Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 1 of 9
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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 1 of 9
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`EXHIBIT 11
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`

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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 2 of 9
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`From: Carson, Rebecca <RCarson@irell.com>
`Sent: Sunday, November 25, 2018 10:15 AM
`To: Manes, Austin <AManes@KRAMERLEVIN.com>
`Cc: Glucoft, Josh <JGlucoft@irell.com>; Andre, Paul <PAndre@KRAMERLEVIN.com>; Caire, Yuridia
`<YCaire@KRAMERLEVIN.com>; Hannah, James <JHannah@KRAMERLEVIN.com>; Hedvat, Shannon H.
`<SHedvat@KRAMERLEVIN.com>; Kastens, Kris <KKastens@KRAMERLEVIN.com>; Kobialka, Lisa
`<LKobialka@KRAMERLEVIN.com>; Lee, Hannah <HLee@KRAMERLEVIN.com>; Lee, Michael H.
`<MHLee@KRAMERLEVIN.com>; Martinez, Cristina <CMartinez@KRAMERLEVIN.com>; Nguyen,
`Stephanie <SNguyen@KRAMERLEVIN.com>; Xu, Linda <LXu@KRAMERLEVIN.com>; Kagan, Jonathan
`<JKagan@irell.com>; Curran, Casey <ccurran@irell.com>; Song, Sharon <ssong@irell.com>; Wang, Kevin
`<kwang@irell.com>; Holland, Eileen <EHolland@irell.com>
`Subject: RE: [EXTERNAL] RE: Objections and Exhibit List
`
`Hi Austin,
`
`Your quotation of the “may give notice” language ignores the rest of the statute. Section 287 makes
`clear that it only applies to patentees who make or sell patented articles in the United States (or who
`have licensees who do so). Thus, the actual notice requirement only comes into play if the patentee (or
`its licensees) sell such products and did not mark them. The full language of the statute is:
`
`(a) Patentees, and persons making, offering for sale, or selling within the United States any
`patented article for or under them, or importing any patented article into the United States,
`may give notice to the public that the same is patented, either by fixing thereon the word “patent” or
`the abbreviation “pat.”, together with the number of the patent, or by fixing thereon the word “patent”
`or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the
`public without charge for accessing the address, that associates the patented article with the number
`of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the
`1
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`

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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 3 of 9
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`package wherein one or more of them is contained, a label containing a like notice. In the event of
`failure so to mark, no damages shall be recovered by the patentee in any action for
`infringement, except on proof that the infringer was notified of the infringement and
`continued to infringe thereafter, in which event damages may be recovered only for
`infringement occurring after such notice. Filing of an action for infringement shall constitute such
`notice.
`
`If Finjan is conceding that it had to provide Juniper with actual notice (which it seems like it is), then I
`don’t see how it is not also conceding that it or its licensees sold patented articles that were not
`marked. If you are still having trouble understanding the statute, I’d be happy to jump on a call to
`explain it to you.
`
`Regards,
`Rebecca
`
`From: Manes, Austin [mailto:AManes@KRAMERLEVIN.com]
`Sent: Sunday, November 25, 2018 9:52 AM
`To: Carson, Rebecca
`Cc: Glucoft, Josh; ~Andre, Paul; ~Caire, Yuridia; ~Hannah, James; ~Hedvat, Shannon; ~Kastens,
`Kristopher; ~Kobialka, Lisa; ~Lee, Hannah; ~Lee, Michael; ~Martinez, Cristina; ~Nguyen, Stephanie;
`~Xu, Linjun; Kagan, Jonathan; Curran, Casey; Song, Sharon; Wang, Kevin; Holland, Eileen
`Subject: RE: [EXTERNAL] RE: Objections and Exhibit List
`
`Rebecca,
`
`Section 287 states only that a patentee “may give notice to the public” by marking. It does not require
`marking and your misstatements about an obligation to mark are incorrect.
`
`If you have any caselaw or other legal authority to the contrary, please let me know. So far you’ve
`based your position only on Section 287 and it appears your interpretation is contrary to the plain
`language of the statute.
`
`Austin
`
`Austin Manes
`Associate
`
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road, Menlo Park, California 94025
`T 650.752.1718
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain
`information that is confidential, privileged or legally protected. Any unauthorized use or dissemination of this communication is
`strictly prohibited. If you have received this communication in error, please immediately notify the sender by return e-mail
`message and delete all copies of the original communication. Thank you for your cooperation.
`
`2
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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 4 of 9
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`From: Carson, Rebecca <RCarson@irell.com>
`Sent: Sunday, November 25, 2018 8:42 AM
`To: Manes, Austin <AManes@KRAMERLEVIN.com>
`Cc: Glucoft, Josh <JGlucoft@irell.com>; Andre, Paul <PAndre@KRAMERLEVIN.com>; Caire, Yuridia
`<YCaire@KRAMERLEVIN.com>; Hannah, James <JHannah@KRAMERLEVIN.com>; Hedvat, Shannon H.
`<SHedvat@KRAMERLEVIN.com>; Kastens, Kris <KKastens@KRAMERLEVIN.com>; Kobialka, Lisa
`<LKobialka@KRAMERLEVIN.com>; Lee, Hannah <HLee@KRAMERLEVIN.com>; Lee, Michael H.
`<MHLee@KRAMERLEVIN.com>; Martinez, Cristina <CMartinez@KRAMERLEVIN.com>; Nguyen,
`Stephanie <SNguyen@KRAMERLEVIN.com>; Xu, Linda <LXu@KRAMERLEVIN.com>; Kagan, Jonathan
`<JKagan@irell.com>; Curran, Casey <ccurran@irell.com>; Song, Sharon <ssong@irell.com>; Wang, Kevin
`<kwang@irell.com>; Holland, Eileen <EHolland@irell.com>
`Subject: RE: [EXTERNAL] RE: Objections and Exhibit List
`
`Austin,
`
`Please provide a response to my email below. This will impact the pretrial order, verdict form, and jury
`instructions, so we need to know Finjan’s position on this issue immediately.
`
`Regards,
`Rebecca
`
`From: Carson, Rebecca
`Sent: Saturday, November 24, 2018 6:10 PM
`To: ~Manes, Austin
`Cc: Glucoft, Josh; ~Andre, Paul; ~Caire, Yuridia; ~Hannah, James; ~Hedvat, Shannon; ~Kastens,
`Kristopher; ~Kobialka, Lisa; ~Lee, Hannah; ~Lee, Michael; ~Martinez, Cristina; ~Nguyen, Stephanie;
`~Xu, Linjun; Kagan, Jonathan; Curran, Casey; Song, Sharon; Wang, Kevin; Holland, Eileen
`Subject: RE: [EXTERNAL] RE: Objections and Exhibit List
`
`Austin,
`
`The notice provisions of Section 287 apply to patentees who sell products that embody the patent (or
`whose licensees sell products that embody the patents). If Finjan is conceding that it was required to
`provide actual notice, then it is necessarily conceding that it or its licensees had an obligation to mark
`and they did not do so. This was an issue that was raised on summary judgment, and which Finjan
`previously disputed. If Finjan is now conceding the issue, then it needs to be memorialized in a
`stipulation. Otherwise, it will need to be tried.
`
`Regards,
`Rebecca
`
`From: Manes, Austin [mailto:AManes@KRAMERLEVIN.com]
`Sent: Saturday, November 24, 2018 6:03 PM
`To: Carson, Rebecca
`Cc: Glucoft, Josh; ~Andre, Paul; ~Caire, Yuridia; ~Hannah, James; ~Hedvat, Shannon; ~Kastens,
`Kristopher; ~Kobialka, Lisa; ~Lee, Hannah; ~Lee, Michael; ~Martinez, Cristina; ~Nguyen, Stephanie;
`~Xu, Linjun; Kagan, Jonathan; Curran, Casey; Song, Sharon; Wang, Kevin; Holland, Eileen
`Subject: Re: [EXTERNAL] RE: Objections and Exhibit List
`
`Rebecca,
`
`3
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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 5 of 9
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`We don’t understand your issue. What law is Juniper relying on that makes constructive notice an issue
`when actual notice is asserted?
`
`Austin
`
`Austin Manes
`Associate
`
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road, Menlo Park, California 94025
`T 650.752.1718
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain
`information that is confidential, privileged or legally protected. Any unauthorized use or dissemination of this communication is
`strictly prohibited. If you have received this communication in error, please immediately notify the sender by return e-mail
`message and delete all copies of the original communication. Thank you for your cooperation.
`
`On Nov 24, 2018, at 3:32 PM, Carson, Rebecca <RCarson@irell.com> wrote:
`
`Austin:
`
`We will need to try the issue of constructive notice if Finjan is not willing to stipulate
`that it did not comply with the marking requirements. Please let us know by the end of
`today whether Finjan would prefer to stipulate or try the issue so that we can make the
`appropriate adjustments to the joint filings.
`
`Thanks,
`Rebecca
`
`From: Manes, Austin [mailto:AManes@KRAMERLEVIN.com]
`Sent: Saturday, November 24, 2018 2:44 PM
`To: Glucoft, Josh; ~Andre, Paul; ~Caire, Yuridia; ~Hannah, James; ~Hedvat, Shannon;
`~Kastens, Kristopher; ~Kobialka, Lisa; ~Lee, Hannah; ~Lee, Michael; ~Martinez,
`Cristina; ~Nguyen, Stephanie; ~Xu, Linjun
`Cc: Kagan, Jonathan; Carson, Rebecca; Curran, Casey; Song, Sharon; Wang, Kevin;
`Holland, Eileen
`Subject: RE: Objections and Exhibit List
`
`Counsel:
`
`Finjan’s redlines to the latest pretrial order are attached, along with a clean version of
`the jury instructions. We made edits only to Finjan’s disputed instructions. We accept
`all of Juniper’s latest redlines to the voir dire questions and the parties are filing
`competing verdict forms, so those last two documents should be done.
`
`Finjan’s exhibit list, which is part of the pretrial order, is attached. We added 17 exhibits
`from recent depositions at the end. We will send our objections to Juniper’s updated
`exhibit list separately.
`
`Thanks,
`Austin
`
`4
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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 6 of 9
`
`Austin Manes
`Associate
`
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road, Menlo Park, California 94025
`T 650.752.1718
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and
`may contain information that is confidential, privileged or legally protected. Any unauthorized use or
`dissemination of this communication is strictly prohibited. If you have received this communication in error,
`please immediately notify the sender by return e-mail message and delete all copies of the original
`communication. Thank you for your cooperation.
`
`From: Glucoft, Josh <JGlucoft@irell.com>
`Sent: Saturday, November 24, 2018 1:29 PM
`To: Manes, Austin <AManes@KRAMERLEVIN.com>; Andre, Paul
`<PAndre@KRAMERLEVIN.com>; Caire, Yuridia <YCaire@KRAMERLEVIN.com>; Hannah,
`James <JHannah@KRAMERLEVIN.com>; Hedvat, Shannon H.
`<SHedvat@KRAMERLEVIN.com>; Kastens, Kris <KKastens@KRAMERLEVIN.com>;
`Kobialka, Lisa <LKobialka@KRAMERLEVIN.com>; Lee, Hannah
`<HLee@KRAMERLEVIN.com>; Lee, Michael H. <MHLee@KRAMERLEVIN.com>; Martinez,
`Cristina <CMartinez@KRAMERLEVIN.com>; Nguyen, Stephanie
`<SNguyen@KRAMERLEVIN.com>; Xu, Linda <LXu@KRAMERLEVIN.com>
`Cc: Kagan, Jonathan <JKagan@irell.com>; Carson, Rebecca <RCarson@irell.com>;
`Curran, Casey <ccurran@irell.com>; Song, Sharon <ssong@irell.com>; Wang, Kevin
`<kwang@irell.com>; Holland, Eileen <EHolland@irell.com>; #Juniper/Finjan [Int]
`<Juniper-Finjan@irell.com>
`Subject: [EXTERNAL] RE: Objections and Exhibit List
`
`Austin,
`
`The exhibit list is completely independent of the rest of the pretrial order materials, so
`there is no reason for Finjan to delay circulating for our review a new version of all
`materials from the pretrial order other than the consolidated exhibit list.
`
`Below are credentials for an FTP site on which you can find copies of all of the
`additional exhibits. As you can see, nearly all of the “new” exhibits were just the specific
`exhibits used at depositions occurring after the initial exchange of exhibit lists (for which
`we included a placeholder on our original exhibit list) and we also broke out into
`individual line items the ‘494 IPR filings that were previously grouped together as single
`line items by IPR.
`
`Attached is a list of exhibits that were removed (first tab) and added (second tab) between
`the two versions of our list, as well as a list of the exhibits that Finjan identified as
`duplicates that remained on our exhibit list (third tab). With respect to the “duplicates”
`identified by Finjan that we retained on our list, the full quotation of Judge Alsup’s pre-
`trial order states that defendant “should not re-mark the exact document with another
`number. Different versions of the same document, e.g., a copy with additional
`handwriting, must be treated as different exhibits with different numbers” (some
`emphasis in original). The “duplicates” that we maintained on our list are actually not
`exact duplicates because those documents have been used at deposition and therefore
`5
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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 7 of 9
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`bear a deposition exhibit tag, which are not exactly the same as the documents on
`Finjan’s list that have not been used at deposition and do not bear a deposition exhibit
`tag. Accordingly, the “duplicates” identified by Finjan that we retained on our list were
`properly retained. Finjan may remove the corresponding “duplicates” from its own list if
`it so chooses.
`
`Regards,
`Josh
`
`Irell & Manella LLP
`Irell ShareSite Connection Information for External Users
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`From: Manes, Austin <AManes@KRAMERLEVIN.com>
`Sent: Friday, November 23, 2018 7:55 PM
`To: Glucoft, Josh <JGlucoft@irell.com>; ~Andre, Paul <pandre@kramerlevin.com>;
`~Caire, Yuridia <ycaire@kramerlevin.com>; ~Hannah, James
`<jhannah@kramerlevin.com>; ~Hedvat, Shannon <shedvat@kramerlevin.com>;
`~Kastens, Kristopher <kkastens@kramerlevin.com>; ~Kobialka, Lisa
`<lkobialka@kramerlevin.com>; ~Lee, Hannah <hlee@kramerlevin.com>; ~Lee, Michael
`<mhlee@kramerlevin.com>; ~Martinez, Cristina <cmartinez@kramerlevin.com>;
`~Nguyen, Stephanie <SNguyen@KRAMERLEVIN.com>; ~Xu, Linjun
`<lxu@kramerlevin.com>
`Cc: Kagan, Jonathan <JKagan@irell.com>; Carson, Rebecca <RCarson@irell.com>;
`Curran, Casey <ccurran@irell.com>; Song, Sharon <ssong@irell.com>; Wang, Kevin
`<kwang@irell.com>
`Subject: RE: Objections and Exhibit List
`
`Counsel:
`
`It appears Juniper added nearly 300 new exhibits, and reordered and renumbered 1,000
`existing exhibits, just 2 business days before the pretrial order is due. Finjan cannot
`circulate a new version of the pretrial order until we’ve had time to deal with this
`substantial last-minute change.
`
`Immediately provide us with (1) a list of the exhibits you’ve withdrawn, (2) a list of the
`exhibits you think you should keep on Juniper’s list, as opposed to Finjan’s, and (3)
`copies of the 300 exhibits you just added. We specifically asked for a redline when we
`sent you a list of duplicate exhibits on November 19th. Further, Judge Alsup’s pretrial
`6
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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 8 of 9
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`order states: “If the plaintiff has marked an exhibit, then the defendant should not re-
`mark the exact document with another number… If an exhibit number differs from that
`used in a deposition transcript, then the latter transcript must be conformed to the new
`trial number if and when the deposition testimony is read to the jury.”
`
`Once we receive this information, we will circulate a final version of the pretrial order
`with our objections.
`
`Austin
`
`Austin Manes
`Associate
`
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road, Menlo Park, California 94025
`T 650.752.1718
`amanes@kramerlevin.com
`
`Bio
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and
`may contain information that is confidential, privileged or legally protected. Any unauthorized use or
`dissemination of this communication is strictly prohibited. If you have received this communication in error,
`please immediately notify the sender by return e-mail message and delete all copies of the original
`communication. Thank you for your cooperation.
`
`From: Glucoft, Josh <JGlucoft@irell.com>
`Sent: Thursday, November 22, 2018 8:04 PM
`To: Andre, Paul <PAndre@KRAMERLEVIN.com>; Caire, Yuridia
`<YCaire@KRAMERLEVIN.com>; Hannah, James <JHannah@KRAMERLEVIN.com>;
`Hedvat, Shannon H. <SHedvat@KRAMERLEVIN.com>; Kastens, Kris
`<KKastens@KRAMERLEVIN.com>; Kobialka, Lisa <LKobialka@KRAMERLEVIN.com>; Lee,
`Hannah <HLee@KRAMERLEVIN.com>; Lee, Michael H. <MHLee@KRAMERLEVIN.com>;
`Manes, Austin <AManes@KRAMERLEVIN.com>; Martinez, Cristina
`<CMartinez@KRAMERLEVIN.com>; Nguyen, Stephanie
`<SNguyen@KRAMERLEVIN.com>; Xu, Linda <LXu@KRAMERLEVIN.com>
`Cc: #Juniper/Finjan [Int] <Juniper-Finjan@irell.com>; Kagan, Jonathan
`<JKagan@irell.com>; Carson, Rebecca <RCarson@irell.com>; Curran, Casey
`<ccurran@irell.com>; Song, Sharon <ssong@irell.com>; Wang, Kevin
`<kwang@irell.com>
`Subject: [EXTERNAL] Objections and Exhibit List
`
`Counsel,
`
`Attached please find Juniper’s objections to Finjan's exhibit list. Juniper also objects to
`Finjan's witness list; in particular, Finjan did not designate whether Finjan will call or
`only may call those witnesses from Juniper under Section B as required under FRCP
`26(a)(3)(A)(i), and Finjan has also designated all Juniper-affiliated employees as being
`presented only by deposition without any showing that presentation by deposition is
`proper under FRCP 32.
`
`7
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`Case 3:17-cv-05659-WHA Document 432-12 Filed 04/11/19 Page 9 of 9
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`Attached please also find Juniper’s updated exhibit list. We have withdrawn certain
`exhibits, including several identified by Finjan as duplicates to Finjan's
`exhibits. However, we did not withdraw from our list certain exhibits identified by
`Finjan as duplicates because the versions on our list were those marked at deposition;
`when Finjan consolidates the exhibit lists, Finjan should withdraw from its own list the
`duplicates that were not marked at deposition. There is a column that indicates the
`exhibit numbering from our original list that Finjan can use to transfer its objections to
`our updated exhibit list.
`
`Judge Alsup requires that “deposition exhibits shall be numbered in a simple manner that
`will allow the same numbering at trial” (Supplemental Order to Order Setting Initial Case
`Management Conference at ¶ 30), and Judge Alsup has also indicated that trial exhibit
`numbering should use “preferably the same numbers as were used in
`depositions.” Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases at ¶
`23. To comply with this request, Juniper's trial exhibit list assigns trial exhibit numbers
`that match the deposition exhibit numbers used by Juniper in the depositions that Juniper
`noticed; accordingly, the trial exhibit numbers used by Juniper should not be changed.
`
`Regards,
`Josh
`
`__________________________________________________________________
`Joshua P. Glucoft | Irell & Manella LLP | 310.203.7189 | www.irell.com
`
`PLEASE NOTE: This message, including any attachments, may include
`privileged, confidential and/or inside information. Any distribution or use of this
`communication by anyone other than the intended recipient(s) is strictly
`prohibited and may be unlawful. If you are not the intended recipient, please
`notify the sender by replying to this message and then delete it from your system.
`Thank you.
`
`8
`
`