Case 3:18-cv-02621-WHO Document 266 Filed 04/03/20 Page 1 of 18
`
`
`PAUL ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`AUSTIN MANES (State Bar No. 284065)
`amanes@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`FINJAN, INC., a Delaware Corporation,
`
`
`
`
`
`
`Plaintiff,
`
`v.
`
`
`CHECK POINT SOFTWARE
`TECHNOLOGIES, INC., a Delaware
`Corporation; CHECK POINT SOFTWARE
`TECHNOLOGIES LTD., an Israeli Limited
`Company,
`
`
`
`
`
`
`Defendants.
`
`
`
`Case No.: 3:18-cv-02621-WHO
`
`PLAINTIFF FINJAN, INC.’S REPLY IN
`SUPPORT OF ITS MOTION TO CERTIFY
`THE COURT’S JANUARY 17, 2020, ORDER
`(DKT. 247) FOR INTERLOCUTORY
`APPEAL, TO STAY, AND TO PERMIT
`LIMITED DISCOVERY
`
`April 22, 2020
`Date:
`2:00 p.m.
`Time:
`Location: Courtroom 2, 17th Floor
`Judge:
`Hon. William H. Orrick
`
`
`
` CASE NO.: 3:18-cv-02621-WHO
`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`Case 3:18-cv-02621-WHO Document 266 Filed 04/03/20 Page 2 of 18
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`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ....................................................................................................................... 1
`
`ARGUMENT ............................................................................................................................... 2
`
`
`
`The Court Should Certify the Order for Interlocutory Appeal ........................................ 2
`
`
`
`
`
`
`
`The Order Raises a Controlling Question of Law: Does PLR 3
`Require Pincites to Source Code for All Limitations .......................................... 2
`
`a)
`
`b)
`
`Even assuming issues of fact exist, they do not preclude federal
`circuit jurisdiction over this interlocutory appeal. ....................................6
`
`The question Finjan raises is controlling. .................................................7
`
`There are Substantial Grounds for Differences of Opinion ................................. 8
`
`Interlocutory Appeal Will Advance this Case by Eliminating Issues
`and Avoiding the Risk of Duplicate Trials ........................................................ 10
`
`
`
`
`
`Continuing the Stay is Appropriate................................................................................ 12
`
`Limited Discovery is Appropriate if the Order is Not Certified for Appeal .................. 12
`
`III.
`
`CONCLUSION .......................................................................................................................... 13
`
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`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Ambrosio v. Cogent Commc’ns, Inc.,
`No. 14-CV-02182-RS, 2016 WL 777775 (N.D. Cal. Feb. 29, 2016) ................................... 10, 11, 12
`
`Banneck v. Fed. Nat’l Mortg. Ass’n,
`No. 17-CV-04657-WHO, 2018 WL 5603632 (N.D. Cal. Oct. 29, 2018)............................... 8, 10, 11
`
`In re Cement Antitrust Litig. (MDL No. 296),
`673 F.2d 1020 (9th Cir. 1981) ............................................................................................................ 8
`
`Chiron Corp. v. Abbott Labs.,
`No. C-93-4380 MHP, 1996 WL 15758 (N.D. Cal. Jan. 3, 1996) .................................................... 11
`
`In re Convertible Rowing Exerciser Patent Litig.,
`903 F.2d 822 (Fed. Cir. 1990)............................................................................................................. 6
`
`Dukes v. Wal-Mart Stores, Inc.,
`No. C 01-02252 CRB, 2012 WL 6115536 (N.D. Cal. Dec. 10, 2012) ............................... 6, 7, 11, 12
`
`Finjan, Inc. v. Proofpoint, Inc.,
`No. 13-CV-05808-HSG, 2015 WL 9023166 (N.D. Cal. Dec. 16, 2015) ........................................... 9
`
`Fujitsu Ltd. v. Tellabs, Inc.,
`539 F. App’x 1005 (Fed. Cir. 2013) ................................................................................................... 7
`
`MLC Intellectual Prop., LLC v. Micron Tech., Inc.,
`794 F. App’x 951 (Fed. Cir. 2020) ..................................................................................................... 6
`
`MLC Intellectual Prop., LLC v. Micron Tech., Inc.,
`No. 14-CV-03657-SI, 2019 WL 5269014 (N.D. Cal. Oct. 17, 2019)................................................. 6
`
`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006)............................................................................................... 2, 3, 5, 8
`
`Omni MedSci, Inc. v. Apple Inc.,
`No. 19-CV-05924-YGR, 2020 WL 759514 (N.D. Cal. Feb. 14, 2020) ................................... 3, 7, 10
`
`Reese v. BP Exploration (Alaska) Inc.,
`643 F.3d 681 (9th Cir. 2011) ........................................................................................................ 9, 10
`
`Steering Comm. v. United States,
`
`6 F.3d 572 (9th Cir. 1993) ................................................................................................................. 6
`
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`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDERED ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`Case 3:18-cv-02621-WHO Document 266 Filed 04/03/20 Page 4 of 18
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`
`In re Text Messaging Antitrust Litig.,
`630 F.3d 622 (7th Cir. 2010) ...................................................................................................... 3, 6, 7
`
`Tri-Star Elecs. Int’l, Inc. v. Preci-Dip Durtal SA,
`619 F.3d 1364 (Fed. Cir. 2010)....................................................................................................... 6, 7
`
`Other Authorities
`
`Patent Local Rule 3 .......................................................................................................................... passim
`
`
`
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`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDERED ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`Case 3:18-cv-02621-WHO Document 266 Filed 04/03/20 Page 5 of 18
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`I.
`
`INTRODUCTION
`The Court should certify the Order because it raises the important legal question of whether
`Patent Local Rule (“PLR”) 3 requires a plaintiff to prove every element of every claim in its
`infringement contentions using nothing but pincites to source code, and before sufficient discovery has
`been taken. This is a controlling question of first impression in patent law over which Courts disagree,
`and as such it is especially appropriate for interlocutory review by the Federal Circuit. Certifying the
`Order will also materially advance this case by lessening the burden on the courts and parties.
`In its Opposition (Dkt. No. 264, “Opposition or “Opp.”), Check Point attempts to obscure this
`key point – that the Court would not accept infringement contentions that did not identify every claim
`element through detailed explanations of source code citations, even if those elements were fully
`disclosed in other evidence included in the contentions in addition to source code. This issue does not
`raise a factually complicated question, and it can be easily addressed on appeal without reviewing the
`factual record. The Opposition failed to address much of Finjan’s evidence showing that diverging
`views on this issue make it ripe for Federal Circuit guidance. Moreover, the Opposition misapplied the
`law on whether certification will advance this case, which calls for considering the effect a reversal
`would have, not what the Court estimates the chances are that it will be reversed on appeal.
`Rather than grapple with the relevant standard, Check Point resorts to a series of red-herring
`arguments and detours into mischaracterizations of the case history to try to transform this simple legal
`issue into a discovery dispute. For example, Check Point falsely claims that the Order did not turn on
`source code because it only struck two contentions for inadequate source code citations (Network
`Firewall and Network Anti-Spam & E-mail Security), which were also struck under other grounds.
`Opp. at 13-17. However, the Order also struck contentions for Network IPS, Endpoint Threat
`Emulation, and Network Anti-Virus solely for inadequate source code citations under “Issue 6,” which
`is an issue based only on source code, and in doing so cited only deficiencies in the source code
`citations for those contentions. Order at 29-37. This misrepresentation is representative of Check
`Point’s superficial analysis and the liberties it takes with the record, which are further addressed below.
`
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`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`As another example of Check Point’s unfounded arguments, Check Point incorrectly claims
`that the Court’s reliance on Check Point’s untested factual allegations did not affect the Order’s
`outcome. Opp. at 24. However, the Order struck contentions based only on Check Point’s disputed
`assertions that the source code Finjan cited was not part of an accused product, and instead merely
`provided services to that product. Order at 10-11. Finjan disputed Check Point’s positions on the
`correct source code to cite with an expert declaration to support its positions, but the Court accepted
`Check Point’s assertions as true and struck contentions because Check Point claimed the code Finjan
`cited was not really part of the product Finjan cited that code for. Id.
`Finally, if the Court certifies this issue for appeal, Finjan respectfully requests that the Court
`stay the Special Master proceedings pending that appeal. Any analysis by the Special Master will be
`irrelevant if the Federal Circuit reverses the Order’s steep requirements for pincites to source code for
`every limitation.
`ARGUMENT
`II.
`
`
`
`The Court Should Certify the Order for Interlocutory Appeal
`
`
`
`The Order Raises a Controlling Question of Law: Does PLR 3 Require
`Pincites to Source Code for All Limitations
`The Order raises a controlling question of law because it materially affected the outcome of this
`case when it struck infringement contentions from a patent infringement action with prejudice, based
`on a requirement for pincites to source code under PLR 3. Check Point tries to rewrite the Order as an
`exercise of the Courts discretion to manage its docket and somehow not an application of PLR 3.
`However, the Order interpreted PLR 3 to require a specific type of evidence, pincites to source code,
`and struck Finjan’s contentions under PLR 3. Order at 7-9. Indeed, the legal standard that the Court
`applied was limited to PLR 3. Id. Thus, the Order presents a pure question of law over the proper
`interpretation of PLR 3.
`The Federal Circuit has jurisdiction to review orders interpreting patent local rules, especially
`where they are interpreted in a manner that is contrary to the spirit of the Patent Act, the Federal Rules
`of Civil Procedure, or other “acts of Congress,” as is the case here. O2 Micro Int'l Ltd. v. Monolithic
`
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` CASE NO.: 3:18-cv-02621-WHO
`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`Power Sys., Inc., 467 F.3d 1355, 1365 (Fed. Cir. 2006) (a local rule that is “contrary to the spirit of” or
`“inconsistent with the purposes of a federal rule is also invalid”).
`Immediate appeal is appropriate because whether a District Court may require pincites to
`source code for every limitation under local rules is a pure question of law that the Federal Circuit
`“could decide quickly and cleanly without having to study the record.” In re Text Messaging Antitrust
`Litig., 630 F.3d 622, 626 (7th Cir. 2010); O2 Micro, 467 F.3d at 1364 (the Federal Circuit has
`jurisdiction over issues unique to patent law). Further, the Federal Circuit has not addressed this
`question, making it a “novel legal issue appropriate for interlocutory appeal.” Omni MedSci, Inc. v.
`Apple Inc., No. 19-CV-05924-YGR, 2020 WL 759514, at *2 (N.D. Cal. Feb. 14, 2020).
`Check Point ignores this clean legal issue in a flawed attempt to muddle the question by
`recasting the Order as based on a series of factual findings. However, the Court’s directive in the
`Order is unambiguous and held that Finjan must “clearly specify how the cited source code shows that
`the accused products infringe” (Order at 2), “provide pinpoint source code citations for each
`limitation” (id. at 6), and “adequately explain its source code citations” (id. at 31). Further, the Court’s
`analyses under Issue 6 were limited to identifying shortcomings in Finjan’s citations to source code.
`See, e.g., id. at 32 (analyzing only a “single cite” of source code and describing what that code fails to
`show); id. at 33 (discussing only code citations to determine whether they disclose theories); id. at 34
`(relying only on source code citations). Thus, the Order struck contentions based on a failure, in the
`view of the Court, to provide and explain sufficient pincites to source code, and further directs the
`Special Master to review the remainder of Finjan’s contentions using that same standard, for which
`Finjan seeks review. The Federal Circuit does not need to review the factual record to determine if this
`was proper.
`Check Point erroneously contends that the source code issue is not controlling because every
`contention struck for source code was, according to Check Point, also struck on at least one alternative
`ground. Opp. at 13-17. Check Point plainly misstates the record because the Order struck the
`contentions Network IPS, Endpoint Threat Emulation, and Network Anti-Virus solely for inadequate
`source code citations and they were not struck on any other grounds. Id. at 29-37. Furthermore, all of
`
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`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`

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`Case 3:18-cv-02621-WHO Document 266 Filed 04/03/20 Page 8 of 18
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`the contentions that were struck for source code citations will have a dramatic impact on the outcome
`of this case because the Special Master will consider them while reviewing the remaining contentions
`under that same standard.
`Check Point tries to obscure the purpose of Finjan’s request for interlocutory appeal by arguing
`that the Court considered Finjan’s contentions, and the Order was not limited to Finjan’s citations to
`source code. Opp. at 13-17. However, under Issue 6 the Order limited its analysis only to the pages of
`Finjan’s contentions that contained code and ignored the rest of these contentions, as shown above.
`See, e.g., id. at 32-34. Check Point knows that Issue 6 turned only on source code citations for every
`single element because its motion to strike contained six pages entirely devoted to source code
`citations, which gave rise to Issue 6. Id. at 29-37; Dkt. No. 212-4 at 17-24. Therefore, Check Point’s
`argument that the Order did not strike Finjan’s contentions based on source code, but rather for failing
`to put Check Point on notice, also fails. Opp. at 12-13.
`Check Point also incorrectly argues that the Order presents questions of fact because it is “the
`culmination of several prior orders that were tailored to the facts of this case.” Id. at 10. However, the
`procedural history does not change the specific question for appeal, namely, whether the Court may
`require pincites to source code under PLR 3. This pure question of law is the common requirement
`that runs through every prior order that Check Point cites, as the Opposition makes clear. See Opp. at
`2-6 (describing how all prior orders, including the Narrowing Order (Dkt. No. 29) issued after the Case
`Management Conference, turned on a requirement for pincites to source code for every limitation).
`Thus, these prior orders do not present questions of fact that would prevent the Federal Circuit from
`considering the pure legal question of whether PLR 3 requires pincites to source code.
`To incorrectly argue that the Court’s source code requirement was not dispositive, Check Point
`contends that the Court also found the other portions of Finjan’s infringement contentions that did not
`rely on source code inadequate. Opp. at 15-16. Check Point then argues that the Court’s evaluation of
`non-source code evidence brings in factual issues that are not amenable to interlocutory appeal. The
`flaw in Check Point’s argument is that the Court struck Finjan’s infringement contentions solely based
`
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`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`on what was allegedly missing from the citations to source code (as explained with citations above)
`which gives rise to the question at issue. See Order at 29-37 (striking contentions under Issue 6).
`For example, Check Point argues that there are factual issues that would need to be determined
`on appeal because the Court, in its first order regarding the infringement contentions (Dkt. No. 84),
`generally discussed Finjan’s analysis beyond citations to the source code. Opp. at 11-16. However,
`these citations just confirm that the Court did not consider the contentions as a whole, which included
`additional descriptions beyond citations to source code, and struck contentions based only on their
`source code citations. Id. Even considering the example Check Point provides with respect to Claim
`17 of the ‘731 Patent shows that Finjan properly identified the claim element. Opp. at 16. Finjan
`described what it accused of performed the scanning and creating a security profile for the file, with at
`least one computer command, by describing that Check Point meets this element because it includes
`“an emulation engine that analyzes the files to determine if they are malicious and will record
`computer commands like commands that change the registry and start unauthorized processes.” Opp.
`at 16; Dkt. No. 223-15 (Kobialka Decl.), Ex. 73 at 7 (emphasis added). Finjan provided citations to
`Check Point’s own technical documentation that explained exactly what in Check Point’s products
`performed these operations, using the terminology for them that Check Point uses itself. Id. The
`Order did not take this analysis into consideration and struck contentions based only on Finjan’s source
`code citations. Order at 33. Whether the Court was incorrect in ignoring this analysis is a legal issue
`that can be decided on appeal. O2 Micro, 467 F.3d at 1365.
`Finally, there is no merit to Check Point’s argument that if the Court certifies this Order for
`immediate appeal, then every order striking infringement contentions would be ripe for such review.
`This motion is based on resolution of a clear legal issue not yet decided by the Federal Circuit – does
`PLR 3 require source code pincites for every limitation in cases accusing software of infringement?
`The Order interpreted PLR 3 in a manner that set the bar for initial infringement contentions so high,
`requiring every limitation to be established only with pincites to source code, that it created an
`unreasonable burden on patent owners to exercise their property rights against infringing software.
`This is a question of first impression.
`
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`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`a)
`
`Even assuming issues of fact exist, they do not preclude federal
`circuit jurisdiction over this interlocutory appeal.
`Even if the Court finds that this appeal would present issues of fact in addition to the overriding
`issue of the interpretation of PLR 3, those issues would not prevent certification of this Order because
`the Federal Circuit accepts interlocutory appeals involving mixed questions of law and fact. See, e.g.,
`MLC Intellectual Prop., LLC v. Micron Tech., Inc., 794 F. App’x 951, 952 (Fed. Cir. 2020) and MLC
`Intellectual Prop., LLC v. Micron Tech., Inc., No. 14-CV-03657-SI, 2019 WL 5269014, at *4 (N.D.
`Cal. Oct. 17, 2019) (accepting a certified order that involved issues of fact including whether a party
`disclosed facts during discovery and whether an expert opinion was supported by the underlying
`evidence); Tri-Star Elecs. Int’l, Inc. v. Preci-Dip Durtal SA, 619 F.3d 1364, 1367 (Fed. Cir. 2010)
`(accepting interlocutory appeal that required looking to the facts of “the contracting parties’ mutual
`intent”).1 Ultimately, the Federal Circuit exercises its own discretion on whether it has jurisdiction. In
`re Convertible Rowing Exerciser Patent Litig., 903 F.2d 822, 822 (Fed. Cir. 1990); see also In re Text
`Messaging, 630 F.3d at 625–27.
`For example, the In re Text Messaging case is analogous and shows why interlocutory appeal is
`appropriate here, even if there are some related issues of fact. There, the Seventh Circuit accepted an
`interlocutory appeal that presented the question of whether a complaint satisfied the Twombly pleading
`standard. Id. at 625. The In re Text Messaging Court noted the difference between difficult issues of
`fact such as those arising after a summary judgment order, which require “hunting through the record,”
`and lighter issues of fact such as whether a complaint is adequately pled. Id. at 626-27. The Seventh
`Circuit held that mixed questions of fact do not preclude interlocutory appeal, and accepted review
`because reviewing a complaint for sufficient allegations did not require hunting through a deep factual
`record, and also because the application of a pleading standard is a controlling question of law. Id.
`Further, because Twombly’s scope was unsettled, the In re Text Messaging Court held interlocutory
`
`
`1 The Federal Circuit’s approach is consistent with the Ninth Circuit and other courts of appeal.
`“Though the statute specifically references questions of law, the Ninth Circuit has accepted § 1292(b)
`certifications for mixed questions involving application of law to a particular set of facts where the
`attendant legal conclusion was sufficiently important.” Dukes v. Wal-Mart Stores, Inc., No. C 01-
`02252 CRB, 2012 WL 6115536, at *2 (N.D. Cal. Dec. 10, 2012) (citing Steering Comm. v. United
`States, 6 F.3d 572 (9th Cir. 1993) and In re Text Messaging, 630 F.3d 622 (7th Cir. 2010)).
`6
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`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`review was appropriate. Id. at 627 (“Pleading standards in federal litigation are in ferment after
`Twombly and Iqbal, and therefore an appeal . . . is within the scope of section 1292(b).”). Therefore,
`In re Text Messaging is analogous because it involved an important legal standard that was in flux and
`ripe for appellate review, and also because the related issues of fact focused on what is considered
`sufficient notice of the accusations against a party, just as infringement contentions do. Dukes, 2012
`WL 6115536, at *2 (citing In re Text Messaging, 630 F.3d at 625-27) (appellate courts accept mixed
`issues, especially over important issues of law).
`Furthermore, immediate appeal is still proper under these circumstances because Finjan raises
`legal questions of first impression regarding the requirements for infringement contentions that the
`Federal Circuit has not decided, but “could decide quickly and cleanly without having to study the
`record.” Id. at 626. To the extent there are related factual issues, the six contentions that were struck
`in the Order for allegedly insufficient pincites are not a deep record and would not preclude
`interlocutory appeal. Just like the complaint in In re Text Messaging, these six contentions are final
`documents and their allegations speak for themselves. There are also numerous examples of courts
`certifying contractual disputes for interlocutory appeal, which also arguably contain attendant
`questions of fact but, like infringement contentions or a complaint, concern final documents that speak
`for themselves. See, e.g., Tri-Star Elecs., 619 F.3d at 1367; Omni MedSci, 2020 WL 759514, at *1.
`Thus, even if the Court finds that there are attendant factual issues to this pure legal question, the
`Federal Circuit still has jurisdiction to accept this appeal.
`
`The question Finjan raises is controlling.
`b)
`The question of whether source code citations are required in PLR 3 contentions is controlling
`because it materially affected the outcome of this case by striking many of Finjan’s infringement
`contentions, thereby removing these allegations from the case. As shown above, Check Point’s
`argument that the Order did not strike any contentions based solely on source code is incorrect. In any
`event, the Federal Circuit holds that a question of law is “controlling” if “resolution of that issue could
`have an immediate impact on the course of the litigation.” Fujitsu Ltd. v. Tellabs, Inc., 539 F. App’x
`1005, 1007 (Fed. Cir. 2013). Similarly, the Ninth Circuit holds, “all that must be shown in order for a
`
`7
` CASE NO.: 3:18-cv-02621-WHO
`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`question to be ‘controlling’ is that resolution of the issue on appeal could materially affect the outcome
`of litigation in the district court.” In re Cement Antitrust Litig. (MDL No. 296), 673 F.2d 1020, 1026
`(9th Cir. 1981) (emphasis added).
`Furthermore, the Order appointed a Special Master to determine if sixty-seven other
`contentions meet the same requirements for descriptions of pincites set by the Order. Order at 34, 37.
`Check Point agrees that these sixty-seven contentions were not struck for any other reason raised in the
`Order, but argues that, given the Court’s guidance, the Special Master will not find any of these sixty-
`seven contentions meet the source code requirements set by the Order. Declaration of Austin Manes
`(“Manes Decl.”) filed herewith, Ex. 1; Order at 19-20. Thus, Check Point’s own interpretation on the
`impact of the Court’s Order on the Special Master supports Finjan’s argument that the Order presents a
`controlling question of law. Further, the Court’s referral to the Special Master itself had a controlling
`impact on the outcome of the case because Finjan narrowed the contentions from sixty-seven down to
`seventeen for the Special Master’s review, based on the Order’s required descriptions for pincites.
`Thus, the Order materially affected the outcome of this case based on pincites to source code under
`PLR 3. O2 Micro, 467 F.3d at 1366 (infringement contentions shape the proceedings)
`
`There are Substantial Grounds for Differences of Opinion
`
`Substantial grounds for a difference of opinion exist over these questions because Courts have
`issued varying opinions on whether PLR 3 requires citations to source code. Banneck v. Fed. Nat’l
`Mortg. Ass’n, No. 17-CV-04657-WHO, 2018 WL 5603632, at *2 (N.D. Cal. Oct. 29, 2018) (“Some
`examples of substantial ground for difference of opinion include cases in direct conflict with the
`holding in the Order sought for interlocutory review, or a split in authority on the questions posed.”).
`This Order is the only order that has struck contentions with prejudice for failure to prove every
`element through only source code citations, while many Courts disagree on what is required under
`PLR 3 to provide reasonable notice of infringement in a case that involves software. Tellingly, Check
`Point fails to cite a single case holding a plaintiff to such a high standard as the Order applies here.
`In contrast, Finjan provided numerous cases showing that Courts disagree on whether PLR 3
`requires source code citations. Opp. at 17-19. For nearly all of these cases, Check Point’s argument
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` CASE NO.: 3:18-cv-02621-WHO
`FINJAN’S REPLY IN SUPPORT OF MOTION TO CERTIFY
`ORDER ENTERED AT DKT. 247 FOR INTERLOCUTORY APPEAL
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`boils down to its claim that these decisions do not expressly contradict the Order. Id. Check Point’s
`argument is both immaterial and incorrect. It is immaterial because conflicting orders are not required
`to show substantial grounds for a difference of opinion. Reese v. BP Exploration (Alaska) Inc., 643
`F.3d 681, 688 (9th Cir. 2011) (“A substantial ground for difference of opinion exists where reasonable
`jurists might disagree on an issue’s resolution, not merely where they have already disagreed.”).
`Furthermore, Check Point is incorrect because the decisions below do conflict with the Order, and they
`all show that reasonable jurists might (and do) disagree. Id.
`For example, the Proofpoint case shows a clear difference of opinion because that Court
`rejected the argument that “Plaintiff was required to provide pinpoint citations to source code in its
`infringement contentions,” as well as a request that Finjan must “explain how the source codes support
`the infringement contentions.” Finjan, Inc. v. Proofpoint, Inc., No. 13-CV-05808-HSG, 2015 WL
`9023166, at *2 (N.D. Cal. Dec. 16, 2015) (finding Finjan’s contentions sufficient and pincites to
`source code are not required under PLR 3) (emphasis added).
`Similarly, the Zscaler Court also rejected the defendant’s preemptive request for pincites to
`source code at the case management conference, which is the opposite of how this Court ruled on the
`same request from Check Point and shows a difference of opinion. Motion at 11. Finjan was forced to
`serve its initial contentions in Zscaler without any discovery and its first amended contentions shortly
`after Zscaler’s first document production. But notably, three weeks after Finjan deposed Zscaler’s
`Chief Technology Officer regarding its source code, Finjan served second amended contentions that
`Zscaler stated it would no longer challenge. Manes Decl., Ex. 2. Zscaler’s email making this
`concession shows that Finjan’s latest contentions, based on the deposition testimony of Zscaler’s CTO,
`were sufficient to notify Zscaler of Finjan’s infringement theories without pinpoint citations to source
`code. Id. (stating Zscaler understood Finjan’s theories).
`Further, the Opposition failed to address or re