Case 3:17-cv-05659-WHA Document 317 Filed 12/11/18 Page 1 of 5
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`PAUL ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
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`Attorneys for Plaintiff
`FINJAN, INC.
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`v.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`Defendant.
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`SAN FRANCISCO DIVISION
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`Case No.: 3:17-cv-05659-WHA
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`PLAINTIFF’S FINJAN INC.’S MOTION
`TO PRECLUDE JUNIPER FROM
`RELYING ON LATE-DISCLOSED
`PRIOR ART REFERENCES
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`Trial:
`Courtroom:
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`Before:
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`December 10, 2018
`12, 19th Floor
`Hon. William Alsup
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`FINJAN’S MOTION TO EXCLUDE JUNIPER’S
`UNDISCLOSED INVALIDITY REFERENCES
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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 317 Filed 12/11/18 Page 2 of 5
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`The relevant portions of 35 U.S.C. § 282(c), as underlined below, require in an action involving
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`allegations of invalidity that the party asserting invalidity (Juniper) “shall give notice in the pleadings
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`or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number,
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`date and name of the patentee of any patent, the title date, and page numbers of any publication to be
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`relied upon as anticipation of the patent in suit or, except in actions in the United States Court of
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`Federal Claims, as showing the state of the art, and the name and address of any person who may be
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`relied upon as the prior inventor or as having prior knowledge of or as the prior inventor or as having
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`prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. ”
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`Finjan requests the Court to prevent Juniper from using the following Trial Exhibits due to its failure to
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`comply with this provision and affirmatively state the asserted publication date regarding certain
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`printed publications. 35 U.S.C. § 282(c) (“In the absence of such notice proof of the said matters may
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`not be made at the trial except on such terms as the court requires.”). Additionally, no disclosure was
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`made for 35 U.S.C. 101 purposes. Thus, Dr. Rubin, Juniper’s expert, should not be able to introduce at
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`least these trial exhibits, as identified below.
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`No Asserted Publication Date
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`Juniper’s expert, Dr. Rubin, and Juniper have not affirmatively represented the publication
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`dates of a number of printed publications that are being used for Juniper’s invalidity claim pursuant to
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`35 U.S.C. § 101. In addition, while there are dates (and in the case of Trial Exhibit 1550, multiple
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`dates) referenced on the printed publications, there is no evidence that this is the date referenced on the
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`publication is the actual publication date. Each trial exhibit is identified below:
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`(1) Trial Exhibit 1070: “Dynamic Detection and Classification of Computer Viruses using
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`General Behaviour Patterns,” Morton Swimmer. This document references September 1995. There is
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`no evidence that this is the date of publication and Juniper has not affirmatively asserted the date of
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`publication.
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`(2) Trial Exhibit 1075: “Virus Bulletin,” Edward Wilding. This document references
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`“November 1991.” There is no evidence that this is the date of publication and Juniper has not
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`affirmatively asserted the date of publication.
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`1
`FINJAN’S MOTION TO EXCLUDE JUNIPER’S
`UNDISCLOSED INVALIDITY REFERENCES
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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 317 Filed 12/11/18 Page 3 of 5
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`(3) Trial Exhibit 1550: “Scanners of the Year 2000: Heuristics,” Gryaznov. This document
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`lists multiple dates on the cover including November 2, 2015 and 1999. There is no evidence of the
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`date of publication and Juniper has not affirmatively asserted the date of publication.
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`(4) Trial Exhibit 1553: “Automated Assistance for Detecting Malicious Code,”
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`Crawford. This document references June 18, 1993. There is no evidence that this is the date of
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`publication and Juniper has not affirmatively asserted the date of publication.
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`(5) Trial Exhibit 1554: “Detecting Unusual Program Behavior Using the Statistical
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`Component of the Next-generation Instruction Detection Expert System (NIDES),” Anderson. The
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`document references May 1995. There is no evidence that this is the date of publication and Juniper
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`has not affirmatively asserted the date of publication.
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`(6) Trial Exhibit 1241: “SQL for Dummies.” This exhibit does not have any publication date.
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`(7) Trial Exhibit 1555: “The Diffusion of Database Machines,” Hoffer. Only lists “Spring
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`1992,” but does not affirmatively state that this was the publication date.
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`(8) Trial Exhibit 1556: “The Relation Model for Database Management,” Codd. Only lists a
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`copyright date of “1990,” but does not affirmatively state that this was the publication date.
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`(9) Trial Exhibit 1558: “Heterogeneous Distributed Database Manager: The HD-DBMS,”
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`Cardenas. Only lists “1987,” but does not affirmatively state that this was the publication dates.
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`(10) Trial Exhibit 1559: “Bringing Telecommunication Services to the People – IS&N ’95,”
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`lists October 16-19, 1995 and a 1995 copyright date, but does not affirmatively state the publication
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`date that is being asserted.
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`Federal Circuit precedent has found that it is not an abuse of discretion to prevent a party
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`asserting invalidity from relying on prior art not disclosed properly under 35 U.S.C. § 282, irrespective
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`of whether that party disclosed it in discovery. Ferguson Beauregard/Logic Controls, Div. of Dover
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`Res., Inc. v. Mega systems, LLC, 350 F.3d 1327, 1347 (Fed. Cir. 2003) (affirming preclusion of prior
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`art where the defendant disclosed it in a deposition and interrogatories and argued that the plaintiff
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`“was served with multiple notices of [Defendant]’s intent to assert invalidity of the ′991 patent and that
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`the district court therefore erred.”). Moreover, “[m]erely disclosing underlying documents, such as
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`2
`FINJAN’S MOTION TO EXCLUDE JUNIPER’S
`UNDISCLOSED INVALIDITY REFERENCES
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 317 Filed 12/11/18 Page 4 of 5
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`copies of patents, is not enough. Failure to comply with the very specific notice requirements of
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`Section 282 is grounds for prohibiting introduction of evidence of the prior art.” Finisar Corp. v.
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`DirecTV Grp., Inc., 424 F. Supp. 2d 896, 899 (E.D. Tex. 2006) (citing Ferguson, 350 F.3d at 1347).
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`Finjan requests the same relief here due to Juniper’s failure to comply with this explicit requirement
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`that has been part of the Patent Act, when it was enacted in 1952 as 35 U.S.C. § 282 and its
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`predecessor has existed since 1840. See Section 15 of the Patent Act of 1836.
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`Juniper relied on a single case that predates Ferguson by nearly thirty years (Eaton Corp. v.
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`Appliance Valves Corp., 790 F.2d 874 (Fed. Cir. 1986)) to make the same argument that the Federal
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`Circuit rejected in Ferguson – i.e. that disclosure in discovery is sufficient notice under 35 U.S.C. §
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`282. But Eaton expressly relied two legal principles, one of which has since changed: (1) “To this end,
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`section 282 should be read in context with the Federal Rules of Civil Procedure” and (2) “Federal Rule
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`26 indicates Congress’s clear intent that courts be permissive in the introduction of relevant evidence.”
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`Eaton, 790 F.2d at 879. Although the first legal principle still holds true, the second has been amended
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`by statute since Eaton was decided in 1986. Specifically, the Rules of Civil Procedure were amended
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`in 1993 to provide more restrictive penalties and automatic sanctions for failure to disclose
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`information, including with regard to Rule 26 on which Eaton relied. See, e.g., Fed. R. Civ. P. 37 (“If
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`a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is
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`not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a
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`trial, unless the failure was substantially justified or is harmless.”) (emphasis added); see also Advisory
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`Committee Notes to the 1993 Amendment of Fed. R. Civ. P. 37 (“Paragraph (1) prevents a party from
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`using as evidence any witnesses or information that, without substantial justification, has not been
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`disclosed as required by Rules 26(a) and 26(e)(1). This automatic sanction provides a strong
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`inducement for disclosure of material that the disclosing party would expect to use as evidence,
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`whether at a trial, at a hearing, or on a motion, such as one under Rule 56.”) (emphasis added).
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`Thus, because no prior art was cited for 35 U.S.C. 101 purposes, all identified references
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`should be excluded.
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`FINJAN’S MOTION TO EXCLUDE JUNIPER’S
`UNDISCLOSED INVALIDITY REFERENCES
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 317 Filed 12/11/18 Page 5 of 5
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`DATED: December 11, 2018
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`Respectfully submitted,
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`By: /s/ Paul J. Andre ______
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`Paul J. Andre (State Bar No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`Kristopher Kastens (State Bar No. 254797)
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`kkastens@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`4
`FINJAN’S MOTION TO EXCLUDE JUNIPER’S
`UNDISCLOSED INVALIDITY REFERENCES
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`CASE NO.: 3:17-cv-05659-WHA
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