Case 3:17-cv-05659-WHA Document 498 Filed 05/30/19 Page 1 of 20
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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
`)
`MOTION FOR SANCTIONS
`)
`)
`)
`Date:
`May 2, 2019
`)
`Time:
`8:00 a.m.
`)
`Judge:
`William Alsup
`)
`Courtroom:
`12, 19th Floor
`)
`)
`
`vs.
`
`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`Defendant.
`
`10669572
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`JUNIPER’S REPLY ISO MOTION FOR SANCTIONS
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 498 Filed 05/30/19 Page 2 of 20
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`TABLE OF CONTENTS
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`Page
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`B.
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`FINJAN’S “STRONGEST CLAIM” WAS DOOMED FROM THE
`BEGINNING. ....................................................................................................................... 2
`A.
`Finjan Endlessly Pursued Unsupported Damages Theories in Bad
`Faith. ......................................................................................................................... 2
`Finjan Arguments Concerning Constructive Notice Are Contrary To
`Its Sworn Statements To The PTAB. ....................................................................... 5
`Finjan’s Actual Notice Arguments Were Based On False Statements. ................... 7
`C.
`FINJAN’S ASERTION OF CLAIM 1 OF THE ’780 PATENT WAS
`FRIVOLOUS ..................................................................................................................... 10
`A.
`Finjan Does Not Dispute That Its Contentions Against The SRX
`Were Meritless. ...................................................................................................... 10
`Finjan’s Interpretation Of The Hashing Limitation Was
`Unreasonable. ......................................................................................................... 12
`Finjan Provides No Explanation For Its Inherently Inconsistent
`Positions On Infringement And Invalidity. ............................................................ 13
`FINJAN’S ASSERTION THAT IT HAS MADE NO FALSE
`STATEMENTS IS FALSE ................................................................................................ 14
`A.
`Finjan’s Section 282 Objection Was Based On False Statements. ........................ 14
`B.
`Finjan Made Frivolous Privilege Claims During Discovery. ................................. 15
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`B.
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`C.
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`I.
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`II.
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`III.
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`Page(s)
`
`Asyst Techs., Inc. v. Empak, Inc.,
`2006 WL 3302476 (N.D. Cal. Nov. 14, 2006) .............................................................................. 8
`
`Business Guides v. Chromatic Communications Enter., Inc.,
`119 F.R.D. 685 (N.D. Cal., April 12, 1988) ................................................................................ 15
`
`Finjan, Inc. v. BitDefender, Inc.,
`No. 4:17-cv-04790-HSG, 2019 WL 634985 (N.D. Cal. Feb. 14, 2019) ..................................... 13
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`879 F.3d 1299 (Fed. Cir. 2018) ........................................................................................... 4, 5, 12
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 13-cv-03999-BLF, 2014 WL 5361976 (N.D. Cal. Oct. 20, 2014) ....................................... 12
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 13-cv-03999-BLF, 2015 WL 3630000 (N.D. Cal. June 2, 2015) ........................................ 13
`
`Finjan, Inc. v. Cisco, Inc.,
`No. 5:17-cv-00072-BLF, 2018 WL 3537142 (N.D. Cal. July 23, 2018) .................................... 13
`
`Finjan, Inc. v. ESET, LLC,
`No. 17-cv-00183-CAB-(BGS), 2017 WL 5501338 (S.D. Cal. Nov. 14, 2017) .......................... 13
`
`Finjan, Inc. v. Secure Computing Corp.,
`No. 06-369 (GMS), Dkt. No. 142 (D. Del. Dec. 11, 2007) ..................................................... 4, 12
`
`Finjan, Inc. v. Sophos, Inc.,
`244 F. Supp. 3d 1016 (N.D. Cal. 2017) ...................................................................................... 13
`
`Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp.,
`616 F.3d 1357 (Fed. Cir. 2010) ................................................................................................. 8, 9
`
`Homkow v. Musika Rs., Inc.,
`2009 WL 721732 (S.D.N.Y. Mar. 18, 2009) .............................................................................. 14
`
`LaFarge Corp. v. No. 1 Contracting Corp.,
`2008 WL 2120518, at *5-6 (M.D. Pa. May 19, 2008) ................................................................ 11
`
`Minks v. Polaris Indus., Inc.,
`546 F.3d 1364 (Fed. Cir. 2008) ..................................................................................................... 8
`
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`Case 3:17-cv-05659-WHA Document 498 Filed 05/30/19 Page 4 of 20
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`Page
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`Palo Alto Networks, Inc. v. Finjan, Inc.,
`Case IPR2016-00165, Paper No. 7 (P.T.A.B. April 21, 2016) ................................................... 13
`
`SRI Int’l, Inc. v. Advanced Tech. Labs., Inc.,
`127 F.3d 1462 (Fed. Cir. 1997) ..................................................................................................... 8
`
`Stone Creek, Inc. v. Omnia Italian Design, Inc.,
`875 F.3d 426 (9th Cir. 2017) ....................................................................................................... 10
`
`Truesdell v. Southern California Permanente Medical Group,
`293 F.3d 1146 (9th Cir. 2002) ..................................................................................................... 15
`
`United States v. Chadwell,
`798 F.3d 910, 914 (9th Cir. 2015) ................................................................................................. 6
`
`Viola Sportswear, Inc. v. Mimun,
`574 F. Supp. 619 (E.D.N.Y. 1983) .............................................................................................. 11
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) ..................................................................................................... 4
`
`Statutes
`
`35 U.S.C. § 101 ........................................................................................................................... 13, 14
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`35 U.S.C. § 287 ................................................................................................................................... 5
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`Other Authorities
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`Fed. R. Civ. P. 11(c) .......................................................................................................................... 15
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`Fed. R. Civ. P. 60(b) ............................................................................................................................ 2
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`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`This Court has been very clear that the outcome of the first round of the “Patent Showdown”
`could have serious consequences for one party or the other, as it could “warrant an injunction or
`sanctions.” This Court warned Juniper of potential injunctive relief—if it lost—but explained
`“you’re going to get sanctions against them [Finjan] if it warrants sanctions” and Finjan “will have
`to pay that right off the bat”—“[c]ould be hundreds of thousands of dollar for having brought a bogus
`claim against Juniper.” Dkt. 44 (2/22/18 Hr’g Tr. at 6). Now that the first round is over with a
`complete victory for Juniper on both the claim it selected and on the claim Finjan identified as its
`strongest, it has become clear that Finjan’s claims were “bogus” from the start, and Juniper requests
`that the Court exercise its inherent powers to sanction Finjan.
`Juniper did not bring this Motion merely because it prevailed on both Finjan’s strongest and
`weakest claims. Rather, it became clear during the litigation that Finjan had asserted these claims—
`and continued litigating them through conclusion—by using legal gamesmanship that unreasonably
`multiplied the proceedings, drove up Juniper’s legal costs, and wasted this Court’s time. Contrary to
`Finjan’s assertion, this was not simply a “hard-fought litigation” waged with good-faith tactics. To
`the contrary, during the course of the litigation Finjan demonstrated that it would baldly disregard
`binding legal precedent on damages, try to disavow its own statements to the PTAB, and even present
`false statements from its employees, under oath, to support its allegations of pre-suit notice. Finjan
`has also repeatedly played “hide the ball” by forcing Juniper to brief infringement claims that it would
`not even oppose. Finjan further multiplied the proceedings by filing motions containing
`demonstrably false statements (e.g., Finjan’s § 282 motion) and by asserting and maintaining legally
`indefensible positions that require Juniper to obtain Court intervention (e.g., Finjan’s unsupported
`privilege claims). Finjan provides no excuse for its pattern of unreasonable conduct during the first
`round of the “Patent Showdown.” Instead, it simply rehashes the same legally unsound arguments
`that it made during the earlier proceedings and claims that the Court got it wrong.
`Finjan tries to excuse its own poor conduct by making allegations of improper conduct by
`Juniper. First, these allegations—even if true (and they are not)—do nothing to justify Finjan’s
`record of conduct designed to drive up the cost of this litigation. Second, Finjan’s claim that Juniper
`produced “evidence that Sky ATP uses
` for the “first time in
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`JUNIPER’S REPLY ISO MOTION FOR SANCTIONS
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`Case 3:17-cv-05659-WHA Document 498 Filed 05/30/19 Page 6 of 20
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`February 2019” is demonstrably false—and, in fact, is just another example of the type of
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`misrepresentation Finjan has repeatedly demonstrated it is willing to make to this Court: Juniper’s
`opposition to Finjan’s Rule 60(b) motion contains a series of documents produced well before
`February 2019 referencing and identifying
`. Dkt. 434-4 at 4-6. For
`example, Juniper produced
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`and then produced additional documents in November 2018 discussing
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`Juniper respectfully requests that the Court exercise its inherent power to sanction Finjan for
`its unreasonable conduct during the first round of the Patent Showdown proceedings.
`I.
`FINJAN’S “STRONGEST CLAIM” WAS DOOMED FROM THE BEGINNING.
`
`As demonstrated in Juniper’s opening brief, Finjan never had a good faith basis to argue (1)
`that it was entitled to damages, (2) that it provided actual notice, or (3) that it provided constructive
`notice for Claim 10 of the ’494 Patent. Nonetheless, and as the deficiencies with this claim became
`more and more obvious during the course of the litigation, Finjan continued to pursue this claim up
`to and including in post-trial motions. Indeed, this Court gave Finjan multiple chances to correct or
`abandon its insufficient damages theories, but Finjan rejected each one, stubbornly insisting on
`advancing a damages theory that violated controlling law. Juniper had to expend enormous resources
`to rebut each of Finjan’s legally invalid theories. As another example, Finjan’s constructive notice
`arguments required Finjan to argue that the representations it made to the PTAB during an IPR about
`its ’494 patent licensees were inaccurate, and Finjan’s actual notice arguments were based on false
`statements from its employee, John Garland that only came to light because Juniper had (legally)
`recorded a call with Mr. Garland. Finjan knew—or should have known—that its theories on damages
`and notice were flawed when it advanced them, and thus needlessly multiplied the proceedings.
`A.
`Finjan Endlessly Pursued Unsupported Damages Theories in Bad Faith.
`
`Finjan presents no real excuse for its decision to repeatedly advance a damages theory that
`the Court ruled—multiple times—was invalid. Rather, it tries to justify its rejected theory by claiming
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`it was “supported by law and fact.” Opp. at 11-16. The issue on this motion, however, is not whether
`
`Finjan at some point believed it had a valid damages theory. Rather, the issue is what Finjan did
`after the Court rejected this argument: Did Finjan advance a new theory consistent with the Court’s
`rulings (even though it would result in a low damages amount), or would it continue to pursue an
`unsound theory in the hopes of getting a large award? The record is very clear on this point.
`Finjan first claims that it should not be sanctioned because its expert, Kevin Arst, properly
`applied a cost savings analysis to reach a damages figure of over $60 million. See Opp. at 11. The
`Court expressly rejected this argument, noting that Mr. Arst’s conclusion that “Juniper would have
`been willing to pay an eye-popping $60-$70 million as a royalty for the sake of $1.8 million in
`revenues is preposterous” and determined that Mr. Arst’s analysis was “unreliable.” See Dkt. 283
`(Order at 4-6). The Court further explained that Mr. Arst’s opinions were the direct result of “Finjan’s
`sleight of hand to inflate the revenue base.” Id. at 4.1 Finjan’s attempt to justify its flawed damages
`theory by mischaracterizing the Court’s prior rulings is particularly troubling, in view of the Court’s
`recent order on post-trial motions:
`[C]ontrary to Finjan’s repeated contention that the Court erred in capping Finjan’s reasonable
`royalty amount to Juniper’s actual revenues, the Court held, in connection with Finjan’s
`expert report, that Finjan’s asserted damages of $60–70 million simply was not credible in
`light of Juniper’s $1.8 million in actual revenue (see Dkt. No. 283 at 4). The Daubert order
`striking Finjan’s damages expert report had nothing to do with a per se capping of damages
`to Juniper’s revenue. To repeat, that order simply found that Finjan’s damages expert used
`an unreliable methodology.
`
`Dkt. 387 at 4 n.1 (emphasis added). Thus, Finjan cannot credibly argue now that Mr. Arst’s opinion
`was consistent with legal precedent.
`Finjan next argues that it presented sufficient evidence of damages during trial. Opp. at 12-
`16. But this ignores the record. According to the Court, Finjan’s damages case during trial was
`“woefully inadequate.” Dkt. 339 (Trial Tr. at 839). In particular, the Court found that “on th[e]
`record it would be impossible for the jury to apportion the revenue between the patented item and
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`1 As detailed in Juniper’s Daubert motion, Mr. Arst did not actually conduct a proper cost-savings
`analysis because he did not compare the costs associated with infringing with the costs associated
`with a viable non-infringing alternative. Dkt. 230 at 9. Rather, his calculations for the cost of using
`a non-infringing alternative still included costs associated with infringing (e.g., the costs to store
`profiles in DynamoDB and S3). Id. at 10.
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`the unpatented item.” Id. at 838.2 Finjan has not—and cannot—claim that it did not know that there
`
`was a major apportionment issue with its damages case, as it is well-settled law that a patentee must
`properly apportion. VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1328 (Fed. Cir. 2014) (a court
`must exercise “its gatekeeping authority to ensure that only theories comporting with settled
`principles of apportionment [are] allowed to reach the jury”). Moreover, Juniper had repeatedly
`raised the issue—both before and during trial. See Dkts. 230 (Daubert Motion), 292 (Letter to Court
`regarding Finjan’s proffer of Mr. Arst’s testimony), 305 (Response to Finjan’s Offer of Proof); and
`352 (Juniper’s JMOL on damages). Finjan’s complete failure to introduce competent apportionment
`evidence—despite Juniper’s repeated warnings—demonstrates Finjan’s lack of good faith.
`Finjan further fails to provide any legitimate excuse for presenting damages theories that the
`Federal Circuit has expressly rejected. For example, while Finjan goes on at length about the
`evidence that Finjan supposedly introduced to justify an $8 per user rate, none of the evidence it
`points to addresses the fundamental issue that the Federal Circuit identified when it overturned this
`theory in Finjan’s prior Blue Coat case. There, the Federal Circuit expressly rejected Finjan’s
`proposed $8 per user fee because Finjan had not “adequately tie[d] the facts of Secure Computing
`[the case from which the 8-16% rate Finjan uses to derive the $8 per user rate] to the facts of [the
`Blue Coat] case.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1312 (Fed. Cir. 2018). Here,
`just like in Blue Coat, Finjan does not identify any evidence presented at trial that ties the Secure
`Computing case to Juniper’s case. Indeed, just as in Blue Coat, Secure Computing did not even
`involve the patent-in-suit. Id. (noting that “Secure Computing did not involve the ‘844 patent, and
`there is no evidence showing that the patents that were at issue are economically or technology
`comparable”). Moreover, the fact that the $8 per user rate is “plucked out of thin air” is confirmed
`by the fact that Finjan’s own witnesses confirmed that it does not have a single licensee who has
`
`
`2 Finjan rehashes the same substantive arguments about apportionment that it made during trial. Opp.
`at 13. Those arguments are still unpersuasive, as they fail to isolate a percentage of revenues
`attributable to the accused functionality—i.e., storing profiles in a database—as opposed to the
`numerous non-infringing functions—e.g., Juniper’s proprietary static analysis engine, dynamic
`analysis, antivirus, etc. Thus, as the Court held, Finjan’s attempt at apportionment is inadequate
`because it does “not separate out the portions of Sky ATP that do not infringe.” Dkt. 339 (Trial Tr. at
`838).
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`accepted such a rate. Dkt. 336 (Trial Tr. at 315:24-316:5).
`
`Similarly, none of the evidence Finjan identifies to try to justify its introduction of a $0.32
`per scan is even remotely relevant to the hypothetical negotiation. The fact that Finjan paid $0.32
`per scan for its mobile security product—which is fundamentally different than Juniper’s cloud-based
`Sky ATP services—says nothing about what Juniper would have agreed to pay in a hypothetical
`negotiation with Finjan. Moreover, Finjan’s argument that it was proper to present the 8%/16%
`starting point without presenting evidence about “the appropriate ending point” because that “is a
`question for the jury to decide” is directly contrary to the Federal Circuit’s holding in Blue Coat.
`Blue Coat, 879 F.3d at 1312 (“[T]estimony that an 8-16% royalty rate would be the current starting
`point in licensing negotiations says little about what the parties would have proposed or agreed to in
`a hypothetical arm’s length negotiation.”) (emphasis added). Finjan’s attempt to rely on theories that
`the Federal Circuit expressly rejected demonstrates its reckless disregard for legal precedent.
`B.
`Finjan Arguments Concerning Constructive Notice Are Contrary To Its Sworn
`Statements To The PTAB.
`
`Regarding constructive notice, Finjan first tries to blame Juniper for Finjan’s inability to meet
`its burden by claiming that it “sought to drop this theory” but that Juniper “demand[ed] that Finjan
`present [it] at trial.” Opp. at 8. This is absurd; Juniper cannot force Finjan to present evidence of
`constructive notice; if Finjan did not provide constructive notice, it could have simply admitted this
`fact. Finjan’s decision to misrepresent the record to avoid this admission was Finjan’s alone.3
`Finjan next tries to side-step the issues raised in Juniper’s Motion by making irrelevant
`arguments about marking evidence it introduced concerning its own product. Opp. at 8-9. Juniper’s
`Motion is based on Finjan’s bogus argument that its licensees did not practice the ’494 Patent (and
`thus did not need to mark their products), given that it had previously taken the exact opposite
`position before the PTAB in sworn testimony. See e.g., Trial Ex. 1760 at 55-60. Thus, it is irrelevant
`
`
`3 Despite multiple rounds of briefing on this issue, Finjan still seems to misunderstand § 287. Section
`287 only applies to patentees who sell products that embody the patent (or who have licensees who
`practice the patent). 35 U.S.C. § 287. If such patentees comply with the constructive notice
`requirements of § 287 by marking their products, then there is no need to prove actual notice. Id.
`Because actual notice is only necessary if a patentee has not complied with § 287, it makes no sense
`to say that one can decide the issue of actual notice without deciding the threshold issue of whether
`the patentee was required to (and did) provide constructive notice.
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`to this Motion whether Finjan marked its own product.4
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`Finjan also tries—once again—to claim that Juniper did not meet its Artic Cat burden to
`identify unmarked products. Opp. at 9. But this is directly contrary to admissions Finjan’s counsel
`made directly to this Court: Finjan’s counsel admitted: “[T]hey did give us an Arctic Cat notice.
`They did.” Dkt. 336 (Trial Tr. at 289:8–23).
`Finjan’s position is also contrary to Trial Exhibit 1760, which contains express admissions
`from Finjan that several specific licensees practice its patents. Finjan’s attempt to argue that the
`portions of Trial Exhibit 1760 that discuss the ’494 licensees are not evidence because a witness did
`not discuss those portions is plain wrong. There is no dispute that Trial Exhibit 1760 was admitted
`into evidence in its entirety. See Dkt. 337 (Trial Tr. at 515). Therefore, the jury could fully consider
`the contents of the exhibit. United States v. Chadwell, 798 F.3d 910, 914 (9th Cir. 2015) (“Jurors
`generally may examine all or part of any exhibit received into evidence and determine the weight to
`give that evidence during deliberations in the privacy of the jury room.”). Additionally, Finjan’s
`argument that Juniper cannot rely on Finjan’s express statements to the PTAB that its licensees
`practice the ’494 Patent because “Finjan’s licensees have not agreed to licenses containing a marking
`requirement, which raises a fact issue as to whether their products actually infringe” is troubling. If
`Finjan is correct when it now states its licensees do not practice the ’494 Patent, then it is essentially
`admitting that it lied to the PTAB when it said that it did practice the ’494 Patent.
`Finally, Finjan complains that Juniper did not include all of Mr. Andre’s improper closing
`statement in its Motion. Opp. at 9. But the portion that Finjan cites in its Opposition just evidences
`additional misrepresentations that Mr. Andre made to the Court. In particular, Mr. Andre responded
`to the Court’s admonition by claiming that he did not intend to say that the statements in Trial Exhibit
`1760 were not evidence, but rather that Trial Exhibit 1760 did not identify “any specific products.”
`Opp. at 9. Even if Mr. Andre did misspeak on this crucial point, however, it does not salvage Finjan’s
`position—as the “corrected” version of Mr. Andre’s statement is still false: Trial Exhibit 1760
`
`
`4 Even if Finjan were able to prove that it adequately marked the Vital Security product—which it
`did not—it has not even attempted to rebut Juniper’s argument that those Vital Security products
`would not comprise “substantially all” of the patented articles sold during the relevant time, given
`that the sales of Vital Security were dwarfed by those of Finjan’s licensees. Dkt. No. 352 at 6.
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`JUNIPER’S REPLY ISO MOTION FOR SANCTIONS
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`Case 3:17-cv-05659-WHA Document 498 Filed 05/30/19 Page 11 of 20
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`indisputably identifies specific licensee products that Finjan told the PTO practiced the ’494 Patent.
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`See Trial Exhibit 1760 at 56-60 (identifying “Avast’s Endpoint Protection” product, “F-Secure’s
`multi-layered approach to security [that] is comprised of five modules,” “Proofpoint products,” and
`Websense’s products). Thus, even if Finjan could now re-write Mr. Andre’s statement, there is still
`no basis for Finjan’s claim that “Mr Andre’s statements were 100% accurate.” Opp. at 10.
`C.
`Finjan’s Actual Notice Arguments Were Based On False Statements.
`
`Finjan tries to distract the Court from the core issue raised in Juniper’s Motion—i.e., that
`Finjan made false statements about the actual notice it allegedly provided to Juniper—by making
`substantive arguments about whether purported notice that it gave was legally sufficient. Particularly
`as the jury did not need to reach the substantive notice issue, though, this is irrelevant to Juniper’s
`motion. More significantly, however, Finjan does not dispute that its interrogatory responses and
`Mr. Garland’s deposition testimony that he identified Sky ATP on a call with Mr. Coonan in
`November 2015—both of which were provided under oath—were not true. Instead, Finjan attempts
`to deflect from the falsity of these sworn statements by claiming that Mr. Garland “was steadfast that
`he identified Sky ATP as ‘advanced malware’ during the call.” Opp. at 8. But “advanced malware”
`is not the same thing as “Sky ATP” and if Mr. Garland did not have a clear memory of identifying
`“Sky ATP” on the call, then neither he (nor Finjan) should have provided sworn statements saying
`that he did that. See Dkt. 113-2 (Finjan’s Second Suppl. Resp. to Interrog. No. 6 at 5) (stating that
`Finjan identified “Sky ATP,” not that it identified “advanced malware”). Indeed, it was only after
`Mr. Garland learned that there was a recording of the phone call that he conceded his mistake. See
`Dkt. 410-2 (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 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.”). But for this recording, Mr. Garland acknowledged that he would still be testifying
`incorrectly that he identified Sky ATP during the call. See Dkt. 337 (Trial Tr. at 588:23-589:5).
`Finjan’s substantive arguments do not change the fact that Finjan made false statements to
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`try to support its notice allegations—and they are legally insufficient in any event. Finjan first argues
`
`that it made general allegations that Juniper’s products were infringing Finjan’s patents and that it
`identified the ʼ494 Patent to Juniper on a phone call between John Garland and Scott Coonan. Opp.
`at 5-6. But neither of these facts are contested; and neither is sufficient to meet the actual notice
`requirement. For actual notice, the patentee “must communicate a charge of infringement of specific
`patents by a specific product or group of products.” Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp.,
`616 F.3d 1357, 1373 (Fed. Cir. 2010). Finjan also improperly tries to shift the burden to Juniper by
`arguing that Juniper needed to prove that no notice occurred. Dkt. 431-4 at 5-6. But because Finjan
`failed to carry its burden of proof, Juniper did not have a burden to rebut anything.
`Finjan also contends that actual notice occurred because it allegedly identified a group of
`accused products. Id. at 4. But Finjan has not actually identified any communication that includes
`Sky ATP. Indeed, neither “advanced malware modules” nor “Next Generation Firewall” identifies
`a specific group of products. At best, “advanced malware modules” and “Next Generation Firewall”
`refer generally to the market for advanced malware solutions. And, identifying a broad market for
`products does not sufficiently provide actual notice as a matter of law