Case 4:18-cv-07229-YGR Document 60 Filed 04/13/20 Page 1 of 7
`
`EDWARD G. POPLAWSKI (SBN 113590)
`epoplawski@wsgr.com
`OLIVIA M. KIM (SBN 228382)
`okim@wsgr.com
`WILSON SONSINI GOODRICH &
`ROSATI
`Professional Corporation
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Telephone: (323) 210-2900
`Facsimile: (866) 974-7329
`
`RYAN R. SMITH (SBN 229323)
`rsmith@wsgr.com
`CHRISTOPHER D. MAYS (SBN 266510)
`cmays@wsgr.com
`WILSON SONSINI GOODRICH &
`ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`Facsimile: (650) 493-6811
`
`Attorneys for Defendant
`QUALYS INC.
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`OAKLAND DIVISION
`
`CASE NO.: 4:18-cv-07229-YGR
`
`DEFENDANT QUALYS INC.’S
`OBJECTION TO UNTIMELY
`REPLY EVIDENCE UNDER CIVIL
`L.R. 7-3 AND PATENT L.R. 4-2
`
`)))))))))))
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`FINJAN, INC.,
`
`Plaintiff,
`
`v.
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`QUALYS INC.,
`
`Defendant.
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`CASE NO. 4:18-cv-07229-YGR
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`OBJECTION TO
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`Case 4:18-cv-07229-YGR Document 60 Filed 04/13/20 Page 2 of 7
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`Plaintiff Finjan, Inc.’s (“Finjan’s”) approach to claim construction has been to obfuscate
`and refuse to take any positions whatsoever. Not until its Reply Claim Construction Brief (D.I.
`59, et seq.) did Finjan submit a voluminous expert declaration from Dr. Michael Goodrich (the
`“Goodrich Declaration”) setting forth its position with respect to the “receiver” and “transmitter”
`claim terms. This declaration violates Patent L.R. 4-2(b) because it includes opinions that Finjan
`failed to timely disclose.1 Finjan certainly could have (and should have) disclosed Dr.
`Goodrich’s opinions with its Opening Claim Construction Brief. There is no valid justification
`for Finjan concealing these opinions until its Reply in violation of both Patent L.R. 4-2 and Civil
`L.R. 7-3. Dr. Goodrich’s opinions are further excludable because they apply the wrong legal
`standard.
`For similar reasons, Qualys objects to Exhibits 2-4 of the Manes Declaration (D.I. 59-3
`through 59-6) (“New Exhibits”). Finjan never disclosed the existence of these exhibits and never
`produced these exhibits to Qualys as Patent L.R. 4-2 requires. And, Finjan again withheld this
`evidence until its Reply when Qualys could not respond to it.
`I.
`THE GOODRICH DECLARATION IS UNTIMELY.
`Finjan’s use of the Goodrich Declaration also violates Patent L.R. 4-2. That rule required
`Finjan to identify any opinions that Dr. Goodrich may render regarding claim construction. See
`Patent L.R. 4-2(b). Finjan identified a discrete number of topics on which Dr. Goodrich might
`render opinions:
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`
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`
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`
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`the scope of the asserted patents and the relevant technology;
`the proper construction and/or plain and ordinary meaning of the terms [but failed
`to identify any plain and ordinary meaning for any term]; and
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`the understanding of one of skill in the art at the time of the filing of the asserted
`patents [but did not identify what that understanding is].
`
`1 This is not the first time Finjan has flagrantly violated the Patent Local Rules of this
`District. On January 17, 2020, Judge Orrick sanctioned Finjan for failing to provide adequate
`infringement contentions under the Patent Local Rules. See Finjan, Inc. v. Check Point
`Software, Inc. et al., Case No. 3:18-cv-02621-WHO at D.I. 255.
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`CASE NO. 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 60 Filed 04/13/20 Page 3 of 7
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`Ex. E at 1. This generalized list of topics itself violates Patent L.R. 4-2 because Finjan never
`actually disclosed what Dr. Goodrich’s opinions on those topics would be. See Patent L.R. 4-2
`(“With respect to any supporting witness, percipient or expert, the identifying party shall also
`provide a description of the substance of that witness’ proposed testimony that includes a listing
`of any opinions to be rendered in connection with claim construction.”).2 But, more critically,
`Finjan omitted from its disclosure critical topics that Dr. Goodrich ultimately opined on in his
`declaration. For example, nowhere in its disclosures did Finjan identify that Dr. Goodrich would
`opine about whether “the terms receiver and transmitter connote structure” (see D.I. 59-1,
`Goodrich Decl., at ¶¶ 38-43) or whether “the specifications of the ’154, ’494, and ’968 Patents
`disclose structure for receiver and transmitter” (see id. at ¶¶ 44-75).
`Finjan’s failure to give Qualys notice about the true subject matter of the Goodrich
`Declaration was intentional. Finjan knew as early as November 6, 2019—a week before serving
`its Patent L.R. 4-2 disclosures—that Qualys would be offering expert opinion on these topics.
`See Ex. F, Qualys’ 11/6/2019 Patent L.R. 4-2 Disclosures at 10. Yet, instead of properly
`preserving its right to offer its own expert opinion on this subject, Finjan remained silent and
`failed to list either the topics or the specific opinions that Dr. Goodrich would offer. By failing
`to identify the topics that Dr. Goodrich would offer in his declaration, Finjan deprived Qualys of
`the right to depose Dr. Goodrich and solicit from him directly what his opinions would be.
`Finjan then further compounded the prejudice to Qualys by failing to include Dr. Goodrich’s
`opinions in its Opening Brief so that Qualys and its expert could at least respond to them. Finjan
`should not be permitted to gain from its violation of the rules.
`Finjan may argue that the Goodrich Declaration is merely a rebuttal to Dr. Rubin’s
`declaration. Such an argument misses the point. Rebuttal evidence does not relieve Finjan of its
`obligations under Patent L.R. 4-2, which makes no exception to expert opinions intended to be
`used for opinion. See Patent L.R. 4-2 (requiring “listing of any opinions to be rendered…”).
`Even if the specific opinions Dr. Goodrich offered in his Declaration were intended simply to
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`2 Unless stated otherwise, all emphasis in quotes is added.
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`CASE NO. 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 60 Filed 04/13/20 Page 4 of 7
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`rebut Dr. Rubin, this does not excuse Finjan from failing to disclose that this was a topic about
`which Dr. Goodrich could opine, which would have enabled Qualys to depose Dr. Goodrich and
`explore those opinions. Instead, Finjan served a misleading Patent L.R. 4-2 disclosure that
`concealed the actual topics that it intended to include in Dr. Goodrich’s declaration. And, in any
`event, Qualys’ own Patent L.R. 4-2 disclosures were sufficient to put both Finjan and Dr.
`Goodrich on notice of Dr. Rubin’s opinions, further undercutting any notion that Finjan was
`unable to offer Dr. Goodrich’s opinions until its Reply brief. See Quantum Corp. v. Crossroads
`Sys., Inc., No. C 14-04293 WHA, 2015 WL 5693734, at *5 (N.D. Cal. Sept. 29, 2015) (“In his
`most recent declaration, Dr. Hospodor also offered several arguments rebutting specific
`constructions proposed by Crossroads . . . the summary of [Crossroad’s] expert’s claim
`construction testimony, which it provided to Quantum in advance of Dr. Hospodor's deposition
`pursuant to Patent Local Rule 4-2, was adequate to put Dr. Hospodor on notice of what Dr. Levy
`would say. Quantum's argument that Dr. Hospodor needed to wait until Dr. Levy was deposed
`to compose his rebuttal arguments is most unpersuasive.”).
`In any event, substantial portions of Dr. Goodrich’s declaration cannot fairly be
`characterized as rebuttal. Such portions include: a background discussion on distributed
`computer systems (D.I. 59-1, Goodrich Decl., at ¶¶ 27-28); a synopsis of Dr. Goodrich’s book
`“Introduction to Computer Security” (id. at ¶¶ 29-31); and Dr. Goodrich’s understanding of the
`background on each asserted patent (id. at ¶¶ 32-37). Tellingly, at least some of the opinions
`contained in the Goodrich Declaration are identical to opinions that Dr. Goodrich rendered years
`ago about these patents. Compare Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01979, Ex.
`2036 (August 2, 2016, declaration involving validity of ’154 Patent-in-Suit) at ¶ 11 with D.I. 59-
`1 (Goodrich Declaration) at ¶ 25.
`As another example, Dr. Goodrich’s opinions about the construction of “transmitter” and
`“receiver” go far beyond merely rebutting Dr. Rubin’s limited opinion about whether those terms
`connote structure in the field of computer software (see D.I. 52-6 at ¶ 4). Dr. Goodrich instead
`offers a far more sweeping opinion about the plain and ordinary meaning of “transmitter” and
`“receiver,” which Finjan uses to directly support its own claim construction position that the
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`CASE NO. 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 60 Filed 04/13/20 Page 5 of 7
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`plain and ordinary meaning of those terms should apply. See D.I. 59 at 13 (citing D.I. 59-1,
`Goodrich Decl., at ¶¶ 27-28, 38-43). There is no legitimate reason why Finjan withheld such
`opinions about the supposed plain and ordinary meaning of these terms opinions from both its
`Patent L.R. 4-2 disclosures and its Opening Brief.3
`II.
`DR. GOODRICH APPLIES THE WRONG LEGAL STANDARD
`The Goodrich Declaration is further objectionable under Fed. R. Evid. 702 because it is
`not “the product of reliable principles and methods.” Dr. Goodrich bases his opinions on legal
`standards that the Federal Circuit has specifically overruled. Such opinions are therefore
`unhelpful and should not be considered. See Apple, Inc. v. Samsung Elecs. Co., Ltd., Civ. No.
`11-cv-01846-LHK, 2012 WL 2571332 at *6 (N.D. Cal. June 30, 2012) (striking expert opinion
`for violating 35 U.S.C. § 289); Neutrino Dev. Corp. v. Sonosite, Inc., 410 F. Supp. 2d 529, 540
`(S.D. Tex. 2006) (“Because Mr. Baker's analysis is based on a standard inapplicable to the
`proper inquiry under § 112, his testimony cannot assist the jury to resolve any fact relevant to
`Sonosite’s enablement defense. The research and development model set forth in Mr. Baker's
`report simply answers the wrong question and, as such, is inadmissible under Federal Rule of
`Civil Procedure 402.”).
`Relying on Dr. Goodrich’s opinions, Finjan argues in its Reply that that “receiver” and
`“transmitter” are not nonce words and therefore means-plus-function claiming standards do not
`apply. See D.I. 59 at 14 (citing D.I. 59-1, Goodrich Decl., ¶¶ 28-43). But Dr. Goodrich’s
`opinions are based on erroneous legal standards. Dr. Goodrich acknowledges that he applied a
`“strong presumption” against means-plus-function applicability:
`I have been further informed that if a claim element does not use “means
`for” language, it is strongly presumed not to be a mean-plus-function
`element.
`
`D.I. 59-1 at ¶ 20. However, the Federal Circuit expressly overruled this standard in Williamson
`v. Citrix Online, LLC:
`
`3 Alternatively, Qualys requests an opportunity to respond to the Goodrich Declaration by
`filing a short sur-reply and rebuttal expert declaration of Dr. Rubin.
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`Case 4:18-cv-07229-YGR Document 60 Filed 04/13/20 Page 6 of 7
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`Our consideration of this case has led us to conclude that such a heightened
`burden is unjustified and that we should abandon characterizing as
`“strong” the presumption that a limitation lacking the word “means” is
`not subject to § 112, para. 6. That characterization is unwarranted, is
`uncertain in meaning and application, and has the inappropriate practical
`effect of placing a thumb on what should otherwise be a balanced analytical
`scale. It has shifted the balance struck by Congress in passing § 112, para.
`6 and has resulted in a proliferation of functional claiming untethered to §
`112, para. 6 and free of the strictures set forth in the statute.
`
`792 F.3d 1339, 1349 (Fed. Cir. 2015). Here, Dr. Goodrich opined that means-plus-function
`standards do not apply because “receiver” and “transmitter” connote structure. See D.I. 59-1,
`Goodrich Decl., at ¶¶ 38-43. But those opinions are tainted by his erroneous application of the
`“strong presumption” standard overruled in Williamson. Accordingly, those opinions are
`inherently suspect, unreliable, and should be excluded.
`III.
`FINJAN’S NEW EXHIBITS ARE UNTIMELY
`Finjan uses the New Exhibits to specifically support its argument that the plain and
`ordinary meaning of the terms “receiver” and “transmitter” in the patents-in-suit should be
`adopted. See D.I. 59 at 13. But Finjan never identified these exhibits in its Patent L.R. 4-2
`disclosures and did not produce them to Qualys. See generally Ex. E, Finjan’s 11/12/2019 Patent
`L.R. 4-2 disclosures. Instead, as with the Goodrich Declaration, Finjan simply concealed this
`evidence until its Reply brief in clear violation of both Patent L.R. 4-2 and Civil L.R. 7-3.
`Finjan’s conduct prevented Qualys and its expert, Dr. Aviel Rubin, from responding to this
`evidence.
`
`IV.
`
`CONCLUSION
`For the foregoing reasons, Qualys’ objections to Manes Declaration Exhibits 2-4 and the
`Goodrich Declaration should be sustained. Alternatively, Qualys should be given leave to file a
`limited sur-reply and rebuttal declaration of Dr. Aviel Rubin responding to this new evidence.
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`Case 4:18-cv-07229-YGR Document 60 Filed 04/13/20 Page 7 of 7
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`Dated: April 13, 2020
`
`By:
`
`Respectfully submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`
`/s/ Christopher D. Mays
`CHRISTOPHER D. MAYS
`
`Counsel for Defendant
`QUALYS INC.
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