Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 1 of 151
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` Volume 5
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` Pages 832 - 981
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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.,
`)
` )
` Defendant.
`)
` ) San Francisco, California
` Friday, December 14, 2018
`
`
`TRANSCRIPT OF PROCEEDINGS
`
`
`APPEARANCES:
`
`For Plaintiff: KRAMER, LEVIN, NAFTALIS & FRANKEL LLP
` 990 Marsh Road
` Menlo Park, California 94025
` BY: PAUL J. ANDRE, ESQ.
` LISA KOBIALKA, ESQ.
` JAMES HANNAH, ESQ.
`
` KRAMER LEVIN NAFTALIS AND FRANKEL LLP
` 1177 Avenue of the Americas
` New York, New York 10036
` BY: CRISTINA LYNN MARTINEZ, ESQ.
`
`
`(Appearances continued on next page)
`
`
`
`
`Reported By: Katherine Powell Sullivan, CSR No. 5812, RMR, CRR
` Jo Ann Bryce, CSR No. 3321, RMR, CRR
` Official Reporters
`
`
`
` Volume 5
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` Pages 832 - 981
`
`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.,
`)
` )
` Defendant.
`)
` ) San Francisco, California
` Friday, December 14, 2018
`
`
`TRANSCRIPT OF PROCEEDINGS
`
`
`APPEARANCES:
`
`For Plaintiff: KRAMER, LEVIN, NAFTALIS & FRANKEL LLP
` 990 Marsh Road
` Menlo Park, California 94025
` BY: PAUL J. ANDRE, ESQ.
` LISA KOBIALKA, ESQ.
` JAMES HANNAH, ESQ.
`
` KRAMER LEVIN NAFTALIS AND FRANKEL LLP
` 1177 Avenue of the Americas
` New York, New York 10036
` BY: CRISTINA LYNN MARTINEZ, ESQ.
`
`
`(Appearances continued on next page)
`
`
`
`
`Reported By: Katherine Powell Sullivan, CSR No. 5812, RMR, CRR
` Jo Ann Bryce, CSR No. 3321, RMR, CRR
` Official Reporters
`
`
`
`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 2 of 151
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`APPEARANCES (CONTINUED):
`
`For Defendant: IRELL & MANELLA LLP
` 1800 Avenue of the Stars, Suite 900
` Los Angeles, California 90067-4276
` BY: JONATHAN S. KAGAN, ESQ.
` ALAN J. HEINRICH, ESQ.
` JOSHUA GLUCOFT, ESQ.
` CASEY CURRAN, ESQ.
`
` IRELL & MANELLA LLP
` 840 Newport Center Drive, Suite 400
` Newport Beach, California 92660
` BY: REBECCA CARSON, ESQ.
` KEVIN X WANG, ESQ.
`
`
`
`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 3 of 151
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`I N D E X
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`Friday, December 14, 2018 - Volume 5
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` PAGE VOL.
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`845
`Charging Conference
`864
`Defense Rests
`887
`Plaintiff Rests Rebuttal Case
`898
`Jury Instructions
`907
`Closing Argument by Mr. Andre
`927
`Closing Argument by Mr. Kagan
`954
`Rebuttal Argument by Mr. Andre
`961
`Final Jury Instructions
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`DEFENDANT'S WITNESSES PAGE VOL.
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`ORSO, ALESSANDRO (IN REBUTTAL)
`(SWORN)
`Direct Examination by Mr. Hannah
`Cross-Examination by Mr. Heinrich
`Redirect Examination by Mr. Hannah
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`865
`865
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`885
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` E X H I B I T S
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`TRIAL EXHIBITS IDEN EVID VOL.
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`875
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`875
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`875
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`875
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`875
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`5
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`5
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`5
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`5
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`5
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`5
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`PROCEEDINGS
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`Friday - December 14, 2018
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` 7:22 a.m.
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`P R O C E E D I N G S
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`---000---
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`(Proceedings were heard out of the presence of the jury:)
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`THE COURT: Okay. Let's get started.
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`Okay. First we'll consider Rule 50 motions. We've
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`considered your written material so the oral part will be
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`brief. Let's hear first from the defendant.
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`MR. HEINRICH: Good morning, Your Honor. Alan
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`Heinrich.
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`THE COURT: One issue at a time. So what's your first
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`issue?
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`MR. HEINRICH: So we move for JMOL on damages. We
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`think it's clear from plaintiff's submission that they're
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`intent on violating the law. They're going to get up here in a
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`few minutes and they're going to present the jury with a
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`damages theory that the Federal Circuit rejected in Finjan v.
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`Blue Coat.
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`They're going to argue to the jury that the jury should
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`award a royalty based on a per-user or per-scan rate that's
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`based on nothing more than what Finjan's CEO testified Finjan
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`would like to get. It's contrary to law.
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`THE COURT: Okay. All right.
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`All right. Let's hear from the other side.
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`MR. ANDRE: Good morning, Your Honor. Paul Andre for
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`Finjan.
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`THE COURT: Good morning.
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`MR. ANDRE: Your Honor, we've put in the damages case,
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`a fact-based case, that we talked about at the pretrial
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`conference. We were going to give the jury a lot of facts to
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`look at, ones in which they can base a reasonable royalty on.
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`With respect to violating the law, we have adhered
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`strictly to the Federal Circuit's guidelines in the Finjan v.
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`Blue Coat case.
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`As I spoke to you yesterday about the apportionment issue,
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`we have gone to great pains to apportion the Sky ATP module
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`down to its infringing components. That's taking out over
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`60 percent of the value of Sky ATP.
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`So we have --
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`THE COURT: Wait. Wait. Wait. Sky ATP and the
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`module. Where did you take anything out for the other
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`functions of the hardware?
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`MR. ANDRE: For the SRX?
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`THE COURT: Yes.
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`MR. ANDRE: Well, Your Honor, the apportionment for
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`SRX can be -- the Sky ATP can be attributed to the SRX or they
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`can find damages on Sky ATP alone. We have a claim in this
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`case for Sky ATP by itself without SRX. So at the very least
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`the jury can find damages on Sky ATP infringement by itself,
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`and we have apportioned that.
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 6 of 151
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`You can -- apportionment is not an exact science as
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`Your Honor is aware of. You can do the best you can do, and so
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`we -- when they sell SRX and Sky ATP together, you can look at
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`the entire system as apportionment down to 40 percent as we
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`have done.
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`The defendants in this case do not keep records of how
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`much traffic goes through SRX. We tried. They just don't keep
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`that kind of information available.
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`So we've gone through and tried to apportion to the best
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`of our ability given the information that is kept by the
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`defendants of the entire system, the SRX and Sky ATP, doing a
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`60 percent apportionment. That's a 60 percent reduction of
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`everything that goes in if it's a revenue base. If it's a
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`per-user base or a per-scan rate, then it's strictly a Sky ATP.
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`So we've given the jury substantial facts from which it
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`can base a fact-based case on.
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`THE COURT: All right. The ruling is I'm going to
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`grant the motion and knock damages out of the case, and I want
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`to explain why.
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`The initial report by the Finjan expert came down to an
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`enormous royalty of something like $70 million, a fantastic
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`sum, grossly out of proportion to anything in this case for one
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`claim, and that methodology was so flawed that I had no choice
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`but to exclude it.
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`Then I recognized going into the trial that it's
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 7 of 151
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`conceivable that a plaintiff can put on a fact-based damages
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`case. In fact, I kind of prefer that when it can be done.
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`Nevertheless, on this record it would be impossible for the
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`jury to apportion the revenue between the patented item and the
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`unpatented items.
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`There are two levels of problems. One is the hardware.
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`No effort has been made by the plaintiff to go into the
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`hardware, figure out its functionalities, and to allocate
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`between those functions that have nothing to do and were
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`preexisting to Claim 10 versus those that have something to do
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`with Claim 10.
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`Just consider one fact. The SRX preexisted Sky ATP and
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`was selling in the marketplace before any infringement came
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`along. It had very legitimate stand-alone functionality, and
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`there's nothing in this record from which the jury would be
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`able to say 1 percent of that is Sky ATP or 5 percent of that
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`is now Sky ATP.
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`The second level of problem is the Sky ATP itself performs
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`a lot of functions that are not -- that preexisted Claim 10
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`that are not covered by Claim 10, and it would just be a power
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`grab to say, "Well, any scans that go through the Sky ATP or go
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`through the dynamic processing necessarily infringe and
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`100 percent of that process is attributable to and has no
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`unpatented features." So it would just be a wild guess by the
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`jury on this record.
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 8 of 151
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`This motion has to be adjudicated based upon what the
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`state of the record was at the end of the plaintiff's case.
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`It's true that the defense put on a damages case, but that was
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`because they were forced to because I was unable to rule on the
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`Rule 50 at the time.
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`For purposes of this motion, we have to look at the
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`plaintiff's case, and it was not sufficient. It was woefully
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`inadequate. So there will be no damage award.
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`What I will say to the jury is, if they get to that issue,
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`that I will take care -- I will determine that issue so that
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`they won't -- Finjan won't be prejudiced. We're still going to
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`get them to decide infringement and the notice issue, and I
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`will tell them that if they reach the -- if they would
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`otherwise have reached the damages issue, that is for the Court
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`to determine.
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`All right. That's all we're going to say on that one. We
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`have to move on.
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`What's your next Rule 50?
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`MR. HEINRICH: So we also move on notice. Two issues
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`here. One is that Finjan had an opportunity -- had an
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`obligation to mark. They had licensees at minimum that,
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`according to Finjan itself, were selling products covered by
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`Claim 10. They touted that to the Patent Office, but they
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`made --
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`THE COURT: It has to be based on what's touted to the
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 9 of 151
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`jury, not the Patent Office.
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`MR. HEINRICH: Well, so there were admissions. In
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`other words, there were admissions and also there were
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`admissions from Mr. Hartstein that their licensees were
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`practicing Claim 10.
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`Undisputed that the licensees were not marking and that
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`Finjan did not even attempt to require the licensees to mark.
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`So that means that to be entitled to presuit damages, they have
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`to provide actual notice. The evidence showed that they did
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`not provide actual notice with the specificity required by law.
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`Mr. Garland initially said he told Mr. Coonan Sky ATP. He
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`recanted at trial. He said, "Well, I had Sky ATP in my mind."
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`Well, you can't provide notice by telekinesis.
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`He said advanced --
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`THE COURT: No, no, no. Telepathy.
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`(Laughter)
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`THE COURT: Telekinesis is where you bend the spoon.
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`MR. HEINRICH: Exactly. Thank you, Your Honor.
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`THE COURT: Time is short. Your turn.
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`MS. KOBIALKA: Okay, Your Honor. So what we --
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`THE COURT: Take them one at a time. The marking
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`issue first and then the -- okay?
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`MS. KOBIALKA: So Finjan affirmatively showed that it,
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`in fact, did mark. It marked its products. It marked its
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`previous products. There is nothing in the record that there
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 10 of 151
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`was a requirement to mark specifically with the '494 patent.
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`Keep in mind it issued in 2014 and it expired in 2017. So
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`there was a short period of time. There is only three
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`references to licenses in the record. The one that
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`Mr. Hartstein had testified about was Microsoft. That was in
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`2005, and there was no evidence about the '494 specifically.
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`There's actually no evidence whatsoever that there was a
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`requirement to mark.
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`THE COURT: I asked this question during the trial and
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`you both -- not you, it was Mr. Andre -- Mr. Andre told me that
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`some Arctic something letter was sent and that it was your
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`burden to show that there was marking.
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`MS. KOBIALKA: So -- right.
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`THE COURT: Yeah?
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`MS. KOBIALKA: Yeah, that was actually me. There was
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`a notice, which was during discovery, that they provided
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`Arctic Cat's notice.
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`THE COURT: Yeah.
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`MS. KOBIALKA: Then -- but they still at trial have to
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`present evidence. So what we affirmatively proved --
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`THE COURT: I thought you said it was your burden.
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`MS. KOBIALKA: Right. And we did. We affirmatively
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`demonstrated that the products that needed to be marked were in
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`fact marked. We did that with our mobile app. We talked about
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`the previous Trustwave and Finjan boxes.
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 11 of 151
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`THE COURT: That was your products, but how about the
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`licensed products?
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`MS. KOBIALKA: There are no licensed products that
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`need to be marked, that's the point, and he testified to that.
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`There isn't any evidence of it. They didn't present any
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`evidence that there are products that needed to be marked with
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`the '494.
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`THE COURT: Well, that's true. It is true that they
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`didn't present any evidence -- defendants did not present
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`evidence that there actually are products out there by
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`licensees. They got some testimony that there were licensees,
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`but I did not hear the testimony that there were products. I
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`don't know.
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`What am I missing there?
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`MR. HEINRICH: So two things. Mr. Hartstein's
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`testimony, he specifically admitted that there were products
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`from licensees.
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`THE COURT: Read that to me.
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`MR. HEINRICH: So while we pull that up --
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`THE COURT: But products that use the '494?
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`MR. HEINRICH: That's right.
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`And then we also admitted into evidence Exhibit 1760.
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`This was one of Finjan's own responses to the Patent Office in
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`an IPR, and they identified products sold by F-Secure, Avast,
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`Proofpoint, and Websense that practiced the '494 patent and
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 12 of 151
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`they relied on that for objective considerations of
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`nonobviousness. They were asserting that.
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`THE COURT: That's in the record before the jury?
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`MR. HEINRICH: Yes, it is.
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`THE COURT: What's the exhibit number?
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`MR. HEINRICH: 1760.
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`THE COURT: Okay. What do you say to that?
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`MS. KOBIALKA: No. There were generalized statements
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`and there's no time frame put in place. So, yeah, what was
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`testified to explicitly is (reading):
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`"Finjan believes its licensees are actually using its
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`patents in those products?" Very generally.
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`"Yes, we believe that."
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`And then he testified (reading):
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`"But there wasn't any requirement for them to mark."
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`There was no -- there was no requirement that they
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`actually needed to mark.
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`THE COURT: Well, there was no requirement in the
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`license agreement.
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`MS. KOBIALKA: The patent expired. If they're
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`suggesting that you need to continue marking after the patent
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`expired, then you've got a false marking issue. They have to
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`demonstrate that there is actually a requirement.
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`THE COURT: Look, I'm going to deny this motion
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`because time is short and the burden is on defendant. We don't
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 13 of 151
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`have all day. You have not persuaded me to a moral certainty.
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`No. It's over. We're not going to go there.
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`This will go to the jury even though I have some doubts
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`that the plaintiff has done what they have to do. I must say
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`it is conceivable after the trial you could convince me that
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`there was not enough evidence to go to the jury on this issue,
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`but right now time is short and this is not clear. The damages
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`was quite clear to me. This one is not clear enough so we're
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`going to let it go to the jury.
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`All right. What's your other Rule 50?
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`MR. HEINRICH: So we do move on infringement, but in
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`particular --
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`THE COURT: That will be denied. There's enough
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`evidence. Plus you guys -- Juniper played slick games. Slick
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`games. That thing with that doctor from the PTO, Medvidovic --
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`what was his name?
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`MS. KOBIALKA: Medvidovic.
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`THE COURT: Yeah, that guy. I didn't like what you
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`did there. I thought that was too cute by half, so you're not
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`going to win. That motion is denied.
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`All right. Okay. Do you have a Rule 50?
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`MR. ANDRE: Your Honor, I'll just preserve it. It was
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`a motion for infringement.
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`THE COURT: I want you to know I think you've got a
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`decent case on infringement, but I'm not prepared to say that I
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`could take it away from the jury.
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`MR. ANDRE: And the other is we have a motion that
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`they did not meet -- it's not -- it's going to be before
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`Your Honor, but we filed the motion for the 101 issue.
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`THE COURT: That one I want to talk about after the
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`case goes to the jury. We don't need to get into that one
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`right now.
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`MR. ANDRE: That's fine. I just want to preserve it.
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`That's all we have.
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`THE COURT: All right. It's preserved.
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`All right. So now let's go to the jury instructions. I'm
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`inclined to take out doctrine of equivalents as set forth in
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`the letter from Ms. Carson because I think Federal Circuit law
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`requires that there be a better record.
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`Do you have an objection to that?
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`MR. ANDRE: We have no objection, Your Honor.
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`THE COURT: All right.
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`MR. ANDRE: We had it pled, but we just did not pursue
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`evidence on that so we have no problem with that.
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`THE COURT: All right. Thank you.
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`Okay. So that will come out.
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`What else? Is it true, as set forth in Ms. Carson's
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`letter, that on the marking issue that the law requires that
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`the patent owner make reasonable efforts to ensure that the
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`licensees who made offer for sale, et cetera, mark the
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`products? In other words, it's a reasonable efforts thing? Is
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`that part of the law? Do you agree with that?
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`MS. KOBIALKA: Once there's a demonstration that there
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`is, in fact, a marking requirement of other products. So once
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`you've -- there's a marking requirement. We've put evidence
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`forward of all the products that we believe need to be marked
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`were, in fact, marked during the relevant time frame.
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`If you demonstrate that there are licensees out there that
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`should have marked during the, you know, time of the patent
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`when it was in issue, then you would also have to demonstrate,
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`as the patentee, that there was substantial and continuous
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`marking, but that second element wasn't put forward at trial.
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`THE COURT: Well, when we get to that instruction,
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`then we may have to fiddle with it.
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`Okay. Let's go to the jury instructions. And the best
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`way to do this for me is to go down it paragraph by paragraph.
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`All right. Any issues with Number 1?
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`MS. KOBIALKA: Nothing from Finjan.
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`MS. CARSON: No, Your Honor. Nothing from defendant.
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`THE COURT: Number 2?
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`MS. KOBIALKA: 2 is fine.
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`MS. CARSON: 2 is fine.
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`THE COURT: 3?
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`MS. KOBIALKA: That's fine.
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`MS. CARSON: Fine.
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`THE COURT: 4?
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`MS. KOBIALKA: Fine.
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`MS. CARSON: Fine.
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`THE COURT: 5?
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`MS. KOBIALKA: Fine.
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`MS. CARSON: Fine.
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`THE COURT: 6?
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`MS. KOBIALKA: Good.
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`MS. CARSON: Good.
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`THE COURT: 7.
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`MS. KOBIALKA: Fine.
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`MS. CARSON: Fine.
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`THE COURT: 8?
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`MS. KOBIALKA: Your Honor, 8 is fine.
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`MS. CARSON: We're okay with 8.
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`THE COURT: 9?
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`MS. KOBIALKA: It's fine.
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`MS. CARSON: We're okay with 9.
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`THE COURT: 10?
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`MS. KOBIALKA: That's fine.
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`MS. CARSON: Good with 10.
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`THE COURT: 11?
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`MS. KOBIALKA: That's fine.
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`MS. CARSON: We're good with 11.
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`THE COURT: 12?
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`MS. KOBIALKA: That's fine.
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`MS. CARSON: We're good with 12.
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`THE COURT: 13?
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`MS. KOBIALKA: That's fine.
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`MS. CARSON: 13 is good.
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`THE COURT: 14?
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`MS. KOBIALKA: Fine.
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`MS. CARSON: Fine.
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`THE COURT: Okay. 15?
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`MS. KOBIALKA: That's fine.
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`MS. CARSON: We're good with 15.
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`THE COURT: 16?
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`MS. KOBIALKA: That was fine.
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`MS. CARSON: We're good with 16.
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`THE COURT: 17?
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`MS. KOBIALKA: That's fine.
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`MS. CARSON: We're fine with 17.
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`THE COURT: 18?
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`MS. KOBIALKA: 18 we would propose something,
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`Your Honor.
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`THE COURT: What?
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`MS. KOBIALKA: We'd like to propose a minor
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`modification.
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`THE COURT: Yes. Go ahead.
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`MS. KOBIALKA: So throughout the trial the element at
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`issue was a database, so what we wanted to propose was that --
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`and if you would -- and if it's easiest, I can read it to you.
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`The first two questions on the special verdict form ask
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`whether Finjan has proven by a preponderance of the evidence
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`that Juniper's accused products meet the last limitation of
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`Claim 10 of the '494, and just you can remove "either literally
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`or equivalently"; namely, the last limitation of, quote, "a
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`database from the element of," and then the remainder of that's
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`fine.
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`THE COURT: Isn't that correct?
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`MS. CARSON: So, Your Honor, the claim needs to be
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`considered in context and we think it's misleading to say that
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`all the jury needs to find is that there's a database. They
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`need to find a database within the meaning of the claim.
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`So our position is --
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`THE COURT: Well, what --
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`MS. CARSON: So it wouldn't be sufficient just that
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`there is any database in the product. That would be
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`misleading. It has to be a database that stores downloadable
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`security profile data as defined in the claim.
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`MS. KOBIALKA: I think that's exactly what we're
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`saying, though. It is just the database element of the entire
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`claim element; and throughout the trial, I have quotations even
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`from Juniper's counsel where they have agreed that that is
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`actually what is at issue.
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 19 of 151
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`We're not disputing that it fits within the context of
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`that last claim element, but your summary judgment order had
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`indicated that, for example, the database manager had already
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`been found.
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`(Pause in proceedings.)
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`THE COURT: What if I say that the issue is whether or
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`not the accused product uses a database within the meaning of
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`the last limitation? Is that all right?
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`MS. KOBIALKA: That is correct, but I would just make
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`sure it's "make, use, sells, and offers for sale the database
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`limitation of" and then you can just read the whole claim
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`element.
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`MS. CARSON: I think, Your Honor, it would need to be
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`within the meaning of the claim, not just within the meaning of
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`the final element because --
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`THE COURT: Well, it's only -- isn't it only used in
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`that one limitation?
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`MS. CARSON: It is, but the downloadable security
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`profile data is defined by element 10(b). So in order to
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`determine what downloadable security profile data needs to be
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`stored in the database, you have to consider --
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`THE COURT: All right. Do you care -- where is my
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`list of the lawyers? Here we go.
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`Ms. Kobialka, am I saying that right?
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`MS. KOBIALKA: You are.
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`THE COURT: Do you care one way or the other?
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`MR. ANDRE: Your Honor, this is Paul Andre. I'll
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`answer.
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`It's okay when you say the database, you know, as read in
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`the context of the claim. That's fine.
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`THE COURT: All right. Okay. So help me with the
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`language that you wanted to use in the --
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`MS. KOBIALKA: So if I'm looking at your proposal on
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`page 9 --
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`THE COURT: Wait. Wait. I thought it was
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`paragraph -- what paragraph are we --
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`MR. ANDRE: 18.
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`MS. KOBIALKA: Paragraph 18.
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`THE COURT: 18. Okay. Yes. All right.
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`So read to me slowly because I don't -- exactly where do
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`you want to start changing things?
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`MR. ANDRE: The very first. It says "The first two
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`questions."
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`THE COURT: Right.
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`MR. ANDRE: I believe it should be "The first
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`question."
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`THE COURT: "The first question."
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`MR. ANDRE: Because we're getting rid of doctrine of
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`equivalents.
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`THE COURT: Right.
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`MR. ANDRE: And then it goes there, and you get rid of
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`the parenthetical on the third line "either literally or
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`equivalent."
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`THE COURT: Yeah. And then what?
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`MS. KOBIALKA: "Namely, the database"; right?
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`MR. ANDRE: The last limitation is the database
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`portion of the last element.
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`THE COURT: I'm sorry.
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`MR. ANDRE: I'm sorry.
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`THE COURT: After I get rid of the parenthetical, I'm
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`going to say "Namely, the last limitation that is a database
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`manager," and then I quote the whole thing; right? Is that
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`what you want me to do --
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`MS. KOBIALKA: No.
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`THE COURT: -- or you're telling me not to?
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`MS. KOBIALKA: So "Namely, the," quote, "database."
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`So I'm starting from "namely," which is that last line.
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`MR. ANDRE: Just say "database within the context of
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`the claim."
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`MS. KOBIALKA: Or just say "Namely, the database
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`within the context" --
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`MR. ANDRE: "Of the claim."
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`MS. KOBIALKA: So I think we can agree. "Namely" --
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`THE COURT: Here. I've got a better idea. Wait.
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`Wait. Wait.
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`MS. KOBIALKA: Okay.
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`(Pause in proceedings.)
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`THE COURT: You know, I'm going -- I just like the way
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`I've got it better. I don't mind putting in there that the key
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`issue is that it's the database, but I'm going to have to go
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`back and change so many of the special verdict form and
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`everything else if I start taking out the -- I've quoted the
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`last limitation in full, and I want to do that.
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`MS. KOBIALKA: And we're fine with that, Your Honor.
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`I just want to make sure that -- because throughout, throughout
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`trial we've instructed the jury numerous times that it's really
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`just database structure.
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`THE COURT: I'm going to say this, line 2 on the next
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`page (reading):
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`"The Court and the parties agree that all elements of
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`Claim 10 are met except they disagree" -- "the parties
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`disagree, whether the," quote, "database element is met."
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`MS. KOBIALKA: That would be fine with us.
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`THE COURT: I'm going to say, "Then" -- wait a minute
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`-- "Then you must decide whether the database element is met as
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`that term is used in the claim." How about that?
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`MS. KOBIALKA: That's fine, Your Honor.
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`MS. CARSON: Your Honor, just one slight modification.
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`We prefer that you say there's no dispute because Juniper
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`doesn't -- recognizing Your Honor's order on summary judgment,
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 23 of 151
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`we don't necessarily agree that all of the other elements are
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`met.
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`THE COURT: I'll either say that or I will say "The
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`Court has ruled." Do you want me to say that? The reason I
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`didn't was because usually defendants don't want the jury to
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`know that you lost something.
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`I'm going to say "The Court has ruled against Juniper."
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`Do you want me to say that, or do you want me to do it the way
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`I have it here?
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`MS. CARSON: You can do it the way you have it.
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`THE COURT: Yeah, I figured you would go along with
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`that. Okay. Thank you.
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`There was a dispute. That dispute is history. You lost
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`on that.
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`All right. Good.
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`Okay. What's your -- let's keep going here. We're going
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`to have to bring the jury in in ten minutes so what's next?
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`Paragraph 19?
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`MS. KOBIALKA: I don't think you need it if you've
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`removed doctrine of equivalents.
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`MS. CARSON: We agree.
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`THE COURT: All right. Take out 19.
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`MS. KOBIALKA: And then 20, the last paragraph it
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`starts "If you decide," that's doctrine of equivalents. You
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`can remove that.
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 24 of 151
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`THE COURT: The whole paragraph? 21 comes out?
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`MS. KOBIALKA: Well, all of 21 would come out, but
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`there's a second paragraph in 20, which refers to doctrine of
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`equivalents --
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`THE COURT: I see.
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`MS. KOBIALKA: -- and I think we agree it shouldn't be
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`in.
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`MS. CARSON: Yeah. This last one here (indicating) .
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`THE COURT: All right. Good. Got it.
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`Okay.
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`MS. KOBIALKA: 22 and 23 should come out. Those are
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`about doctrine of equivalents.
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`THE COURT: 22 and 23 out.
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`Okay.
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`MS. KOBIALKA: And then can I just skip on to the next
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`one that I have an issue?
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`THE COURT: Just a minute.
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`(Pause in proceedings.)
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`THE COURT: Okay. Yes. Go ahead.
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`MS. KOBIALKA: The next one I have was 36. I don't
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`know if you have one.
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`MS. CARSON: Well, so I just -- I think this is -- my
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`numbers got messed up, but there's one where we need to modify
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`the language about the special verdict to modify it so it says
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`the second and third questions.
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`MS. KOBIALKA: Yeah, that's right. This is just
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`getting the question numbers correct on the verdict form once
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`you remove doctrine of equivalents. We don't have any issues
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`with that.
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`THE COURT: We've been working on that. You're right,
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`we have to conform the numbers so we will do that. Don't bring
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`that part up because time is precious. We will do that.
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`MS. CARSON: So we have the objection that we
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`discussed already to the constructive notice instruction, which
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`is Instruction Number 26.
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`THE COURT: All right. Overruled. I'm going to leave
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`it in for now. Do you have a substantive point about it,
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`though?
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`MS. CARSON: So we just wanted to make clear that
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`they're required to show that their licensees marked, not just
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`that they mark.
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`THE COURT: Say that again.
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`MS. CARSON: So the way that it is worded now, it
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`implies that they need only show that either they or their
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`licensees marked the products, and we wanted to make clear that
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`the requirement is that they show that both were marked.
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`THE COURT: Well, where does the word "or" come up
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`that gives that misimpression?
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`How about this? "... that substantially all of the
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`products sold" -- not "it sold" -- "sold," take out the dash,
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`Case 3:17-cv-05659-WHA Document 339 Filed 12/17/18 Page 26 of 151
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`"either itself" -- no -- "by it and its licensees" -- "'494" --
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`"it and its '494 licensees that included the patented
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`invention."
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`"All the products sold by it and its '494 licensees that
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`included the '494..." Yeah. Either -- it's a litt
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