Case 3:17-cv-05659-WHA Document 366 Filed 01/31/19 Page 1 of 17
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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
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`FINJAN, INC., a Delaware Corporation,
`)
`Case No. 3:17-cv-05659-WHA
`)
`
`
`JUNIPER NETWORKS, INC.’S REPLY
`)
`)
`BRIEF IN SUPPORT OF JUNIPER
`)
`NETWORKS, INC.’S MOTION FOR
`)
`JUDGMENT AS A MATTER OF LAW
`)
`(DKT. NO. 352)
`)
`
`)
`Judge: Hon. William Alsup
`)
`)
`)
`)
`
`
`Plaintiff,
`
`vs.
`
`
`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`
`Defendant.
`
`10636624
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`
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`FOR JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
`
`

`

`B.
`
`2.
`
`Page
`INTRODUCTION ............................................................................................................... 1
`ARGUMENT ...................................................................................................................... 2
`Juniper’s Motion For Judgment As A Matter Of Law Is Procedurally
`A.
`Proper. ..................................................................................................................... 2
`Finjan Failed To Prove Compliance With § 287. .................................................... 3
`No Reasonable Jury Could Have Found That Finjan
`1.
`Provided Constructive Notice Under § 287. ............................................... 4
`Juniper Met Its Burden Of Production To Identify
`a.
`Unmarked Products. ........................................................................ 5
`No Reasonable Jury Could Have Found That Finjan
`Demonstrated Constructive Notice Under § 287. ........................... 7
`Finjan Failed To Prove Actual Notice. ........................................................ 9
`Finjan Did Not Identify Products That Needed A
`a.
`License To The ’494 Patent In Any Pre-Suit
`Correspondence. .............................................................................. 9
`Juniper Introduced Evidence That Sky ATP Is Not A
`Module Of SRX. ........................................................................... 12
`Actual Notice Requires Writing. ................................................... 12
`c.
`CONCLUSION ................................................................................................................. 13
`
`b.
`
`b.
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`Case 3:17-cv-05659-WHA Document 366 Filed 01/31/19 Page 2 of 17
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`TABLE OF CONTENTS
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`I.
`II.
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`III.
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`10636624
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`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 366 Filed 01/31/19 Page 3 of 17
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`
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`Cases
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Accuscan, Inc. v. Xerox Corp.,
`No. 96 CIV. 2579 (HB), 1998 WL 60991 (S.D.N.Y. Feb. 11, 1998) ..........................................8
`
`Addiction & Detoxification Inst. LLC v. Carpenter,
`620 Fed. App’x. 934 (Fed. Cir. July 21, 2015) ..........................................................................13
`
`Am. Tech. Ceramics Corp. v. Presidio Components, Inc.,
`2018 WL 1525686 (E.D.N.Y. Mar. 27, 2018) .............................................................................6
`
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ........................................................................................1, 5, 6, 8
`
`Asyst Techs., Inc. v. Empak, Inc.,
`2006 WL 3302476 (N.D. Cal. Nov. 14, 2006) ...........................................................................11
`
`Blitzsafe Tex., LLC v. Honda Motor Co., Ltd.,
`2017 U.S. Dist. LEXIS 58358 (E.D. Tex. Jan. 26, 2017) ............................................................8
`
`Connel v. Sears, Roebuck & Co.,
`722 F.2d 1542 (Fed. Cir. 1983) ....................................................................................................7
`
`Dunlap v. Shofield,
`152 U.S. 244 (1894) .....................................................................................................................3
`
`Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp.,
`616 F.3d 1357 (Fed. Cir. 2010) ........................................................................................9, 10, 11
`
`Loral Fairchild Corp. v. Victor Co. of Japan,
`906 F. Supp. 813 (E.D.N.Y. 1995) (Rader, J. (sitting by designation)) .......................................8
`
`Maxwell v. J. Baker, Inc.,
`86 F.3d 1098 (Fed. Cir. 1996) ..................................................................................................4, 7
`
`Meridian Mfg., Inc. v. C & B Mfg., Inc.,
`340 F. Supp. 3d 808 (N.D. Iowa 2018) ........................................................................................6
`
`Minks v. Polaris Indus., Inc.,
`546 F.3d 1364 (Fed. Cir. 2008) ............................................................................................11, 13
`
`Mosaid Techs. Inc. v. Samsung Elecs. Co.,
`362 F. Supp. 2d 526 (D.N.J. 2005) ............................................................................................13
`
`Nike, Inc. v. Wal-Mart Stores, Inc.,
`138 F.3d 1437 (Fed. Cir. 1998) ....................................................................................................7
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`10636624
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`- ii -
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`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 366 Filed 01/31/19 Page 4 of 17
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`Palo Alto Networks, Inc. v. Finjan, Inc.,
`No. IPR2016-00159 .....................................................................................................................7
`
`Phillips v. Cmty. Ins. Corp.,
`678 F.3d 513 (7th Cir. 2012) ........................................................................................................2
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`Realtime Data, LLC, v. Action Corp.,
`2017 U.S. Dist. LEXIS 56950 (E.D. Tex. Apr. 4, 2017) .............................................................8
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`853 F.3d 1370 (Fed. Cir. 2017) ....................................................................................................4
`
`Semcon IP Inc. v. Huawei Device USA Inc.,
`2017 WL 6343771 (E.D. Tex. Dec. 12, 2017) .............................................................................8
`
`SRI Int’l, Inc. v. Advanced Tech. Labs., Inc.,
`127 F.3d 1462 (Fed. Cir. 1997) ......................................................................................11, 12, 13
`
`U.S. Ethernet Innovations, LLC v. Acer, Inc.,
`2013 WL 4456161 (N.D. Cal. Aug. 16, 2013) .............................................................................8
`
`Uniboard Aktiebolag v. Acer Am. Corp.,
`118 F. Supp. 2d 19 (D.D.C. 2000), aff’d sub nom. Lans v. Digital Equip. Corp.,
`252 F.3d 1320 (Fed. Cir. 2001) ....................................................................................................4
`
`United States v. DeCoito,
`764 F.2d 690 (9th Cir. 1985) ........................................................................................................7
`
`Statutes
`
`35 U.S.C. § 287 ........................................................................................................................ passim
`
`Other Authorities
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`Fed. R. Civ. Proc. 50(a) ......................................................................................................................2
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`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 366 Filed 01/31/19 Page 5 of 17
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`I.
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`INTRODUCTION
`Juniper Networks, Inc.’s (“Juniper’s”) Motion for Judgment as a Matter of Law (Dkt.
`No. 352) should be granted. The arguments raised in Finjan, Inc.’s (Finjan’s) Opposition (Dkt.
`No. 357) are unpersuasive and do not change the fact that Finjan simply failed to meet its burden to
`establish notice under 35 U.S.C. § 287.
`Contrary to Finjan’s contention, Juniper’s Motion is procedurally proper as Finjan’s
`compliance with 35 U.S.C. § 287 remains a live issue. Finjan is currently asking the Court to enter
`a judgment as a matter of law on the issue of infringement, and is also seeking a new trial on
`damages. In the alternative, Finjan requests that the issues of infringement and damages be certified
`for interlocutory appeal while the remainder of the case is stayed. To the extent that the Court grants
`any of Finjan’s requests, a ruling on Juniper’s Motion will ensure that the appellate court has a
`complete record for review. Even if the Court denies Finjan’s co-pending motion in full, however,
`the issues raised in Juniper’s Motion remain relevant to the resolution of this litigation. For example,
`Finjan has indicated that it intends to pursue its claims under the ’494 Patent against additional
`Juniper products. In addition, Finjan’s failure to comply with the constructive notice requirements
`of § 287 and its failure to identify Sky ATP as an accused product in any pre-suit correspondence to
`Juniper infects its claim for damages under the other six patents-in-suit in this case. A ruling on
`Juniper’s Motion would narrow the issues that need to be litigated with respect to Finjan’s remaining
`claims.
`Substantively, Finjan’s arguments also fall flat. No reasonable jury could find that Finjan and
`its licensees marked substantially all of the products that embody the ’494 Patent, as required to
`demonstrate constructive notice. Finjan’s primary argument is that Juniper did not meet its burden
`of production to identify unmarked products. But this argument is belied by Finjan’s own stipulation
`at trial that Juniper did in fact meet its burden of production under Arctic Cat, and is also contrary
`to the evidentiary record. Finjan’s opposition brief fails to identify any evidence that its ’494
`licensees marked their products with the ’494 Patent, much less evidence that they marked
`substantially all of those products. Similarly, Finjan introduced no evidence that it made any, let
`alone reasonable, efforts to ensure its licensees complied with 35 U.S.C. § 287.
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`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 366 Filed 01/31/19 Page 6 of 17
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`As to actual notice, no reasonable jury could find that Finjan provided actual notice based on
`the facts presented at trial. The fact that Finjan identified the ’494 Patent to Juniper during a
`telephone call is legally insufficient to satisfy the actual notice requirement. Finjan failed to
`specifically identify Sky ATP as an accused product prior to filing suit, and Finjan’s argument that
`the generic term “advance malware” is synonymous with Sky ATP is foreclosed by both legal
`precedent and factual evidence.
`II.
`ARGUMENT
`A.
`Juniper’s Motion For Judgment As A Matter Of Law Is Procedurally Proper.
`Finjan first argues that “[s]ince the jury found for Juniper on the ultimate issue of
`infringement, ancillary issues related to Finjan’s claim of infringement are moot and not properly
`raised in a 50(b) motion.” Dkt. No. 357 at 1. However, Finjan’s compliance with 35 U.S.C. § 287
`remains a live issue for at least two reasons. First, Finjan filed a pending Motion for Judgment as a
`Matter of Law and Motion for New Trial arguing that no reasonable jury could have found that
`Juniper did not infringe and seeking a new trial on damages. Dkt. No. 353. Should the Court deny
`Finjan’s motion, Finjan requests that the case be stayed during the duration of its appeal. Id. at 24.
`A ruling on the issues raised in Juniper’s Motion will ensure that the appellate court benefits from a
`complete record on this issue—regardless of whether that appeal happens now or later. See Phillips
`v. Cmty. Ins. Corp., 678 F.3d 513, 519 (7th Cir. 2012) (considering affirmative defense of qualified
`immunity on appeal of finding of no liability). As the Court did not rule on Juniper’s Rule 50(a)
`motion concerning notice, Juniper thus reasserts the issue now, and believes that a ruling would be
`in the interest of judicial economy.
`Second, this case is procedurally distinguishable from the cases that Finjan cites in its
`opposition, as Finjan’s compliance with § 287 remains an issue to be decided in this case. Indeed,
`Finjan has indicated that it intends to continue to pursue the ’494 Patent, including against additional
`Juniper products. Ex. 1 (1/3/19 Email Fr. Kris Kastens). Thus, a judgment that Finjan did not comply
`with the constructive notice requirements as to the ’494 Patent would narrow the issues that need to
`be litigated with respect to Finjan’s remaining claims under the ’494 Patent. In addition, Finjan’s
`failure to comply with the notice requirements of § 287 is relevant to the damages period for the
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`FOR JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
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`other six patents-in-suit, and is even dispositive for U.S. Patent Nos. 6,154,844 and 7,613,926 for
`which there is no evidence whatsoever that Finjan identified in any written or oral communications
`to Juniper prior to the complaint, after those patents expired. See Dunlap v. Shofield, 152 U.S. 244,
`248 (1894) (“[M]arking the articles, or notice to the infringers—is made by the statute a prerequisite
`to the patentee’s right to recover damages against them.”). Similarly, Finjan’s infringement
`allegations under the other six patents-in-suit are focused on Sky ATP and/or SRX used in
`combination with Sky ATP—just like its allegations for the ’494 Patent. Given that Finjan never
`identified Sky ATP as an accused product for any of its patents prior to filing its lawsuit, the Court’s
`ruling on actual notice for the ’494 Patent may also impact Finjan’s allegations of actual notice for
`those other patents. Accordingly, the issue of Finjan’s compliance with the notice requirements of
`§ 287 in this case is far from moot.
`B.
`Finjan Failed To Prove Compliance With § 287.
`Finjan claims that “Juniper’s motion is premised on the claim that constructive notice must
`be analyzed and that analysis must occur first, which is contrary to law.” Dkt. No. 357 at 2. However,
`Finjan’s argument ignores that Finjan’s, and Finjan’s licensees’, failure to mark is a prerequisite to
`Finjan’s obligation to providing Juniper with actual notice.
`Finjan’s attempt to side-step the constructive notice issue is a transparent effort to avoid a
`negative ruling that will impact its other claims in this case and its claims in other cases against other
`defendants. Finjan cannot expressly argue that it complied with the constructive notice requirements,
`as such a position would be specious in view of the mountain of evidence (including Finjan’s own
`admissions) that its licensees practice the ’494 Patent and did not mark their products. If it formally
`admitted this, however, it would be harmful to its other claims against Juniper and other defendants.
`As a result, Finjan hopes to leave this issue open by characterizing constructive and actual notice as
`interchangeable options to diminish Juniper’s argument that Finjan failed to meet its statutory
`marking obligations. But Finjan’s position is inconsistent with the plain language of § 287.
`35 U.S.C. § 287 states: “Patentees, and persons making, offering for sale, or selling within
`the United States any patented article for or under them, or importing any patented article into the
`United States, may give notice to the public that the same is patented . . . In the event of failure so
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`FOR JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-05659-WHA)
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`to mark, no damages shall be recovered by the patentee in any action for infringement, except on
`proof that the infringer was notified of the infringement and continued to infringe thereafter.” 35
`U.S.C. § 287 (emphasis added). Accordingly, Finjan only needed to provide actual notice to Juniper
`if (1) it practices the ’494 Patent or its licensees practice the ’494 patent, and (2) Finjan failed to
`mark substantially all products that practice the ’494 Patent or failed to take reasonable efforts to
`ensure its licensees marked products which practice the ’494 Patent.
`Further, the case law Finjan cites does not support its position that the Court need only decide
`whether Finjan provided actual notice. In Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`853 F.3d 1370, 1383 (Fed. Cir. 2017), the court did not analyze whether the patentee satisfied 35
`U.S.C. § 287 but instead addressed the issues of (1) whether a patent disclaimer alleviated the need
`to mark and (2) whether notice must be decided on a claim by claim basis. The Rembrandt court
`thus did not provide any guidance as to the proper order in which to analyze compliance with 35
`U.S.C. § 287. Further, in Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1112 (Fed. Cir. 1996), the court
`affirmed a jury verdict that the patentee complied with the constructive notice prong of 35 U.S.C.
`§ 287. The Maxwell court thus expressed no opinion that actual notice may be decided first. Lastly,
`in Uniboard Aktiebolag v. Acer Am. Corp., 118 F. Supp. 2d 19, 22 (D.D.C. 2000), aff’d sub nom.
`Lans v. Digital Equip. Corp., 252 F.3d 1320 (Fed. Cir. 2001) the patentee conceded that it did not
`satisfy the constructive notice prong of the statute. See id. (“The constructive notice (marking)
`provision of § 287(a) is not relevant to this dispute, as Uniboard does not allege that it complied with
`the patent marking provisions.”). Here, no such concession has been made.
`Finjan’s refusal to formally state whether or not it complied with marking under § 287 is
`conducive to its ability to take inconsistent positions in its other ongoing litigations and with regard
`to the other patents asserted in this case. The Court should thus make an explicit finding that Finjan
`failed to provide constructive notice, as a matter of law, before going on to address actual notice.
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`1.
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`No Reasonable Jury Could Have Found That Finjan Provided
`Constructive Notice Under § 287.
`
`Finjan does not point to a shred of evidence that its licensees who practice the ’494 Patent
`marked their products with the ’494 Patent number during the relevant time period. Instead, Finjan
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`FOR JUDGMENT AS A MATTER OF LAW
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`Case 3:17-cv-05659-WHA Document 366 Filed 01/31/19 Page 9 of 17
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`tries to renege on its admission to the Court that Juniper met its burden of production to identify
`unmarked licensee products before trial, attempts to shift the burden of proof on constructive notice
`to Juniper, and points to irrelevant evidence regarding the Finjan Mobile Vital Security product.
`None of this changes the fact that Finjan failed to meet its burden to introduce evidence of its
`compliance with the constructive notice requirements of 35 U.S.C. § 287.
`
`a.
`
`Juniper Met Its Burden Of Production To Identify Unmarked
`Products.
`
`Finjan’s primary argument on constructive notice is that Juniper did not meet its burden of
`production under Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1368 (Fed.
`Cir. 2017) to identify unmarked products. Dkt. No. 357 at 13-17. Finjan’s argument requires it to
`reverse course on a stipulation made to the Court during trial, is contrary to Federal Circuit precedent,
`and is also contrary to the factual record.
`As an initial matter, Finjan admitted to the Court that Juniper had met its burden of
`production under Artic Cat by serving a notice that identified licensee products (see Ex. 2 at 2-3),
`thus shifting the burden to Finjan. Specifically, the following exchange occurred during the trial:
`THE COURT: I’m not asking about how reasonable they were on the actual
`evidence. I’m asking this Arctic notice that I don’t even know anything about, can
`you both agree that that was given so that we don’t have to complicate the trial
`with yet another issue?
`MS. KOBIALKA: Yeah, and that’s not a jury issue to decide whether or not that
`notice was given in the litigation.
`THE COURT: All right. So if I just tell you right now that you’ve got to prove notice,
`you are okay with that?
`MS. KOBIALKA: Yes.
`
`Trial Tr. at 286-289 (emphasis added). Finjan is now attempting to renege on this stipulation by
`arguing that “Juniper cites no case law that supports its infirm position that it met its burden under
`Artic Cat without providing any identification of products at trial.” Dkt. 357 at 16 (emphasis added).
`Finjan should not be permitted to contradict its stipulation.
`Despite its stipulation to the contrary, Finjan now argues that Juniper was required to identify
`specific licensees and products at trial in front of the jury. Finjan’s position is legally incorrect.
`
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`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 366 Filed 01/31/19 Page 10 of 17
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`Contrary to Finjan’s suggestion, the Artic Cat court did not hold that an accused infringer must meet
`its burden of production in a particular way. Rather, the Federal Circuit held that “an alleged infringer
`who challenges the patentee’s compliance with § 287 bears an initial burden of production to
`articulate the products it believes are unmarked ‘patented articles’ subject to § 287. To be clear, this
`is a low bar. The alleged infringer need only put the patentee on notice that he or his authorized
`licensees sold specific unmarked products which the alleged infringer believes practice the patent.”
`Arctic Cat, 876 F.3d at 1368. In accordance with this requirement, on May 3, 2018 Juniper put Finjan
`on notice of the licensees, licensee products, and Finjan products which Juniper contends constitute
`unmarked products which practice the ’494 Patent. See Ex. 2 at 2-3. Juniper also identified specific
`licensees who sell products that practice the ’494 Patent in its Opposition to Finjan’s Summary
`Judgment Motion. See Dkt. No. 126 at 15. Juniper thus met its burden of production prior to trial
`and Finjan bore “the burden to prove the products identified do not practice the patented invention.”
`Arctic Cat, 876 F.3d at 1368. Further, Juniper’s pre-trial Arctic Cat notice satisfies the policy
`considerations articulated by the Federal Circuit: “Without some notice of what market products [the
`accused infringer] believes required marking, [the patentee’s] universe of products for which it
`would have to establish compliance with, or inapplicability of, the marking statute would be
`unbounded. . . . Permitting infringers to allege failure to mark without identifying any products
`could lead to a large scale fishing expedition and gamesmanship.” Arctic Cat, 876 F.3d at 1368.
`Here, Finjan was tasked with no such fishing expedition as Juniper identified specific licensees and
`specific licensee products.
`Even though it was not necessary in view of Finjan’s stipulation,1 Juniper also met its burden
`of production to identify unmarked licensee products by introducing evidence at trial. In particular,
`
`
`1 In Arctic Cat the Federal Circuit held that it was not “determin[ing] the minimum showing
`needed to meet the initial burden of production.” Id. at 1368. Juniper should thus not be required to
`meet its burden of production in the same manner as the accused infringer in Arctic Cat. Indeed,
`following Arctic Cat, notice provided in the context of summary judgment briefing has been found
`sufficient to satisfy the burden of production. See Am. Tech. Ceramics Corp. v. Presidio
`Components, Inc., 2018 WL 1525686, at *6 (E.D.N.Y. Mar. 27, 2018) (finding contention in
`summary judgment motion sufficient to satisfy burden of production); Meridian Mfg., Inc. v. C & B
`Mfg., Inc., 340 F. Supp. 3d 808, 842 (N.D. Iowa 2018) (citing Dkt. No. 101 (Opp. to Mot. for Summ.
`J.) as satisfying the burden of production).
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`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 366 Filed 01/31/19 Page 11 of 17
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`Juniper introduced Trial Exhibit 1760, which includes Finjan’s own admissions that various
`licensees sold products that practice the ’494 Patent. Trial Ex. 1760 (Finjan’s POR in Palo Alto
`Networks, Inc. v. Finjan, Inc., No. IPR2016-00159) at 55-60. Trial Exhibit 1760 also directly rebuts
`Finjan’s claim that Juniper did not identify any licensee products that should have been marked
`during the time period between issuance of the ’494 Patent (March 18, 2014) and its expiration
`(January 29, 2017), as the document is dated August 12, 2016. Finjan does not dispute that Trial
`Exhibit 1760 contains express Finjan admissions that at least four Finjan licensees were selling
`products that practice the ’494 Patent as of August 12, 2016. Instead, Finjan claims that neither the
`Court, nor the jury, should consider all of Trial Exhibit 1760 because there was no witness testimony
`concerning those portions of the document. Dkt. No. 357 at 14-15. But Finjan cites no authority to
`support its position that the jury or the Court may only consider the portions of a document that are
`expressly discussed by a witness at trial, and that is simply not the law. See Connel v. Sears, Roebuck
`& Co., 722 F.2d 1542, 1546 (Fed. Cir. 1983) (when considering a JMOL, the court is to “consider
`all the evidence”); United States v. DeCoito, 764 F.2d 690, 695 (9th Cir. 1985) (“Jurors are generally
`entitled to examine documents properly admitted in evidence.”).
`b.
`No Reasonable Jury Could Have Found That Finjan Demonstrated
`Constructive Notice Under § 287.
`
`Finjan also claims that “Juniper did not meet its burden of proof” because Juniper points to
`“generalized testimony regarding Finjan’s licensing practices and licenses” and did not “specif[y]
`the relevant timeframe.” Dkt. No. 357 at 15. But Finjan’s argument is inapposite because Juniper
`did not bear the burden of proof on this issue. Rather, as the patent owner, Finjan bore the burden to
`show “substantially all of the [products that practice the ’494 Patent] being distributed were marked,
`and that once marking was begun, the marking was substantially consistent and continuous.” See
`Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). Further, Finjan needed to
`show that it “made reasonable efforts to ensure [licensee] compliance with the marking
`requirements.” Maxwell, 86 F.3d at 1111–12.
`Finjan does not identify a shred of evidence that the licensees identified in Juniper’s Arctic
`Cat notice or even the narrower list identify by Finjan itself in Trial Exhibit 1760 marked their
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`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 366 Filed 01/31/19 Page 12 of 17
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`products with the ’494 Patent. Trial Ex. 1760 at 54. To the contrary, Finjan’s CEO admitted that
`“Finjan believes that its licensees are actually using [Finjan’s] patents in [the licensee’s accused]
`products,” Trial Tr. at 318:11-13, that none of “Finjan’s licenses have marking provisions,” id. at
`319:5-11, and that he was not “aware of any efforts by Finjan to monitor whether its licensees are
`marking their products with Finjan’s patents,” id. Finjan thus failed to show it made reasonable
`efforts to ensure its licensees complied with § 287. See U.S. Ethernet Innovations, LLC v. Acer, Inc.,
`2013 WL 4456161, at *7 (N.D. Cal. Aug. 16, 2013) (“finding patentee failed to make “reasonable
`efforts to ensure that [licensee] marked any licensed products with the patents-in-suit” where
`patentee “took no steps whatsoever to do so” and “failed even to include in the licensing agreement
`an obligation that [licensee] itself make efforts to mark any products that it reasonably believed
`practiced [patentee’s] patents.”); Loral Fairchild Corp. v. Victor Co. of Japan, 906 F. Supp. 813,
`818 (E.D.N.Y. 1995) (Rader, J. (sitting by designation)) (“[Patentee] has consistently asserted in this
`case that the [products] sold by [patentee’s licensees] in the United States infringe claims of the
`[asserted] patent. Defendants have conclusively shown these specific allegedly infringing [products]
`were sold, unmarked, during the terms of license agreements with [patentee]. [Patentee] has not
`withdrawn its claim of infringement of any of these devices. In sum, [patentee] has provided no
`evidence to show a genuine issue of material fact [that it satisfied 35 U.S.C. § 287].”).2
`Finally, Finjan’s arguments concerning its alleged marking of the Vital Security product are
`irrelevant. Even if Finjan were able to prove that it adequately marked the Vital Security product—
`which it did not—it has not even attempted to rebut Juniper’s argument that those Vital Security
`
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`2 The cases cited by Finjan are inapposite. The two Texas cases were decided under the
`express assumption that the defendant bears the burden to establish that the unmarked products
`embodied the patent. Realtime Data, LLC, v. Action Corp., 2017 U.S. Dist. LEXIS 56950, at *8
`(E.D. Tex. Apr. 4, 2017) (“[I]t is the defendant’s responsibility to affirmatively identify and prove
`that a product is a patented article . . . .”); Blitzsafe Tex., LLC v. Honda Motor Co., Ltd., 2017 U.S.
`Dist. LEXIS 58358, at *10-11 (E.D. Tex. Jan. 26, 2017). The Federal Circuit overruled this reasoning
`in Arctic Cat, and since that decision the same Texas court recognized that a defendant meets its
`burden “[b]y identifying a complaint in which [the patentee] accused [licensee] products of
`infringing the [asserted] patent, which resulted in the relevant license agreement between [the
`patentee] and [the licensee].” Semcon IP Inc. v. Huawei Device USA Inc., 2017 WL 6343771, at *3
`(E.D. Tex. Dec. 12, 2017). Further, in Accuscan, Inc. v. Xerox Corp., the court found that “Accuscan
`has presented some evidence that its licensees’ products may not infringe” and had “withdrawn its
`claims of infringement against its licensees’ products.” Accuscan, Inc. v. Xerox Corp., No. 96 CIV.
`2579 (HB), 1998 WL 60991, at *6 n.5 (S.D.N.Y. Feb. 11, 1998).
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`JUNIPER’S REPLY BR. ISO JUNIPER’S MOT.
`FOR JUDGMENT AS A MATTER OF LAW
`(Case No. 3:17-cv-0565