Case 4:18-cv-07229-YGR Document 114 Filed 10/01/20 Page 1 of 8
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`Juanita R. Brooks (CA SBN 75934)
`brooks@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Telephone: (858) 678-5070 / Fax: (858) 678-5099
`
`Robert P. Courtney (CA SBN 248392)
`courtney@fr.com
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South 6th Street
`Minneapolis, MN 55402
`Telephone: (612) 335-5070 / Fax: (612) 288-9696
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC., a Delaware
`Corporation,
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`Plaintiff,
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`v.
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`QUALYS INC., a Delaware
`Corporation,
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`Defendant.
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`Case No. 4:18-cv-07229-YGR (TSH)
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`FINJAN, INC.’S MOTION FOR
`RELIEF FROM THE
`MAGISTRATE JUDGE’S
`DISCOVERY ORDER OF
`SEPTEMBER 17, 2020
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`FINJAN MOTION FOR RELIEF
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 114 Filed 10/01/20 Page 2 of 8
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`Finjan respectfully requests that the Court set aside said the Magistrate
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`Judge’s Discovery Order of September 17, 2020 (Dkt. #105), and compel defendant
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`Qualys, Inc. to produce overseas sales data for products accused of patent
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`infringement in this case.
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`POINTS AND AUTHORITIES SUPPORTING THE MOTION
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`The Magistrate Judge’s Order clearly erred when determining that Finjan is
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`not entitled to discover Qualys’s overseas sales of accused products. Though
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`acknowledging that Federal Circuit law permits damages on overseas sales
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`attributable to domestic infringement, the Order determined that Finjan’s Patent
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`Rule 3-1 contentions set forth no infringement claim against Qualys’s domestic
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`software activities to support such recovery. Order at 2. That determination was
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`incorrect. Finjan’s P.R. 3-1 contentions alleged that Qualys’s software products
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`infringe numerous “computer-readable medium” (“CRM”) claims. Such claims are
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`by definition infringed when Qualys domestically causes computer-readable media
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`to contain infringing code. Because Qualys undisputedly makes and stores
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`computer-readable copies of accused software within the U.S., at least when it
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`compiles the accused products’ code, Finjan’s P.R. 3-1 CRM-claim contentions
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`were sufficient to support discovery into Qualys’s overseas sales of said products.
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`I.
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`THIS CASE AND THE PRESENT DISPUTE
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`This is a patent case. Finjan accuses various Qualys products of infringing
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`multiple claims from seven of Finjan’s patents. See generally Complaint (Dkt #1).
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`Finjan filed its Complaint on November 29, 2019, id., and the parties have been
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`litigating since. Fact discovery closes October 1, which is the date of this filing.
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`Order of June 30, 2020 (Dkt. #78).
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`A.
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`Finjan’s Infringement Contentions
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`On April 19, 2019, Finjan timely served its Patent Rule 3-1 contentions on
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`Qualys. Among the claims asserted were nine CRM claims, i.e., claims infringed by
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`FINJAN MOTION FOR RELIEF
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 114 Filed 10/01/20 Page 3 of 8
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`domestic acts of making, using, selling, offering to sell, or importing any computer-
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`readable medium (e.g., hard drives, DVDs, tape drives, etc.) containing patented
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`program code.1 Claim 4 of U.S. Patent 8,141,154 (“the ’154 patent”) is
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`representative this motion. Finjan’s P.R. 3-1 contentions followed the typical
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`practice of setting forth contentions in numerical claim order. It happened that the
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`lowest-numbered asserted claim for the ’154 patent (claim 1) is a system claim.
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`Finjan’s contention for claim 1 is detailed. See Exh. 1 (App’x E to Contentions) at
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`1–40.2 So as to avoid unnecessary redundancy, when proceeding to claim 4 (a CRM
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`claim), Finjan’s P.R. 3-1 contentions incorporated by reference the discussion for
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`claim 1, with additional explanation as needed. Id. at 42–46.
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`B. Qualys’s Domestic Making of Accused CRM Products
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`As discovery proceeded, Qualys stated in interrogatory responses that it
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`conducts research and development activities in the United States. Exh. 2 (Qualys
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`Interrog. Resps.) No. 5. Depositions further confirmed that Qualys’s central
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`location for making (i.e., storing them to computer-readable media) the accused
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`software products is in the United States. Exh. 3 (Tr., Dep. of D. Bachwani
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`(Rough)) at 56–64; Exh. 4 (Tr., Dep. of H. Kruse (Rough)) at 76–82.
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`C. Qualys’s Refusal to Produce Overseas Sales Data
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`Finjan timely requested sales information for the accused products, whether
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`sold domestically or overseas. E.g., Exh. 5 (Finjan RFPs) Nos. 23, 24, 30; Exh. 6
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`(Finjan Interrogs.), Nos. 3, 6. Though producing domestic sales information,
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`Qualys refused to produce overseas sales for accused products. See, e.g., Exh. 2
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`1 The asserted CRM claims are: claims 41 and 42 of U.S.P.N. 6,154,844; claims 23
`and 32 of U.S.P.N. 6,965,958; claim 17 of U.S.P.N. 7,418,731; claim 25 of U.S.P.N.
`7,975,305; claim 4 of the ’154 patent; and claims 22 and 35 of U.S.P.N. 8,225,408.
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` Exhibit references are to the exhibits accompanying the Declaration of Robert
`Courtney, filed contemporaneously herewith.
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`FINJAN MOTION FOR RELIEF
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 114 Filed 10/01/20 Page 4 of 8
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`(Qualys Interrog. Resps.) Nos. 3, 6; Exh. 7 (Qualys Objs. to R. 30(b)(6) Dep. Not.).
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`Discussion reached an impasse, and the parties submitted the issue to the Magistrate
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`Judge. Letter Br. (filed Sept. 4, 2020), Dkt. #100.
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`D. Magistrate Judge Hixson’s Decision Not to Compel
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`In his Order of September 17, 2020 (Dkt. #105), the Magistrate Judge
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`declined to order Qualys to produce overseas sales data. The Order determined that
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`Finjan’s P.R. 3-1 contentions “contend that Qualys’s accused products infringe only
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`when they are combined with or connected to other devices and software on a
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`network[,]”and thus do not accuse software alone of infringement. Order at 2.
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`Finjan seeks relief from that clearly erroneous determination and the Magistrate
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`Judge’s subsequent decision not to compel production of overseas sales information.
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`II. ARGUMENT
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`A magistrate judge’s non-dispositive trial order is to be modified or set aside
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`to the extent it is “clearly erroneous or contrary to law.” Fed. R. Civ. P. 72(a). The
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`Magistrate Judge’s determination that Finjan’s contentions include no software
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`infringement theory—i.e., that they describe infringement “only when [accused
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`products] are combined with or connected to other devices”—is clearly erroneous.
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`A. Under Federal Circuit Law, Computer-Readable Medium Claims
`Are Infringed Merely by Storing Program Code on Media
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`On its face, claim 4 of the ’154 patent (like the other CRM claims in this case)
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`requires no other devices. It is practiced upon fixation of computer program code
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`that, if run, would “caus[e] a computer device to” take various actions. Possibilities
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`that the code might subsequently be run on a computer connected to outside devices,
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`or even that it might have little utility absent such a connection, are immaterial. A
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`defendant storing onto computer-readable medium code that, if run, would cause the
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`computer to exhibit the claimed behaviors, infringes at the time the infringing
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`media is “made,” i.e., when the code is stored on it. See 35 U.S.C. § 271(a)
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`FINJAN MOTION FOR RELIEF
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 114 Filed 10/01/20 Page 5 of 8
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`(infringement by “mak[ing]” a patented invention). There is no requirement that
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`code be run, or that it be run on a computer connected to other devices. The Federal
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`Circuit confirmed as much in Finjan, Inc. v. Secure Computing Corp., 626 F.3d
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`1197, 1205 (“The storage medium claims similarly cover capability. . . . [They] do
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`not require that the program code be ‘active,’ only that it be written ‘for causing’ a
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`server or a computer to perform certain steps.” (emphasis added, parenthetical
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`omitted)). It described how sale of computer-readable media infringed because the
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`“software for performing the claimed functions existed in the products when sold—
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`in the same way that an automobile engine for propulsion exists in a car even when
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`the car is turned off.” Id. The same concept applies to Qualys’s U.S.-based
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`development and making of the accused products—an act by which Qualys “made”
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`Finjan’s patented computer-readable medium inventions.
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`B.
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`Finjan’s P.R. 3-1 Contentions Set Forth Software Claims
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`Upon review of Finjan’s P.R. 3-1 contentions, the Magistrate Judge’s error in
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`finding they did not target software is clear. For each limitation of ’154 claim 4,
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`Finjan’s contentions point (via reference) to specific software functionality. Under
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`limitation 4(b), code must cause a device to “process content,” and the contnetions
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`specifically identify Qualys software product code capable of doing so. E.g., Exh. 1
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`(App’x E to Contentions) at 15 (describing how Qualys’s Vulnerability
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`Management software causes such processing), 16 (same, for its Threat Protection
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`software), 17 (same, for Indication of Compromise software, in combination with
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`Cloud Agent software), 18 (same, for Container Security software), 19 (same, for
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`Web App Firewall software), 20 (same, for Web App Scanning software), 21 (same,
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`for Compliance Monitoring software). Surrounding those contentions is additional
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`detail laying out other aspects of the infringement read. Id. at 2–24. That the
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`contentions describe the software running in a network does not relieve Qualys of
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`infringement. As stated, for CRM claims infringement is at the time code is stored.
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`FINJAN MOTION FOR RELIEF
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 114 Filed 10/01/20 Page 6 of 8
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`The same basic analysis applies to the other limitations of ’154 claim 4, and
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`to Finjan’s other computer-readable medium claims. Reviewing Finjan’s claim-
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`specific contentions against the language of the claim, and in view of Finjan’s
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`citations to previous discussion, makes clear beyond doubt that Finjan, in its
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`computer-readable medium claims, alleged infringement by Qualys’s storage of the
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`accused product code onto hard drives, memory, or other computer-readable media.
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`C.
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`Finjan is Applying the Same Basic Infringement Theory
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`Finjan’s contentions achieve the goal of P.R. 3-1(c), which is to establish
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`relatively early in the case “where and how each limitation” of a claim is practiced.
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`The contentions confirm that the same basic theory of infringement applies to the
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`computer-readable medium claims as to the other claims, with modest
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`accommodations that the contentions set forth. In other words, Finjan contends that
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`Qualys’s software, when stored, infringes ’154 claim 4 for the same basic reasons
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`that Qualys’s software, when made available in the “cloud,” infringes ’154 claim 1.
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`The same applies to the other computer-readable medium claims. Qualys is on
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`notice of that contention, and has been since service in April 2019.
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`III. CONCLUSION
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`The Order acknowledged that, with a timely infringement contention,
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`“foreign sales are relevant for infringing products that are made . . . within the
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`United States.” Order at 2. For the reasons above, Finjan respectfully submits its
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`P.R. 3-1 contentions properly accused Qualys’s domestic software-making of
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`infringement, and thus support discovery into foreign sales of said software.
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`FINJAN MOTION FOR RELIEF
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 114 Filed 10/01/20 Page 7 of 8
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`Dated: October 1, 2020
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`/s/ Robert Courtney
`Juanita R. Brooks (CA SBN 75934)
`brooks@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Telephone: (858) 678-5070
`Facsimile: (858) 678-5099
`
`Robert Courtney (CA SBN 248392)
`courtney@fr.com
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South 6th Street
`Minneapolis, MN 55402
`Telephone: (612) 335-5070
`Facsimile: (612) 288-9696
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`FINJAN MOTION FOR RELIEF
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 114 Filed 10/01/20 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and
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`foregoing document has been served on October 1, 2020, to all counsel of record
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`who are deemed to have consented to electronic service via the Court’s CM/ECF
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`system. Any other counsel of record will be served by electronic mail and regular
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`mail.
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`/s/ Robert Courtney
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`Robert Courtney (CA SBN 248392)
`courtney@fr.com
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`Attorneys for Plaintiff
`FINJAN, INC.
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`FINJAN MOTION FOR RELIEF
`Case No. 4:18-cv-07229-YGR (TSH)
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