Case 3:18-cv-02621-WHO Document 242 Filed 12/03/19 Page 1 of 6
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`TENTATIVE RULING
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`Finjan v. Check Point, 18-cv-02621
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`Below are my tentative rulings on the issues presented regarding the Second Amended
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`Infringement Contentions. I hope this will focus the parties’ arguments. Each side will have 30
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`minutes to address any issues of concern: Finjan will start. Please note my order at the end of
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`this document.
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`ISSUE (1): Does Finjan continue to accuse products and theories that were previously struck
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`with prejudice in the AIC Order because Finjan:
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`(a) did not cite any source code citations for those products;
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`(b) contentions were incomplete because Finjan provided source code citations for
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`some elements of an asserted claim but not others;
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`(c) accused a marketing term and not a product?
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`TENTATIVE (1): Yes. To the extent that Finjan’s SAICs continue to not provide any source
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`code or fail to explain why source code for one product shows infringement in a wholly different
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`product, those contentions are stuck with prejudice. However, to the extent the SAICs accuse the
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`marketing term CloudGuard, it is understood that Finjan is referring to the product CloudGuard
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`SaaS. More details below:
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`(a) Yes. In the AIC round, Check Point provided an Appendix that showed 30 of the
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`52 instrumentalities did not include any source code citations at all. Finjan did
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`not respond to this argument in the AIC Round, which I noted in the last hearing.
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`Now Finjan is contesting the accuracy of that Appendix. But Check Point is
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`correct in showing examples that even if Finjan did give some source code
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`citations to those 30 products, it was for wholly irrelevant code related to other
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`products. Finjan does not explain why the code for X product is relevant to
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`infringement contentions about Y product.
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`(b) Yes. Other than the 30 instrumentalities struck because no source code was cited
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`(or irrelevant source code was cited), there were other contentions that were also
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`struck because Finjan did not give pinpoint citations to all elements of the claim.
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`Finjan again contests the accuracy of the Appendix. But Check Point’s examples
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`shows that even if some code was cited, it was code from a wholly different
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`product. Finjan had access to the source code directory for each product
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`(Interrogatory No. 9), so it does not have an excuse to pin cite irrelevant source
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`code without an explanation.
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`(c) No. The AIC Order did not address CloudGuard as a marketing term; the
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`marketing term addressed was ThreatCloud, which was then struck with
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`prejudice. Finjan previously included contentions against “CloudGuard”
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`marketing term, which Check Point argued that it understood to be “CloudGuard
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`SaaS” product. Check Point recognized that Finjan’s AIC charts were purporting
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`to describe infringement theories for a list of actual products, which included
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`“CloudGuard: CloudGuard Saas.” See Defendants’ Motion to Strike Amended
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`Infringement Contentions [Dkt. No. 125-4].
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`ISSUE (2): Does Finjan include new accusations including:
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`(a) new products and patents;
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`(b) new claims;
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`(c) new combinations?
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`TENTATIVE (2): Yes. To the extent Finjan includes new products or adds that existing
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`products infringe on other patents that were not previously asserted, those contentions are struck
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`with prejudice. Finjan’s new combination contentions in its SAICs that were not previously
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`included are also struck with prejudice. More details below:
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`(a) Yes. Finjan attempts to argue that it accused these products in its AICs by
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`pointing to wholly different charts, within a contention for something else
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`entirely. Check Point claims that all of Finjan’s “rebuttals” in this section have
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`Case 3:18-cv-02621-WHO Document 242 Filed 12/03/19 Page 3 of 6
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`the same flaw.
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`(b) Yes. Check Point argues that Finjan has taken products that up to this point had
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`only been accused of infringing a claim in combination with other products, and
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`now in the SAICs adds that these products also infringe the claim on its own.
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`Finjan does not respond to this argument. It only shows that previous IC charts
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`showed the combinations, which misses the point.
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`(c) Yes. Finjan attempts to argue that it accused these product combinations in its
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`AICs by pointing to code cites that appear in the middle of claim charts for
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`entirely different products.
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`ISSUE (3): Does Finjan fail to adequately identify and explain the accused combinations?
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`Specifically, does Finjan fail to:
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`(a) identify and explain how SmartEvent or Forensics infringe the ‘494 and ‘086 in
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`combination with other accused instrumentalities;
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`(b) assert that Network Firewall practices any limits of the ‘968 ‘154 and ‘731
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`Patents;
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`(c) identify whether Anti-Bot or Anti-Virus practice limitations of the ‘154 claims for
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`show how they work together?
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`TENTATIVE (3): Yes. Finjan does not specify which instrumentalities are combined, and even
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`if it does, it does not describe how that combination infringes. More details below:
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`(a) Yes. Finjan does not identify which instrumentalities can combine with
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`SmartEvent or Forensics to infringe ‘494 and ‘086 in combination. Instead, it
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`contains generic combination language that states that these two products can be
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`combined with “any other Endopint Security Instrumentality.” Finjan argues that
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`specifying the combination any further would have required it to make an
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`additional 2,000 charts. But the way it is charted now would allow it to have
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`enormous leeway on how it could allege the combinations at trial.
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`(b) Yes. Finjan’s statement for Firewall + Threat Emulation is virtually identical to
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`the statement for Threat Emulation alone, which means that it does not show
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`specifically how Firewall is used in combination with Threat Emulation.
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`(c) Yes. Finjan only shows that the Anti-Bot instrumentality and Anti-Virus
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`instrumentality operate together using a shared ThreatSpect engine, but that still
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`does not sufficiently explain how the instrumentalities from the combination
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`satisfy a specific claim element.
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`ISSUE (4): Does Finjan include long open-ended citations to entire source code directories in an
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`effort to preserve its ability to expand/change its theories later in the case?
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`TENTATIVE (4): No, as long as Finjan’s disclaimer is clear. Check Point accuses Finjan of
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`including block source code cites after each of its pin cites. Finjan quotes Judge Hixson’s recent
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`order in Finjan, Inc. v. Bitdefender, Inc., et. al., where he understood that as a functional matter,
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`you can’t operate just the infringing code – it won’t work, and therefore in a technical sense
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`won’t “infringe” unless it is used with other code to make it operable. Finjan argues that it added
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`disclaimers before its block citations that clarifies that these citations are not to show
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`infringement but to provide context of the operability of its pinpoint source code citations in
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`those charts. Finjan says it will not rely on block citations to show infringement at trial, just to
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`show how the pinpoint citations operate.
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`ISSUE (5): Has Finjan failed to provide pinpoint source code citations for numerous
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`contentions?
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`TENTATIVE (5): Yes. Checkpoint provides a table that shows missing or deficient source code
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`citations and Finjan does not adequately rebut it. First, Finjan attempts to fill in those gaps by
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`directing attention to cites from other claim elements. Second, its argument that some dependent
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`claims don’t need cites fails because it does not incorporate citations in the independent claims
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`by reference. Third, its attempt to provide a “corrected” chart in its opposition will not be
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`tolerated; Finjan has had multiple shots at this already. Fourth, it attempts to argue that the AICs
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`included pinpoint cites, but that is irrelevant now because the SAICs don’t include those pinpoint
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`cites. The SAICs are what is operable now.
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`ISSUE (6): Does Finjan fail to specify how the cited source code shows that the accused products
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`infringe Finjan’s patents? Specifically, do:
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`(a) Finjan’s source code citations remain largely unexplained and untethered to the
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`language of the asserted claims;
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`(b) Finjan’s SAICs repeat the same code for disparate limitations with no explanation
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`as to why it applies?
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`TENTATIVE (6): Yes. All contentions where Finjan fails to actually explain how the cited
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`source code relates to each limitation, and all instances where Finjan cites the same code for
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`different limitations without providing an explanation, are struck with prejudice. More details
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`below:
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`(a) Yes as to the IPS example; maybe for all instances. Appendix A to Check Point’s
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`motion is a table illustrating that Finjan fails to explain how the cited source code
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`shows that the accused products meet the requirements of the asserted claims for
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`at least one claim limitation in every allegation in the SAICs. The parties use
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`Network IPS blade for limitation 1b of the ‘731 Patent as an example; I
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`previously addressed this example in the IC Order. To the extent that the IPS
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`example is illustrative, Finjan has failed to actually explain how the cited source
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`code relates to each limitation. I do not intend to cross check every allegation, but
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`I will strike the examples provided in Check Point’s Appendix A (a table
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`illustrating that Finjan fails to explain how the cited source code shows the
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`accused products meet the requirements of the asserted claims for at least one
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`claim limitation in every allegation in the SAICs).
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`(b) Yes. Finjan continues to cite the same source code for different limitations,
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`different patents, and different products without explaining why the same source
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`code applies in these different cases. Finjan attempts to rebut this by showing
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`how Check Point’s invalidity contentions are insufficiently pinpoint cited, but that
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`is not the subject of this motion. Finjan’s response that it has always cited
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`additional code files beyond what overlaps is false as illustrated by IPS charts for
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`‘494 Patent 10d and ’731 Patent 1d, which cite the same 4 files.
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`Even if some of Finjan’s contentions cross the hurdle of Issues 1-5 stated above, it is not
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`clear to me if any of Finjan’s contentions satisfy Issue 6. It would help me if Finjan identifies
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`two of its strongest contentions, where it has clearly specified how the cited source code shows
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`that the accused products infringe a particular patent. Finjan must notify Check Point of those
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`two contentions by 6:00 p.m. today. Check Point may explain why each is deficient, if it is, at
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`the hearing.
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