Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 1 of 527
`Case 4:18-cv-07229—YGR Document 100-11 Filed 09/04/20 Page 1 of 527
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`EXHIBIT B
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`EXHIBIT
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 2 of 527
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`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
`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
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`FINJAN, INC.,
`
`
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`
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`v.
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`
`
`
`QUALYS, INC.,
`
`
`
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`Plaintiff,
`
`Defendant.
`
`Case No.: 4:18-cv-07229-YGR
`
`PLAINTIFF FINJAN, INC.’S INITIAL
`DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`AND DOCUMENT PRODUCTION
`PURSUANT TO PATENT LOCAL RULES
`3-1 AND 3-2
`
`
`
`
`
`
`
`
`____________________________________________________________________________________
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CASE NO. 4:18-cv-07229-YGR
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`EXHIBIT B, PAGE 000001
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 3 of 527
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`Pursuant to Patent Local Rules 3-1 and 3-2 of the United States District Court for the Northern
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`District of California, Plaintiff Finjan, Inc. (“Finjan”) makes the following Initial Disclosure of
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`Asserted Claims and Infringement Contentions and Document Production Accompanying Disclosure,
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`including the attached claim charts (the “Disclosure”) to Qualys, Inc. (hereinafter “Qualys” or
`
`“Defendant”).
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`Finjan makes this Disclosure based upon information presently known and reasonably available
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`to it as of this date, as Finjan’s investigations are ongoing and Defendant has yet to provide any
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`discovery. Accordingly, Finjan reserves the right to amend, modify, supplement, or narrow any
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`portion of this Disclosure, including, but not limited to, the identification of the claims infringed by
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`Defendant, the products and services accused of infringement and the bases and manner of
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`infringement described in this Disclosure. Finjan reserves the right to supplement this Disclosure as
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`necessary and as appropriate in accordance with the Federal Rules of Civil Procedure and this Court’s
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`Local Rules, including Patent Local Rule 3-6, in light of future document production, interrogatory
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`responses, admissions, disclosures, contentions, fact witness testimony, expert discovery, any other
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`discovery, future rulings from the Court (including claim construction), any amendments to the
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`pleadings, any additional items of evidence, or for any other reason authorized by statute, rule, or
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`applicable case law. Finjan further reserves the right to rely upon the opinions of one or more experts
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`in support of its infringement contentions in accordance with the Court’s scheduling order.
`
`I.
`
`PATENT L.R. 3-1: DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS.
`A.
`Identification Of Asserted Claims And Applicable Subsections Of 35 U.S.C. § 271.
`
`Finjan provides the following contentions pursuant to Patent Local Rule 3-1(a):
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`Defendant directly infringed pursuant to 35 U.S.C. § 271(a) claims 1-9, 11, 15-17, 21-23, 32,
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`and 41-44 of U.S. Pat. No. 6,154,844 (“the ‘844 Patent”), claims 1, 6-7, 9-11, 13-15, 23, 26, and 32-33
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`of U.S. Patent No. 6,965,968 (“the ‘968 Patent”), claims 1, 2, 14, 15, and 17 of U.S. Patent No.
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`7,418,731 (“the ‘731 Patent”), claims 1-2, 5-14, and 17-25 of U.S. Patent No. 7,975,305 (“the ‘305
`
`Patent”), claims 1-2, and 4 of U.S. Patent No. 8,141,154 (“the ‘154 Patent”), claims 1, 3-8, 22-23, 29,
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`1
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000002
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 4 of 527
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`and 35 of U.S. Patent No. 8,225,408 (“the ‘408 Patent”); and claims 10-16, and 18 of U.S. Patent No.
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`8,677,494 (“the ‘494 Patent”), collectively (the “Asserted Claims”).
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`Finjan reserves the right to amend, modify, supplement, or narrow these contentions, as
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`appropriate, pursuant to Patent Local Rule 3-6, including identifying additional asserted claims, as it
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`obtains additional information over the course of discovery and in light of the Court’s claim
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`construction order.
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`B.
`
`Identification Of Accused Instrumentalities.
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`Finjan provides the following contentions pursuant to Patent Local Rule 3-1(b):
`
`Finjan accuses the following of Defendant’s products and services, and associated software and
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`subscriptions, of infringing claims 1-9, 11, 15-17, 21-23, 32, and 41-44 of the ‘844 Patent: Malware
`
`Detection (MD, MDS, Malware Detection services), Web Application Scanning (WAS), Web
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`Application Firewall (WAF), Secure Seal, Vulnerability Management (VM), Continuous Monitoring
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`(CM), ThreatPROTECT (TP), Cloud Agent (CA) technology, the Knowledgebase, the Qualys research
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`labs, and Qualys Scanner Appliance and Virtual Appliance, identified in the attached Appendix A
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`(“Accused Instrumentalities of the ‘844 Patent”) whether sold a la carte or as part of a bundled
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`package, including but not limited to the Qualys Cloud Suite (Enterprise, Express, Express Lite), the
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`Qualys Cloud Platform (Enterprise, Mid-sized business, or Small business), and the Qualys Cloud
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`Platform for Consultants.
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`Finjan accuses the following of Defendant’s products and services, and associated software and
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`subscriptions, of infringing claims 1, 6-7, 9-11, 13-15, 23, 26, and 32-33 of the ‘968 Patent: Malware
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`Detection (MD, MDS, Malware Detection Services), Web Application Scanning (WAS), Web
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`Application Firewall (WAF), Secure Seal, Vulnerability Management (VM), Continuous Monitoring
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`(CM), ThreatPROTECT (TP), Indication of Compromise (IOC), Policy Compliance (PC), Cloud
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`Agent (CA) technology, the Knowledgebase, Qualys research labs, and Qualys Scanner Appliance and
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`Virtual Appliance, identified in the attached Appendix B (“Accused Instrumentalities of the ‘968
`
`Patent”) whether sold a la carte or as part of a bundled package, including but not limited to the Qualys
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`2
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000003
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 5 of 527
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`Cloud Suite (Enterprise, Express, Express Lite), the Qualys Cloud Platform (Enterprise, Mid-sized
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`business, or Small business), and the Qualys Cloud Platform for Consultants.
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`Finjan accuses the following of Defendant’s products and services, and associated software and
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`subscriptions, of infringing claims 1, 2, 14, 15, and 17 of the ‘731 Patent: Malware Detection (MD,
`
`MDS, Malware Detection Services), Web Application Scanning (WAS), Web Application Firewall
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`(WAF), Secure Seal, Vulnerability Management (VM), Continuous Monitoring (CM),
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`ThreatPROTECT (TP), Indication of Compromise (IOC), Policy Compliance (PC), Cloud Agent (CA)
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`technology, the Knowledgebase, Qualys research labs, and Qualys Scanner Appliance and Virtual
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`Appliance, identified in the attached Appendix C (“Accused Instrumentalities of the ‘731 Patent”),
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`whether sold a la carte or as part of a bundled package, including but not limited to the Qualys Cloud
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`Suite (Enterprise, Express, Express Lite), the Qualys Cloud Platform (Enterprise, Mid-sized business,
`
`or Small business), and the Qualys Cloud Platform for Consultants.
`
`Finjan accuses the following of Defendant’s products and services, and associated software and
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`subscriptions, of infringing claims 1-2, 5-14, and 17-25 of the ‘305 Patent: Malware Detection (MD,
`
`MDS, Malware Detection Services), Web Application Scanning (WAS), Web Application Firewall
`
`(WAF), Secure Seal, Vulnerability Management (VM), Continuous Monitoring (CM),
`
`ThreatPROTECT (TP), Indication of Compromise (IOC), Policy Compliance (PC), Cloud Agent (CA)
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`technology, the Knowledgebase, Qualys research labs, and Qualys Scanner Appliance and Virtual
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`Appliance, identified in the attached Appendix D (“Accused Instrumentalities of the ‘305 Patent”),
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`whether sold a la carte or as part of a bundled package, including but not limited to the Qualys Cloud
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`Suite (Enterprise, Express, Express Lite), the Qualys Cloud Platform (Enterprise, Mid-sized business,
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`or Small business), and the Qualys Cloud Platform for Consultants.
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`Finjan accuses the following of Defendant’s products and services of infringing claims 1-2, and
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`4 of the ‘154 Patent: Malware Detection (MD, MDS, Malware Detection Services), Web Application
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`Scanning (WAS), Web Application Firewall (WAF), Secure Seal, Vulnerability Management (VM),
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`Continuous Monitoring (CM), ThreatPROTECT (TP), Indication of Compromise (IOC), Policy
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`Compliance (PC), Compliance Monitoring, Container Security, Cloud Agent (CA) technology, the
`3
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000004
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 6 of 527
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`Knowledgebase, Qualys research labs, and Qualys Scanner Appliance and Virtual Appliance,
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`identified in the attached Appendix E (“Accused Instrumentalities of the ‘154 Patent”), whether sold a
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`la carte or as part of a bundled package, including but not limited to the Qualys Cloud Suite
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`(Enterprise, Express, Express Lite), the Qualys Cloud Platform (Enterprise, Mid-sized business, or
`
`Small business), and the Qualys Cloud Platform for Consultants.
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`Finjan accuses the following of Defendant’s products and services, and associated software and
`
`subscriptions, of infringing claims 1, 3-8, 22-23, 29, and 35 of the ‘408 Patent: Malware Detection
`
`(MD, MDS, Malware Detection Services), Web Application Scanning (WAS), Web Application
`
`Firewall (WAF), Secure Seal, Vulnerability Management (VM), Continuous Monitoring (CM),
`
`ThreatPROTECT (TP), Indication of Compromise (IOC), Policy Compliance (PC), Cloud Agent (CA)
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`technology, the Knowledgebase, Qualys research labs, and Qualys Scanner Appliance and Virtual
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`Appliance, identified in the attached Appendix F (“Accused Instrumentalities of the ‘408 Patent”),
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`whether sold a la carte or as part of a bundled package, including but not limited to the Qualys Cloud
`
`Suite (Enterprise, Express, Express Lite), the Qualys Cloud Platform (Enterprise, Mid-sized business,
`
`or Small business), and the Qualys Cloud Platform for Consultants.
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`Finjan accuses the following of Defendant’s products and services, and associated software and
`
`subscriptions, of infringing claims 10-16, and 18 of the ‘494 Patent: Malware Detection (MD, MDS,
`
`Malware Detection Services), Web Application Scanning (WAS), Web Application Firewall (WAF),
`
`Secure Seal, Vulnerability Management (VM), Continuous Monitoring (CM), ThreatPROTECT (TP),
`
`Cloud Agent (CA) technology, the Knowledgebase, Qualys research labs, and Qualys Scanner
`
`Appliance and Virtual Appliance, identified in the attached Appendix G, whether sold a la carte and as
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`part of a bundled package, including but not limited to the Qualys Cloud Suite (Enterprise, Express,
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`Express Lite), the Qualys Cloud Platform (Enterprise, Mid-sized business, or Small business), and the
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`Qualys Cloud Platform for Consultants (“Accused Instrumentalities of the ‘494 Patent”) (collectively,
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`the “Accused Instrumentalities”).
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`The above identification is based on the information publicly available to Finjan as of the date
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`hereof. Finjan anticipates that discovery may reveal additional products, features and services that
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`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000005
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 7 of 527
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`infringe the patents-in-suit. Finjan reserves the right to amend, modify, supplement, or narrow these
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`contentions pursuant to Patent Local Rule 3-6, if necessary and appropriate, including identifying
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`additional products, features and services, as it obtains additional information over the course of
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`discovery and in light of the Court’s claim construction order.
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`C.
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`Claim Charts Identifying Claim Elements Present In Accused Instrumentalities.
`
`Finjan provides the following appendices pursuant to Patent Local Rule 3-1(c):
`
` Appendix A shows how the Accused Instrumentalities of the ‘844 Patent infringe each of
`the asserted claims of the ‘844 Patent
`
` Appendix B shows how the Accused Instrumentalities of the ‘968 Patent infringe each of
`the asserted claims of the ‘968 Patent
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` Appendix C shows how the Accused Instrumentalities of the ‘731 Patent infringe each of
`the asserted claims of the ‘731 Patent
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` Appendix D shows how the Accused Instrumentalities of the ‘305 Patent infringe each of
`the asserted claims of the ‘305 Patent
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` Appendix E shows how the Accused Instrumentalities of the ‘154 Patent infringe each of
`the asserted claims of the ‘154 Patent
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` Appendix F shows how the Accused Instrumentalities of the ‘408 Patent infringe each of
`the asserted claims of the ‘408 Patent
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` Appendix G shows how the Accused Instrumentalities of the ‘494 Patent infringe each of
`the asserted claims of the ‘494 Patent
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`The Appendices are incorporated by reference herein. The citations in the Appendices are
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`exemplary. In the attached Appendices, Finjan has subdivided each Asserted Claim to explain where
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`the respective Accused Instrumentalities and other products/services meet each claim element. The
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`subdivisions in the Appendices are not to be taken as an indication of the boundaries of claim elements
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`with respect to doctrine of equivalents, or any other issue. Additionally, the Accused Instrumentalities
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`and Defendant’s other products/services may infringe the Asserted Claims in multiple ways.
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`The above identification is based on the information publicly available to Finjan as of the date
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`hereof. Finjan reserves the right to provide alternative claim mappings or infringement contentions for
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`5
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000006
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 8 of 527
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`such Accused Instrumentalities or other products and services. Finjan further reserves the right to rely
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`upon the opinions of one or more experts in support of its infringement contentions in accordance with
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`the Court’s scheduling order.
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`D.
`
`Identification Of Direct Infringement Underlying Allegations Of Indirect
`Infringement And Description Of Acts Of Indirect Infringement.
`Finjan provides the following contentions pursuant to Patent Local Rule 3-1(d):
`
`Defendant induced infringement of claims 1-9, 11, 22 and 23 of the ‘844 Patent pursuant to 35
`
`U.S.C. § 271(b), by taking active steps to cause infringement of claims 1-9, 11, 22, and 23 of the ‘844
`
`Patent, both with the knowledge of the ‘844 Patent and the specific intent to cause, instruct, direct or
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`require third parties, including its customers, subscribers, users and developers, to use the Accused
`
`Instrumentalities of the ‘844 Patent in a manner that infringes claim 1-9, 11, 22, and 23 of the ‘844
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`Patent. Such steps include, but are not limited to, advising third parties to use the Accused
`
`Instrumentalities of the ‘844 Patent in an infringing manner through product manuals and other product
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`documentation; providing a mechanism through which third parties may infringe the patent,
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`specifically through the use of the Accused Instrumentalities of the ‘844 Patent; requiring third parties
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`to agree to its terms and conditions; advertising and promoting the use of the Accused Instrumentalities
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`of the ‘844 Patent in an infringing manner; and distributing guidelines and instructions to third parties
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`on how to use the Accused Instrumentalities of the ‘844 Patent in an infringing manner. The materials
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`referenced in the Appendix are materials provided to third parties to use the Accused Instrumentalities
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`of the ‘844 Patent in a manner that infringes the claims identified above. As further proof of
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`Defendant’s inducement of infringement, Finjan identifies the evidence identified in the Complaint.
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`See, e.g., Dkt. Nos. 1-8; 1-9; 1-10; 1-11; 1-12; 1-13; 1-14; 1-15.
`
`Defendant induces infringement of claims 13-15 of the ‘305 Patent pursuant to 35 U.S.C. §
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`271(b), by taking active steps to cause infringement of claims 13-15 of the ‘305 Patent, both with the
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`knowledge of the ‘305 Patent and the specific intent to cause, instruct, direct or require third parties,
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`including its customers, subscribers, users and developers, to use the Accused Instrumentalities of the
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`‘305 Patent in a manner that infringes claims 13-15 of the ‘305 Patent. Such steps include, but are not
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`6
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000007
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 9 of 527
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`limited to, advising third parties to use the Accused Instrumentalities of the ‘305 Patent in an
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`infringing manner through product manuals and other product documentation; providing a mechanism
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`through which third parties may infringe the patent, specifically through the use of the Accused
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`Instrumentalities of the ‘305 Patent; requiring third parties to agree to its terms and conditions;
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`advertising and promoting the use of the Accused Instrumentalities of the ‘305 Patent in an infringing
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`manner; and distributing guidelines and instructions to third parties on how to use the Accused
`
`Instrumentalities of the ‘305 Patent in an infringing manner. The materials referenced in the Appendix
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`are materials provided to third parties to use the Accused Instrumentalities of the ‘305 Patent in a
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`manner that infringes the claims identified above. As further proof of Defendant’s inducement of
`
`infringement, Finjan identifies the evidence identified in the Complaint. See, e.g., Dkt. Nos. 1-8; 1-9;
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`1-10; 1-11; 1-12; 1-13; 1-14; 1-15.
`
`Defendant induces infringement of claims 1, 3-8, and 23 of the ‘408 Patent pursuant to 35
`
`U.S.C. § 271(b), by taking active steps to cause infringement of claims 1, 3-8, and 23 of the ‘408
`
`Patent, both with the knowledge of the ‘408 Patent and the specific intent to cause, instruct, direct or
`
`require third parties, including its customers, subscribers, users and developers, to use the Accused
`
`Instrumentalities of the ‘408 Patent in a manner that infringes claims 1, 3-8, and 23 of the ‘408 Patent.
`
`Such steps include, but are not limited to, advising third parties to use the Accused Instrumentalities of
`
`the ‘408 Patent in an infringing manner through product manuals and other product documentation;
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`providing a mechanism through which third parties may infringe the patent, specifically through the
`
`use of the Accused Instrumentalities of the ‘408 Patent; requiring third parties to agree to its terms and
`
`conditions; advertising and promoting the use of the Accused Instrumentalities of the ‘408 Patent in an
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`infringing manner; and distributing guidelines and instructions to third parties on how to use the
`
`Accused Instrumentalities of the ‘408 Patent in an infringing manner. The materials referenced in the
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`Appendix are materials provided to third parties to use the Accused Instrumentalities of the ‘408 Patent
`
`in a manner that infringes the claims identified above. As further proof of Defendant’s inducement of
`
`infringement, Finjan identifies the evidence identified in the Complaint. See, e.g., Dkt. Nos. 1-8; 1-9;
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`1-10; 1-11; 1-12; 1-13; 1-14; 1-15.
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`7
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000008
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 10 of 527
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`Defendant induces infringement of claims 13-15 and 26 of the ‘968 Patent pursuant to 35
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`U.S.C. § 271(b), by taking active steps to cause infringement of claims 13-15 and 26 of the ‘968
`
`Patent, both with the knowledge of the ‘968 Patent and the specific intent to cause, instruct, direct or
`
`require third parties, including its customers, subscribers, users and developers, to use the Accused
`
`Instrumentalities of the ‘968 Patent in a manner that infringes claims 13-15 and 26 of the ‘968 Patent.
`
`Such steps include, but are not limited to, advising third parties to use the Accused Instrumentalities of
`
`the ‘968 Patent in an infringing manner through product manuals and other product documentation;
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`providing a mechanism through which third parties may infringe the patent, specifically through the
`
`use of the Accused Instrumentalities of the ‘968 Patent; requiring third parties to agree to its terms and
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`conditions; advertising and promoting the use of the Accused Instrumentalities of the ‘968 Patent in an
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`infringing manner; and distributing guidelines and instructions to third parties on how to use the
`
`Accused Instrumentalities of the ‘968 Patent in an infringing manner. The materials referenced in the
`
`Appendix are materials provided to third parties to use the Accused Instrumentalities of the ‘968 Patent
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`in a manner that infringes the claims identified above. As further proof of Defendant’s inducement of
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`infringement, Finjan identifies the evidence identified in the Complaint. See, e.g., Dkt. Nos. 1-8; 1-9;
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`1-10; 1-11; 1-12; 1-13; 1-14; 1-15.
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`Defendant induces infringement of claims 14 and 15 of the ‘731 Patent pursuant to 35 U.S.C. §
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`271(b), by taking active steps to cause infringement of claims 14 and 15 of the ‘731 Patent, both with
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`the knowledge of the ‘731 Patent and the specific intent to cause, instruct, direct or require third
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`parties, including its customers, subscribers, users and developers, to use the Accused Instrumentalities
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`of the ‘731 Patent in a manner that infringes claims 14 and 15 of the ‘731 Patent. Such steps include,
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`but are not limited to, advising third parties to use the Accused Instrumentalities of the ‘731 Patent in
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`an infringing manner through product manuals and other product documentation; providing a
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`mechanism through which third parties may infringe the patent, specifically through the use of the
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`Accused Instrumentalities of the ‘731 Patent; requiring third parties to agree to its terms and
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`conditions; advertising and promoting the use of the Accused Instrumentalities of the ‘731 Patent in an
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`infringing manner; and distributing guidelines and instructions to third parties on how to use the
`8
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
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`CASE NO. 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 11 of 527
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`
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`Accused Instrumentalities of the ‘731 Patent in an infringing manner. The materials referenced in the
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`Appendix are materials provided to third parties to use the Accused Instrumentalities of the ‘731 Patent
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`in a manner that infringes the claims identified above. As further proof of Defendant’s inducement of
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`infringement, Finjan identifies the evidence identified in the Complaint. See, e.g., Dkt. Nos. 1-8; 1-9;
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`1-10; 1-11; 1-12; 1-13; 1-14; 1-15.
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`The above identification is based on the information publicly available to Finjan as of the date
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`hereof. Finjan reserves the right to amend, modify, supplement, or narrow these contentions, as
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`appropriate, pursuant to Patent Local Rule 3-6, including providing additional manners of
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`infringement, as it obtains additional information over the course of discovery and in light of the
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`Court’s claim construction order.
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`E.
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`Identification Of Elements Present Literally And Present Under The Doctrine Of
`Equivalents.
`Finjan provides the following contentions pursuant to Patent Local Rule 3-1(e):
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`The Accused Instrumentalities literally meet each Asserted Claim. In addition, as detailed in
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`the Appendices, Finjan asserts that the Accused Instrumentalities also infringe under the doctrine of
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`equivalents for the Asserted Claims. In the Appendices, Finjan provides an analysis of an application
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`of the Doctrine of Equivalents to various claim elements. Should Defendant contend that any element
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`or limitation of the Asserted Claims is absent in an Accused Instrumentality, Finjan reserves the right
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`to demonstrate that the allegedly missing element or limitation is present in the Accused
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`Instrumentality under the doctrine of equivalents. Finjan further reserves the right to rely upon the
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`opinions of one or more experts in support of its infringement contentions in accordance with the
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`Court’s scheduling order.
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`The above identification is based on the information publicly available to Finjan as of date
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`hereof. Finjan reserves the right to amend, modify, supplement, or narrow these contentions, as
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`appropriate, pursuant to Patent Local Rule 3-6, including providing additional bases of infringement,
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`and applying the doctrine of equivalents to additional claim elements, as it obtains additional
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`information over the course of discovery and in light of the Court’s claim construction order.
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`9
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
`
`CASE NO. 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 12 of 527
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`
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`F.
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`Identification Of Priority Dates.
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`Finjan provides the following contentions pursuant to Patent Local Rule 3-1(f):
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`Because Patent Local Rule 3-1(f) requires disclosure of the claimed priority date and not of the
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`date of conception or reduction, Finjan distinguishes between “priority date” and “invention date.”
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` Finjan alleges that each of the asserted claims of the ‘844 Patent is entitled to the priority
`date of November 8, 1996.
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` Finjan alleges that each of the asserted claims of the ‘968 Patent is entitled to the priority
`date of February 27, 2003.
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` Finjan alleges that each of the asserted claims of the ‘731 Patent is entitled to the priority
`date of November 8, 1996.
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` Finjan alleges that each of the asserted claims of the ‘305 Patent is entitled to the priority
`date of August 30, 2004.
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` Finjan alleges that each of the asserted claims of the ‘154 Patent is entitled to the priority
`date of December 12, 2005.
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` Finjan alleges that each of the asserted claims of the ‘408 Patent is entitled to the priority
`date of August 30, 2004.
`
` Finjan alleges that each of the asserted claims of the ‘494 Patent is entitled to the priority
`date of November 8, 1996.
`Finjan reserves the right to amend, modify, supplement, or narrow these contentions pursuant
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`to Patent Local Rule 3-6.
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`G.
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`Practice Of The Claimed Invention.
`
`Finjan provides the following contentions pursuant to Patent Local Rule 3-1(g):
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`Finjan previously produced and sold Vital Security appliances version 7.0 and later versions
`
`(“Vital Security”). Vital Security incorporated or reflected Claims 1, 15, 22, 23, 32, 41, 42, 43, and 44
`
`of the ‘844 Patent. Vital Security incorporated or reflected claims 1, 14, and 17 of the ‘731 Patent.
`
`Vital Security incorporates or reflects Claims 1, 13, 23, 26, 32 and 33 of the ‘968 Patent.
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`Finjan has released its FinjanMobile VitalSecurity Browser, which was renamed the
`
`FinjanMobile VitalSecurityVPN Browser (collectively, the “FinjanMobile VitalSecurity Browser”).
`
`The FinjanMobile VitalSecurity Browser after October 25, 2016, incorporated or reflected Claim 10 of
`
`10
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
`
`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000011
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 13 of 527
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`the ‘494 Patent. The FinjanMobile VitalSecurity Browser incorporates or reflects Claim 1 of the ‘154
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`Patent.
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`Finjan reserves the right to amend, modify, supplement, or narrow these contentions pursuant
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`to Patent Local Rule 3-6.
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`H.
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`Timing of First Infringement and Damages.
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`Finjan provides the following contentions pursuant to Patent Local Rule 3-1(h):
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`The date on which Qualys’ infringement first began will be determined through discovery.
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`However, Finjan asserts that the date of first infringement for the ‘844, ‘494, ‘305, ‘968, and ‘154
`
`Patents is no later than November 12, 2015, when Finjan first notified Qualys of its infringement.
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`Finjan asserts that the date of first infringement for the ‘408 and ‘731 Patents is no later than
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`November 29, 2018, when Finjan filed its complaint against Qualys.
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`Based on information presently known to Finjan, Finjan asserts that the date damages start for
`
`the ‘844, ‘494, ‘305, ‘968, and ‘154 Patents is November 12, 2015. Based on information presently
`
`known to Finjan, Finjan asserts that the date damages start for the ‘408 and ‘731 Patents is November
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`29, 2018.
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`Based on information presently known to Finjan, Finjan asserts that the end of claimed
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`damages for the ‘844, and ‘494 Patents is January 29, 2017. Finjan asserts that the claimed damages
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`period for the ‘731 Patent will be April 27, 2019. Finjan asserts that the end of claimed damages for
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`the ‘408 Patent will be May 27, 2021. Finjan asserts that the end of claimed damages for the ‘305
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`Patent will be August 18, 2020. Finjan asserts that the end of the claimed damages period for the ‘968
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`Patent will be September 5, 2023. Finjan asserts that the end of claimed damages for the ‘154 Patent
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`will be December 12, 2025.
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`The above identification is based on the information publicly available to Finjan as of the date
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`hereof. Finjan reserves the right to amend, modify, supplement, or narrow these contentions pursuant
`
`to Patent Local Rule 3-6.
`
`I.
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`Willful Infringement.
`
`Finjan provides the following contentions pursuant to Patent Local Rule 3-1(i):
`11
`FINJAN’S ASSERTED CLAIMS & INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT L.R. 3-1 AND 3-2
`
`CASE NO. 4:18-cv-07229-YGR
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`EXHIBIT B, PAGE 000012
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`Case 4:18-cv-07229-YGR Document 100-11 Filed 09/04/20 Page 14 of 527
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`
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`Defendant has been well aware of Finjan’s patents, including the Asserted Patents, and has
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`continued its infringing activity, despite this knowledge, for years. Finjan gave written notice to
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`Defendant of its infringement of Finjan’s patents by letter dated November 12, 2015, which
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`specifically identified Finjan’s ‘844, ‘494, ‘305, ‘968, and ‘154 Patents. This letter also identified
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`many of Defendant’s infringing products including how Defendant’s Malware Detection Systems
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`(MDS), Web Application Firewall (WAF), Web Application Scanner (WAS), and Vulnerability (VM)
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`solutions including Qualys Cloud Platform products infringe various of Finjan’s Asserted Patents. See
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`November 12, 2015 Letter from Finjan to Qualys, attached as Exhibit 23 to Finjan’s Complaint (Dkt.
`
`No. 1).
`
`Finjan also gave Defendant another letter on or about December 7, 2017, in which Finjan
`
`described to Defe