`Case 3:17-cv-05659—WHA Document 661-7 Filed 06/10/21 Page 1 of 8
`
`EXHIBIT 6
`
`EXHIBIT 6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 3:17-cv-05659-WHA Document 661-7 Filed 06/10/21 Page 2 of 8
`
` Pages 1 - 28
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`Before The Honorable William H. Alsup, Judge
`
`)
`FINJAN, INC.,
` )
` Plaintiff,
`)
` )
` VS. ) NO. C 17-05659 WHA
` )
`JUNIPER NETWORK, INC.,
`)
` )
` Defendant.
`)
` )
`
` San Francisco, California
` Thursday, January 7, 2021
`
`
`
`TRANSCRIPT OF TELEPHONIC PROCEEDINGS
`
`
`
`
`APPEARANCES BY TELEPHONE:
`
`For Plaintiff:
` FISH & RICHARDSON PC
` 12860 El Camino Real - Suite 400
` San Diego, California 92130
` BY: JUANITA R. BROOKS, ATTORNEY AT LAW
`
`
`For Defendant:
` IRELL & MANELLA LLP
` 1800 Avenue of the Stars - Suite 900
` Los Angeles, California 90067
` BY: JONATHAN S. KAGAN, ATTORNEY AT LAW
`
`
`
`
`
`Reported By: Jo Ann Bryce, CSR No. 3321, RMR, CRR, FCRR
` Official Reporter
`
` 3
`
`support both.
`The other just legal issue to put on the table is the
`Court does not need to conduct an issue-by-issue analysis of
`the extraordinary nature of the case. It's an overall
`evaluation that the Court does to determine whether it's
`extraordinary. So it doesn't need to say "This patent is
`extraordinary. This patent is not."
`There's two exceptions to that rule, neither of which
`applies here, which is, one, if there is a partial victory, so
`if we won on -- if we prevailed on some patents but not others,
`it could allocate; or if the extraordinary nature of the case
`is based solely on misconduct, which is not what -- we have a
`lot of evidence showing that this case stands out from others
`for reasons other than misconduct.
`So the question is: Does this case stand out or not?
`That's the threshold question. So this was a patent case
`involving nine patents that Finjan asserted. Only one of those
`patents was able to make it to trial. So eight of the nine
`patents did not even make it to trial; and for the one patent
`that made it to trial, by the time it got to the jury, there
`was no possibility of any remedy for Finjan because the patents
`had expired so there's no injunction possible and the Court had
`ruled that Finjan was not entitled to damages even if they got
`a jury verdict. Obviously the jury verdict went in Juniper's
`favor.
`
` 2
`
` 10:13 a.m.
`Thursday - January 7, 2021
`P R O C E E D I N G S
`---000---
`THE CLERK: Calling Civil matter 17-5659, Finjan,
`Incorporated, vs. Juniper Network, Incorporated.
`Starting with plaintiffs, will counsel please state your
`appearances.
`MS. BROOKS: Good morning, Your Honor. Juanita Brooks
`from Fish & Richardson on behalf of Finjan.
`THE COURT: Welcome.
`MR. KAGAN: Good morning, Your Honor. Jonathan Kagan
`of Irell & Manella on behalf of Juniper Networks.
`THE COURT: Welcome.
`This is a motion for attorneys fees by Juniper. So I'm
`familiar with everything in here, but take up to ten minutes to
`make your argument. Juniper goes first.
`MR. KAGAN: Okay. So, Your Honor, the standard for
`attorneys' fees that we're dealing with, I just want to make
`clear because there was a lot of cases cited, comes from the
`2014 Octane Fitness case; and the test is does this case stand
`out from others with respect to the strength of the case and
`was it litigated in an unreasonable manner. These are not --
`you do not need to meet both of these standards. It can be
`under either of these standards is how a case can be
`extraordinary, and in this case we feel there's evidence to
`
` 4
`
`So of the nine patents that Finjan asserted, they were
`unable to get relief on any one of them even before reaching a
`jury. So the question is: Does that stand out from other
`cases?
`It's difficult to imagine how you can argue it doesn't
`stand out. Finjan is a professional plaintiff in patent cases.
`Virtually all of their revenue comes from licensing patents and
`litigating. If you look at their brief, they list all of their
`accomplishments they've had in litigation. They've had
`wonderful results.
`This case has to stand out because if this case is the
`norm for them, they cannot exist as a professional patent
`plaintiff. If when they assert nine patents, they're not --
`they can't get relief on even one even before getting to a
`jury, they're out of business. So this is clearly a case that
`stands out with regard to their litigation and, frankly, I
`think most likely the litigation that this Court sees.
`THE COURT: May I ask a question?
`MR. KAGAN: Yes.
`THE COURT: You say they were zero for nine. Were the
`other -- how many of those were actually litigated and what
`became of the ones that were not litigated? I remember the
`ones that were litigated, but I know it wasn't all nine so tell
`me what happened to the lineup of the patents.
`MR. KAGAN: So there were several -- there were two
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
` 6
`
`Case 3:17-cv-05659-WHA Document 661-7 Filed 06/10/21 Page 3 of 8
` 5
`that were the subject of a summary judgment motion. Well,
`there were two claims that were the subject of a summary
`judgment motion. There was the '154 patent and the '780 patent
`where Juniper prevailed on summary judgment. There was the
`'494 patent that went to trial that was the subject of a trial;
`and then Finjan in order to focus its appeal, voluntarily
`dismissed with prejudice all of the other patents in order to
`pursue its appeal on the patents that were litigated: The
`'154, the '780, and the '494.
`THE COURT: Okay. That comes back to me now. So
`there were three that were litigated before me and that I made
`rulings on, and then the other six were dismissed with
`prejudice.
`MR. KAGAN: Yes.
`THE COURT: All right.
`MR. KAGAN: And this was --
`THE COURT: You know, I have this question for you,
`though. In every case there's going to be a loser and a
`winner, and are you saying that, "Okay. So Finjan gave it its
`best college try and they lost"? But surely that can't be
`enough to -- just because you lost doesn't mean that you --
`it's an extraordinary case and you should pay the other side's
`fees.
`So help me -- and also I've got a related question. What
`if I think there's only one aspect of the whole case that
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`troubles me and is extraordinary but the rest of it was just
`routine patent shenanigans, patent lawyer shenanigans, and that
`if forced to, I could find examples on the Juniper side where
`you were unreasonable too? So what if I think it's only this
`one thing that deserves, am I able to carve that out and say
`"You've got to pay fees on that one bad chapter" or do I have
`to give fees to the entire case?
`MR. KAGAN: So what I would say, the way -- so I think
`there's two conflicting -- let me answer the second question
`first.
`So I think there's two conflicting principles here. One
`is that you're really supposed to just look at the whole case.
`You're under no obligation to parse out individual parts of the
`case, and that's fair. However, this is a discretionary
`decision for the Court, and I do believe that it can be a
`proper exercise of your discretion to award fees as you see
`fit; and if you see unreasonable behavior on both sides or you
`believe that Juniper took unreasonable positions, you know,
`that's something that I think in your discretion you're allowed
`to consider.
`The case law is not so clear on this other than saying
`it's a discretionary decision; but as an Article III judge, I
`think those are the types of things that you would routinely
`use to exercise discretion. So I think you have great latitude
`on that.
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 7
`THE COURT: All right. What is -- what if you --
`looking at this entire record, what would you say -- just give
`me one or two examples of where you think Finjan went way over
`the line and it just spans out as a terrible abusive thing that
`Finjan did.
`MR. KAGAN: So one easy example is the damages case
`for the '494 patent, which went to trial. What happened here,
`as you may recall -- this is covered in the briefs, but I'll
`just summarize it quickly -- what Finjan did was they had a
`damages -- we moved for -- they moved for summary judgment on
`the '494 patent. That was their strongest patent they said.
`They accused certain products. We pointed out that they had
`not -- they were not seeking damage on the SRX product as sold
`by itself. It was only the SRX product when used in
`combination with -- and this is their words -- the SRX used in
`combination with Sky ATP and the Sky ATP product. That's what
`the trial was supposed to be on.
`Then when they submit their damages report -- and, by the
`way, the total revenue for that was $1.8 million. That was the
`total revenue.
`When they submit their damages report, though, they
`claim $142 million as a damages base because they now have a
`theory, they've come up with an infringement theory where the
`SRX when it's not used in combination with Sky ATP is an
`infringing product.
`
` 8
`So this is a brand new infringement theory. It's not even
`advanced by their infringement expert. Their infringement
`expert actually disavowed that theory. When we questioned him,
`we said, "Are you -- have you looked at the SRX product by
`itself?" He said, "No." This became the subject of a Daubert
`motion and Your Honor excluded the theory.
`And Finjan in their brief goes into a lot of -- they spent
`a lot of time talking about why they believe that this theory
`was meritorious. It doesn't matter whether or not this theory
`was meritorious. It was an undisclosed theory, and on that
`basis Your Honor issued a Daubert order and excluded the
`expert's opinion.
`THE COURT: Was that litigated in the Federal Circuit?
`MR. KAGAN: Yes, it was.
`THE COURT: What did the Federal Circuit say on that
`Daubert ruling?
`MR. KAGAN: The Federal Circuit -- it was a summary
`affirmance. There was no opinion. It didn't even merit an
`opinion but it was affirmed.
`THE COURT: Hmm. Okay.
`MR. KAGAN: So then what Finjan does is they don't
`say -- so now they have no -- they have essentially no damages
`case. So what they tell Your Honor is, "Well, we want the
`opportunity to present a fact-based damages case. So you've
`excluded our expert but allow us still to try to present a
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 3:17-cv-05659-WHA Document 661-7 Filed 06/10/21 Page 4 of 8
` 9
`fact-based damages case," and Your Honor allowed them to at
`trial.
`So they come to trial and they have their CEO testify, and
`the CEO testifies -- when he testifies, he includes in his
`royalty base the exact same information that Your Honor
`excluded in the Daubert. He starts trying to talk about
`numbers and damages that include this product by itself that
`Your Honor said was out.
`Then in addition what he does, is he talks about numbers
`that he wants for a negotiation. He said, "Well, in a
`negotiation with Juniper, this is what I want. This is what
`I'm asking for." And, Your Honor, ultimately we objected.
`Ultimately Your Honor excluded that testimony as well as
`improper.
`Some of his testimony in terms of what he was seeking had
`actually been excluded in another case by the Federal Circuit.
`The Federal Circuit -- he had this theory that they were
`entitled to $8 per stand. That was just the number they came
`up with. And he tried using the same number in another case
`against another defendant. The Federal Circuit actually
`reviewed that and said, "This number is pulled out of thin air.
`You can't use that."
`So Your Honor ultimately in the middle of the trial
`removed the issue of damages and struck his testimony, took
`damages away from the jury.
`
` 10
`So, I mean, I think if you're looking for a single example
`of the types of sort of shenanigans that were going on, that's
`what's going on here. So we have this changing infringement
`theory just to try to artificially boost damages, an
`undisclosed theory that Your Honor strikes, and then they try
`to end-run the ruling by sneaking it in a different way at
`trial forcing Your Honor to again strike it and take the issue
`from the jury.
`So we had an entire trial on a patent where there was no
`possibility of damages because of essentially the litigation
`conduct of Finjan. Had they not tried to change their theory,
`they could have tried to get the one -- whatever percentage of
`the $1.8 million of damages they wanted, but that's not what
`they did.
`Another example relates to the '780 patent which has to do
`with notice. The question was: Did they provide actual or
`constructive notice to Juniper about this patent? They
`actually had their head of licensing lie. They signed a false
`interrogatory response where they said in a phone conversation
`they had expressly talked about this with a representative from
`Juniper. We deposed the guy. That's what he said.
`Then we were ultimately able to go find a recording of the
`conversation; and when we played the recording of the
`conversation, there's absolutely no reference to this
`whatsoever. It was made up. That was on actual notice for
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 11
`
`that patent.
`Then they also -- then there was an instance, and we cite
`some of this in the briefing, where they said they'd given a
`presentation to Juniper or to Cyphort, the predecessor of
`Juniper, where they said they provided notice. And we had a
`hearing on this, and Your Honor said, "Okay. Show me the
`presentation. Show me where it says this product infringes the
`'780 patent."
`And they kept pointing to different pages, but every time
`they could not come up with a single reference to that. They
`talked about this patent being asserted against other people.
`They talked about products. Not once was there any reference
`to an accusation of infringement by Cyphort of the '780 patent.
`We had a big hearing on that.
`Then again on notice, they admitted -- Finjan admitted in
`open court that notice. It was their burden under the
`Arctic Cat case. Then they tried to recant that. They tried
`to say, "Well, actually it's not our burden," again just trying
`to walk back -- they're constantly trying to change their
`position to suit, you know, the prevailing winds of the day.
`Whatever the challenge is, they just take a different position
`and it was not supported by the record.
`And, again, I mean, Ms. Brooks -- you know, when I'm
`talking about Finjan counsel, Ms. Brooks was not trial counsel.
`I just want to make clear. They got rid of the counsel that
`
` 12
`
`was trial so none of this is against her, but this is the
`behavior that they engaged in at trial and before.
`THE COURT: Okay.
`All right. Let's hear from Ms. Brooks.
`MS. BROOKS: Thank you very much, Your Honor. Juanita
`Brooks on behalf of Finjan.
`I'd like to start actually where counsel just left off
`about the fact that we were not trial counsel, and that is
`true, but in some ways I think that puts us in somewhat of an
`advantage in that we weren't in the fray.
`And as Your Honor pointed out, the nature of litigation is
`it's adversarial. There's always a winner and there's always a
`loser; and of course if you end up on the losing side, that
`automatically means that you have to pay attorneys' fees, that
`would be the end of the adversarial system that we have.
`So we at Fish & Richardson were sort of not in the fray,
`but we do have the record and so we can look at it and we can
`look at it sort of in a very cold fashion rather than in a
`passionate, heated fashion and see what is there.
`And I'd like to start by also addressing we did,
`Fish & Richardson, handled the appeal and counsel mentioned
`that the appeal, quote, "didn't even merit an opinion."
`I'd like to point Your Honor to a case that just came out
`of the Federal Circuit two days ago, and it is the -- so we
`don't have an actual Fed. Circuit cite yet, but it's
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
` 14
`
`Case 3:17-cv-05659-WHA Document 661-7 Filed 06/10/21 Page 5 of 8
` 13
`Innovation Sciences LLC -- Virginia Innovation Sciences, Inc.,
`vs. Amazon, and the number is 2020-1639 decided on January 5th,
`2021. Now, it is nonprecedential but it is very informative of
`this issue as to the merits of the appeal.
`This was an attorney fee issue, and what the court -- the
`Federal Circuit went out of its way to say is that, and I'm
`quoting now from page 6 of the opinion (reading):
`"To the extent that the argument attempts to tie the
`fact of an earlier Rule 36 affirmance without opinion to
`the later imposition of sanctions by the district court,
`we hasten to urge caution. We categorically reject the
`implication of Amazon's argument that an affirmance by
`this court under Federal Circuit Rule 36 provides any
`information about whether a case was close, frivolous, or
`noncontroversial."
`So in saying that the appeal didn't even merit an opinion,
`this court just two days ago, the Federal Circuit, cautioned
`that that says nothing as to the merits of the case or the
`opinion.
`So now let's go back and talk about what happened in
`district court. Your Honor asked if you believe that there is
`a part of the case that is above and beyond I think what you
`characterized as the shenanigans that go on in patent cases,
`which what is it, and counsel first went to the damages. So
`I'd like to address that first, Your Honor.
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`And, again, I think we are at an advantage -- "we,"
`Fish -- of not having been involved in the lower court case in
`that -- or the district court case in that I think what
`happened here is, to quote the movie that I like quite a bit,
`we had a failure to communicate.
`What Juniper counsel keeps saying is that Finjan changed
`its damages model after realizing there was only going to be
`$1.8 million in damages if they stuck with their original
`model. Unfortunately, Finjan failed to adequately articulate
`to Your Honor that, no, there had been no change. The model
`was the model from the beginning.
`From the beginning the technical expert, Dr. Cole, at
`Docket 238-6, specifically said that he was only looking at SRX
`models that are, quote, "capable of interacting with Sky ATP,"
`unquote. So this whole idea that somehow Finjan reverted to an
`SRX-only damages theory, never happened. It was always only
`the SRX models capable of interacting with Sky ATP. So that
`was the technical expert.
`THE COURT: Wait a minute.
`MS. BROOKS: Yes, Your Honor.
`THE COURT: I've got to interrupt you here.
`I remember -- I don't remember every detail now, but I do
`remember this much, and that is when it came time for the
`damages analysis, it turned out that the revenue -- I believe
`you misspoke a minute ago. You said that the damages would
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 15
`have been 1.8. I think it was the revenue on which you would
`have calculated a smaller amount for damages. It turned out to
`be vastly smaller than Finjan had hoped for, and that was when
`we got a brand new infringement theory.
`Now, you'll never convince me that it was -- it was not
`disclosed, it was new, and that's why I threw it out. So
`you'll never convince me that Finjan didn't make a -- what's
`the word on the football field when you completely go in the
`opposite direction? And that's what I believed then, that's
`what I believe now, and you're just arguing against something
`that I lived through. So I believe you're wrong on that. I
`believe that Finjan did flip-flop and come up with a different
`theory so that it could take advantage of a bigger revenue
`base.
`Okay. Go ahead. I interrupted you, but go ahead.
`MS. BROOKS: Oh, no. Thank you, Your Honor. And of
`course I welcome the Court's input.
`And so certainly I'm not here trying to persuade
`Your Honor that Your Honor was wrong. I am simply, though,
`trying to cite to the record as we got it on appeal and what we
`saw in there, and what we saw in there was Dr. Cole's expert
`report where he talked about only SRX models that were capable
`of interacting with Sky ATP, that that's all he considered.
`And then the damages expert, Mr. Arst, took that opinion and
`applied it only then to models that were capable of interacting
`
` 16
`with Sky ATP, and that's at Docket 228-7 and specifically his
`supplemental Exhibit 1.5.
`Now, I know that I -- I know when I'm fighting an uphill
`battle and this is not a hill that I want to die on so let me
`just also answer Your Honor's other question, which is if you
`find, for example, that you cannot be persuaded, that you
`believe that Finjan absolutely changed its damages theory and
`you think that that fact would cause this case to stand out on
`that issue, you do have the discretion to simply carve out that
`issue and ask Juniper to supply the Court with the numbers
`that -- the fees that they ran up to defend on that particular
`issue stand-alone. And so Your Honor certainly has the
`discretion to do that.
`I would submit, however, Your Honor, that, once again,
`because Finjan had a good faith belief that it wasn't changing
`its damages theory, it was relying on Dr. Cole's report that
`had always said what it said about Sky ATP -- SRX plus Sky ATP
`and Mr. Arst's report that it always said SRX plus Sky ATP;
`and, therefore, that doesn't make this case exceptional or even
`that issue exceptional.
`And I'll stop, Your Honor, and see if you have any
`questions.
`THE COURT: Well, I'm going to come back. I want you
`to continue, but I want Mr. Kagan to respond to what I just
`heard because it's important to me. I want to make sure I got
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
` 18
`
`Case 3:17-cv-05659-WHA Document 661-7 Filed 06/10/21 Page 6 of 8
` 17
`the record correctly on whether or not there was a flip-flop.
`Okay. You continue, Ms. Brooks.
`MS. BROOKS: Thank you, Your Honor.
`Going next to the argument by Mr. Kagan regarding whether
`there was actual or constructive notice on the '780 patent, I
`would refer Your Honor to page 20 of our brief that contains a
`figure that was also submitted in our Blue brief to the
`Federal Circuit, and what that figure is is what Finjan relied
`on to show what it believed to be actual notice of the '780
`patent to Juniper's predecessor Cyphort.
`And if you look at the figure highlighted in yellow is the
`'780 under Finjan patents. Yes, the party in that case was
`Blue Coat and you see, again, below that another party called
`Secure and again the '780; but underneath that, what Finjan has
`written is (reading):
`"Finjan has been awarded over $67 million in patent
`enforcement while establishing royalty rates and that the
`PTAB has denied 12 IPR petitions against Finjan."
`The purpose of this presentation of Cyphort was a
`discussion about licensing the portfolio of Finjan, and it was
`Finjan's position that any patent that was listed in this
`presentation put Cyphort on notice as to that patent and it's
`Finjan's belief that Cyphort was infringing.
`Now, Your Honor disagreed with that and said it has to be
`more and Your Honor specifically actually said, "I want to see
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`claim charts." Again, does that make Finjan's position
`objectively unreasonable simply because, you know, Your Honor
`had a different view? I would certainly hope not.
`And the standard -- we agree that Octane Fitness applies
`but Octane Fitness just doesn't simply use the word "stand
`out." It talks about is the case objectively baseless and the
`claims in an unreasonable manner, is it frivolous, was there
`bad motivation. So there has to be something more than, "Oh,
`this stands out for me." There has to be something more than
`that the Court disagreed with Finjan or that a jury disagreed
`with Finjan, and there is nothing more here.
`And, in fact, I argued the appeal at the Federal Circuit
`and they were very interested in this issue about where's the
`line from not enough notice to enough notice. Is it claim
`charts? And I believe they all agreed, no, it doesn't have to
`go that far. But is it listing a patent the way we did here in
`a presentation? Is that enough? And I had a very spirited
`discussion on that.
`And so clearly it's a good faith belief -- Finjan's belief
`that it's enough. Your Honor felt it wasn't. The
`Federal Circuit didn't speak to it one way or another because
`they simply did a Rule 36 affirmance. But, again, is that
`issue enough to have it stand out -- this case stand out and
`make it an exceptional case where that issue in and of itself
`is exceptional? I would say it isn't, Your Honor.
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 19
`
`And the remaining issue --
`THE COURT: Wait a minute.
`MS. BROOKS: Yes, Your Honor, I'll stop.
`THE COURT: Two points I want to ask you about on
`that. One is that -- I'm vaguely remembering this part.
`Blue Coat was not our defendant. Our defendant was Juniper.
`So how can something that Blue Coat is infringing possibly put
`Juniper on notice that it infringes?
`I recognize I think somewhere along the line Juniper
`acquired Blue Coat. Am I right about that? But that's still a
`different company. So let me just pause there. What is your
`answer to that?
`MS. BROOKS: My answer is, Your Honor, that that's
`absolutely right, Blue Coat was a different company. What
`Finjan's position was, is that they marshaled the patents that
`Finjan believed Cyphort, Juniper's predecessor -- so I'll just
`call it Juniper -- that Finjan believed Juniper was infringing.
`So they put them on a flyer, and this was in June of 2016, and
`they showed Cyphort or Juniper it's history -- the history of
`these particular patents and how they had successfully asserted
`them against other companies in the past and had actually
`obtained a significant amount of money from the enforcement of
`those patents.
`Finjan's position was that was sufficient to put Juniper
`on notice of these particular patents that were listed: The
`
` 20
`'194, the '780, the '822, and then three others. Juniper said,
`"No, it wasn't."
`THE COURT: Of what? Did they refer to a Juniper
`product and say, "Here's how the Juniper product infringes"?
`What was the notice supposed -- is it just notice of the patent
`and notice of the patent alone would be enough?
`MS. BROOKS: No. They actually identified a product,
`the Advanced Threat Defense Platform or the ATP. And, again,
`this is all part of the large slide deck and Your Honor can see
`it's at Docket 392-16, but it's also laid out on page 20 of our
`brief.
`And so is this one where reasonable minds can differ?
`Absolutely. Your Honor clearly disagreed with Finjan's
`position.
`But that's not the question for fees. The question for
`fees is was this objective -- was Finjan's position objectively
`unreasonable such that this becomes an exceptional case, and I
`would submit the fact that I could stand up there before three
`Federal Circuit judges and we could have a very robust debate
`about it and have questions about it shows that reasonable
`minds can differ on this issue. And Finjan has every right to
`try to make law in this area and get some clarification. Does
`it have to be claim charts or is a presentation like this
`enough?
`And so the issue is were we objectively unreasonable or
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
`
`
`9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 3:17-cv-05659-WHA Document 661-7 Filed 06/10/21 Page 7 of 8
` 21
`
` 22
`
`that point.
`MS. BROOKS: Thank you, Your Honor.
`So, again, in this instance I'm at a bit of a disadvantage
`not having been trial counsel; and if Your Honor wants to pose
`that question directly to trial counsel, Your Honor did
`maintain jurisdiction over trial counsel when allowing them to
`substitute out. You maintained jurisdiction over them for the
`purpose of this type of a hearing.
`But I would point out that my understanding is that the
`witness who is an attorney and is still in good standing
`apparently had a faulty memory truly believed that -- I
`guess -- I think he was at the meeting.
`And I don't want to -- I have to be careful what I say
`here because, again, this situation I'm at a disadvantage
`because this was not brought up as a reason for sanctions in
`the fees motion; but my understanding is that the witness had a
`good faith memory that the patent was specifically called out,
`the '780, wasn't aware of the recording, the recording wasn't
`played at his deposition to give him an opportunity apparently
`to say, "Oh, whoa. Now that I hear that, I guess I was wrong."
`And so my understanding is that's how it happened, and
`certainly that was not given to the jury. The witness did not
`decide "I'm going to ignore the recording and still go with my
`apparently faulty memory and claim that the '780 was
`specifically discussed."
`
`somehow proceeding in bad faith, and clearly we were not.
`THE COURT: Let me -- I've got one other question, and
`
`then --
`
`MS. BROOKS: Yes, Your Honor.
`THE COURT: -- in 15 minutes I have another calendar
`that I've got to go get ready for, but I had this question.
`I do have a distinct memory of a declaration that your
`side put in, somebody in the Finjan company, that said flat out
`that particular patent had been discussed verbally with someone
`from Juniper. And I don't remember if I actually made a ruling
`at the time, but I remember thinking, "Okay. That's probably
`enough to go to the jury that there was -- somebody's willing
`to say under oath that they had that conversation."
`And then it turned out a bit later in the case that there
`was a recording made, I believe by somebody at Juniper, of that
`very conversation and they transcribed it and it was not true.
`It was not true that that patent was mentioned.
`So I was very disturbed by that. I've got to tell you, I
`came close to referring that to the U.S. Attorney but I did
`not. But I want you to know this is the kind of stuff that
`goes on in your patent cases -- in all patent cases where
`somebody just says, "Oh, by the way, oh, yeah, I can say that.
`That's the ticket. I told them about that. Yeah, it's verbal.
`I told them." And it really does burn me up that that
`happened. So I want to give you a fair chance to respond to
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 23
`THE COURT: Well, you know, if he had done that, he
`would have been soundly impeached.
`But let's -- I just want to step back and give you patent
`lawyers a sense of why I think the patent law, even though I'm
`sworn to uphold it and I do, I feel like I've got -- I'm way
`down at the district court, but I see enough.
`Here's a law that says you've got to give notice. Well,
`most people think that means in writing and it is so easy to
`give it in writing. You just send a letter and you see it and
`it's done. It's done. Once it's in writing, they send you a
`letter. It can even be by e-mail. It's so easy to do.
`And then when it's not done, somewhere along the line
`somebody convinced a judge to say, "Well, verbal is enough.
`Verbal is enough. You don't have to do it in writing." And
`maybe there's a compelling case where verbal was enough. So
`then somebody then takes that and says, like in your case,
`"Well, it's not in writing. It was a long conversation. We
`discussed different patents, and I'm positive we discussed the
`'780 patent," or whatever the patent number was.
`So it has gone now from something that could be easily
`don