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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 1 of 16
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`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@irell.com
`Alan Heinrich (SBN 212782)
`aheinrich@irell.com
`Joshua Glucoft (SBN 301249)
`jglucoft@irell.com
`Casey Curran (SBN 305210)
`ccuran@irell.com
`Sharon Song (SBN 313535)
`ssong@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Rebecca Carson (SBN 254105)
`rcarson@irell.com
`Kevin Wang (SBN 318024)
`kwang@irell.com
`840 Newport Center Drive, Suite 400
`Newport Beach, California 92660-6324
`Telephone: (949) 760-0991
`Facsimile: (949) 760-5200
`
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`vs.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`Defendant.
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`Case No. 3:17-cv-05659-WHA
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`DEFENDANT JUNIPER NETWORKS,
`INC.’S NOTICE OF MOTION AND
`MOTION FOR JUDGMENT AS A
`MATTER OF LAW; MEMORANDUM
`OF POINTS AND AUTHORITIES
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`Date: February 14, 2019
`Time: 8:00 a.m.
`Judge: Hon. William Alsup
`Courtroom: 12 – 19th Floor
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`10626586
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 2 of 16
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`NOTICE OF MOTION AND MOTION
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`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
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`PLEASE TAKE NOTICE that on February 14, 2019, at 8:00 a.m., or as soon thereafter as
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`the matter may be heard, in Courtroom 12, 19th Floor, of the San Francisco Courthouse, 450 Golden
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`Gate Avenue San Francisco, California 94102, before the Honorable Williams Alsup, Defendant
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`Juniper Networks, Inc. (“Juniper”) will and hereby does move for Judgment as a Matter of Law
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`(“JMOL”) pursuant to Rule 50(b) of the Federal Rules of Civil Procedure. This motion is based on
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`this Notice of Motion, the Memorandum of Points and Authorities, the exhibits attached thereto, the
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`proposed amended answer and counterclaims, all documents in the Court’s file, and such other
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`written or oral argument as may be presented at or before the time this motion is heard by the Court.
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`
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`Dated: January 10, 2019
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`IRELL & MANELLA LLP
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`By: /s/ Rebecca Carson
`Rebecca Carson
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
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`10626586
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 3 of 16
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`TABLE OF CONTENTS
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`Page
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`3
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`I.
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`INTRODUCTION ............................................................................................................... 1
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`4
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`II.
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`LEGAL STANDARD ......................................................................................................... 1
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`5
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`III.
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`ARGUMENT ...................................................................................................................... 2
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`A.
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`No Reasonable Jury Could Have Found That Finjan Satisfied The
`Constructive Notice Requirements Of 35 U.S.C. § 287. ......................................... 2
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`1.
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`2.
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`3.
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`Juniper Met Its Burden Of Production To Identify Unmarked
`Articles. ....................................................................................................... 2
`
`No Reasonable Jury Could Have Found That Finjan Met Its
`Burden To Show Compliance With The Constructive Notice
`Requirements Of § 287. .............................................................................. 4
`
`No Reasonable Jury Could Have Found That Finjan Met Its
`Burden To Show Compliance With The Actual Notice
`Requirements Of § 287. .............................................................................. 7
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`13
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`IV.
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`CONCLUSION ................................................................................................................. 10
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 4 of 16
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`TABLE OF AUTHORITIES
`
`
`
`
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`Page(s)
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`Cases
`
`Acantha LLC v. DePuy Orthopaedics Inc.,
`No. 15-C-1257, 2018 WL 1951231 (E.D. Wis. Apr. 25, 2018) ...................................................6
`
`Amsted Industries Inc. v. Buckeye Steel Castings Co.,
`24 F.3d 178 (Fed. Cir. 1994) ........................................................................................................7
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) .....................................................................................................................2
`
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ................................................................................................2, 4
`
`Asyst Technologies, Inc. v. Empak,
`2006 WL 3302476 (N.D. Cal. Nov. 14, 2006) .......................................................................7, 10
`
`Calmar, Inc. v. Emson Research, Inc.,
`850 F. Supp. 861 (C.D. Cal. 1994) ...............................................................................................6
`
`Cordis Corp. v. Boston Sci. Corp.,
`658 F.3d 1347 (Fed. Cir. 2011) ....................................................................................................2
`
`Cybiotronics, Ltd. v. Golden Source Elecs. Ltd.,
`130 F. Supp. 2d 1152 (C.D. Cal. 2001) ........................................................................................5
`
`Funai Elec. Co., Ltd. v. Daewoo Electronics,
`616 F.3d 1357 (Fed. Cir. 2010) ..........................................................................................7, 9, 10
`
`Lans v. Dig. Equip. Corp.,
`252 F.3d 1320 (Fed. Cir. 2001) ....................................................................................................7
`
`Maxwell v. J. Baker, Inc.,
`86 F.3d 1098 (Fed. Cir. 1996) ......................................................................................................5
`
`Nike, Inc. v. Wal-Mart Stores, Inc.,
`138 F.3d 1437 (Fed. Cir. 1998) ....................................................................................................4
`
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`IPR2016-00159 ............................................................................................................................3
`
`Reeves v. Sanderson Plumbing Prods., Inc.,
`530 U.S. 133 (2000) .....................................................................................................................1
`
`Stryker Corp. v. Intermedics Orthopedics, Inc.,
`891 F. Supp. 751 (E.D.N.Y. 1995), aff’d, 96 F.3d 1409 (Fed. Cir. 1996) ...................................6
`
`10626586
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`- ii -
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 5 of 16
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`U.S. Ethernet Innovations, LLC v. Acer, Inc.,
`No. C 10-3724 CW, 2013 WL 4456161 (N.D. Cal. Aug. 16, 2013) ...........................................5
`
`Weisgram v. Marley Co.,
`528 U.S. 440 (2000) .....................................................................................................................1
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`4
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`Statutes
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`35 U.S.C. § 287 ........................................................................................................................ passim
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`35 U.S.C. § 287(a) ..........................................................................................................................2, 7
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`Other Authorities
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`Fed. R. Civ. P. Rule 50 .......................................................................................................................1
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`Fed. R. Civ. P. Rule 50(a) ..................................................................................................................1
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`Fed. R. Civ. P. Rule 50(b) ..................................................................................................................1
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`- iii -
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`JUNIPER’S MOTION FOR
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`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 6 of 16
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`I.
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`INTRODUCTION
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`Defendant Juniper Networks, Inc. (“Juniper”) renews its motion for judgment as a matter
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`of law (“JMOL”) pursuant to Rule 50(b) of the Federal Rules of Civil Procedure. Because the
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`jury unanimously found that Juniper did not infringe Finjan, Inc.’s (“Finjan”) ’494 Patent, it did
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`not make any finding regarding Finjan’s obligation to comply with the notice requirements of
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`35 U.S.C. § 287. As the evidence presented by the close of Finjan’s case-in-chief demonstrates,
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`no reasonable jury could have had a legally sufficient basis to find in Finjan’s favor on the notice
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`requirement. Accordingly, Juniper respectfully requests that the Court enter judgment in Juniper’s
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`favor on the following issues:
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` Finjan and its licensees failed to comply with the marking requirements of 35 U.S.C.
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`§ 287; and
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` Finjan failed to provide Juniper with actual notice of the ’494 Patent prior to the
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`expiration of the patent.
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`Despite the jury’s verdict on Claim 10, Juniper’s notice arguments remain relevant to this
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`case because Finjan has informed Juniper that it still intends to pursue Claims 10, 14 and 18
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`against the ATP Appliance product that was not part of the first trial. Moreover, Finjan apparently
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`plans to appeal the outcome of the trial, including the jury’s finding of non-infringement and the
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`court’s ruling on the failure to prove damages as a matter of law. As a result, Finjan’s failure to
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`comply with the marking requirements of § 287 are still relevant.
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`21
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`II.
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`LEGAL STANDARD
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`Juniper renews its motion for judgment as a matter of law with regard to notice pursuant to
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`Rule 50. Judgment as a matter of law is appropriate if “a party has been fully heard on an issue
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`and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on
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`that issue.” Fed. R. Civ. P. Rule 50(a). In making this determination, “the court should review all
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`of the evidence in the record, not merely the evidence favorable to the non-moving party.” Reeves
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`v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). Rule 50 “allows the trial court to
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`remove . . . issues from the jury’s consideration when the facts are sufficiently clear that the law
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`10626586
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 7 of 16
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`requires a particular result.” Weisgram v. Marley Co., 528 U.S. 440, 448 (2000) (internal
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`quotations omitted). The standard for granting judgment as a matter of law mirrors the standard
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`for granting summary judgment, and “the inquiry under each is the same.” Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 250–51 (1986); see also Cordis Corp. v. Boston Sci. Corp., 658 F.3d
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`1347, 1357 (Fed. Cir. 2011) (“The question is not whether there is literally no evidence supporting
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`the unsuccessful party, but whether there is evidence upon which a reasonable jury could properly
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`have found its verdict.”).
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`8
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`III. ARGUMENT
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`9
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`10
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`A.
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`No Reasonable Jury Could Have Found That Finjan Satisfied The
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`Constructive Notice Requirements Of 35 U.S.C. § 287.
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`“Pursuant to 35 U.S.C. § 287(a), a patentee who makes or sells a patented article must mark
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`12
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`his articles or notify infringers of his patent in order to recover damages” to provide constructive
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`13
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`notice to the public of its patent rights. Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876
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`14
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`F.3d 1350, 1365 (Fed. Cir. 2017). “A patentee’s licensees must also comply with § 287.” Id. at
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`15
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`1366. An alleged infringer who disputes a “patentee’s compliance with § 287 bears an initial burden
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`of production to articulate the products it believes are unmarked ‘patented articles’ subject to § 287.”
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`Id. at 1368. “Once the alleged infringer meets its burden of production, however, the patentee bears
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`18
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`the burden to prove the products identified do not practice the patented invention.” Id.
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`1.
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`Juniper Met Its Burden Of Production To Identify Unmarked Articles.
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`There is no dispute that Juniper satisfied its burden of production to identify unmarked
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`patented articles. Indeed, Juniper served a pre-trial notice on Finjan on May 3, 2018 identifying a
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`number of unmarked patented articles sold by Finjan and Finjan’s licensees. Dkt. No. 96-11
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`23
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`(unredacted version at Dkt. No. 95-15). And, Finjan’s counsel even conceded during the trial that
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`Juniper had satisfied its burden of production under Arctic Cat, and thus the burden had shifted to
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`Finjan to prove either constructive or actual notice. Trial Transcript (“Trial Tr.”) Vol. 2 at 289:8-23
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`26
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`(“MS. KOBIALKA: We tried to make a stipulation on this particular point prior to trial, but let me
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`just say that they did give us an Arctic Cat notice. They did.”) and 289:24-290:1 (“THE COURT:
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`10626586
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 8 of 16
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`All right. So if I just tell you right now that you’ve got to prove notice, you are okay with that? Ms.
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`Kobialka: Yes.”) (emphasis added).
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`In addition to this notice, Juniper introduced evidence at trial that multiple Finjan licensees
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`sell products that practice the ’494 Patent. For example, Juniper introduced evidence during the
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`examination of Dr. Cole that Finjan made the following admissions in a filing to the United States
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`Patent and Trademark Office (“USPTO”):
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` “After the ’494 issued, several licensees entered into licensee agreements, which
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`included a license to the ’494 Patent, to avoid litigation and to obtain a license to
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`continue to make, use, offer to sell, and sell products that embodied the inventions
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`disclosed in the ’494 Patent.”
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` “Avast’s Endpoint Protection and its connection with Avast Research Labs to identify
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`new malicious threats utilize the inventions disclosed in the ’494 Patent . . . .”
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` “F-Secure’s multi-layered approach to security is comprised of five modules, each
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`designed to address a particular aspect of the threat landscape and work together to
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`provide a complete solution using the technology of the ’494 Patent . . . .”
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` “Websense uses the inventions disclosed in the ’494 Patent.” And “Thus, the sales of
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`the [Websense] Triton product coincide directly with the inventions disclosed in the
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`’494 Patent.”
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` “The Proofpoint products practice the inventions disclosed in the ’494 Patent and
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`Proofpoint has obtained significant revenues from the sales of those products.”
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`See Trial Exhibit 1760 (Finjan’s POR in Palo Alto Networks, Inc. v. Finjan, Inc., IPR2016-00159).1
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`1 During his closing argument, Finjan’s counsel claimed that the statements made in Trial
`Exhibit 1760 are not evidence because they were made by an attorney. Trial Tr. Vol. 5 at
`958:18-22. After the Court corrected this misstatement, counsel claimed that he was instead
`making the point that Trial Exhibit 1760 does not “call out specific products.” Id. at 959:5-960:6.
`This statement to the Court was untrue. As shown above, Trial Exhibit 1760 does in fact identify
`specific licensee products.
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`10626586
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 9 of 16
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`2.
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`No Reasonable Jury Could Have Found That Finjan Met Its Burden To
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`Show Compliance With The Constructive Notice Requirements Of
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`§ 287.
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`Because, as Finjan concedes, Juniper satisfied the initial burden of production of identifying
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`unmarked products, Finjan bore the burden to prove that either (1) the products identified by Juniper
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`do not actually practice the ’494 Patent, or (2) substantially all of the identified products sold by
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`Finjan and its licensees were marked with the ’494 Patent. Arctic Cat, 876 F.3d at 1368. Finjan
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`failed to meet its burden to produce evidence on either of these issues, and thus a reasonable jury
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`could not find that Finjan complied with the constructive notice requirements of § 287.
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`10
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`As an initial matter, Finjan presented no evidence that the products identified by Juniper do
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`not practice the ’494 Patent. To the contrary, Finjan admitted that its licensees do in fact sell
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`products that practice the ’494 Patent. For example, Finjan’s CEO, Philip Hartstein, testified that
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`Finjan’s licensees sold products practicing the ’494 Patent. Trial Tr. at 318:11-13 (“But Finjan
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`believes that its licensees are actually using its patents in those products; correct? A. Yes, we
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`believe that.”). As another example, Finjan admitted in a filing to the USPTO that several of its
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`specific licensees practice the ’494 Patent in its Patent Office filings, as noted above. Trial Ex. 1760
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`at 54.
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`Next, the factual record shows that Finjan’s licensees who practice the ’494 Patent do not
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`mark those products with the ’494 Patent. For example, Mr. Hartstein could not identify a single
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`licensee that had marked its products with Finjan’s patent numbers since the ’494 Patent issued.
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`Trial Tr. Vol. 2 at 318:17-319:2 (“. . . As you sit here right now, can you identify a single product
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`by any of those licensees that bears the marking of the ’494 Patent? You can answer that yes or no.
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`THE WITNESS: As I sit here, no.”). He further testified that none of Finjan’s license agreements
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`have marking provisions, and that he was not aware of any efforts by Finjan to monitor whether its
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`licensees were marking their products with Finjan’s patent numbers. Trial Tr. Vol. 2 at 319:5-11
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`(“Q. You don’t believe that any of Finjan’s licenses have marking provisions; correct? A. That is
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`my understanding, that our agreements do not. Q. And, in fact, you’re not aware of any efforts by
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`10626586
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 10 of 16
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`Finjan to monitor whether its licensees are marking their products with Finjan’s patents; correct?
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`A. That is correct.”).
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`In view of the affirmative evidence that Finjan’s licensees do not mark their products with
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`Finjan’s patent numbers, Finjan indisputably has not met its burden to demonstrate that all or
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`substantially all of the patented articles sold by it or its licensees were marked. See Nike, Inc. v.
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`Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998) (“In order to satisfy the constructive
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`notice provision of the marking statute, [Patent Owner] must have shown that substantially all of
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`the [products] being distributed were marked, and that once marking was begun, the marking was
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`substantially consistent and continuous.”) (emphasis added); Cybiotronics, Ltd. v. Golden Source
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`Elecs. Ltd., 130 F. Supp. 2d 1152, 1162 (C.D. Cal. 2001). And, while the Federal Circuit has
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`recognized that a patentee with licensees who sell patented products may establish compliance with
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`§ 287 by showing that the patentee “made reasonable efforts to ensure compliance with the marking
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`requirements” (Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111–12 (Fed. Cir. 1996)), Finjan failed to
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`present any evidence of such efforts. To the contrary, as noted above, Mr. Hartstein testified that
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`Finjan made no efforts to ensure its licensees were complying with the marking requirements. Trial
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`Tr. Vol. 2 at 319:5-11 (testifying that license agreements do not contain marking provisions and
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`Finjan does not monitor licensees to ensure marking).
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`The court’s decision in U.S. Ethernet Innovations, LLC v. Acer, Inc., No. C 10-3724 CW,
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`2013 WL 4456161, at *7 (N.D. Cal. Aug. 16, 2013) is on point. In that case, the court found that
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`3Com had not satisfied its marking obligations as to its licensee IBM. The Court explained:
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`[H]ere, the evidence does not support that 3Com made reasonable efforts to ensure
`that IBM marked any licensed products with the patents-in-suit. In fact, the evidence
`offered shows that 3Com took no steps whatsoever to do so. Even if it would have
`been burdensome for 3Com to monitor whether IBM was in fact marking all products
`practicing the patents, 3Com failed even to include in the licensing agreement an
`obligation that IBM itself make efforts to mark any products that it reasonably
`believed practiced 3Com’s patents. It instead authorized IBM to practice the patents-
`in-suit without any requirement that IBM even make a minimal effort to mark
`them.”).
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`Id. Here, just as in 3Com, Finjan admittedly failed to take any steps whatsoever to ensure that its
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`licensees were marking their products with the ’494 Patent. As such, Finjan has failed to establish
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`compliance with the constructive notice requirements of § 287 as a matter of law.
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`10626586
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`- 5 -
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 11 of 16
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`While Finjan tried to present evidence that its subsidiary Finjan Mobile marked the
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`VitalSecurity product with the ’494 Patent starting in the fourth quarter of 2016, this is not sufficient.
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`Even if Finjan Mobile had adequately marked the VitalSecurity product (which it did not), Finjan
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`has not—and cannot—show that substantially all of the patented articles were marked given that
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`the undisputed evidence shows that Finjan Mobile’s revenues on its products are dwarfed by the
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`revenues of its licensee products. Trial. Tr. Vol. 2 at 295:24-296:7 (Mr. Hartstein testifying that
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`Finjan Mobile’s revenues on the VitalSecurity product were less than $1 million); Trial Exhibit 1760
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`at 56-60 (noting that a significant amount of Finjan’s licensees’ revenues came from products
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`“attributable to the invention of the ’494 Patent,” including an estimated $300 million for Avast,
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`$147.6 million for F-Secure, $361.4 million for Websense, and $265.4 million for Proofpoint). As
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`a result, no reasonable jury could find that Finjan and its licensees complied with the marking
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`requirements of § 287.
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`In any event, Finjan Mobile’s alleged marking of the VitalSecurity product is insufficient as
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`a matter of law. The only evidence of marking of this product introduced by Finjan was the
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`testimony of its CEO, Mr. Hartstein, that Finjan listed the ’494 Patent in its “marketing materials,”
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`“on [its] website,” and on the “bibliographical information that you see when you go to the Google
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`Play Store” starting in the fourth quarter of 2016. Trial Tr. Vol. 2 at 260:13-19; Trial Exhibit
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`372. This is insufficient as a matter of law. Recently, a court in the Eastern District of Wisconsin
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`rejected a similar argument that § 287 could be satisfied by simply marking literature associated
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`with the patented products. Acantha LLC v. DePuy Orthopaedics Inc., No. 15-C-1257, 2018 WL
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`1951231, at *4 (E.D. Wis. Apr. 25, 2018). There, the patent numbers were listed on widely
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`distributed technique guides (distributed to hospitals, at trade shows, and online) and surgeons
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`would actually “view and use the guides during the surgeries in which the device is used”—but the
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`court found that this was still insufficient to meeting the marking requirements. Id. The court
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`explained: “While some courts have found that placing the patent mark in the literature describing
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`the patented article constitutes constructive notice, they have done so only when the literature is
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`distributed with the product or placed in the box the product is contained.” Id. (emphasis added)
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`(citing Stryker Corp. v. Intermedics Orthopedics, Inc., 891 F. Supp. 751, 830 (E.D.N.Y. 1995)
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`10626586
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`- 6 -
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`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
`
`

`

`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 12 of 16
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`(Distribution of marking “separately from the [patented] devices themselves . . . is insufficient under
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`the statute, as a matter of law.”), aff’d, 96 F.3d 1409 (Fed. Cir. 1996); Calmar, Inc. v. Emson
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`Research, Inc., 850 F. Supp. 861, 868 (C.D. Cal. 1994) (holding that “marking some literature
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`associated with a patented article is insufficient to satisfy the marking requirements of the
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`statute”). Here, the fact that Finjan’s CEO believes the ’494 Patent is listed on Finjan’s “marketing
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`materials” and “on [its] website” speaks nothing to whether any materials distributed with
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`VitalSecurity were marked with the ’494 Patent. The same is true of the “bibliographic information
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`that you see when you go to the Google Play Store.” Indeed, the Google Play Store is where the
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`product is sold—not a marked piece of literature distributed with the product when sold. As such,
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`no reasonable jury could find that Finjan complied with the marking statute for VitalSecurity.
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`3.
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`No Reasonable Jury Could Have Found That Finjan Met Its Burden To
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`Show Compliance With The Actual Notice Requirements Of § 287.
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`Given that Finjan failed to comply with its marking obligations, and given that the ’494
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`Patent expired before Finjan filed its complaint in this matter, Finjan was required to prove that it
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`provided Juniper with actual notice at some point before the ’494 Patent expired. Asyst
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`Technologies, Inc. v. Empak, 2006 WL 3302476, at *4 (N.D. Cal. Nov. 14, 2006) (“A patent holder
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`may recover damages for infringement only after (1) giving constructive notice to the public by
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`marking its products with the patent number, or (2) giving actual notice of the infringement to the
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`accused infringer.”); Lans v. Dig. Equip. Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001) (affirming
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`ruling that patentee had not stated an infringement claim because it failed to satisfy § 287 prior to
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`expiration of the patent-in-suit). To establish actual notice, the patentee must show that it
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`“communicate[d] a specific charge of infringement of specific patents by a specific product or group
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`of products.” Funai Elec. Co., Ltd. v. Daewoo Electronics, 616 F.3d 1357, 1373 (Fed. Cir. 2010);
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`see also Amsted Industries Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994)
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`(“For purposes of Section 287(a), notice must be of the ‘infringement,’ not merely notice of the
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`patent’s existence or ownership. Actual notice requires the affirmative communication of a specific
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`charge of infringement by a specific accused product or device.”) (emphasis added).
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`10626586
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`- 7 -
`
`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
`
`

`

`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 13 of 16
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`Finjan failed to present evidence of actual notice. As an initial matter, it is undisputed that
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`Finjan failed to provide any written communication to Juniper identifying the ’494 Patent prior to
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`the expiration of that patent. Under the Northern District of California’s Model Patent Jury
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`Instruction 5.9, which requires “actual written notice” to establish compliance with § 287, Finjan’s
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`failure to identify any written communication identifying the ’494 Patent before its expiration is
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`dispositive. N.D. Cal. Model Patent Jury Instructions B.5. Patent Damages 5.9 (“[Since [patent
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`holder] sells a product that includes the claimed invention but has not marked that product with the
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`patent number, you must determine the date that [alleged infringer] received actual written notice
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`of the [ ] patent and the specific product alleged to infringe;]”) (brackets in original, emphasis
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`added).
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`Even if oral communications could be considered to establish actual notice, moreover, Finjan
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`still cannot satisfy the actual notice requirement because its oral communications did not identify
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`the accused Sky ATP product, which performed the bulk of the functions Finjan identified as
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`allegedly infringing. The only oral communication concerning the ’494 Patent Finjan identified was
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`the telephone call between Mr. Coonan and Mr. Garland on November 24, 2015. Because there is
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`a recording of that phone call, the content of that oral communication is also undisputed. The
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`recording shows that the only product that Mr. Garland identified on that phone call is the SRX
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`Series, and its included Unified Threat Management, web-filtering, and anti-virus modules. Ex. 256
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`at JNPRFNJN_29011_00960577-78 (stating that Finjan is focused on the SRX series and that “it
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`looks like some of the modules that are supported in those products and the Next Generation
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`firewall, which is your UTM, your antivirus, and your web filtering are three modules that we think
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`about using three new patents.”).
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`With respect to Sky ATP, Mr. Garland admitted at trial that he had previously claimed under
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`oath that he specifically identified Sky ATP on his call with Mr. Coonan, but had to recant this
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`testimony after learning of the recording. Trial Tr. Vol. 3 at 587:8-15. In fact, Mr. Garland admitted
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`that had it not been for the recording, he would have perpetuated his original story to the jury. Trial
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`Tr. Vol. 3 at 588:23-589:5 (“Q. I understand that’s your position. I’m asking you about whether
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`you mentioned Sky ATP, and you swore and you took an oath and you said you had. That’s correct,
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`10626586
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`- 8 -
`
`JUNIPER’S MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
`
`

`

`Case 3:17-cv-05659-WHA Document 352 Filed 01/10/19 Page 14 of 16
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`isn’t it? A. I believe -- I believed I had, yes. Q. That’s right. And if we did not have that transcript,
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`that is still the testimony you would be giving today; isn’t that right? A. That’s correct.”). But the
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`recording exists and Mr. Garland was forced to admit that he did not identify Sky ATP or SRX
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`specifically used in combination with Sky ATP as accused products during his phone call with
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`Mr. Coonan. Trial Tr. Vol. 3 at 586:22-587:1; See Trial Exs. 256, 257; Trial Tr. Vol. 3 at 588:13-16
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`(John Garland: “Q. Right. And you now know that you’re mistaken and that you did not mention
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`Sky ATP; is that right? A. I only know I’m mistaken because the call -- yeah, the call is recorded
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`and taped and transcribed.”).
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`Given that Mr. Garland failed to actually identify Sky ATP on the call, Finjan is trying to
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`hang its hat on an offhand remark by Mr. Garland that the ’494 Patent “reads on [Juniper’s] advanced
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`malware modules.” Trial Ex. 256 at 10:53-11:21; Trial Tr. Vol. 3 at 562:4-10. In particul