Case 4:18-cv-07229-YGR Document 41 Filed 02/10/20 Page 1 of 5
`
`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
`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.
`
`EDWARD G. POPLAWSKI
`(State Bar No. 113590)
`epoplawski@wsgr.com
`OLIVIA M. KIM (State Bar No. 228382)
`okim@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071
`Telephone: (323) 210-2900
`Facsimile: (866) 974-7329
`RYAN R. SMITH (State Bar No. 229323)
`rsmith@wsgr.com
`CHRISTOPHER DON MAYS
`(State Bar No. 266510)
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`Facsimile: (650) 493-6811
`Attorneys for Defendant
`QUALYS INC.
`
`UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`OAKLAND DIVISION
`
`CASE NO.: 4:18-cv-07229-YGR
`
`JOINT NOTICE TO THE COURT
`REGARDING PENDING CLAIM
`CONSTRUCTION APPEAL
`
`))))))))))
`
`FINJAN, INC., a Delaware Corporation,
`
`Plaintiff,
`
`v.
`
`QUALYS INC., a Delaware Corporation,
`
`Defendant.
`
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`JOINT NOTICE TO THE COURT
`
`CASE NO. 4:18-CV-07229-YGR
`
`

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`Case 4:18-cv-07229-YGR Document 41 Filed 02/10/20 Page 2 of 5
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`The parties, by and through their undersigned attorneys, respectfully submit this Notice
`apprising the Court that the construction of the term “a content processor” contained in U.S.
`Patent No. 8,141,154 (the “‘154 Patent”) is currently on appeal before the Federal Circuit.
`Patent
`Term
`Construction
`Co-pending Case
`being appealed
`“a processor
`that
`processes modified
`content.”
`
`Finjan Inc. v. Juniper Networks, Inc.,
`Appeal No. 19-2405, D.I. 18 at 2
`(Fed. Circ.) (appeal from Case No.
`3:17-cv-05659-WHA (N.D. Ca.))
`
`’154 Patent
`
`“a content
`processor”
`
`Qualys’s Position: Qualys proposes that this Court adopt the same construction of the
`term “a content processor” that is presently on appeal before the Federal Circuit. In an effort to
`conserve judicial resources, Qualys proposes continuing the claim construction hearing in this
`case until after the Federal Circuit issues a decision in the Juniper appeal.
`Below, Finjan attempts to trivialize the importance of this term. However, in the Juniper
`case, the construction of this term proved to be dispositive – it was the basis on which Judge
`Alsup granted summary judgment of non-infringement for the ’154 Patent. This issue was
`important enough that Finjan has appealed that construction to the Federal Circuit. Qualys
`believes the construction may be similarly important in this case. The fact that Qualys seeks an
`additional clarification pertaining to which claimed device the content processor must be located
`on (“the content processor is part of the computer being protected from dynamically generated
`content”), does not disturb the importance of the Federal Circuit’s review.
`Notably, Finjan presently asserts 78 patent claims across seven patents in this case. Any
`opportunity to reduce the number and scope of the issues in this case is important, and the fact
`that this is one patent in seven is only because of the number of patents Finjan itself brought into
`this case to begin with.
`Moreover, Finjan wrongly accuses Qualys of delay. Finjan omits that it never produced
`to Qualys any of the orders and documents (such as claim construction, summary judgment,
`notice of appeal, or appellate briefing) to which it refers. Qualys only learned that this issue was
`being appealed by happenstance after recently checking the Juniper case docket. Even if Finjan
`
`JOINT NOTICE TO THE COURT
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`CASE NO. 4:18-CV-07229-YGR
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`Case 4:18-cv-07229-YGR Document 41 Filed 02/10/20 Page 3 of 5
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`had timely produced these documents, Qualys would have learned nothing about the issues in the
`Juniper appeal until it received Finjan’s actual appeal brief (since its September 2019 notice of
`appeal says nothing about the specific issues that Finjan was appealing but includes a laundry list
`that appears to include most, if not all, of orders in that case). See Finjan v. Juniper, Case No.
`3:17-cv-05659-WHA (N.D. Ca.) at D.I. 607. Finally, Finjan complains that Qualys did not
`present a draft of this notice until February 4, 2020 – but that is because Finjan delayed in
`responding to Qualys’s proposal, until January 24.
`If the Court wishes to proceed with the claim construction hearing scheduled for May 1,
`or order further briefing on this issue, Qualys will gladly participate. Qualys’ simply wished to
`alert the Court to relevant appellate review of an overlapping issue that could cause unnecessary
`duplication and inefficient expenditure of the Court’s resources.
`Finjan’s Position: The Court should reject Qualys’ proposal to delay the progression of
`this case for an unknown period of time pending the conclusion of the Juniper appeal. At this
`point, only the opening appeal brief has been submitted, and Finjan anticipates that there will be
`oral argument on the appeal, which the Federal Circuit has yet to schedule. With respect to this
`case, the term at issue, “a content processor,” appears in only one of the seven patents asserted in
`this case, and there are nine other terms for the Court to construe that are not at issue in the
`Juniper appeal. Thus, the Juniper appeal would, maybe and at most, have only a minor impact
`on claim construction in this case, which does not merit the substantial delay that Qualys seeks
`(as fact discovery does not end until two months after the Court issues its claim construction
`order).1
`Moreover, the Juniper appeal will not resolve the construction of even this one term
`because Qualys is seeking in this case a different construction here (i.e., “a processor that
`processes modified content; the content processor is part of the computer being protected
`from dynamically generated malicious content”) that goes beyond the construction on appeal
`to the Federal Circuit (“a processor that processes modified content”).
`
`1 Judge Noreika in the District of Delaware recently construed the “content processor” term
`notwithstanding the Juniper appeal.
`
`JOINT NOTICE TO THE COURT
`
`-2-
`
`CASE NO. 4:18-CV-07229-YGR
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`

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`Case 4:18-cv-07229-YGR Document 41 Filed 02/10/20 Page 4 of 5
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`Importantly, to the prejudice of Finjan, without justification for this late submission
`Qualys has not timely presented this issue to the Court. Qualys was on notice that Finjan was
`appealing issues relating to the ‘154 Patent based on the notice of appeal Finjan filed on
`September 17, 2019 and the public version of Finjan’s appeal briefing has been available since
`December 18, 2019. Qualys did not raise this issue until January 8, 2020, and Finjan promptly
`responded that it would oppose moving the date for the claim construction hearing. Qualys did
`not propose to submit a joint report to the Court until nearly a month later on February 4, 2020.
`In the meanwhile, Finjan has been drafting its opening claim construction brief, which is due
`today. Postponing further briefing and the hearing after Finjan has already been put to this task
`would only reward Qualys’ inexplicable lack of diligence in making this untimely request of the
`Court.
`
`Accordingly, the Court should deny Qualys’ request. To the extent the Court is inclined
`to consider Qualys’ request, Finjan requests the opportunity to submit formal briefing on this
`issue, including to demonstrate the limited potential impact of the Juniper appeal for the Court’s
`consideration.
`Dated: February 10, 2020
`
`Respectfully submitted,
`
`By: /s/ Paul Andre
`Paul Andre (State Bar. No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`Counsel for Plaintiff
`FINJAN, INC.
`
`By: /s/ Christopher D. Mays
`Ryan Smith (State Bar No. 229323)
`rsmith@wsgr.com
`Christopher Don Mays
`cmays@wsgr.com
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`Facsimile: (650) 493-6811
`Edward G. Poplawski (State Bar No.
`113590) epoplawski@wsgr.com
`Olivia M. Kim (State Bar No. 228382)
`okim@wsgr.com
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`Professional Corporation
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071
`Telephone: (323) 210-2900
`Facsimile: (866) 974-7329
`
`JOINT NOTICE TO THE COURT
`
`-3-
`
`CASE NO. 4:18-CV-07229-YGR
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`Case 4:18-cv-07229-YGR Document 41 Filed 02/10/20 Page 5 of 5
`
`Counsel for Defendant
`QUALYS INC.
`
`SIGNATURE ATTESTATION
`
`I, Christopher D. Mays, hereby attest that I obtained the concurrence of Paul Andre in
`filing this document. I declare under penalty of the laws of the United States that the foregoing
`is true and correct.
`Executed this 10th day of February 2020 at Palo Alto, California.
`
`/s/ Christopher D. Mays
` Christopher D. Mays
`
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`JOINT NOTICE TO THE COURT
`
`-4-
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`CASE NO. 4:18-CV-07229-YGR
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