throbber
Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 1 of 33
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`Before The Honorable WILLIAM H. ALSUP, Judge
`
`FINJAN, INC., a Delaware ) Motions for Judgment as a
`Corporation, ) Matter of Law
` )
` Plaintiff, )
` )
` vs. ) NO. C 17-05659 WHA
` )
`JUNIPER NETWORKS, INC., A ) Pages 1 - 33
`Delaware Corporation, )
` ) San Francisco, California
` Defendant. )
`____________________________) Thursday, February 21, 2019
`
`
`
`REPORTER'S TRANSCRIPT OF PROCEEDINGS
`
`
`APPEARANCES:
`
`For Plaintiff: Kramer Levin Naftalis & Frankel LLP
` 990 Marsh Road
` Menlo Park, California 94025
` BY: PAUL ANDRE,
` KRISTOPHER B. KASTENS,
` LISA KOBIALKA, ATTORNEYS AT LAW
`
`
`For Defendant: Irell & Manella
` 840 Newport Center Drive, Suite 500
` Newport Beach, California 92660-6324
` BY: REBECCA L. CARSON, ATTORNEY AT LAW
`
` Irell & Manella LLP
` 1800 Avenue of the Stars
` Suite 900
` Los Angeles, California 90067-4275
` BY: JONATHAN S. KAGAN, ATTORNEY AT LAW
`
`
`
`Reported By: Raynee H. Mercado, CSR No. 8258
`
`
`Proceedings reported by electronic/mechanical stenography;
`transcript produced by computer-aided transcription.
`
`
`
`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
`
`ORIGINAL
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 2 of 33
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`2
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`Thursday, February 21, 2019 9:02 a.m.
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`P R O C E E D I N G S
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`THE CLERK: Calling civil action 17-5659, Finjan,
`
`Inc. versus Juniper Network, Inc.
`
`Counsel, please step forward and state your appearances
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`for the record.
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`(Pause in the proceedings.)
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`MR. ANDRE: Good morning, Your Honor. Paul Andre for
`
`Finjan.
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`MS. KOBIALKA: Lisa Kobialka for Finjan.
`
`THE COURT: Welcome back.
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`MS. KOBIALKA: Thank you.
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`MR. KASTENS: Kristopher Kastens for Finjan, Your
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`Honor.
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`THE COURT: Okay.
`
`MS. CARSON: Good morning, Your Honor. Rebecca
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`Carson for Juniper.
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`MR. KAGAN: Jonathan Kagan of Irell & Manella for
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`Juniper.
`
`THE COURT: All right.
`
`Well, first on the motion -- renewed motions for judgment
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`as a matter of law, we're not going to go through all of
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`these. I'll let each of you pick one that you want to
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`address, and then we'll give that some time.
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`But I want the world to know how burdensome these cases
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 3 of 33
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`3
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`are. We've gone through a trial and hit at every turn,
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`everyone has got to litigate everything to the nth degree.
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`And there's just not time in the universe for all of that.
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`I could have decided this on the papers and just either
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`granted it or denied it, but I'm giving you each a shot at
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`something.
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`And then we got to -- we got case management to talk about
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`after that. You all want to certify it to the Court of
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`Appeals. Then you're going to want to go to the International
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`Court of the Hague. At some point, this has got to stop.
`
`All right. So who wants to go first?
`
`MR. KASTENS: Your Honor --
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`THE COURT: Let's hear from you, Finjan.
`
`MR. KASTENS: Finjan would like to discuss its JMOL
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`request for a finding of infringement. We've -- we've --
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`THE COURT: What's your point?
`
`MR. KASTENS: The point is that the arguments that
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`their expert made of -- regarding non-infringement are legally
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`irrelevant, contradicted by their own documents, and did not
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`address --
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`THE COURT: Not true. That is not true. I want you
`
`to know this: It is true that along the way, I thought
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`that -- I thought that you had a strong case on infringement.
`
`I was wrong about that.
`
`Mr. Kagan gave one of the best closing arguments, and it
`
`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 4 of 33
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`4
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`was not theatrics, but it was just calm, dispassionate
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`explanation of a -- of points that I had not focused on that
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`were your burden of proof, but he pointed it out. And I was
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`very convinced at the end of that that he was right and that
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`you had been wrong from the get-go on infringement.
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`So those statements that I made along the way about how
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`I -- that was just -- I was just drawn in by your smoke and
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`mirrors. That's all that happened on that.
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`And Mr. Kagan, I compliment him for an excellent closing
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`argument. I thought he was -- he was -- his one of the best
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`I've heard in the U. S. District Court in a long time. And it
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`wasn't because it was emotional. It was just good, calm
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`explanation of something that was complicated. And then
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`finally the scales fell from my eyes. So I don't agree with
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`you on that point.
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`I am not going to grant that motion. I'm just going to
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`save you some time. You're not going to win that motion.
`
`All right. What is the point you want to raise.
`
`MS. CARSON: Sure, Your Honor.
`
`So we're asking a judgment as a matter of law on the
`
`notice issue. The notice issues that were tried were not
`
`decided by verdict because the jury found no infringement.
`
`However, the notice issue implicates many of the other patents
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`in this case.
`
`THE COURT: Yeah, but we only tried the one patent.
`
`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 5 of 33
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`5
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`MS. CARSON: We believe that Your Honor's ruling on
`
`the notice issue would help the parties to evaluate --
`
`THE COURT: No. I want to tell you, both sides,
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`something here. At every turn, I have been told -- I said,
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`why can't this case settle? Why won't these lawyers settle
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`the case?
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`All right. The word comes back to me, "Oh, judge, just go
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`through this one last thing -- the summary judgment -- this is
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`months ago -- go through the summary judgment, and then that
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`will help the lawyers -- everybody see where things stand."
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`So I did. We put a lot of work into it. I would say,
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`"good. Now it's going to settle."
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`Did it? No.
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`Then you say, "We have to have a trial," so we had a
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`trial. The word came back, "Oh, just have that trial, and
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`then they will see where they stand and they will settle the
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`case."
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`Did they? We had the trial. You won and -- but now the
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`case won't settle either. It's -- I don't believe this
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`business.
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`Now I'm being told -- I won't say by who -- that you want
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`me to let you go up to the Court of Appeals on a Rule --
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`interlocutory appeal. Both sides want that. And then the
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`case will settle. No, I don't believe that. I've heard it
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`too much. I've heard it too much. We're going to push ahead
`
`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 6 of 33
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`6
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`in this case.
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`All right. That doesn't mean you don't win on the -- your
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`point. It's just that it's not going to help. I don't
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`believe that for a second when you tell me it's going to cause
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`the case to settle. It's not. You people can't -- you know,
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`your firm is making millions of dollars off this case.
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`They're making millions of dollars off this case. There's
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`no -- there's no incentive to settle this thing.
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`And so I'm going to do my job. We're going to push
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`forward to the goal line.
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`All right. Now with that little thing, don't tell me --
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`give me that argument. What you should tell me is why you
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`should win on the notice issue.
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`MS. CARSON: Sure, Your Honor.
`
`So on constructive notice, we believe that there was
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`absolutely no evidence in the record that Finjan complied with
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`the requirements to mark the products.
`
`We identified the -- the evidence in the record identifies
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`several licensees who practice the '494 patent. And Finjan's
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`own witnesses admitted that its licensees do not mark their
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`products and that Finjan has no policy of policing --
`
`THE COURT: All right. Let's stop just on that
`
`before we get to the telephone call part.
`
`Why isn't that right? Why isn't that right that you
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`didn't carry your burden of proof to show that the licensees,
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 7 of 33
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`7
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`or most of them, marked.
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`MS. KOBIALKA: So it's an improper issue altogether
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`to be raised. And it is based on the fundamental legal
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`premise which is contrary to over 25 years of Federal Circuit
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`law that either you have to do actual notice or constructive
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`notice, that -- they're insisting that the construct of the
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`marking statute is that you must first look at constructive
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`notice, and then you can turn to actual notice.
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`And they're requiring this court to do a ruling on an
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`issue that, frankly, is moot.
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`Because they won the jury's verdict in -- with respect to
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`infringement, their defense of marking, which is actually a
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`defense to damages, which was never reached, isn't even
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`appropriate or ripe for us to be addressing at this point.
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`And all it's going to do is invite great judicial
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`inefficiencies of this court saying, I'm going to require the
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`parties on Rule 50(b) motions to raise every possible issue
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`that could come up even if you won on that case because then I
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`have to go through and look at all these various issues, so
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`that -- fundamentally it's not even --
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`(Simultaneous colloquy.)
`
`THE COURT: Maybe that's true.
`
`Okay. I accept that -- that's maybe good wisdom, maybe
`
`not. I don't know. Depends on the circumstances.
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`But I have myself on occasion done exactly what you're
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 8 of 33
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`8
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`saying. I say you won on a different round. That second
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`ground is moot. We don't to have reach that. I -- okay. I
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`see that.
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`But if -- if I -- if I do reach it --
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`MS. KOBIALKA: I'll address it.
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`THE COURT: Then -- there are two branches. There's
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`the actual. There's the constructive. And what I wanted to
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`know is what -- what do you say on the marking part of it?
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`MS. KOBIALKA: On the marking part of it, we
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`identified the products that were practicing the patents,
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`which was the vital security mobile application, and showed
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`evidence that, in fact, it was marked.
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`At no point during trial did they meet their burden of
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`production, which is identifying specific products that
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`practiced the '494 patent during -- or prior to it being
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`expired.
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`All they pointed to is there's these licenses that are out
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`there. There's general information. But they don't say,
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`"this specific product by company A, version 4.2, infringes
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`the '494 -- the '494 patent and therefore should have been
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`marked." They have that burden of production.
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`Otherwise, as the Arctic Cats (sic) case notice -- the
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`case itself notes, it says it would be unbounded. A party --
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`an accused infringer could come to court and say there's these
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`2,000 products that we're telling you we think should have
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 9 of 33
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`9
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`been marked. And then at trial we have to somehow rebut all
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`2,000 of those products, which is essentially the -- the type
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`of notification they've provided without any specifics during
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`discovery.
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`At trial, however -- and this is where the Arctic Cats
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`case comes into play. They have to actually present this
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`specific product. The only thing they are able to point to is
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`an -- close to a hundred page document where there was no
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`testimony elicited on the pages of the document referring to
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`licenses related to the '494 product.
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`So they're trying to do basically a lawyer's trick here,
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`where they're saying, "Hey, we happen to put this one large
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`document into evidence." Right? "And there's a page at the
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`end of that document that we didn't provide any testimony on,
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`and that's our basis for saying we met our burden of
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`production."
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`So the only evidence at trial -- and if we're going to be
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`looking at this as a 50(b) motion -- was that the products
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`that were identified as practicing, aside from our
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`infringement claims for Juniper's products, were in fact
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`marked. And that was the evidence that was before the court.
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`THE COURT: All right. Why isn't that right?
`
`MS. CARSON: So, Your Honor, two points. One is that
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`the Arctic Cat case does not specify how the burden of
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`production must be met. Juniper served Finjan with a notice
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 10 of 33
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`10
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`prior to trial that specifically identified the products that
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`Juniper believed embodied the '494 patent and were not marked.
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`The parties had a discussion with Your Honor at trial, and
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`on the record, Finjan's counsel acknowledged that we had met
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`that burden of production with the notice. And Your Honor
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`suggested that we didn't need to try that to the court.
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`But even if that wasn't true, Trial Exhibit 1760 was
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`admitted into evidence and is a document that Finjan filed in
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`the PTAB. It contains express admissions from Finjan that at
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`least four specific licensees were selling products that
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`embodied the '494 patent.
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`So counsel's suggestion that just because there wasn't a
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`witness who specifically testified about those portions of the
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`documents during the trial means that that evidence doesn't
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`count is just not right.
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`THE COURT: What did the PTAB document -- this was a
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`statement in the PTAB by Finjan?
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`MS. CARSON: Correct, Your Honor.
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`THE COURT: And what did it say again?
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`MS. CARSON: So we quoted several portions on page
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`3 --
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`THE COURT: Is that in the trial record?
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`MS. CARSON: It's in the trial record.
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`THE COURT: All right. What did it say?
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`MS. CARSON: So some examples are Avast's Endpoint
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`11
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`Protection and its connection with Avast Research Labs to
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`identify new malicious threats utilized the inventions
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`disclosed in the '494 patent.
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`They also --
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`THE COURT: Wait. Went by me too fast. Read it
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`again.
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`MS. CARSON: Sure. So the statement by Finjan in its
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`PTAB filing in 2016 before the patent filed and after Avast
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`had taken a license states Avast's endpoint --
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`THE COURT: What's the name, Avast?
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`MS. CARSON: Avast.
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`THE COURT: How do you spell that?
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`MS. CARSON: A-V-A-S-T.
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`THE COURT: Avast. Okay.
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`Read it much slower so I can get it now.
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`MS. CARSON: Sure. "Avast's Endpoint Protection and
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`its connection with Avast Research Labs to identify new
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`malicious threats utilized the inventions disclosed in the
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`'494 patent."
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`They also stated, "F-Secure's multi-layered approach to
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`security is comprised of five modules, each designed to
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`address a particular aspect of the threat landscape and work
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`together to provide a complete solution using the technology
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`of the '494 patent."
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`THE COURT: Is this -- Was Avast a party in the PTAB?
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 12 of 33
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`12
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`MS. CARSON: No, Your Honor.
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`So the submission that Finjan was making was to try to
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`establish that the commercial success of the product evidenced
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`secondary considerations of non-obviousness.
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`THE COURT: Was Avast a licensee?
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`MS. CARSON: Yes, Your Honor.
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`THE COURT: How do we know that?
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`MS. CARSON: Because they state in the PTAB filing
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`that these are four examples of licensees that they have who
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`have successfully sold products that implement the '494
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`patent.
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`THE COURT: Where does it say that? Read that to me.
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`MS. CARSON: So the -- one of the introductory
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`statements to the section in the PTAB filing states, "after
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`the '494 issued, several licensees entered into license
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`agreements which included a license to the '494 patent to
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`avoid litigation and to obtain a license to continue to make,
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`use, offer to sell, and sell products that embodied the
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`inventions disclosed in the '494 patent."
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`And then they provide these specific examples, which we
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`have a coded in our brief of Avast, F-Secure and Websense,
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`and --
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`THE COURT: And was that -- does that categorically
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`cover the time period of the damages sought in this case?
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`MS. CARSON: So, Your Honor, this filing was in 2016,
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 13 of 33
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`13
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`and the patent did not expire until January 2017, so yes.
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`THE COURT: So -- but is there -- was that -- were
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`damages in our case being sought prior to that date? Prior to
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`2016?
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`MS. CARSON: No, Your Honor.
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`THE COURT: What was the damage period for our case?
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`MS. CARSON: So actually I misspoke. So the damages
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`period began in 2015. Some of these licenses -- I don't have
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`the specific dates memorized, but I believe that these
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`licenses spanned in 2016 and perhaps late 2015.
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`THE COURT: Well, but --
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`(Simultaneous colloquy.)
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`THE COURT: -- here's the point I'm asking: Let's
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`say I take your argument at face value and you win on the --
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`as for the dates that the PTAB covered, so that there were
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`products on the market in 2016 that should have been marked
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`and weren't, however, they're seeking damages for an earlier
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`period in our case.
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`So how would you -- what's your proof on the earlier
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`period?
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`MS. CARSON: So, Your Honor, the way that the marking
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`statute works is once there's an obligation to mark during
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`six-year statutory period, which goes back to 2012 in this
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`case, then the only way that the plaintiff can recover damages
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`is by showing actual notice.
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
`
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 14 of 33
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`So there's no allotment for obtaining damages before the
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`obligation to mark if at the point of when they had the
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`obligation to mark, they did not mark.
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`THE COURT: Right. So there's a six-year statute.
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`You're saying that if you can show that in any one day in that
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`six-year period, there were products out there that should
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`have been marked and weren't, that you -- I didn't -- I don't
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`get -- I want to make sure I understand your point.
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`MS. CARSON: The requirement is that if during the
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`six-year period, statutory period of damages, there are
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`products that have been sold in the marketplace that embodied
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`the patent, substantially all of those products needed to be
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`marked with the patent.
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`If the plaintiff cannot show that, then it goes to the
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`second step of the statute, which is actual notice.
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`THE COURT: I understand that. We haven't gotten to
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`that yet. But that wasn't answering my question.
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`My question is, is it enough for you to show that at some
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`point in the six-year period, the other side had licensees out
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`there with unmarked goods that practiced the patent; that
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`that's all you have to show to -- for the constructive notice
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`part of it. Then burden shifts on that for the other side to
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`show that those products were marked?
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`MS. CARSON: Yes, Your Honor.
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`THE COURT: Is that right; is that the way it works?
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 15 of 33
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`MS. KOBIALKA: No, and -- and part of this is it's
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`all premised on this concept which is contrary to over 25
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`years of Federal Circuit law.
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`Our damages period is based off of the actual notice. You
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`don't need to look at constructive notice. It is -- even in
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`their brief, they cite this law. You either look at actual
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`notice or constructive notice --
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`THE COURT: We're going to come to actual, but I'm
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`just talking now about the constructive part.
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`MS. KOBIALKA: So the constructive part is it would
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`be applying the rule of reason from patentee standpoint
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`whether or not they can reasonably determine whether or not
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`there are products out there that -- required to be marked and
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`that they were in fact marked. You don't have to have all of
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`them marked. It is a substantial number.
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`But for purposes of the Arctic Cat and what the defendant
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`had the burden of doing was identifying the specific products.
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`They have to identify the specific product, the specific time
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`frame as to what needed to be marked with the '494 patent.
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`And pointing to some portion of a document that was not
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`testified about at all isn't evidence that supports the idea
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`that there wasn't in fact -- or that they've met that burden
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`of production. They have to actually do that at trial.
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`Otherwise we'd be left guessing at any point, or we would say
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`we could only enter into --
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 16 of 33
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`THE COURT: But why wasn't that PTAB document enough?
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`It was your own -- your own party who filed that document.
`
`MS. KOBIALKA: Because it's not the specific -- it's
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`not specific enough.
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`THE COURT: It's --
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`MS. KOBIALKA: They say generally Endpoint products
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`with some Avast Labs. That's the only thing that she's
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`identified. She's not identified what Endpoint product are
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`you referring to, what version are you saying at what period
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`of time needed to in fact be marked.
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`That wasn't presented. You have to --
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`THE COURT: But your side is the one that filed that
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`statement, so you presumably knew what you were talking about
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`when you filed it, knew what -- what product you were talking
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`about.
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`MS. KOBIALKA: Well -- okay.
`
`THE COURT: I don't see how you can say you were
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`misled by the generality of your own statement.
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`MS. KOBIALKA: It wasn't identified during trial as
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`being this is what we're presenting to the jury, to the court
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`as being -- as relating to notice. In fact, that portion of
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`the document wasn't discussed at all during trial. That was
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`not presented. This is --
`
`THE COURT: I remember a discussion about it. It
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`might have just been argument, but it was -- at least -- I do
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
`
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 17 of 33
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`17
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`remember it being discussed, but --
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`All right. Okay.
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`MS. KOBIALKA: It was mentioned only in closing. At
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`that point, and they said, oh, and by the way, there's these
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`other pages that we have no testimony on. And you look at
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`the --
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`THE COURT: But you don't have to have testimony on a
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`document if it's self-explanatory.
`
`MS. KOBIALKA: But that's the issue. That was the
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`other issue. It's not self-explanatory. These PTAB
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`filings -- what goes on in the IPR's was not presented to the
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`jury in any manner for them to understand what, in fact, that
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`was, so --
`
`THE COURT: All right.
`
`I got to move on. I want to -- let's go to actual notice.
`
`MS. KOBIALKA: So, Your Honor, with respect to actual
`
`notice, we have the discussion -- that is the time frame by
`
`which we were saying damages started. That was the phone call
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`between the senior director of IP litigation and strategy for
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`Juniper and Mr. Garland. There had been preceding
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`communications, but the whole point of this call was to
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`discuss licensing.
`
`Mr. Garland specifically talked about the '494 patent, how
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`it reads on Juniper's products. He specifically referred to
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`the SRX Gateway, which was the product at issue, as well as
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`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 18 of 33
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`18
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`some new products. He said there's some new product offerings
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`that you have that came out. And he talked about the advanced
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`malware module. And that was in reference to the press
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`release that had just occurred several -- it was a few weeks
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`earlier, which Juniper released talking about, we have our
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`advanced anti-malware product line that they were announcing,
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`and that was the SRX in combination with Sky ATP.
`
`Now, the law is very clear in the Federal Circuit. It is
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`what actions the patentee has done. And in this case, Finjan
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`went out of its way to reach out to Juniper to give them the
`
`patent numbers, to have the conversation, which is -- was all
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`recorded. And you go back and look through the transcript,
`
`and he's talking about how it's reading on their particular
`
`products, their product lines.
`
`In addition, the whole point of the discussion was to get
`
`the licensing going. So there can't be any question that they
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`were on notice of infringement, which is the requirement under
`
`the Amsted case, the -- there's a number of cases that -- that
`
`are pretty well established that have been cited in the briefs
`
`about what you need to actually present. And that notice can
`
`come in many different forms, so it can be oral. It does not
`
`have to be written. There is no requirement that in fact it
`
`needs to be written.
`
`And additionally, he talked about the new products, the
`
`next gen firewall, which we had testimony at trial,
`
`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
`
`

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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 19 of 33
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`19
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`Mr. Nagarajan, who's a senior director at Juniper said, yeah,
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`next gen, what that is, that's the SRX with Sky ATP. That was
`
`the whole reason why we developed it.
`
`So under the existing case law, as long as you identify
`
`the patents, say you need a license or there's some
`
`infringement here, it reads on your -- your products, you can
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`identify a product or group of products, product lines, those
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`technologies, and that's sufficient to provide actual notice
`
`of infringement.
`
`THE COURT: What do you say to that?
`
`MS. CARSON: So, Your Honor, we do not dispute that
`
`plaintiffs did identify the '494 patent. But under Federal
`
`Circuit law, that's not sufficient. So under the Amsted
`
`Industries vs. Buckeye Steel case that's cited in our brief,
`
`the requirement states "actual notice requires the affirmative
`
`communications of a specific charge of infringement by a
`
`specific accused product or device.
`
`THE COURT: Well, which part of that did they not
`
`meet?
`
`MS. CARSON: They did not meet the requirement to
`
`identify a specific accused product or to provide a specific
`
`charge of infringement as to that product.
`
`THE COURT: What -- but they did say those phrases
`
`that counsel just told me. That was in the phone call.
`
`MS. CARSON: So the only product that was identified
`
`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
`
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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 20 of 33
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`20
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`during the phone call was the SRX and the modules contained
`
`within the SRX. The SRX was not the subject of plaintiff's
`
`infringement theory.
`
`Plaintiff's infringement theory relied on Sky ATP, which
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`is a separate cloud-based service that is not part of the SRX
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`and is not a module of the SRX. So they relied on testimony
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`from Mr. Garland that he subjectively believed that when he
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`said "advanced malware module," he was referring to Sky ATP.
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`But the relevant standard for actual notice is not subjective
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`or what Mr. Garland thought he was saying. It's objective.
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`And if we look at the transcript, which clearly lays out
`
`what exactly was said, there was no mention of Sky ATP. When
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`Mr. Garland followed up with Juniper a couple months after the
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`call, he sent a written correspondence. The only the product
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`identified there was Sky A-T- -- or was SRX. There was no
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`mention of Sky ATP, and so therefore the --
`
`THE COURT: All right. What -- Okay. Just a sec.
`
`There was a letter that followed up?
`
`MS. CARSON: Yes.
`
`THE COURT: What did it say?
`
`MS. CARSON: It only identified the SRX series.
`
`THE COURT: As I recall, SRX was the hardware module;
`
`is that right?
`
`MS. CARSON: It's a hardware appliance device that
`
`can be used on its own and in most use cases is used on its
`
`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
`
`

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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 21 of 33
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`21
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`own.
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`THE COURT: But it's hardware.
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`MS. CARSON: It's hardware.
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`THE COURT: And the cloud-based thing is software.
`
`MS. CARSON: It's a software service that an SRX
`
`customer can choose to sign up for and use in conjunction with
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`the SRX device.
`
`THE COURT: In the letter, was there any call-out of
`
`the '494 and -- I know there was a '494, but was there any
`
`call-out of any particular claim?
`
`MS. CARSON: There were no patent numbers mentioned
`
`in the written correspondence. The only time -- or the only
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`evidence they have of ever mentioning the '494 patent was the
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`telephone call that --
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`THE COURT: I thought it was -- the '494 was
`
`mentioned in the letter.
`
`MS. CARSON: It was not mentioned in the letter.
`
`They just generally referred to "patents."
`
`THE COURT: I see.
`
`Why didn't -- Here's one thing I don't -- it's -- I'm
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`going to say I think it's fine for somebody to make a phone
`
`call and try to be courteous and -- and, you know, that's
`
`okay. I got that part.
`
`But -- but here, we -- is it really the way to run the
`
`United States of America in our patent system that you could
`
`RAYNEE H. MERCADO, CSR, RMR, CRR, FCRR, CCRR (510) 565-7228
`
`

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`Case 3:17-cv-05659-WHA Document 382 Filed 03/01/19 Page 22 of 33
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`22
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`dispense with the need of a simple letter that calls out the
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`'494 so that there wouldn't be any doubt about it; instead, we
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`have to have a trial over what -- how people -- and, remember,
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`your guy testified falsely -- maybe "falsely" is too strong,
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`but he testified that he specifically called out the cloud ATP
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`or whatever it was. And it turned out they had recorded the
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`whole phone call and that was just not true.
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`So this just tells me, isn't it better to just have a rule
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`you got to put it in writing -- you got to put it in writing
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`or if you're going to do it verbally, it's got to be so clear
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`that there's no room for doubt and debate later on.
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`MS. KOBIALKA: I don't think that would be
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`appropriate --
`
`THE COURT: Why?
`
`MS. KOBIAL

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