Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 1 of 21
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`PAUL J. ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`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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`v.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`
`
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`
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`Defendant.
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`Case No.: 3:17-cv-05659-WHA
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`PLAINTIFF FINJAN, INC.’S OPPOSITION
`TO DEFENDANT JUNIPER NETWORKS
`INC.’S RENEWED MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`
`Date:
`Time:
`Judge:
`Courtroom:
`
`February 14, 2019
`8:00 a.m.
`Hon. William Alsup
`12, 19th Floor
`
`
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 2 of 21
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ................................................................................................................... ii 
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`I.
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` 
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`INTRODUCTION .......................................................................................................................... 1 
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`
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`  ARGUMENT .................................................................................................................................. 1 II.
`
`A. 
`
`Juniper Did Not Present A Proper Post Trial Motion Under Rule 50 of the Federal
`Rules of Civil Procedure. ....................................................................................................... 1 
`
`B.  Finjan Presented Substantial Evidence of Actual Notice ...................................................... 3 
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`1. 
`
`2. 
`
`3. 
`
`4. 
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`Finjan Provided Notice of the ‘494 Patent And That Juniper Infringed It. ............... 5 
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`Finjan Identified Juniper’s Products That Needed A License ................................... 6 
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`Actual Notice Does Not Need to be a Writing. ......................................................... 9 
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`Juniper Failed to Rebut Finjan’s Evidence of Actual Notice. ................................. 11 
`
`C.  Finjan Presented Substantial Evidence of Constructive Notice ........................................... 12 
`
`1. 
`
`2. 
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`Juniper Failed to Rebut Finjan’s Evidence of Constructive Notice. ........................ 13 
`
`Juniper’s Interpretation That The Artic Cat Notice During Discovery
`Discharges Its Burden of Production At Trial Turns the Decision on Its
`Head. ........................................................................................................................ 16 
`
`
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`  CONCLUSION ............................................................................................................................. 17 III.
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`
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`i
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 3 of 21
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`Accuscan, Inc. v. Xerox Corp.,
`No. 96 CIV. 2579 (HB), 1998 WL 60991 (S.D.N.Y. Feb. 11, 1998) ...............................................16
`
`Amsted Indus. Inc. v. Buckeye Steel Castings Co.,
`24 F.3d 178 (Fed. Cir. 1994)...............................................................................................................5
`
`Arctic Cat, Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017)...................................................................................................14, 17
`
`Blitzsafe Texas, LLC v. Honda Motor Co., Ltd., et al.,
`Case No. 2:15-cv-01274-JRG-RSP, Dkt. No. 403 (E.D. Tex. January 26, 2017) ............................16
`
`E.E.O.C. v. Go Daddy Software, Inc.,
`581 F.3d (9th Cir. 2009) .....................................................................................................................3
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`Funai Elec. Co. v. Daewoo Elecs. Corp.,
`616 F.3d 1357 (Fed. Cir. 2010)...........................................................................................................8
`
`G.P.P., Inc. v. Guardian Prot. Prods., Inc.,
`No. 1:15-CV-00321-SKO, 2018 WL 347783 (E.D. Cal. Jan. 10, 2018) ............................................2
`
`Genband US LLC v. Metaswitch Networks Corp.,
`No. 2:14–CV–33–JRG, 2016 WL 7650735 (E.D. Tex. Sept. 29, 2016) ............................................2
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`Lyon Dev. Co. v. Bus. Men’s Assur. Co. of Am.,
`76 F.3d 1118 (10th Cir. 1996) ............................................................................................................1
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`Madrigal v. Allstate Indem. Co.,
`No. CV 14–4242 SS, 2015 WL 12748272 (C.D. Cal. Dec. 7, 2015) .................................................2
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`Maxwell v. J. Baker, Inc.,
`86 F.3d 1098 (Fed. Cir. 1996).............................................................................................................3
`
`McGonigle v. Combs,
`968 F.2d 810 (9th Cir. 1992) ........................................................................................................3, 17
`
`Minks v. Polaris Indus., Inc.,
`546 F.3d 1364 (Fed. Cir. 2008).............................................................................................5, 6, 8, 10
`
`Mosaid Techs. Inc. v. Samsung Elecs. Co.,
`362 F. Supp. 2d 526 (D.N.J. 2005) ...................................................................................................10
`
`ii
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 4 of 21
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`
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`Philippi-Hagenbuch, Inc. v. W. Tech. Servs. Int’l, Inc.,
`No. 12-1099, 2015 WL 5725248 (C.D. Ill. Sept. 30, 2015) .............................................................13
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`Phillips v. Cmty. Ins. Corp.,
`678 F.3d 513 (7th Cir. 2012) ..............................................................................................................2
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`Realtime Data, LLC v. Actian Corp.,
`Case No. 6:15-cv-00463-RWS-JDL, Dkt. No. 492 (E.D. Tex. April 4, 2017) .................................16
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`853 F.3d 1370 (Fed. Cir. 2017)...........................................................................................................3
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`SRI Int’l, Inc. v. Advanced Tech. Labs., Inc.,
`127 F.3d 1462 (Fed. Cir. 1997).............................................................................................5, 6, 9, 10
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`Stryker Corp. v. Intermedics Orthopedics, Inc.,
`891 F. Supp. 751 (E.D.N.Y. 1995), aff’d, 96 F.3d 1409 (Fed. Cir. 1996) ........................................13
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`TransWeb, LLC v. 3M Innovative Properties Co.,
`16 F. Supp. 3d 385 (D.N.J. 2014), aff’d, 812 F.3d 1295 (Fed. Cir. 2016)..........................................2
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`Uniboard Aktiebolag v. Acer Am. Corp.,
`118 F. Supp. 2d 19 (D.D.C. 2000) ......................................................................................................3
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`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015).........................................................................................................11
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`Statutes
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`35 U.S.C. § 271 ...............................................................................................................................1, 9, 10
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`35 U.S.C. § 287 ............................................................................................................................... passim
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`Public Law 112-29, September 16, 2011 (Leahy-Smith America Invents Act) .....................................13
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`Other Authorities
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`Federal Rules of Civil Procedure Rule 50 ........................................................................................1, 2, 3
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`iii
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 5 of 21
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`I.
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`
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`INTRODUCTION
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`Juniper’s Motion for Judgment as a Matter of Law (Dkt. No. 352, “Motion”) should be denied
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`because it is procedurally improper and motion is premised on its misreading of the law as Juniper
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`invents requirements for notice that is contrary to Federal Circuit law, such as mandating that both
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`actual and constructive notice must be analyzed in every case and that actual notice must always be in
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`writing, which is not a requirement for infringement pursuant to 35 U.S.C. § 271(a). Further, Finjan
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`provided substantial evidence with testimony and documents, demonstrating that Finjan provided
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`notice to Juniper regarding its infringement of the ‘494 Patent.
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`For actual notice, Finjan presented the unrebutted testimony of its licensing director, Mr.
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`Garland, who established that he notified Juniper’s Director of Intellectual property, Mr. Scott Coonan,
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`of the specific patent and products at issue in this case. Additionally, the deposition testimony of Mr.
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`Coonan confirmed that such actual notice was presented, as well as Juniper’s transcript and audio
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`recording of the call. Given the actual notice, issues of constructive notice are moot. Nonetheless,
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`Juniper advocates that Finjan’s licensees were required to mark products. Juniper’s arguments on
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`constructive notice, however, are riddled with infirmities and is not based on the law. The evidence at
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`trial was that Finjan established that the licensees and Finjan who practiced its patents before the
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`expiration of the ‘494 Patent marked their products. Thus, a reasonable jury could find that Finjan
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`gave Juniper notice of the ‘494 Patent.
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`ARGUMENT
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`II.
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`A.
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`Juniper Did Not Present A Proper Post Trial Motion Under Rule 50 of the Federal
`Rules of Civil Procedure.
`Despite citing to Rule 50 for its post-trial motion (Motion at 1-2), Juniper failed to present a
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`proper issue for such a motion and does not attempt to meet its burden under Rule 50(b) regarding the
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`issue of notice. Since the jury found for Juniper on ultimate issue of infringement, ancillary issues
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`related to Finjan’s claim of infringement are moot and not properly raised in a 50(b) motion. See Lyon
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`Dev. Co. v. Bus. Men's Assur. Co. of Am., 76 F.3d 1118, 1122 (10th Cir. 1996) (holding Rule 50(b)
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`“does not permit a party in whose favor the verdict was rendered to renew its motion because ‘a jury
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`1
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 6 of 21
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`verdict for the moving party moots the issue.’”) (quoting Fed. R. Civ. P. 50(b) advisory committee’s
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`note to 1991 amendment). Here, Juniper’s affirmative defense to liability regarding compliance with
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`35 U.S.C. § 287 was limited to whether Finjan gave constructive notice. Dkt. No. 218 at ¶¶ 145-146.
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`Since the jury did not find any liability, its marking defense and separately its belated actual notice
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`claim, are moot and not proper for a determination as a matter of law.
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`The reasoning behind this requirement is simple, in that “[i]t would waste time and resources to
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`require a party to move for judgment as a matter of law under Rule 50(b), formerly denominated
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`‘judgment nothwithstanding the verdict,’ if that party has obtained a jury verdict in its favor.” Phillips
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`v. Cmty. Ins. Corp., 678 F.3d 513, 519 n.3 (7th Cir. 2012) (emphasis original); G.P.P., Inc. v.
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`Guardian Prot. Prods., Inc., No. 1:15-CV-00321-SKO, 2018 WL 347783, at *6 (E.D. Cal. Jan. 10,
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`2018) (“The Court declines GIS’s invitation to render rulings that would do nothing more than
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`‘bolster’ or ‘improve’ a judgment that is already in GIS’s favor.”)(citing Phillips, 678 F.3d 519 n.3).
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`There is a long list of cases in which Courts have found that ancillary issues in such circumstances are
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`moot. See also Madrigal v. Allstate Indem. Co., No. CV 14–4242 SS, 2015 WL 12748272, at *2 (C.D.
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`Cal. Dec. 7, 2015) (denying as moot motion for judgment as a matter of law on promissory fraud
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`where the moving party “obtained the ultimate relief it sought” after the jury concluded that the
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`moving party “was not liable”); Genband US LLC v. Metaswitch Networks Corp., No. 2:14–CV–33–
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`JRG, 2016 WL 7650735, at *4 (E.D. Tex. Sept. 29, 2016) (“While Federal Rule of Civil Procedure
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`50(b) permits Genband to request entry of judgment ‘notwithstanding an adverse jury verdict,’ it does
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`not allow Genband to seek advisory opinions from the Court on issues it has already prevailed on.”);
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`TransWeb, LLC v. 3M Innovative Properties Co., 16 F. Supp. 3d 385, 407 (D.N.J. 2014), aff'd, 812
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`F.3d 1295 (Fed. Cir. 2016) (“3M also moves for Judgment as a Matter of Law on the antitrust claims.
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`Because the jury returned a verdict in 3M's favor on the sham litigation claim, the motion is moot as to
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`that issue.”). As such, Juniper’s Motion should be denied outright as procedurally improper.
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`Furthermore, Juniper’s motion is premised on the claim that constructive notice must be
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`analyzed and that analysis must occur first, which is contrary to law. See e.g., Motion at 7 (“Given that
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`Finjan failed to comply with its marking obligations, and given that the ‘494 Patent expired before
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`2
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 7 of 21
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`Finjan filed its complaint in this matter, Finjan was required to prove that it provided Juniper with
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`actual notice at some point before the ‘494 Patent expired.”); see also id. at 2 and 4. Finjan only needs
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`to prove that it either gave actual or constructive notice and if one type of notice is found, then there is
`no need to analyze the other type of notice given well established Federal Circuit law.1
`Actual notice and constructive notice are separate and distinct mechanisms for obtaining
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`damages for patent infringement. “Marking under the statute is permissive, not mandatory.”
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`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1383 (Fed. Cir. 2017) Thus,
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`constructive notice is not even relevant when the patentee asserts only actual notice. Maxwell v. J.
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`Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996) (“Thus, the statute defines that ‘[a patentee] is entitled
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`to damages from the time when it either began marking its product in compliance with section 287(a)[,
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`constructive notice,] or when it actually notified [the accused infringer] of its infringement, whichever
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`was earlier.’”)(citation omitted); see also Uniboard Aktiebolag v. Acer Am. Corp., 118 F. Supp. 2d 19,
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`22 (D.D.C. 2000) (“The constructive notice (marking) provision of § 287(a) is not relevant to this
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`dispute, as Uniboard does not allege that it complied with the patent marking provisions. Therefore, the
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`Court focuses its inquiry on if and when Uniboard provided the defendants actual notice of the alleged
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`infringement.”). As such, to the extent actual notice is found, there is no need to consider constructive
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`notice because the issue is moot. Thus, Juniper’s attempts to require findings on constructive notice or
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`attempts to suggest that constructive notice must first be analyzed is contrary to precedent. Actual
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`notice is a separate individual statutory basis for notice from constructive notice and there is no need to
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`address both if actual notice is found.
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`B.
`Finjan Presented Substantial Evidence of Actual Notice
`Juniper cannot meet its high burden of showing that there was no legally sufficient evidentiary
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`basis for a reasonable jury to find for Finjan on the issue of notice. Fed. R. Civ. Proc. 50(b); E.E.O.C.
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`v. Go Daddy Software, Inc., 581 F.3d, 951, 961-62 (9th Cir. 2009); McGonigle v. Combs, 968 F.2d
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`810, 816 (9th Cir. 1992) (motion for judgment as a matter of law should only be granted “when the
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`1 Only if there is no actual notice would consideration of constructive notice be appropriate.
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`3
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 8 of 21
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`
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`evidence permits only one reasonable conclusion as to the verdict.”)(citation omitted). Finjan
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`presented substantial evidence supporting that it gave actual notice and separately, constructive notice
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`as discussed below. Finjan presented substantial evidence regarding providing Juniper with actual
`notice that (1) Juniper’s SRX Gateway with Sky ATP2 and (2) Juniper’s Sky ATP alone (collectively
`“Juniper’s Products”) both infringe the ‘494 Patent. 35 U.S.C. 287 (damages recoverable if “infringer
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`was notified of the infringement and continued to infringe thereafter”). In particular, Finjan presented
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`the unrebutted testimony from Mr. John Garland who confirmed during a phone call with Juniper’s
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`Director of Intellectual Property, Mr. Coonan, that he informed Juniper in November 2015 of the ‘494
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`Patent and Juniper’s Products, including Juniper’s SRX and Sky ATP. Declaration of Lisa Kobialka in
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`Support of Finjan’s Opposition to Juniper’s Motion (“Kobialka Decl.”), Ex. 1 (Trial Exhibit 256) at
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`John – 3:55 (“Okay. So I mean we have identified patents. We have identified products . . .”). Mr.
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`Garland further testified about the transcript of the call that Mr. Coonan made, which Juniper produced
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`as a document and separately the audio recording of the call. Id., Ex. 1 (Trial Exhibit 256); see also
`(Trial Exhibit 257)3; id., Ex. 2, Trial Tr. at 557:19-563:1; 586:10-11. The transcript and audio of the
`call confirmed Mr. Garland’s testimony that he identified both the ‘494 Patent and Juniper’s Products.
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`Furthermore, Mr. Coonan’s deposition testimony at trial also confirmed that Mr. Garland had
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`identified the ‘494 Patent and Juniper’s Products, as well as the fact that Mr. Coonan had recorded the
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`call and the transcript reflected the discussions during the call. Id., Ex. 3 (Coonan Trial Testimony via
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`video) at 128:12-171:02. Thus, Juniper’s witness and documents also corroborated Mr. Garland’s
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`testimony, which was unrebutted.
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`2 “ATP” stands for advanced threat protection. Kobialka Decl., Ex. 2, Trial Tr. at 35:20-36:1 (“Q.
`Why was Sky ATP developed? A. So in the – in the NG firewall, one of the – one of the firewall
`components of an NG firewall is advanced threat protection. And in order to – to get that functionality
`in an NG firewall, we started developing Sky ATP.”).
`3 Admitted Trial Exhibit 257 is an audio file that was submitted to the court in electronic format on a
`USB flash drive. Finjan will submit a copy of this exhibit if the Court so requests.
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`4
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 9 of 21
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`1.
`Finjan Provided Notice of the ‘494 Patent And That Juniper Infringed It.
`“Actual notice requires the affirmative communication of a specific charge of infringement by
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`a specific accused product or device.” Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178,
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`187 (Fed. Cir. 1994). The Federal Circuit has stated that “[a]lthough there are numerous possible
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`variations in form and content, the purpose of the actual notice requirement is met when the recipient is
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`notified, with sufficient specificity, that the patent holder believes that the recipient of the notice may
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`be an infringer.” SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997). It
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`is undisputed that Mr. Garland identified to Juniper the patent number for the ‘494 Patent on his call
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`with Mr. Coonan. Mr. Garland identified the patent twice and even specifically read the seven digit
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`patent number to Mr. Coonan, who requested them for his reference. Kobialka Decl., Ex. 2, Trial Tr.
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`at 554:2-555:3; id., Ex. 3 (Coonan Trial Testimony via video) at 167:7-12; id., Ex. 1 (Trial Exhibit
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`256) at John – 10:53 to John – 11:21 (transcript of phone call between Mr. Garland and Mr. Coonan,
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`representing Juniper reciting: “Mr. Garland: And there’s a newer one, one you haven’t seen before.
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`8677494. Mr. Coonan: Okay. All right. And that’s significant, because it’s – is it – is it a
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`continuation? Mr. Garland: I don’t know. I don’t know. It’s [sic] reads on your advanced malware
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`modules.”); see also (Trial Exhibit 257). The undisputed evidence at trial was that Finjan properly
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`identified the patent at issue to Juniper on the call. Minks v. Polaris Indus., Inc., 546 F.3d 1364, 1376
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`(Fed. Cir. 2008) (“Section 287(a) requires actual notice to the accused ‘to assure that the recipient
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`knew of the adverse patent during the period in which liability accrues . . .’”)(quoting SRI Int'l, Inc.,
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`127 F.3d at 1470 (“the actual notice requirement of § 287(a) is satisfied when the recipient is informed
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`of the identity of the patent and the activity that is believed to be an infringement”).
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`Finjan also provided at trial undisputed evidence that Finjan notified Juniper that it infringed
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`the ‘494 Patent, stating unequivocally that the ‘494 Patent “reads” on Juniper’s products. Kobialka
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`Decl., Ex. 2, Trial Tr. at 554:2-555:10; id., Ex. 1 (Trial Exhibit 256) at John – 10:53 to John – 11:21
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`(“Mr. Garland: And there’s a newer one, one you haven’t seen before. 86777494…. It’s [sic] reads
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`on your advanced malware modules.”); see also (Trial Exhibit 257). There can be no question that the
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`discussion between Mr. Coonan and Mr. Garland related to infringement. The purpose of the call was
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`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 10 of 21
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`to discuss licensing of Finjan’s patents. Indeed, that was the reason for the call between Juniper’s
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`Senior Director of Intellectual Property, Litigation, and Strategy and Finjan’s head of licensing. Id.,
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`Ex. 2, Trial Tr. at 547:21-548:2; id., Ex. 3 (Coonan Trial Testimony via video) at 145:1-147:23,
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`166:15-167:03. Mr. Garland testified that he would only approach a party like Juniper unless Finjan
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`believed that the party required a patent license. Id., Ex. 2, Trial Tr. at 549:21-550:18 (Mr. Garland
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`describing that he would approach companies after a research and a determination they had adopted
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`Finjan’s patented technology.); id. at 604:9-11. He also explained that he would identify a specific
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`patent for the discussion and products in those discussions. Id. at 554:21-555:5 (Mr. Garland
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`explaining that specific Finjan patents were discussed).
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`Mr. Coonan’s deposition testimony at trial also confirmed that Mr. Coonan also understood that
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`this was a call about infringement, as he admitted that he understood the discussion to be in the context
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`of litigation and negotiation. Id., Ex. 1 (Trial Exhibit 256) at Scott – 25:48 (Mr. Coonan stating that “I
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`thought it was in the context of a litigation discussion, negotiation, and you rejected it, so we’re back
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`to square one.”). As such, there is no dispute that Finjan met the requirement of establishing that
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`Finjan levied a charge of infringement of the ‘494 Patent on the call. Minks, 546 F.3d at 1376 (“as
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`long as the communication from the patentee provides sufficient specificity regarding its belief that the
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`recipient may be an infringer, the statutory requirement of actual notice is met. Thus, the requirement
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`of ‘a specific charge of infringement’ set forth in Amsted does not mean the patentee must make an
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`‘unqualified charge of infringement.’)(citation omitted); SRI Int'l, Inc., 127 F.3d at 1470 (“the purpose
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`of the actual notice requirement is met when the recipient is notified, with sufficient specificity, that
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`the patent holder believes that the recipient of the notice may be an infringer”).
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`2.
`Finjan Identified Juniper’s Products That Needed A License
`Mr. Garland identified Juniper’s Products, the SRX Gateway and Sky ATP, on the call with
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`Mr. Coonan, as infringing the ‘494 Patent. Specifically, Mr. Garland testified and Juniper’s documents
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`and testimony confirms, that Mr. Garland identified Juniper’s “SRX Series, including the virtual
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`firewall” or the “Next Generation Firewall” were the focus of the call and that the ‘494 Patent “reads
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`6
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 11 of 21
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`on” Juniper’s “advanced malware module.” See e.g., Kobialka Decl., Ex 2, Trial Tr. at 553:24-554:10;
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`557:23-24; 559:13-560:13; 567:6-11; 561:21-562:10; 603:17-604:11; id., Ex. 1 (Trial Exhibit 256) at
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`John – 05:01 (“Yes, so I mean the products that we’re focused on is the – the SRX Series, including
`the virtual firewall, and – ”); id. at John – 05:12 (“Because that's what the patents have led us to, I
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`mean there's new security products, and so we don't think -- you know, really with your Junos
`operating system. But it looks like some of the modules that are supported in those products and the
`Next Generation firewall, which is your UTM, your antivirus, and your web filtering are three
`modules that we think about using three new patents.”) (emphasis added); see also (Trial Exhibit
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`257); id., Ex. 3 (Coonan Trial Testimony via video) at 134:02-05. The undisputed evidence at trial
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`was that Juniper called its Sky ATP cloud service either “Advanced Anti-Malware Cloud Service” or
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`“Next-Generation Firewall,” such that a reasonable jury could find that Finjan gave actual notice
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`regarding Sky ATP with SRX Gateway.
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`Specifically, at trial, Mr. Garland testified that just a few weeks before his call with Mr.
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`Coonan, he saw Juniper’s press release entitled “Juniper Network Unveils Advanced Anti-Malware
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`Cloud Service” (Trial Exhibit 91) dated September 29, 2015, announcing the release of Juniper’s cloud
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`based service, Sky ATP. Id., Ex. 2, Trial Tr. at 551:22-555:13 (describing how Mr. Garland relied on a
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`press release for Sky ATP which referred to it as its “Advanced Anti-Malware Cloud Service”); id.,
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`Ex. 4 (Trial Exhibit 91) (Juniper press release announcing the release of Sky ATP, entitled “Juniper
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`Network Unveils Advanced Anti-Malware Cloud Service”); id., Ex. 2, Trial Tr. at 603:17-604:11. He
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`further testified how the substance of the press release discussed Sky ATP, which Juniper called its
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`“advanced anti-malware cloud service” in press release’s title. Id., Ex. 2, Trial Tr. at 551:22-555:13;
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`id., Ex. 4 (Trial Ex. 91). As a result, the undisputed evidence at trial was that both Juniper and Mr.
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`Garland referred to Sky ATP as its advanced malware or advanced anti-malware technology. Further,
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`the substantial evidence at trial was that Mr. Garland informed Mr. Coonan that Sky ATP needed a
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`license to the ‘494 Patent, which he called “advanced malware” and was nearly the identical words of
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`Juniper’s press release announcing the release of Juniper’s Sky ATP service. Id., Ex. 2, Trial Tr. at
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`7
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 12 of 21
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`550:25-562:23; 565:10-568:6; id., Ex. 1 (Trial Exhibit 256) at John – 10:53; see also (Trial Exhibit
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`257); id., Ex. 3 (Coonan Trial Testimony via video) at 167:03-167:10.
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`Additional substantial evidence at trial was the fact that Juniper continued to refer to Sky ATP
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`as the service for the SRX Gateway for “advanced malware” protection. Finjan presented additional
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`Juniper documents that established that Juniper also referred to Sky ATP as its “advanced malware”
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`service even after Juniper’s press release. Kobialka Decl., Ex. 5 (Trial Exhibit 57) at JNPR-
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`FNJN_29002_00173278 (document describing Sky ATP as “Juniper Advanced Anti-Malware Service
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`on SRX”); id., Ex. 2, Trial Tr. at 388:2-392:10.
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`Separately, Finjan presented the testimony of Juniper’s Senior Director, Chandra Nagarajan,
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`who provided unrebutted testimony that the “Next Generation Firewall” refers to the SRX Gateway
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`with Sky ATP. Id., Ex. 6 (Nagarajan Trial Testimony via video) at 35:20-36:1 (“Q. Why was Sky
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`ATP developed? A. So in the – in the NG firewall, one of the – one of the components of an NG
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`firewall is advanced threat protection. And in order to – to get that functionality in an NG firewall, we
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`started developing Sky ATP.”); id., Ex. 7 (Trial Exhibit 17). Thus, considering all the evidence,
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`including testimony from Juniper’s engineer and Juniper’s documents, the only conclusion a
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`reasonable jury could reach is that Juniper’s “advanced malware” and “Next Generation Firewall”
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`referred to Sky ATP and Sky ATP with SRX Gateways. As such, Finjan provided substantial evidence
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`that Mr. Garland provided Juniper with notice that its SRX Gateways with Sky ATP and Sky ATP
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`were infringing the ‘494 Patent in November 2015, just after Juniper announced the release of its Sky
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`ATP and a reasonable jury could have found actual notice.
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`Juniper focuses much of its Motion on the fact that Mr. Garland did not use the specific term
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`“Sky ATP” on his call with Mr. Coonan. Actual notice, however, does not require notice a specific
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`product; it can be of a group of products. Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357,
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`1373 (Fed. Cir. 2010)(citing Amsted, 24 F.3d at 187). Thus, such specificity of the exact words is not
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`required to satisfy actual notice. In fact, identification of the relevant technology is sufficient. Minks,
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`546 F.3d at 1376-77 (holding “knowledge of a specific infringing device is not a legal prerequisite to”
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`giving actual notice under § 287(a), and a communication of the patentee’s “belief that reverse speed
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`8
`FINJAN, INC.’S OPPOSITION TO JUNIPER’S RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 357 Filed 01/24/19 Page 13 of 21
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`limiters sensing engine speed and a DC input infringe” the patent may have sufficed); SRI Int'l, Inc.,
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`127 F.3d at 1470 (“the actual notice requirement of § 287(a) is satisfied when the recipient is informed
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`of the identity of the patent and the activity that is believed to be an infringement”) (emphasis added).
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`At the very least, even if the words “Sky ATP” were not used on the call Coonan, Juniper’s advanced
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`malware modules and the Next Generation Firewall objectively cover the relevant technology in Sky
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`ATP and the group of technologies known to be part of Sky ATP. Kobialka Decl., Ex. 4 (Trial Exhibit
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`91) at 1 (describing Sky ATP as “Juniper Networks Unveils Advanced Anti-Malware Cloud Service”);
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`id., Ex. 6 (Nagarajan Trial Testimony via video) at 35:20-36:1; id., Ex. 8 (Trial Exhibit 382) at
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`FINJAN-JN 005438 (“Sky Adv