Case 3:18-cv-02621-WHO Document 192 Filed 08/12/19 Page 1 of 19
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
`Plaintiff,
`
`v.
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`CHECK POINT SOFTWARE
`TECHNOLOGIES, INC., et al.,
`Defendants.
`
`Case No. 18-cv-02621-WHO
`
`
`ORDER GRANTING MOTION TO
`STRIKE INFRINGEMENT
`CONTENTIONS IN PART; GRANTING
`MOTION TO STRIKE ATTORNEY
`DECLARATION; GRANTING
`MOTION TO AMEND INVALIDITY
`CONTENTIONS; GRANTING
`MOTIONS TO SEAL
`Re: Dkt. Nos. 125, 126, 129, 130, 131, 137,
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`138, 139, 141, 163, 166, 172, 177, 178
`
`
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`Defendants Check Point Software Technologies, Inc. and Check Point Software
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`Technologies Ltd. (collectively “Check Point”) move to strike Plaintiff Finjan, Inc.’s (“Finjan”)
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`infringement contentions for the second time. I previously granted Check Point’s motion to strike
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`Finjan’s infringement contentions in part and gave Finjan leave to amend its contentions to
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`comply with my Order Re Case Narrowing and Infringement Contentions (the “Narrowing
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`Order”) [Dkt. No. 29] and the Patent Local Rules. Order Granting Motion to Strike in Part;
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`Granting Motions to Seal; Granting Motion to Amend Claim Construction Schedule (the “IC
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`Order”) [Dkt No. 84]. Although Finjan’s amended infringement contentions (“AICs”) are more
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`complete, I agree with Check Point that they are still deficient and violate the IC Order, Narrowing
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`Order, and the Patent Local Rules. I will grant Check Point’s motion to strike the AICs.
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`Check Point also filed two other motions that I will grant. First, I will strike the
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`declaration of Finjan’s attorney, Linjun Xu, attached to Finjan’s opposition to the previous motion
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`to strike, because much of it was made without personal knowledge. Second, I will allow Check
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`Point to amend its invalidity contentions because its motion was unopposed.
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`BACKGROUND
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`
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`In September 2018, I received briefing from the parties on how to manage this litigation in
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`compliance with Federal Rule of Civil Procedure 1’s mandate of a “just, speedy, and inexpensive
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`determination of this action[.]” Narrowing Order. I then ordered Finjan to serve its infringement
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`contentions under specifications that largely follow the provisions of this District’s Patent Local
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`Rules as well as the guidance provided in the since withdrawn 2013 Model Order from the Federal
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`Circuit. Narrowing Order. Finjan was instructed to “include pinpoint source code citations . . .
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`accompanied by the document production required by Patent Local Rule 3-2” and to also:
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`(i) avoid open-ended citations to “exemplary” products and use of the
`terms “such as” and “for example”; (ii) set forth any infringement
`theories based on the doctrine of equivalents with limitation-by-
`limitation analyses; and (iii) for any indirect theories of infringement,
`identify the alleged direct infringement, the alleged acts of
`inducement or contribution to that infringement, and the relationship
`between them.
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`Id. at 2.
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`On November 2, 2018, Finjan served its infringement contentions on Check Point, which
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`then moved to strike the infringement contentions, arguing that they violated my Narrowing Order
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`and the Patent Local Rules. Check Point’s Motion to Enforce Court Order and Strike
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`Infringement Contentions at 1-3, 15-24 [Dkt. No. 55]. I largely agreed that Finjan’s infringement
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`contentions failed to comply in the IC Order, and made several rulings that I summarize below.
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`First, I required Finjan to organize its infringement contentions by the underlying
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`instrumentalities rather than into five groups of products, because that would assist both the parties
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`and me in determining precisely how Check Point’s products do or do not infringe Finjan’s patents
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`and to aid Finjan’s efforts to provide specific source code citations. Id. at 7. Finjan was ordered
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`to specify any combinations of the underlying instrumentalities that it believed were infringing.
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`Id. Although it might be true that Check Point sells its products to consumers in bundles, I
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`reasoned that separating out infringement contentions by the underlying instrumentalities would
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`be consistent with the purpose of Patent Local Rules because it would make the litigation process
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`more efficient and discovery more streamlined. Id.
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`Case 3:18-cv-02621-WHO Document 192 Filed 08/12/19 Page 3 of 19
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`Second, I ordered Finjan to provide pinpoint source code citations that show “where and
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`how each limitation of each asserted claim is found within each Accused Instrumentality” as
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`required by the Patent Local Rules. Id. at 12. In doing so, I rejected Finjan’s arguments that its
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`infringement contentions were sufficient to disclose its infringement theories because they
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`provided an overall infringement analysis that included both source code citations and public
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`information. Id. at 7-12. I noted that many of the same sets of source code within the same
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`product category were cited across different claims of different patents. Id.
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`Third, I held that Finjan’s infringement contentions impermissibly contained open-ended
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`citations to exemplary products in violation of the Narrowing Order. Id. at 13-14. I found that
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`Finjan’s citation to numerous releases of Check Point’s products were ambiguous and that it was
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`unclear which releases applied to which products in the voluminous list cited by Finjan. Id. I then
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`denied Check Point’s motion to strike and ordered Finjan to serve amended infringement
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`contentions that were in accordance with my IC Order, Narrowing Order, and Patent Local Rules.
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`Id. at 15.
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`Finjan has now served its amended infringement contentions (“AICs”) and Check Point
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`argues that they are deficient in largely the same ways as before. Defendant Check Point Software
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`Technologies, Inc. and Check Point Software Technologies, LTD.’s Motion to Strike Amended
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`Infringement Contentions (“AIC MTS”) [Dkt. No. 125-4].
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`LEGAL STANDARD
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`Patent Local Rule 3-1 requires:
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`[A] party claiming patent infringement shall serve on all parties a ‘Disclosure of
`Asserted Claims and Infringement Contentions[]’ . . . [which] shall contain the
`following information:
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`(a) Each claim of each patent in suit that is allegedly infringed by each opposing
`party, including for each claim the applicable statutory subsections of 35 U.S.C. §
`271 asserted;
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`(b) Separately for each asserted claim, each accused apparatus, product, device,
`process, method, act, or other instrumentality (“Accused Instrumentality”) of each
`opposing party of which the party is aware. This identification shall be as specific
`as possible. Each product, device, and apparatus shall be identified by name or
`model number, if known. Each method or process shall be identified by name, if
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`known, or by any product, device, or apparatus which, when used, allegedly results
`in the practice of the claimed method or process;
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`(c) A chart identifying specifically where each limitation of each asserted claim is
`found within each Accused Instrumentality, including for each limitation that such
`party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s),
`act(s), or material(s) in the Accused Instrumentality that performs the claimed
`function.
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`(d) For each claim which is alleged to have been indirectly infringed, an
`identification of any direct infringement and a description of the acts of the alleged
`indirect infringer that contribute to or are inducing that direct infringement. Insofar
`as alleged direct infringement is based on joint acts of multiple parties, the role of
`each such party in the direct infringement must be described.
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`(e) Whether each limitation of each asserted claim is alleged to be literally present
`or present under the doctrine of equivalents in the Accused Instrumentality.
`“The overriding principle of the Patent Local Rules is that they are designed [to] make the parties
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`more efficient, to streamline the litigation process, and to articulate with specificity the claims and
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`theory of a plaintiff’s infringement claims.” Bender v. Maxim Integrated Prods., No. 09-cv-
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`01152-SI, 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010) (alteration in original) (internal
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`citation omitted). Patent Local Rule 3-1 is intended to require the plaintiff “to crystallize its
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`theories of the case early in the litigation and to adhere to those theories once disclosed.” Bender
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`v. Advanced Micro Devices, Inc., No. 09-cv-1149-EMC, 2010 WL 363341, at *1 (N.D. Cal. Feb.
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`1, 2010). It “takes the place of a series of interrogatories that defendants would likely have
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`propounded had the patent local rules not provided for streamlined discovery.” Network Caching
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`Tech., LLC v. Novell, Inc., No. 01-cv-2079-VRW, 2002 WL 32126128, at *4 (N.D. Cal. Aug. 13,
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`2002).
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`
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`“[A]ll courts agree that the degree of specificity under Local Rule 3-1 must be sufficient to
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`provide reasonable notice to the defendant why the plaintiff believes it has a ‘reasonable chance of
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`proving infringement.’” Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022,
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`1025 (N.D. Cal. 2010) (quoting View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986
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`(Fed. Cir. 2000)). The local rules do not “require the disclosure of specific evidence nor do they
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`require a plaintiff to prove its infringement case . . . a patentee must nevertheless disclose what in
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`each accused instrumentality it contends practices each and every limitation of each asserted claim
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`Case 3:18-cv-02621-WHO Document 192 Filed 08/12/19 Page 5 of 19
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`to the extent appropriate information is reasonably available to it.” DCG Sys. v. Checkpoint
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`Techs., LLC, No. 11-cv-03792-PSG, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012).
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`I.
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`MOTION TO STRIKE INFRINGEMENT CONTENTIONS
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`DISCUSSION
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`A.
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`Grouping
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`Check Point claims that Finjan has violated the directives contained in the IC Order by
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`renaming its “groups” of products as the instrumentalities themselves and then referring to the
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`actual products in the groups as “features.” AIC MTS at 15-18. Check Point states that within
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`each group, Finjan’s infringements charts remain directed to a handful of individual products and
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`services but provide no infringement theories for most of the groups. Id. at 16.
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`Check Point identifies Finjan’s charts as purporting to describe infringement theories on
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`the following actual products:
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`• Network Security Products: IPS, Anti-Bot, Anti-Virus, Threat Emulation, Threat
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`Extraction.
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`• Endpoint Security: Threat Emulation, Threat Extraction, AntiPhishing (zero
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`phishing), Anti-Ransomware, Anti-Bot, Forensics, Anti-Exploit, Anti-Virus, Anti-
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`Malware, SmartEvent.
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`• ZoneAlarm: Advanced Firewall, OSFirewall, Threat Emulation, Browser
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`Protection.
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`• ThreatCloud: Threat Emulation.
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`• CloudGuard: CloudGuard SaaS.
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`• Sandblast Mobile.
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`Id. at 16-17. It asks that I strike the remaining contentions from the AICs. Id.
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`1.
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`Blade Architecture
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`As an example, Check Point considers Finjan’s accusation of its “Blade Architecture” as
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`infringing the ‘968 Patent. Id. at 17. According to Check Point, Finjan’s definition of its Blade
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`Architecture is overbroad and encompasses 24 different products that Finjan refers to as features,
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`as well as numerous marketing terms and other vague and unidentified functionalities. Id. But its
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`actual claim chart for this contention is only directed to three products: Anti-Virus, Sandblast
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`Threat Emulation, and Sandblast Threat Extraction. Id.; Appendix 1 – Source Code Citations
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`(“Citation Chart”) attached to AIC MTS [Dkt. No. 26-1]. Check Point argues that where Finjan
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`has listed multiple instrumentalities that might infringe in combination, it must state how they do
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`so and not force it, or the court, to guess. [Corrected] Reply in Support of Defendants Check Point
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`Software Technologies, Inc. and Check Point Software Technologies, Ltd.’s Motion to Strike
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`Amended Infringement Contentions (“AIC MTS Reply”) at 7-8 [Dkt. No. 141-4].
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`In opposition, Finjan makes two arguments. First, it contends that the Blade Architecture
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`Software is properly a single accused instrumentality because it is represented to customers that
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`way. Plaintiff Finjan, Inc.’s Opposition to Defendant Check Point Software Technologies, Inc.
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`and Check Point Software Technologies, Ltd’s Motion to Strike Amended Infringement
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`Contentions (“AIC MTS Oppo.”) at 9-10 [Dkt. No. 131-4]. Finjan argues that the Blade
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`Architecture Software constitutes a single product with various functionalities that satisfy various
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`claim elements under a unified interface that allows them to be turned on and off individually. Id.
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`Finjan asserts that if a particular blade functionality is not identified in the charts, then it is not
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`accusing that functionality of infringement and that it is only accusing approximately half of the
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`blade functionalities of satisfying a claim element. Id. at 11.
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`Second, Finjan argues that it organized its analysis into separate contentions for each blade
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`functionality. Id. at 13-15. Pointing to its chart for the ‘494 Patent, Finjan states that it has
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`identified different blade functionalities as meeting separate elements. Id. at 13. According to
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`Finjan, it has specifically set forth the blades or other technologies that were used to meet each
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`element as separate contentions and has specified the combinations of different blades used to
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`infringe each patent. Id. at 14; US Patent No. 8,677,494 Malicious Mobile Code Runtime
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`Monitoring System and Methods Chart (the “Blade Architecture ‘494 Patent Chart”) attached as
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`Ex E. to Cardis Decl. [Dkt. No. 125-11]. Thus, Finjan argues, the combinations created by these
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`blades may lead to multiple different theories of infringement but are still limited by the different
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`permutations of listed contentions. AIC MTS Oppo. at 14-15.
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`In the IC Order, I already rejected Finjan’s first argument. Further, Finjan has failed to
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`follow the IC order with respect to its blade architecture chart. In my IC Order, I noted that Finjan
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`had accused 42 discrete blades and ordered Finjan to organize its infringement contentions by the
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`underlying instrumentalities that it was accusing. IC Order at 2, 7. To the extent that the number
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`of accused blades appears to keep changing, a chart for each blade will crystalize precisely which
`blades Finjan is accusing. 1 Turning to Finjan’s second argument, where Finjan accuses the blades
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`of infringing in combination, the IC Order required it to specify the combination. Id. at 7. If I
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`ignore the “blade architecture” label on Finjan’s Blade Architecture ‘494 Patent Chart and instead
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`interpret it as a combination chart containing different specific blades, Finjan has significantly
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`improved the chart from its first attempt. But, as Check Point argues, it is not enough to simply
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`list a number of blades that could, in combination, infringe upon the ‘494 Patent. Finjan must
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`describe how such a combination would infringe. Does Finjan contend that the Anti-Virus blade’s
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`receiver function under limitation 10b combines with the downloadable scanner function of the
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`Anti-Bot blade under limitation 10c? The chart does not say. Besides stating that the Threat
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`Emulation blade’s scanner combines with the receivers in the other blades, Finjan’s chart does not
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`adequately describe other combinations. ‘494 Patent Chart at 21. If every contention for every
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`claim can be combined with every contention for every other claim in its chart, Finjan must state
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`that. I strike these charts with leave to amend.
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`2.
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`Check Point’s Other Arguments
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`
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`Check Point identifies two other examples where it contends that Finjan’s charts are
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`improper. First, Check Point states that Finjan’s ‘844 Patent chart for “Check Point Endpoint
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`Security” only discusses Endpoint Threat Emulation. AIC MTS at 17; US Patent No. 6,154,844
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`System and Method for Attaching a Downloadable Security Profile to a Downloadable (“the ’844
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`Patent Chart”) attached as Ex. H to Declaration of Alyssa Cardis in Support of Defendant Check
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`Point Software Technologies, Inc. and Check Point Software Technologies Ltd.’s Motion to Strike
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`1 The parties dispute whether the blades share source code or a single interface, but that issue is
`irrelevant to the purpose of Finjan’s infringement contentions—requiring Finjan to crystallize its
`infringement theories early in the litigation so as to prevent the shifting sands approach to claim
`construction. See Atmel Corp. v. Info. Storage Devices, Inc., No. 95-cv-1987-FMS, 1998 WL
`775115, at *2 (N.D. Cal. 1998).
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`Amended Infringement Contentions (“Cardis Decl.”) [Dkt. No. 125-12]. Yet Finjan still purports
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`to accuse a wide variety of instrumentalities within “Check Point Endpoint Security” aside from
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`Threat Emulation. AIC MTS at 17; Plaintiff Finjan, Inc’s Supplemental Disclosure of Asserted
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`Claims and Infringement Contentions and Document Production Pursuant to Patent Local Rules 3-
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`1 and 3-2 (“Finjan Supplemental Disclosure”) at 4-5, attached as Ex. A to Cardis Decl. [Dkt. No.
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`125-7]. Since Threat Emulation is the only instrumentality charted, Check Point asks that I strike
`the rest of the instrumentalities.2 AIC MTS at 17.
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`Second, Check Point asserts that Finjan improperly continues to accuse marketing terms
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`and product categories. Id. at 18. Check Point states that “ThreatCloud” is a marketing term that
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`refers to a number of products and services. Id.; Declaration of Tamir Zegman in Support of
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`Defendant Check Point Software Technologies, Inc. and Check Point Software Technologies
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`Ltd.’s Motion to Strike Amended Infringement Contentions (“Zegman Decl.”) at ¶ 8 [Dkt. No.
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`125-6]. It argues that Finjan defines ThreatCloud in multiple inconsistent ways that include
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`multiple products and services, but only makes allegations against Threat Emulation. Id. Check
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`Point asks that I strike all other allegations under the ThreatCloud instrumentality. Id.
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`I agree with Check Point on both counts. Indeed, Finjan’s opposition addresses neither
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`argument. Finjan’s ’844 Patent Chart deals only with the Threat Emulation instrumentality; the
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`other accused products identified by Finjan in the chart are struck. These include the Check Point
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`Blade Architecture, Check Point Appliances, Check Point Endpoint Security, and Capsule Cloud.
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`Finjan Supplemental Disclosure at 4-5. Similarly, because Finjan does not rebut Check Point’s
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`statement that ThreatCloud is a marketing term and not a product itself, the allegations related to
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`ThreatCloud are struck. If Finjan seeks to accuse the products that are sold under the ThreatCloud
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`marketing term, it may amend to do so specifically.
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`B.
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`Source Code Citations
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`Check Point next argues that the AICs lack source code citations for most accused
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`2 Check Point also argues that the AICs related to Check Point Endpoint Security are deficient
`under Local Rule 3-1(b) because Finjan uses purely functional and open-ended terms. AIC MTS
`at 17-18.
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`products and that the citations provided are inadequate and unexplained. AIC MTS at 19-22. It
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`contends that this is doubly troubling based on the way Finjan has grouped its contentions because
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`it does not cite code from actual products (i.e. the Firewall blade or the URL Filtering blade) and
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`instead cites code to a single product within the group to accuse all the products in the group. Id.
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`at 20. According to Check Point, Finjan has failed to provide any source code citations for 30 of
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`the 52 accused instrumentalities. Id. Check Point also claims that where Finjan does provide
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`source code citations, they are often untethered to the claim language and lack any sort of
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`explanation. Id. at 21-22.
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`Check Point cites to two examples. The first is to limitation 14f in the chart for US Patent
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`No. 7,418,731 Method and System for Caching at Secure Gateways (“the Blade Architecture ‘731
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`Patent Chart”) attached as Ex. J. to Cardis Decl. [Dkt. No. 125-14]. Limitation 14f concerns the
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`use of a “security profile” and “profile cache,” but the cited source code refers to “security
`policies” and a “security policy cache.”3 AIC MTS at 21; ‘731 Patent Chart at 79-80. The second
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`involves the Blade Architecture ‘494 Patent Chart. There, Check Point identifies an instance of
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`Finjan citing the same three source code files for all claim elements across all asserted patents.
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`AIC MTS at 22; Blade Architecture ‘494 Patent Chart at 14, 35, 51.
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`Finjan counters that its source code citations are adequate and that it only used the same
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`source code citations when the claim elements are similar and the specific technology is alleged to
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`infringe the claim element the same way. AIC MTS Oppo. at 16. It also argues that the source
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`code cited by Check Point on the Blade Architecture ‘494 Patent Chart is not actually the same
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`(despite the fact that it is). Id. at 16 n.11. Next, Finjan argues that the examples Check Point cites
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`are fabricated because Finjan only identified the emulation and extraction blades as infringing this
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`claim and therefore it is irrelevant that the anti-virus and anti-bot blades’ functionality is not
`mentioned.4 Id. at 17.
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`3 Finjan concedes that this source code citation is incorrect and characterizes it a “single anomaly”
`that it could have fixed before Check Point filed its motion, had Finjan been notified. AIC MTS
`Oppo. at 17.
`4 Check Point counters that Finjan’s argument related to the emulation and extraction blades
`should fail because Finjan’s ’154 “Blade Architecture” chart accuses different sets of blades of
`infringing the asserted limitations. For limitation 6b, Finjan incorporates its contentions for
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`In reply, Check Point argues that the AICs still lack source code citations for most accused
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`products and that the citations identified in the opposition are still deficient. AIC MTS Reply at 8-
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`11. For example, Check Point identifies Finjan’s contention for “Endpoint client with Zero-
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`Phishing” against ’154 Patent limitation 1b and argues that it just parrots claim language without
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`providing relevant code to the limitation. Id. Rather, Finjan incorporates “the source code on
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`emulation . . . and endpoint agent,” without explaining what the code does, and why it is being
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`incorporated, or even what “emulation” and “endpoint agent” are, or how they work with
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`“Endpoint client with Zero-Phishing.” Id. Then, Finjan cites one source code file, “the
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`application programming interface for cloud to accept an incoming file,” without explanation as to
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`how, either alone or in conjunction with some unidentified other source code, this file does what
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`Finjan says. Id. Check Point argues that this does not disclose how Finjan believes that “Endpoint
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`client with Zero-Phishing” meets limitation 1b of the ’154 patent. Id. Check Point also attached a
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`table with extracted code citations and Finjan’s explanations. Id.; Reply Appendix attached to
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`AIC MTS Reply [Dkt. No. 139-5].
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`Check Point next contends that Finjan recycles code for both similar and different
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`limitations, which is problematic. AIC MTS Reply at 9-10. According to Check Point, the same
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`source code is cited for four limitations across three patents with four different descriptions (the
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`’494 limitation 10b, ’731 limitation 1d, ’731 limitation 1e, and ’731 limitation 1e). Id. Check
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`Point also notes that Finjan’s opposition does not address Check Point’s argument that that no
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`source code has been cited for 30 of the 52 accused instrumentalities. Check Point asks that I
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`limitation 1b, where it provided “contentions” for Threat Emulation, Anti-Virus, and “Anti-Virus
`and Anti-Bot.” Id.; US Patent No. 8,141,154 System and Method for Inspecting Dynamically
`Generated Executable Code (the “Blade Architecture ‘154 Patent Chart”) attached as Ex. 21 to
`Declaration of Kristopher Kastens in Support of Plaintiff Finjan, Inc.’s Opposition to Defendant
`Check Point Software Technologies, Inc. and Check Point Software Technologies Ltd.’s Motion
`to Strike Amended Infringement Contentions (“Kastens Decl.”). [Dkt. No. 131-40]. Check Point
`states that Finjan confusingly incorporates some limitations while referencing Threat Emulation
`and Threat Extraction, resulting in no blade being charted across all limitations. AIC MTS Reply
`at 10-11. Threat Emulation is at least partially charted for limitations 6b and 6d, but not 6c. Id.
`Threat Extraction is mentioned briefly for limitation 6d. Anti-Virus and “AntiVirus and Anti-Bot”
`are charted only for limitation 6b, but not 6c or 6d. Id. As discussed in the section on Blade
`Architecture, if it is presenting a combination claim chart, Finjan must explain how the different
`blades work together to infringe its patent.
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`Case 3:18-cv-02621-WHO Document 192 Filed 08/12/19 Page 11 of 19
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`strike all instrumentalities with no source code citations with prejudice, and only allow the
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`contentions listed in Check Point’s Appendix 2 to continue. Id.
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`Finjan has already been directed to provide pinpoint source code citations for each
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`limitation. To the extent that any or all of the 30 of the accused instrumentalities lack pinpoint
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`citations, they are struck with prejudice. Where Finjan has used the same source code for different
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`things, it may amend its infringement contentions to better explain why the same source code is
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`applies to wholly different limitations.
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`C.
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`Doctrine of Equivalents
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`Check Point next argues that Finjan’s doctrine of equivalents (“DOE”) contentions also
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`fall short. AIC MTS at 22-23. “The doctrine of equivalents holds that even if an accused product
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`does not literally infringe the asserted claims of a patent, the product may infringe if the
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`differences between the element of the accused product at issue and the claim limitation at issue
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`are insubstantial.” UCP Int’l Co. Ltd. v. Balsam Brands Inc., No. 16-cv-07255-WHO, 2017 WL
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`5068568, at *2 (N.D. Cal. Nov. 3, 2017) (internal citation omitted). This requires “a limitation-
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`by-limitation analysis, not a boilerplate reservation.” Cap Co. v. McAfee, Inc., No. 14-cv-05068-
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`JD, 2015 WL 4734951, at *4 (N.D. Cal. Aug. 10, 2015) (internal citation omitted).
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`Check Point asserts that Finjan’s DOE analysis is insufficient because it simply parrots the
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`claim language and the “same function, way, and result” language from the doctrine’s legal
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`standard. AIC MTS at 22-23. Check Point identifies contention 5 of limitation 10c titled “Anti-
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`Bot Technology has a Receiver – DOE” in the Blade Architecture ‘494 Patent Chart, which states
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`that:
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`Check Point Blade Architecture performs the same function as this
`element because it receives network traffic that is correlated to
`downloaded web content.
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`Check Point Blade Architecture performs the same function the same
`way as this element because it receives the network traffic so that it
`can be used for malware detection.
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`Check Point Blade Architecture achieves the same result as this
`element because content that is sent across the network is analyzed
`for malware.
`Blade Architecture ‘494 Patent Chart at 18.
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`Finjan counters that its DOE analysis is sufficient because it provides tailored explanations
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`for how each element is met under the required function-way-result test, and never parrots the
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`claim language or uses boilerplate analysis. AIC MTS Oppo. at 18-21. As to the example above,
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`Finjan claims that it explains how this element performs the same function, the same way and gets
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`the same result through receiving network traffic for malware detection that is correlated to a
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`downloadable. Id. at 20. Finjan argues that this is sufficient explanation to put Check Point on
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`notice of Finjan’s DOE claims. Finjan next cites its DOE analysis for US Patent No. 8,141,154
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`System and Method for Inspecting Dynamically Generated Executable Code at 22, attached as Ex.
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`22 to Kastens Decl. [Dkt. No. 131-42]. There Finjan provides a more fulsome explanation why
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`“Mobile Products” is equivalent to “SandBlast Mobile.” Id.
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`As to both of these examples, I am satisfied that the DOE analysis provides sufficient
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`notice to Check Point about why Finjan contends that these products are equivalent. It is also
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`notable that Finjan used a similar DOE analysis in its original charts and Check Point did not find
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`it deficient before. Check Point’s motion to strike on these grounds is denied.
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`D.
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`New Instrumentalities
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`Check Point argues that Finjan has failed to show the requisite good cause to accuse new
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`products in its amended AICs. AIC MTS at 23-24. Check Point notes that in my previous order, I
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`allowed Finjan to add 16 previously-unidentified products if they were charted in conformity with
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`the rest of the order. Id.; IC Order at 14. Check Point now claims that Finjan has added dozens
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`more products, services, marketing terms, and other undefined functionalities and has not sought
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`leave or shown good cause to do so. AIC MTS at 23-24.
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`In opposition, Finjan contends that it has not accused any new products because most of
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`what Check Point identifies as new products are not even “products” according to Check Point,
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`and are instead “New Marketing Terms and Undefined Functionalities Referenced in the Claim
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`Charts.” AIC MTS Oppo. at 21-22. Finjan also asserts th