, at least some if not all of the prior art on which Juniper’s expert
`Dr. Rubin intends to rely was disclosed back in April 2018 when Juniper provided its invalidity
`contentions (which included invalidity contentions under § 101) pursuant to Patent Local Rule 3-3.
`See Exhibit 1 (April 23, 2018 invalidity contention disclosing prior art references such as Gryaznov
`(p. 19) on which Dr. Rubin intends to rely). More importantly, every single one of the references
`upon which Dr. Rubin intends to rely was disclosed in one or more of his expert reports served on
`September 11, October 11, and November 7, which are all more than 30 days in advance of trial.
`Finjan fails to identify a single reference disclosed by Juniper to be used during Dr. Rubin’s direct
`examination that did not appear in one or more of his timely expert reports, if not also disclosed in
`Juniper’s invalidity contentions served more than seven months in advance of trial.
`
`It is especially odd for Finjan to allege that “Juniper did not provide any
`disclosure…regarding prior art or publications showing the state of the art” given that the Court
`already denied Finjan’s motion in limine no. 3 directed precisely to the prior art references relied
`upon by Dr. Rubin in his reports—the same references that Dr. Rubin intends to rely on at trial for
`the same purpose. See Dkt. No. 301 at 3 (“The request to exclude Dr. Rubin’s ‘reliance on
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`Case 3:17-cv-05659-WHA Document 316 Filed 12/11/18 Page 2 of 2
`I R E L L & M A N E L L A L L P
`
`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
`
`
`documents or systems that do not establish that Claim 10 was ‘well-known, routine, and
`conventional’’ is DENIED.”). This context is why the case on which Finjan relies, Ferguson
`Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 1347 (Fed. Cir. 2003) is
`distinguishable. In that case (which only held there was no abuse of discretion rather than setting
`forth any standard to follow), the references relied upon were not noticed for the purpose for which
`they were going to be used; by contrast with the present situation, Dr. Rubin discussed certain
`prior art references in the context of § 101 and damages in his expert reports, and now Dr. Rubin
`intends to present testimony related to § 101 and damages based on the same references.
`
`In addition to the fact that Finjan’s allegation regarding insufficient notice is plainly
`incorrect, Finjan fails to allege that it would suffer any prejudice from Dr. Rubin’s reliance on
`these documents, let alone that Finjan “has been deprived of an adequate opportunity to present its
`case.” See Eaton, 790 F.2d at 879. For this reason alone, Finjan’s letter brief should be denied.
`See also Lectec Corp. v. Chattem, Inc., No. 5:08-CV-130, 2011 WL 13086026, at *8 (E.D. Tex.
`Jan. 4, 2011) (“Plaintiff has not shown that Defendants’ [] delay has significantly prejudiced
`Plaintiff’s ability to respond to Defendant’s references regarding the state of the art. This in limine
`item is therefore hereby DENIED.”). Of course, Finjan’s inability to articulate any alleged
`prejudice is not surprising given that, again, all of the prior art that Dr. Rubin intends to rely on
`were disclosed in his expert reports months ago, and Finjan’s own § 101 expert, Dr. Orso, had a
`full and fair opportunity to present his own rebuttal report.
`
`In short, all of the documents on which Dr. Rubin intends to rely at trial were disclosed to
`Finjan (at least) in one or more of Dr. Rubin’s expert reports served on September 11, October 11,
`and November 7, and therefore Finjan’s argument that it has not received timely notice of such
`prior art references is just wrong. Juniper respectfully requests that the Court deny Finjan’s letter
`brief regarding Juniper’s use of prior art with its expert, Dr. Rubin.
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`Respectfully submitted,
`
`/s/ Joshua Glucoft
`
`Joshua Glucoft
`IRELL & MANELLA LLP
`Attorneys for Defendant Juniper Networks, Inc.
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