Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 1 of 21
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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 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.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`FINJAN, INC., a Delaware Corporation,
`)
`Case No. 3:17-cv-05659-WHA
`
`)
`
`DEFENDANT JUNIPER NETWORKS,
`Plaintiff,
`)
`INC.’S REPLY IN SUPPORT OF ITS
`
`)
`MOTION FOR SUMMARY JUDGMENT
`vs.
`
`)
`REGARDING CLAIM 9 OF U.S. PATENT
`
`)
`NO. 6,804,780
`JUNIPER NETWORKS, INC., a Delaware
`)
`
`Corporation,
`)
`
`)
`Date:
`
`May 2, 2019
`)
`Time:
`8:00 a.m.
`)
`Judge:
`William Alsup
`)
`12, 19th Floor
`Courtroom:
`
`
`
`Defendant.
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10663557
`
`
`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
`
`
`
`REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
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`Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 2 of 21
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`
`
`I.
`
`II.
`
`III.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ................................................................................................................. 1
`
`FINJAN’S CLAIM CONSTRUCTION ARGUMENTS REGARDING THE
`“FETCHING” STEP ARE CONTRARY TO THE CLAIM LANGUAGE. ........................ 2
`
`FINJAN HAS NOT RAISED A TRIABLE ISSUE OF FACT ON
`INFRINGEMENT. ................................................................................................................ 4
`
`A.
`
`B.
`
`Finjan Does Not Dispute That Juniper Is Entitled To Summary
`Judgment On Finjan’s Original “Dropped File” Theory. .......................................... 4
`
`Finjan’s New Hash As-Is Theory Fails As A Matter Of Law. .................................. 4
`
`1.
`
`2.
`
`3.
`
`Archive Files Do Not Meet Claim Element 9(a) As A Matter
`Of Law. .......................................................................................................... 5
`
`There Is No Evidence That The SmartCore Fetches
`Anything. ....................................................................................................... 6
`
`There Is No Evidence That SmartCore Meets The Hashing
`Limitation. ..................................................................................................... 7
`
`IV.
`
`CLAIM 9 IS UNPATENTABLE UNDER 35 U.S.C. § 101 ................................................ 9
`
`A.
`
`B.
`
`Claim 9 Is Abstract. ................................................................................................... 9
`
`Finjan’s Own Admissions Regarding Claim Scope Demonstrate
`That There Are No Disputed Facts Regarding The Inventive
`Concept Prong. ........................................................................................................ 11
`
`V.
`
`THE UNDISPUTED FACTS SHOW FINJAN FAILED TO COMPLY
`WITH § 287 ........................................................................................................................ 12
`
`A.
`
`B.
`
`The Undisputed Facts Show that Finjan Failed to Provide Actual
`Notice. ..................................................................................................................... 13
`
`The Undisputed Facts Show that Finjan Failed to Provide
`Constructive Notice. ................................................................................................ 14
`
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10663557
`
`
`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
`
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`Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 3 of 21
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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) ......................................................................................................13
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018) ..................................................................................................10
`
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ............................................................................................14, 15
`
`Berkheimer v. HP Inc.,
`890 F.3d 1369 (Fed. Cir. 2018) ..................................................................................................11
`
`Blitzsafe Tex., LLC v. Honda Motor Co., Ltd.,
`2017 U.S. Dist. LEXIS 58358 (E.D. Tex. Jan. 26, 2017) ..........................................................15
`
`Blue Spike LLC v. Google Inc.,
`2015 WL 5260506 (N.D. Cal. Sept. 8, 2015) .............................................................................12
`
`Digitech Image Techs., LLC v. Elecs. For Imaging, Inc.,
`758 F.3d 1344 (Fed. Cir. 2014) ..................................................................................................10
`
`Eidos Display, LLC v. Chi Mei Innolux Corp.,
`2018 WL 1156284 (E.D. Tex. Mar. 5, 2018) .............................................................................13
`
`Finjan Software, Ltd. v. Secure Comput. Corp.,
`1:06-cv-00369-GMS, Dkt. 226 (D. Del. Mar. 14, 2008) ...........................................................15
`
`Finjan, Inc. v. Bitdefender Inc.,
`No. 4:17-cv-04790-HSG, Dkt. 101 (N.D. Cal. Feb. 14, 2019) ....................................................3
`
`Finjan, Inc. v. Bitdefender Inc.,
`No. 4:17-cv-04790-HSG (N.D. Cal. Feb. 4, 2019) ..................................................................2, 3
`
`Finjan, Inc. v. Cisco, Inc.,
`No. 5:17-cv-00072-BLF, Dkt. 134 (N.D. Cal. July 23, 2018) .....................................................4
`
`Finjan, Inc. v. Sophos, Inc.,
`3:14-cv-01197-WHO, Dkt. 398 (N.D. Cal. Sept. 21, 2016) ......................................................15
`
`Finjan, Inc. v. Sophos, Inc.,
`3:14-cv-01197-WHO (N.D. Cal.), Dkt. 128 ..............................................................................14
`
`Intellectual Ventures I LLC v. Capital One Fin. Corp.,
`850 F.3d 1332 (Fed. Cir. 2017) ..................................................................................................11
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10663557
`
`
`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
`
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`Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 4 of 21
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`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) .............................................................................10, 11
`
`Iron Oak Techs., LLC v. Fujitsu Am., Inc.,
`2018 WL 6593709 (N.D. Tex. Dec. 14, 2018) ...........................................................................13
`
`Johnstech Int’l Corp. v. JF Microtech SDN BHD,
`2016 WL 4242220 (N.D. Cal. Aug. 11, 2016) ...........................................................................13
`
`Landmark Land, Inc. v. Fed. Deposit Ins. Corp.,
`256 F.3d 1365 (Fed. Cir. 2001) ..................................................................................................13
`
`Lans v. Digital Equip. Corp.,
`252 F.3d 1320 (Fed. Cir. 2001) ..................................................................................................13
`
`Microsoft Corp. v. GeoTag, Inc.,
`817 F.3d 1305 (Fed. Cir. 2016) ..................................................................................................15
`
`Qualcomm Inc. v. Apple Inc.,
`2019 WL 448278 (S.D. Cal. Feb. 5, 2019) ..........................................................................13, 15
`
`Realtime Data, LLC v. Actian Corp.,
`2017 U.S. Dist. LEXIS 56950 (E.D. Tex. Apr. 4, 2017) ...........................................................15
`
`Roche Diagnostics Operations, Inc. v. Lifescan Inc.,
`660 Fed. Appx. 932 (Fed. Cir. 2016) ...........................................................................................3
`
`SAP Am., Inc. v. Investpic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018) ..................................................................................................11
`
`Schoell v. Regal Marine Industries, Inc.,
`247 F.3d 1202 (Fed. Cir. 2001) ....................................................................................................9
`
`Sealant Sys. Int’l, Inc. v. TEK Glob., S.R.L.,
`616 F. App’x 987 (Fed. Cir. 2015) .............................................................................................13
`
`Semcon IP Inc. v. Huawei Device USA Inc.,
`2017 WL 6343771 (E.D. Tex. Dec. 12, 2017) ...........................................................................14
`
`Smart Systems Innovations, LLC v. Chicago Transit Authority,
`873 F.3d at 1374 (Fed. Cir. 2017) ..............................................................................................12
`
`SRI Int’l, Inc. v. Adv. Tech. Labs., Inc.,
`127 F.3d 1462 (Fed. Cir. 1997) ..................................................................................................13
`
`U.S. Ethernet Innovations, LLC v. Acer, Inc.,
`2013 WL 4456161 (N.D. Cal. Aug. 16, 2013) ...........................................................................15
`
`10663557
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`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 5 of 21
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`
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`Statutes
`
`35 U.S.C. § 101 ........................................................................................................................1, 9, 12
`
`35 U.S.C. § 287 ......................................................................................................................1, 12, 15
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`10663557
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`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 6 of 21
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`I.
`
`INTRODUCTION
`As this Court is aware, the alleged invention of the ’780 Patent is a simple one: to fetch any
`components missing from a Downloadable before hashing it so that the resulting ID is the same
`regardless of whether the components are included in the Downloadable or only referenced.
`Creating a unique, reproducible ID for a Downloadable can be difficult because the same
`Downloadable can be transmitted either (1) self-contained, including all components required to
`execute the file, or (2) in separate pieces, where some of the required components are merely
`referenced such that they can be “fetched” at a later time when the system executes the file. Systems
`that hash files as they are received may not recognize the same Downloadable when it is sent in
`these different ways, as the resulting hash will vary depending on which components are included
`and which are merely referenced. The ’780 Patent addresses this problem by waiting to perform the
`hashing function until the system has examined the Downloadable, determined if there are any
`referenced (missing) components, and fetched those components. This ensures that the hash value
`for the Downloadable will always be the same, regardless of how it is sent.
`The problem for Finjan is that Juniper’s systems do not operate this way. Rather, Juniper’s
`products only hash files as they are received; they do not determine if there are missing components
`in those files, nor do they fetch any components before hashing the file. If a Downloadable contains
`a reference to a software component instead of the actual component, Juniper’s system will simply
`hash the file as-is without the missing component. In short, Juniper’s systems only hash what they
`receive, they do not “fetch,” as required by the ’780 Patent.
`Finjan now knows that Juniper’s systems do not fetch anything before hashing, so Finjan
`has abandoned the theory in its infringement contentions (which relies on “dropped files”) and is
`instead trying to read the “fetching” requirement out of Claim 9. Under Finjan’s new theory, a
`system that simply hashes files as they are received—and that does no additional fetching of files—
`can nonetheless infringe Claim 9. Finjan’s effort to read the alleged point of novelty out of Claim
`9 is not only improper, but it would render the claim invalid pursuant to § 101. Moreover, Finjan
`did not provide notice to Juniper or Cyphort that it believed the ATP Appliance infringed the ’780
`Patent before the patent expired, and is thus precluded from obtaining damages under § 287.
`
`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10663557
`
`
`
`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
`
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 7 of 21
`
`II.
`
`FINJAN’S CLAIM CONSTRUCTION ARGUMENTS REGARDING THE
`“FETCHING” STEP ARE CONTRARY TO THE CLAIM LANGUAGE.1
`Apparently recognizing that Juniper’s products do not operate in the manner described in
`Claim 9, Finjan proposes a construction of the “fetching” step that reads it out of the claim. Juniper’s
`products simply hash files as they are received; they do not “fetch” or “retrieve” any components
`referenced within the file. Because of this, Finjan now claims that “a Downloadable that includes
`one or more reference to software components” covers a Downloadable that has scripts/software
`embedded within it (as opposed to just referenced), and that “fetching” such embedded components
`involves nothing more than sending the file as-is from a device’s interface to the component that
`hashes it. Opp. at 4-9. Finjan’s interpretation is contrary to the plain language, as the Court
`previously recognized. Dkt. 371-18 at 69 (commenting “that’s not a fetched if it’s already in there
`when it comes into the system” and “[y]our patent requires that you do two steps. It’s – well, first
`you do the – obtain the downloadable, and then you go and fetch something to make it work”).2
`To try to support its unreasonably broad interpretation, Finjan argues that the patent’s
`statement that the ID Generator can “prefetch all components embodied in or identified by the code”
`encompasses situations where the components are embedded or already included in the
`Downloadable because it uses the term “embodied.” Opp. at 5. But “embodied” is not equivalent
`to “embedded.” See Dkt. 371 at 7. Even if it were, Finjan’s own expert admitted that “embodied”
`is an alternative to “referenced,” and the two are not synonymous. Dkt. 392-5 at ¶ 43 (opining that
`the specification “makes clear that components can be ‘embodied in’ – that is, included in – the
`Downloadable, or alternatively identified by (for example through a reference) the code”); Ex. 1
`(Mitzenmacher) at 18:12-16 (“Q. Is embodied in synonymous with referenced? [Objection] A. I
`don’t think I would consider those terms generally synonyms.”). Claim 9 is specifically limited to
`
`
`1 Finjan objects to, but adopts the Court’s prior construction of the “hashing” limitation. Opp. at 3-
`4. Finjan’s assertion that the Court’s construction is contrary to the holding of other courts is not
`accurate. The Bitdefender court agreed that “the claimed ‘hashing function’ must generate a single
`(unique) Downloadable ID.” Dkt. 101 at 14, Finjan, Inc. v. Bitdefender Inc., No. 4:17-cv-04790-
`HSG (N.D. Cal. Feb. 4, 2019). In finding that the claimed “hashing function” must “operate[] across
`the combination of a Downloadable together with its fetched software components to transmute the
`Downloadable and its fetched software components into a unique and reproducible ID,” the
`Bitdefender court found support from Blue Coat I, just as this Court did. See id. at 15.
`2 All emphasis in this Reply is added unless expressly indicated otherwise.
`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
`
`10663557
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`Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 8 of 21
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`situations where the components are “referenced” in a Downloadable, not where they are
`“embodied.” Thus, to the extent “embodied in” is distinct from “referenced,” it is unclaimed subject
`matter. See Roche Diagnostics Operations, Inc. v. Lifescan Inc., 660 Fed. Appx. 932, 937-38 (Fed.
`Cir. 2016) (construing terms in a manner that did not encompass “unclaimed embodiments”).
`Finjan’s attempt to point to .jar files is equally unavailing. Opp. at 5-6. Finjan argues that
`the patent’s identification of a “Java Applet” as a “Downloadable” is evidence that Claim 9
`encompasses Downloadables where the components are already included in the Downloadable
`because Java Applets can be distributed using a .jar file. Id. But the patent states that the Applet is
`the Downloadable, not the .jar. In fact, the patent does not mention .jar files at all. This makes
`sense, as .jar files are not “executable application programs” and are therefore not Downloadables.
`Rather, a .jar is simply “an archive of files used by a Java applet” that allows an Applet to be sent
`with the “class files, as well as images, sounds, and other resources” that it needs, all in one package.
`Dkt. 129-12 at 99-100; Dkt. 371-6 (File History) (“for a Java applet, the present invention fetches
`Java classes identified by the applet bytecode, and generates the Downloadable ID from the applet
`and the fetched Java classes.”). The fact that these other files are sent in an archive with the Applet
`does not change the fact that they are external to the Applet—i.e., external to the “Downloadable.”
`Finjan’s arguments concerning HTML files are also meritless. While it is true that the patent
`identifies HTML files as Downloadables, Claim 9 does not encompass all Downloadables, rather it
`is limited to Downloadables that “include[] one or more references to software components required
`to be executed by the Downloadable.” And, where an HTML file has a script (or other software
`component) embedded within it, that script is included in the file—not referenced.3 Indeed, Finjan
`offers no explanation of how one would “fetch” a script that is already included in the HTML file.
`Finjan’s citation to the Bitdefender case is not relevant because that Court addressed only
`the term “fetching,” not the complete claim term “fetches at least one software component identified
`by the one or more references” that is at issue here. See Finjan, Inc. v. Bitdefender Inc., No. 4:17-
`
`
`3 Finjan’s argument regarding HTML files is also technically incorrect. Contrary to what Finjan
`states, the “tags” for embedded and referenced scripts are different. Compare Dkt. 129-11 at 15
`(opening tag when script is embedded:
`), with id. (opening tag when
`script is external:
`)
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`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
`
`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
`
`

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`Case 3:17-cv-05659-WHA Document 417 Filed 04/05/19 Page 9 of 21
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`cv-04790-HSG, Dkt. 101 at 17 (N.D. Cal. Feb. 14, 2019). And Finjan’s citation to the Cisco case
`is even less relevant because the Cisco court addressed the “hashing” limitation, not the “fetching”
`limitation; that court’s decision has nothing to do at all with whether the “fetching” step
`encompasses software components that are already included within the obtained Downloadable. See
`Finjan, Inc. v. Cisco, Inc., No. 5:17-cv-00072-BLF, Dkt. 134 at 23-26 (N.D. Cal. July 23, 2018).
`Finally, Finjan tries to walk away from the statements it made during prosecution of the
`patent by claiming that those statements do “not apply specifically to the claims at issue.” Opp. at
`7-8. But contrary to Finjan’s argument, the statements relied on by Juniper were part of Finjan’s
`remarks in response to the Examiner’s rejection of original claim 11, which is now Claim 9. Dkt
`371-6 at 4, 6-8. Finjan’s attempt to disown those statements now is inappropriate.
`III.
`FINJAN HAS NOT RAISED A TRIABLE ISSUE OF FACT ON INFRINGEMENT.
`A.
`Finjan Does Not Dispute That Juniper Is Entitled To Summary Judgment On
`Finjan’s Original “Dropped File” Theory.
`Finjan does not contest that Juniper is entitled to summary judgment on the “dropped file”
`theory that Finjan advanced in its contentions for all three accused products. Opp. at 3-4. This was
`the theory Juniper addressed in its Motion, and Finjan concedes that it is no longer viable in light of
`the Court’s construction of the “hashing” limitation. Id. While Finjan reserves its rights if the
`Court’s construction is reversed, Finjan wholly fails to respond to Juniper’s other non-infringement
`arguments, which do not hinge on the “hashing” limitation. See Dkt. 370-4 at 8-16. Because Finjan
`fails to identify a genuine dispute of material fact (or even a response at all) with respect to the
`arguments in Juniper’s opening brief, the Court should grant Juniper’s motion as to all products.
`B.
`Finjan’s New Hash As-Is Theory Fails As A Matter Of Law.
`Recognizing that its original theory is foreclosed by the Court’s construction of the
`“hashing” limitation, Finjan concocts a new infringement theory regarding archive files that was not
`properly disclosed in its contentions. See Dkt. 371-9 (Infringement Contentions) at 7-13 (disclosing
`only “dropped file” theory). In particular, Finjan now argues that when the ATP Appliance receives
`an archive file and hashes it as-is, that constitutes hashing the file “together with” its fetched
`components (i.e., the files contained within an archive file). Opp. at 16-19. Finjan should not be
`permitted to raise new infringement arguments for the first time in its Opposition. To the extent
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`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
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`that the Court nevertheless considers this new theory, it fails as a matter of law. Indeed, while Finjan
`tries to manufacture factual disputes by presenting its new theory in a convoluted manner, it boils
`down to the simple argument that hashing certain types of files exactly how they are received by the
`system—i.e., without fetching anything at all—is sufficient to meet the claim. Finjan’s theory is
`fatally flawed for at least the following reasons:
`• An archive file (e.g., a .zip or .jar) is not a “Downloadable”; nor does it include
`references to any software components required to be executed.
`• The alleged ID Generator (i.e., the SmartCore) does not fetch any files, much less
`software components that are referenced by a file.
`• ATP Appliance does not generate a single hash value that identifies the contents of
`both a file and any fetched components.
`1.
`Archive Files Do Not Meet Claim Element 9(a) As A Matter Of Law.
`Finjan’s new theory is based on the premise that archive files, such as .zip and .jar files, are
`“Downloadables.” Opp. at 16-17. But it is undisputed that archive files are not actually
`“Downloadables.” This is because archive files are not “executable application programs”—nor
`do they “run” on a destination computer, as required by the parties’ agreed construction (i.e., “an
`executable application program, which is downloaded from a source computer and run on the
`destination computer”). Rather, an archive file simply collects other files within it. Dkt. 370-6
`(Rubin) ¶ 25; Ex. 2 (7/3/18 Mitzenmacher) at 59:19-20 (“ZIP files would typically not be
`Downloadables.”); id. at 59:24-60:2; Dkt. 129-12 (“‘JAR’ stands for Java Archive, and a JAR file
`is just that: an archive of files used by a Java applet.”).
`Even if archive files could be considered Downloadables, however, the undisputed facts
`demonstrate that they do not contain “references to software components required to be executed
`by” the archive file. Finjan claims that the files contained within an archive file meet this limitation.
`Id. at 16-19. But Finjan admits that “[a] referenced software component is a component identified
`by the Downloadable that it needs in order to run properly.” Opp. at 15. And, while the files
`contained within an archive file may be executable, the archive file is not itself executable. Thus,
`the files contained within the archive file are not needed by the archive file to run properly. They
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`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
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`are simply separate files that have been compressed and transmitted together in the archive file.4
`Because one does not actually “execute” or “run” an archive file, the files contained within it cannot
`possibly be “software components required to be executed” by the archive file. Thus, Finjan’s
`theory involving archive files is dead on arrival.
`As an alternative to its new archive file theory, Finjan claims that an HTML or PDF can
`meet element 9(a) when it contains embedded scripts. Opp. at 15; Ex. 1 (Mitzenmacher) at 32:13-
`25, 38:9-17. This proposition fails from the outset, however, as a file that contains embedded
`software does not “include one or more references to software components.” Rather, it contains the
`actual software components. Finjan also fails to explain how the ATP Appliance’s processing of
`such files would satisfy element 9(b). Opp. at 16-19. The claim requires that the ID generator
`“fetch” at least one component identified by the references. But it is nonsensical to fetch a
`component that is already embedded with the file. Finjan’s alternative HTML/PDF theory thus
`effectively reads out the “fetching” step, which is wholly improper.
`2.
`There Is No Evidence That The SmartCore Fetches Anything.
`Finjan’s new theory also fails because the undisputed evidence shows that the alleged ID
`generator (i.e., the SmartCore) does not “fetch.” Because the ATP Appliance operates in a
`fundamentally different way than the system of Claim 9—i.e., it simply hashes whatever it receives
`without fetching any software components—Finjan was forced to argue that the alleged “fetching”
`occurs when the collector sends a file to the SmartCore for processing exactly as it is received. Opp.
`at 17; Ex. 1 (Mitzenmacher) at 44:2-16.5 This is obviously not what it means to “fetch” referenced
`software components. But even if it were, there is an additional, fundamental problem with Finjan’s
`argument: the SmartCore does not fetch files from the collector, but instead merely receives them.
`As Finjan recognizes, the collectors push files to the SmartCore using an “HTTP Rest API.”
`Ex. 1 (Mitzenmacher) at 56:21-25. To do this, the collectors use a “submit_sample” command that
`posts a file to an HTTP endpoint in the SmartCore called the “central manager.” See Jas ¶ 3; see
`
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`4 Indeed, as Finjan acknowledges, a .jar is simply an archive for Java Applets. It is used to transmit
`multiple files—a main class and other classes that are needed to run the main class. Opp. at 17-18
`5 In its Opposition, Finjan seems to suggest that the alleged “fetching” could also occur when an
`archive file’s components are exposed or extracted. But Dr. Mitzenmacher confirmed that this was
`not part of his infringement analysis. See Ex. 1 at 49:3-10.
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`JUNIPER’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT REGARDING CLAIM 9
`(Case No. 3:17-cv-05659-WHA)
`
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`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
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`also Ex. 3 at 552-564; Ex. 4 at 19, 22-34; Ex. 5 at 229-259. Through this process, the SmartCore is
`able to receive the transmitted file data, but does not retrieve anything on its own. Id. In other
`words, the SmartCore does not even “fetch” the files, much less any software components
`referenced in the files. Finjan’s own evidence confirms this. For example, Finjan’s Ex. 18 states
`that “the Cyphort Traffic Collectors” will “extract[] and send[] objects to the Core.” Dkt. 392-36
`at 129. Tellingly, neither Finjan nor Dr. Mitzenmacher cite a shred of source code to evidence the
`SmartCore’s alleged “fetching” capability. See Ex. 1 (Mitzenmacher) at 24:13-19, 25:24-26:2, 29:5-
`18. Nor do they identify a single document stating that the SmartCore fetches or retrieves files.
`Thus, Finjan’s theory fails even under its own claim construction for “fetching,” which requires that
`the ID Generator “retrieve” files with embedded software components.6
`3.
`There Is No Evidence That SmartCore Meets The Hashing Limitation.
`With regard to the hashing limitation, Finjan merely points to evidence that the ATP
`Appliance calculates a SHA1, SHA256 and MD5 for each file it receives. Opp. at 16-17. But
`because the ATP Appliance simply hashes files as they are received—without fetching anything—
`it follows that these hashes do not meet the requirement of hashing a file “together with” any fetched
`components; nor do they represent a single hash value that identifies the contents of both the
`Downloadable and the fetched components. In a