Case 3:17-cv-05659-WHA Document 409 Filed 03/28/19 Page 1 of 25
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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
`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
`Ingrid M. H. Petersen (SBN 313927)
`ipetersen@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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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`FINJAN, INC., a Delaware Corporation,
`)
`Case No. 3:17-cv-05659-WHA
`)
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`JUNIPER NETWORKS, INC.’S
`)
`)
`NOTICE OF MOTION AND MOTION
`)
`FOR SANCTIONS
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`
`)
`Date: May 2, 2019
`)
`Time: 8:00 AM
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`Courtroom: 12, 19th Floor
`)
`)
`Before: Hon. William Alsup
`)
`
`
`
`
`
`Plaintiff,
`
`vs.
`
`Defendant.
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`10660346
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`JUNIPER’S MOTION FOR SANCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 409 Filed 03/28/19 Page 2 of 25
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`NOTICE OF MOTION
`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
`PLEASE TAKE NOTICE that on May 2, 2019, at 8:00 a.m., or as soon thereafter as the
`matter may be heard, in Courtroom 12, 19th Floor, of the San Francisco Courthouse, 450 Golden
`Gate Avenue, San Francisco, California 94102, before the Honorable William Alsup, Defendant
`Juniper Networks, Inc. (“Juniper”) will and hereby does move for an order sanctioning Finjan, Inc.
`(“Finjan”). This motion is based on: this Notice of Motion; the Memorandum of Points and
`Authorities below; the Declaration of Rebecca Carson and exhibits attached thereto; and such other
`written or oral argument as may be presented at or before the time this motion is heard by the Court.
`STATEMENT OF RELIEF REQUESTED
`Juniper seeks an order sanctioning Finjan based on its conduct during and as a result of the
`first round of early motions for summary judgment. Juniper believes that the amount of such
`sanction should be commensurate with the amount of resources Juniper and the Court were required
`to waste defending against improper infringement, validity, and damages positions, and it is
`prepared to submit a proposal to the Court if the Court believes such a proposal would be appropriate
`and useful.
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`JUNIPER’S MOTION FOR SANCTIONS
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`Case 3:17-cv-05659-WHA Document 409 Filed 03/28/19 Page 3 of 25
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`TABLE OF CONTENTS
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`I.
`II.
`III.
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`IV.
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`V.
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`VI.
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`10660346
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`2.
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`Page
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`INTRODUCTION ............................................................................................................... 1
`LEGAL STANDARDS ....................................................................................................... 2
`FINJAN’S “STRONGEST CLAIM”—CLAIM 10 OF THE ʼ494
`PATENT—WAS MOOT FROM THE OUTSET .............................................................. 3
`Finjan’s Misstatements Of Law And Fact Concerning 35 U.S.C.
`A.
`§ 287 Warrant Sanctions. ........................................................................................ 3
`Finjan Argued In Bad Faith That It Provided Constructive
`1.
`Notice Of Its Infringement Claim Under 35 U.S.C. § 287(a). .................... 4
`Finjan Made False Statements Regarding Alleged Actual
`Notice. ......................................................................................................... 7
`Finjan’s Unsupported Damages Theories Warrant Sanctions ................................. 9
`B.
`FINJAN’S ALLEGATIONS ON CLAIM 1 OF THE ʼ780 PATENT WERE
`BOGUS ............................................................................................................................. 12
`Finjan Did Not Even Oppose Juniper’s Motion As To the
`1.
`SRX. .......................................................................................................... 13
`Finjan’s Infringement Theory For Sky ATP Was Based On
`An Unreasonable Interpretation Of The Claims. ...................................... 14
`Finjan Had No Legitimate Response To Juniper’s Section
`101 Defense. .............................................................................................. 16
`FINJAN’S OTHER FALSE STATEMENTS & UNREASONABLE
`LITIGATION CONDUCT DURING THE PATENT SHOWDOWN ............................. 17
`A.
`Finjan Filed A § 282 Objection Based On False Statements. ............................... 17
`B.
`Finjan Made Frivolous Privilege Claims During Discovery. ................................ 18
`CONCLUSION ................................................................................................................. 19
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`2.
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`3.
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`
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`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Amsted Indus. Inc. v. Buckeye Steel Castings Co.,
`24 F.3d 178 (Fed. Cir. 1994) ........................................................................................................5
`
`Anderson v. Asset Acceptance, LLC,
`2010 WL 1752609 (N.D. Cal. Apr. 29, 2010) .........................................................................2, 7
`
`Arctic Cat, Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ................................................................................................3, 4
`
`B.K.B. v. Maui Police Dep’t,
`276 F.3d 1091 (9th Cir. 2002), as amended (Feb. 20, 2002) .......................................................2
`
`Chambers v. NASCO, Inc.,
`501 U.S. 32 (1991) .......................................................................................................................2
`
`F.J. Hanshaw Enters., Inc. v. Emerald River Dev., Inc.,
`244 F.3d 1128 (9th Cir. 2001) ......................................................................................................2
`
`Finjan v. Blue Coat,
`879 F.3d 1299 (Fed. Cir. 2018) ............................................................................................10, 11
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. CV-13-03999-BLF (N.D. Cal.) ...........................................................................................15
`
`Funai Elec. Co., Ltd. v. Daewoo Elecs.,
`616 F. 3d 1357 (Fed. Cir. 2010) ...................................................................................................8
`
`Homkow v. Musika Rs., Inc.,
`2009 WL 721732 (S.D.N.Y. Mar. 18, 2009) .............................................................................16
`
`Intellectual Ventures I LLC v. Erie Indem. Co.,
`200 F. Supp. 3d 565 (W.D. Penn. 2016) ....................................................................................16
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`100 F. Supp. 3d 371 (D. Del. 2015), aff’d in relevant part, rev’d on other
`grounds, 838 F.3d 1307 (Fed. Cir. 2016) ...................................................................................16
`
`LaFarge Corp. v. No. 1 Contracting Corp.,
`2008 WL 2120518 (M.D. Pa. May 19, 2008), modified in part, 2008 WL
`3910673 (M.D. Pa. Aug. 20, 2008) ................................................................................13, 14, 15
`
`Lans v. Dig. Equip. Corp.,
`252 F.3d 1320 (Fed. Cir. 2001) ................................................................................................3, 4
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`Case 3:17-cv-05659-WHA Document 409 Filed 03/28/19 Page 5 of 25
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`Mark Indus., Ltd. v. Sea Captain’s Choice, Inc.,
`50 F.3d 730 (9th Cir. 1995) ..........................................................................................................2
`
`Maxwell v. J. Baker, Inc.,
`86 F.3d 1098 (Fed. Cir. 1996) ......................................................................................................4
`
`Nike, Inc. v. Wal-Mart Stores, Inc.,
`138 F.3d 1437 (Fed. Cir. 1998) ....................................................................................................4
`
`Phonometrics, Inc. v. Westin Hotel Co.,
`350 F.3d 1242 (Fed. Cir. 2003) ....................................................................................................3
`
`Raniere v. Microsoft Corp.,
`2016 WL 4626584 (N.D. Tex. Sept 2, 2016), aff’d, 887 F.3d 1298 (Fed. Cir.
`2018) .........................................................................................................................................2, 7
`
`Shaw Family Archives, Ltd. v. CMG Worldwide, Inc.,
`589 F. Supp. 2d 331 (S.D.N.Y. 2008) ........................................................................................15
`
`Symantec Corp. v. Finjan, Inc.,
`IPR2015-01892 ......................................................................................................................6, 12
`
`Symantec Corp. v. Zscaler, Inc.,
`2018 WL 1456678 (N.D. Cal. Mar. 23, 2018) ...........................................................................16
`
`U.S. Ethernet Innovations, LLC v. Acer, Inc.,
`2013 WL 4456161 (N.D. Cal. Aug. 16, 2013) .............................................................................3
`
`Viola Sportswear, Inc. v. Mimun,
`574 F. Supp. 619 (E.D.N.Y. 1983) .............................................................................................13
`
`Statutes
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`28 U.S.C. § 1927 ..........................................................................................................................3, 12
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`35 U.S.C. § 101 ......................................................................................................................2, 13, 16
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`35 U.S.C. § 282 ............................................................................................................................2, 17
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`35 U.S.C. § 287 ..........................................................................................................................1, 3, 4
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`35 U.S.C. § 287(a) ..........................................................................................................................3, 4
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`Other Authorities
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`Rule 30(b)(6) ....................................................................................................................................18
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`Case 3:17-cv-05659-WHA Document 409 Filed 03/28/19 Page 6 of 25
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`I.
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`MEMORANDUM OF POINTS AND AUTHORITIES
`INTRODUCTION
`This Court set forth the process for evaluating the first set of patent claims in this case during
`the Initial Case Management Conference. At that time, the Court instructed Finjan to pick its
`“strongest claim” and Juniper to select Finjan’s “weakest claim” for early summary judgment and,
`(if either party failed to obtain summary judgment) an expedited trial. Dkt. 44 (2/22/18 Hr’g Tr. at
`4-7). The Court later explained that, depending on which side prevailed on each claim, the outcome
`could “warrant an injunction or sanctions” and that “[t]he potential remedies [of an injunction or
`sanctions] will be litigated soon after the early motions for summary judgment are decided.” Dkt. 35
`(Order at 4). Litigation on the first round of claims in this Court is now complete, and Juniper
`prevailed on both Finjan’s strongest and weakest claims. In accordance with the procedure outlined
`by this Court, Juniper now brings this motion for sanctions on the first set of claims.
`Juniper brings this motion not merely because it prevailed on both Finjan’s strongest and
`weakest claims, but because Finjan was aware of the defects in its claims, yet continued to force
`Juniper to spend money defending them. For example:
`• Finjan’s claim on the ʼ494 Patent was dead on arrival because Finjan (a) filed suit after the
`ʼ494 Patent expired, but (b) had no good faith basis to seek pre-suit damages under 35 U.S.C.
`§ 287. At trial, Finjan’s arguments regarding constructive notice were directly contradicted
`by Finjan’s own prior representations to the USPTO, and the testimony Finjan put forward
`regarding actual notice was refuted by the recording of the call between Finjan and Juniper
`that Finjan attempted to misrepresent. Thus, Finjan’s “strongest” claim was moot from the
`outset.
`• Finjan repeatedly failed to set forth a factually and legally cognizable damages claim against
`Juniper. The Court gave Finjan multiple chances, but Finjan squandered each one by putting
`forward overreaching damages theories that violated controlling law.
`
`•
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`In its infringement contentions, Finjan asserted that Juniper’s SRX device alone infringed
`Claim 1 of the ʼ780 Patent. But after Juniper moved for summary judgment of non-
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`II.
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`infringement, Finjan could not even muster an opposition to Juniper’s motion with respect
`to the SRX alone.
`• Finjan’s infringement case on Claim 1 of the ʼ780 Patent was grounded on a claim-
`construction position that was squarely at odds with what it told the United States Patent and
`Trademark Office (“USPTO”) in order to get the patent in the first place. It was also
`inherently inconsistent with the position that Finjan took to try to save the patent from
`Juniper’s validity challenge under 35 U.S.C. § 101.
`• Finjan made numerous misrepresentations to Juniper and the Court on multiple occasions,
`resulting in an unnecessary multiplication of the proceedings. For example, Finjan made
`false statements regarding a number of “privilege” redactions to its documents and made
`additional false statements in its 35 U.S.C. § 282 motion during trial.
`LEGAL STANDARDS
`“Courts of justice are universally acknowledged to be vested, by their very creation, with
`power to impose silence, respect, decorum, in their presence, and submission to their lawful
`mandates.” Chambers v. NASCO, Inc., 501 U.S. 32, 43 (1991). The purpose of these inherent
`powers is to allow the federal courts to “manage their cases and courtroom effectively and to ensure
`obedience to their orders.” F.J. Hanshaw Enters., Inc. v. Emerald River Dev., Inc., 244 F.3d 1128,
`1136 (9th Cir. 2001). As such, district courts can order sanctions pursuant to their inherent powers
`to punish “willful abuse of the judicial process or bad faith conduct.” Mark Indus., Ltd. v. Sea
`Captain’s Choice, Inc., 50 F.3d 730, 732 (9th Cir. 1995). “Sanctions are available for a variety of
`types of willful actions, including recklessness when combined with an additional factor such as
`frivolousness, harassment, or an improper purpose.” B.K.B. v. Maui Police Dep’t, 276 F.3d 1091,
`1108 (9th Cir. 2002), as amended (Feb. 20, 2002). Under this standard, “misstatements of law and
`fact, coupled with an improper purpose, can be sanctioned under the inherent power of the court.”
`Anderson v. Asset Acceptance, LLC, 2010 WL 1752609, at *4 (N.D. Cal. Apr. 29, 2010). Parties
`that engage “in a pattern of obfuscation, offering inconsistent theories and arguments and promising
`to produce evidence that never materialized,” and that fail to seize on multiple opportunities to
`correct deficient claims, are also subject to sanctions under the Court’s inherent powers. Raniere v.
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`Microsoft Corp., 2016 WL 4626584, at *5 (N.D. Tex. Sept 2, 2016), aff’d, 887 F.3d 1298, 1302
`(Fed. Cir. 2018).
`Alternatively, under 28 U.S.C. § 1927, “[a]ny attorney or other person admitted to conduct
`cases in any court of the United States or any Territory thereof who so multiplies the proceedings
`in any case unreasonably and vexatiously may be required by the court to satisfy personally the
`excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.” The
`Federal Circuit has held that sanctions are warranted when a patentee “continues to litigate [its]
`case” despite “knowing that its claim could not meet the standard for infringement.” Phonometrics,
`Inc. v. Westin Hotel Co., 350 F.3d 1242, 1248 (Fed. Cir. 2003).
`III.
`FINJAN’S “STRONGEST CLAIM”—CLAIM 10 OF THE ʼ494 PATENT—WAS
`MOOT FROM THE OUTSET
`Finjan selected Claim 10 of the ʼ494 Patent as its strongest claim in this lawsuit. However,
`the ʼ494 Patent expired eight months before Finjan filed its complaint against Juniper. As a result,
`this claim was moot unless Finjan proved both (a) compliance with 35 U.S.C. § 287, which would
`entitle it to pre-suit damages; and (b) a cognizable damages theory. See Lans v. Dig. Equip. Corp.,
`252 F.3d 1320, 1328 (Fed. Cir. 2001) (affirming dismissal of patentee’s infringement claim because
`patentee failed to satisfy § 287 prior to expiration of the patent-in-suit). Finjan never provided
`evidence of either (much less both) of these requirements, and instead offered misstatements of law
`and fact in an attempt to manufacture a false damages claim. Finjan’s conduct warrants sanctions.
`A.
`Finjan’s Misstatements Of Law And Fact Concerning 35 U.S.C. § 287
`Warrant Sanctions.
`Under 35 U.S.C. § 287(a), “a patentee who makes or sells a patented article must mark his
`articles or notify infringers of his patent in order to recover damages.” Arctic Cat, Inc. v.
`Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1365 (Fed. Cir. 2017). A patentee may only
`recover damages “from the time when it either began marking its product in compliance with section
`287(a) [, constructive notice,] or when it actually notified [the accused infringer] of its infringement
`. . . .” U.S. Ethernet Innovations, LLC v. Acer, Inc., 2013 WL 4456161, at *5 (N.D. Cal. Aug. 16,
`2013) (quoting Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996)). “A patentee’s
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`licensees must also comply with § 287, because the statute extends to ‘persons making or selling
`any patented article for or under [the patentee].’” Arctic Cat, 876 F.3d at 1366. Once Juniper put
`Finjan on notice that Finjan had not complied with this necessary element of its claim, Dkt. 96-11
`at 2-3 (Unredacted Version at Dkt. 95-15), Finjan was required to establish that it satisfied § 287
`prior to expiration of the ʼ494 Patent, which occurred eight months before Finjan filed its Complaint.
`Arctic Cat, 876 F.3d at 1365; Lans, 252 F.3d at 1328 (affirming ruling that patentee had not stated
`an infringement claim because it failed to satisfy § 287 prior to expiration of the patent-in-suit).
`Finjan’s response demonstrated it lacked a good-faith basis to assert the ʼ494 Patent against Juniper.
`1.
`Finjan Argued In Bad Faith That It Provided Constructive Notice Of
`Its Infringement Claim Under 35 U.S.C. § 287(a).
`At trial, Finjan argued that it provided constructive notice to Juniper. See Dkt. 339 (Trial
`Tr. at 918:13-19, 924:1-18, 925:24-926:7). “In order to satisfy the constructive notice provision of
`the marking statute, [Finjan] must [show] that substantially all of the [embodying products] being
`distributed were marked, and that once marking began, the marking was substantially consistent and
`continuous.” Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998) (emphasis
`added). Further, with respect to its third-party licensees who sell products embodying the ʼ494
`Patent, Finjan had to show that it “made reasonable efforts to ensure compliance with the marking
`requirements.” Maxwell, 86 F.3d at 1111-12.
`It was undisputed that many of Finjan’s licensees sell products embodying the ʼ494 Patent.
`Indeed, Finjan identified at least four licensees that practice the ʼ494 Patent in proceedings before
`the PTAB, as shown in the following chart (see Trial Ex. 1760 (emphasis added)):
`Product
`Finjan Admission
`Websense
`“On March 18, 2014, Finjan asserted patent infringement of the ’494 Patent
`(id. at 57-58)
`against Websense, Inc. (‘Websense’). . . . In September of 2014, Websense,
`Inc. took a license to Finjan’s patent portfolio, including the ’494 Patent. . . .
`Websense uses the inventions disclosed in the ’494 Patent.”
`“Avast’s Endpoint Protection and its connection with Avast Research Labs to
`identify new malicious threats utilize the inventions disclosed in the ’494
`Patent . . . [t]he majority of [Avast’s] sales are related to the Endpoint
`Protection products and attributable to the invention of the ’494 Patent.”
`
`Avast
`(id. at 56)
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`Product
`F-Secure
`(id. at 57)
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`Proofpoint
`(id. at 58-60)
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`Finjan Admission
`“F-Secure’s multi-layered approach to security is comprised of five modules,
`each designed to address a particular aspect of the threat landscape and work
`together to provide a complete solution using the technology of the ’494
`Patent . . . Three of these modules are tied to the inventions disclosed in the
`’494 Patent.”
`“[I]n June of 2016, after the ‘494 Patent issued, Proofpoint and Finjan entered
`into a license agreement which included the ‘494 Patent and dismissed the
`litigation. . . . Proofpoint revenues for 2015 were $265.4 million. . . . The
`Proofpoint products practice the inventions disclosed in the ‘494 Patent and
`Proofpoint has obtained significant revenues from the sales of those products.”
`
`
`And more generally, Finjan represented to the PTAB that “[a]fter the ’494 issued, several licensees
`entered into license agreements, which included a license to the ’494 Patent, to avoid litigation and
`to obtain a license to continue to make, use, offer to sell, and sell products that embodied the
`inventions disclosed in the ‘494 Patent,” and that “[w]ithout a license to the ’494 Patent, the
`licensees would have lost business and revenues for its infringing products.” Id. at 55-56 (emphasis
`added).
`It is also undisputed that Finjan’s licensees do not mark their products with the ʼ494 Patent,
`and that Finjan makes no effort to ensure that its licensees who use the ʼ494 Patent mark their
`products with the ʼ494 Patent:
`[THE COURT:] As you sit here right now, can you identify a single product by any
`of those licensees that bears the marking of the ’494 patent? You can answer that
`yes or no.
`THE WITNESS: As I sit here, no.
`. . .
`BY MS. CARSON:
`Q. You don’t believe that any of Finjan’s licenses have marking provisions; correct?
`A. That is my understanding, that our agreements do not.
`Q. And, in fact, you’re not aware of any efforts by Finjan to monitor whether its
`licensees are marking their products with Finjan’s patents; correct?
`A. That is correct.
`
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`Dkt. 336 (Trial Tr. at 318:24-319:11).
`Because Finjan’s licensees using the ʼ494 Patent did not mark their products, Finjan has no
`viable constructive notice argument. Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178,
`184-88 (Fed. Cir. 1994) (patentee did not provide constructive notice because its licensees failed to
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`mark). Yet at trial, Finjan disputed this straightforward issue and attempted to disown its prior
`representations to the USPTO. Finjan insisted that there was no evidence that its licensees, from
`which it extracted millions of dollars in license payments, in fact practiced the ʼ494 Patent. Dkt.
`339 (Trial Tr. at 924:7-11) (“[ANDRE:] There’s no evidence in this case that other than [Finjan’s
`Mobile Vital Security] product, no other product practices ʼ494 other than Juniper’s infringing
`product. That’s the only evidence you have in this case. The only evidence you heard in this case,
`there’s two products that practice the ʼ494.”).
`Finjan’s counsel went so far as to argue in closing that Finjan’s statements to the USPTO
`were not evidence because they were made by a member of Finjan’s trial team, earning a rebuke
`from the Court:
`[ANDRE:] [Juniper] Counsel just showed you an allegation made by Mr. Hannah,
`my buddy James over here.
`. . .
`What Mr. Hannah says is not evidence.
`. . .
`THE COURT: Mr. Andre, I think you might want to correct something. It’s true, not
`a word that’s said by the lawyers in this courtroom is evidence. But that document
`that was submitted in the PTO by Mr. Hannah is evidence. It was submitted on behalf
`of your client as a – and it serves as what we call a party admission. So I think your
`statement that that is not evidence is incorrect.
`
`Dkt. 339 (Trial Tr. at 958:16-17, 959:5-11).
`Over the past decade, Finjan has sued at least 20 companies for patent infringement while
`the ʼ494 Patent has been the subject of eight inter partes review proceedings. In its proceedings
`before the USPTO, Finjan expressly relied on it licensees’ sales as evidence of the “commercial
`success” of products embodying the ʼ494 Patent (including, specifically, Claim 10). Trial Ex. 1760
`at 60. In those proceedings, Finjan admitted that its licensees’ products “embodied the inventions
`disclosed in the ’494 Patent.” Id. at 55-56; see also Dkt. 126-16 (Symantec Corp. v. Finjan, Inc.,
`IPR2015-01892, Patent Owner’s Resp.). Before this Court, however, Finjan tried to take the exact
`opposite position—because that was the only way it could argue that its “marking obligation was
`complete.” Dkt. 339 (Trial Tr. at 924:14).
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`Finjan’s practice of taking starkly conflicting positions from one proceeding to the next is
`deliberate and carefully calculated to serve its imminent interests. Finjan should be sanctioned for
`its attempts to game the legal system. See Raniere, 2016 WL 4626584, at *5; Anderson, 2010 WL
`1752609, at *4.
`2.
`Finjan Made False Statements Regarding Alleged Actual Notice.
`Finjan also made false statements about the actual notice it allegedly provided Juniper
`concerning its infringement claim for the ʼ494 Patent. For actual notice, Finjan relies on a November
`2015 call between John Garland of Finjan and Scott Coonan of Juniper. Finjan misrepresented the
`content of that call on a number of occasions before Finjan learned that Mr. Coonan had actually
`(and legally) recorded that call.
`In Finjan’s initial interrogatory responses, Finjan stated that Mr. Garland identified Juniper’s
`Sky ATP product as infringing Finjan’s patents during his November 2015 call with Mr. Coonan.
`Dkt. 113-2 (Finjan’s Second Suppl. Resp. to Interrog. No. 6 at 5) (Unsealed Version at Dkt. 120-1).
`Mr. Garland also testified in his May 2018 deposition that he identified Sky ATP on his call with
`Mr. Coonan, either as it relates to the ʼ494 Patent or the ʼ154 Patent. Ex. A (5/24/18 Garland Dep.
`at 217:9-17).
`The recording of this call demonstrated that these sworn interrogatory responses and
`testimony are false. The recording provides concrete evidence that Mr. Garland did not mention
`Sky ATP at all during the call. See Trial Exs. 256, 257. Indeed, after learning that the call was
`recorded, Mr. Garland changed his testimony and admitted that he never mentioned Sky ATP on
`the call. Ex. B (11/2/2018 Garland Dep. at 315:19-22) (“Q: You never mentioned Sky ATP on the
`call. Is that correct? . . . THE WITNESS: I don’t mention Sky ATP.”); see also Dkt. 337 (Trial Tr.
`at 588:13-16) (“Q. And you now know that you’re mistaken and that you did not mention Sky ATP;
`is that right? A. I only know I’m mistaken because the call -- yeah, the call is recorded and taped
`and transcribed”). Remarkably, Mr. Garland further admitted on cross-examination at trial that, if
`it weren’t for the recording, he would still be testifying that he identified Sky ATP on the call:
`[Q.] I’m asking you about whether you mentioned Sky ATP, and you swore and you
`took an oath and you said you had. That’s correct isn’t it?
`A. I believe -- I believed I had, yes.
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`Q. That’s right. And if we did not have that transcript, that is still the testimony you
`would be giving today; isn’t that right?
`A. That’s correct.
`Dkt. 337 (Trial Tr. at 588:23-589:5).
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`Mr. Garland attempted to justify this inconsistency by explaining that in his mind, the
`“advanced malware module” is Sky ATP. Id. at 589:9-10 (“Again, I think advanced malware
`module in my mind is Sky ATP.”). According to Finjan, if Mr. Garland thought about Sky ATP in
`his mind when speaking with Mr. Coonan by phone, the call was sufficient to provide actual notice
`to Juniper that its Sky ATP product was being accused of infringement. But this is nonsense; there
`is no legal or logical support for Finjan’s “telepathic notice” theory. In fact, the Federal Circuit has
`explained that “[t]o serve as actual notice, a letter must be sufficiently specific to support an
`objective understanding that the recipient may be an infringer.” Funai Elec. Co., Ltd. v. Daewoo
`Elecs., 616 F. 3d 1357, 1373 (Fed. Cir. 2010) (emphasis added). Here, where “advanced malware
`modules” are references to on-box features of the SRX product, there was no semblance of merit to
`Finjan’s position that Mr. Garland’s reference to “advanced malware modules” indicates Juniper’s
`Sky ATP product. See Trial Ex. 345 at 2 (SRX data sheet identifying “advanced malware” as an
`on-box feature of the SRX product).
`Additional evidence further belies Mr. Garland’s assertion that he was somehow implicitly
`identifying Sky ATP on the call. In Mr. Garland’s follow-up email to Juniper after his November
`2015 call with Mr. Coonan, Mr. Garland states that Finjan sought to discuss in the call “the current
`and ongoing use of Finjan’s patents by Juniper’s SRX series services gateways next generation anti-
`threat firewall.” Dkt. 337 (Trial Tr. at 598:24-599:12) (quoting Trial Ex. 343). As Mr. Garland
`admits, the follow-up email makes no mention of Juniper’s Sky ATP product. Id. at 598:24-599:15.
`In sum, Finjan never had a good faith basis to contend that it provided either constructive or
`actual notice of its infringement claim under the ʼ494 Patent, yet it advanced these theories
`throughout the case, up to and including in closing argument. Its constructive notice argument
`directly contradicted representations it made to the USPTO in defending the validity of Claim 10,
`and its actual notice argument was based on demonstrably false testimony from its employee.
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`Case 3:17-cv-05659-WHA Document 409