Case 4:18-cv-07229-YGR Document 65-1 Filed 04/20/20 Page 1 of 8
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`Exhibit A
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`Case 4:18-cv-07229-YGR Document 65-1 Filed 04/20/20 Page 2 of 8
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`PAUL J. 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
`AUSTIN MANES (State Bar No. 284065)
`amanes@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.
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`
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
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`Plaintiff,
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`v.
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`QUALYS INC.,
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`Defendant.
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`OAKLAND DIVISION
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`Case No.: 4:18-cv-07229-YGR
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`PLAINTIFF FINJAN, INC.’S [PROPOSED]
`RESPONSE TO DEFENDANT QUALYS,
`INC.’S OBJECTION TO EVIDENCE
`[DKT. 60]
`
`Date: May 1, 20201
`Time:
`10:00 AM
`Place: Courtroom 1, 4th Floor
`Judge: Hon. Yvonne Gonzalez Rogers
`
`
`1 Subject to the Court’s March 12, 2020 Order (Dkt. No. 48) suspending in-person appearances.
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`FINJAN’S RESPONSE TO OBJECTION TO EVIDENCE
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`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 65-1 Filed 04/20/20 Page 3 of 8
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`I.
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`INTRODUCTION
`The Court should overrule Qualys’ Objections to Evidence (Dkt. No. 60, “Objections”) and
`accept the declaration of Dr. Goodrich in support of Finjan’s reply claim construction brief. Finjan
`offers Dr. Goodrich’s declaration to rebut the invalidity opinions of Qualys’ expert. Pursuant to Patent
`Local Rule (“PLR”) 4-2, Finjan timely disclosed that it would rely on Dr. Goodrich’s opinions for
`rebuttal five months ago, which is fatal to Qualys’ Objection. PLR 4-5(c) expressly permits Finjan to
`provide such new evidence on reply to rebut evidence that a defendant submits with its responsive brief,
`which is exactly what happened here. Qualys submitted Dr. Rubin’s declaration with its response brief
`in support of its invalidity argument, a defense for which Qualys bears the burden of proof and burden
`of production. Finjan offers Dr. Goodrich’s declaration to rebut Dr. Rubin’s declaration, as expressly
`permitted by PLR 4-5(c). Thus, there is no merit to Qualys’ Objections.
`STATEMENT OF FACTS
`II.
`The parties exchanged PLR 4-2 disclosures on November 6, 2019, and Finjan served amended
`disclosures on November 12, 2019. Dkt. 60-1, Declaration of Christopher D. Mays (“Mays Decl.”),
`Exs. E and F. On December 4, 2019, the parties submitted their PLR 4-3 Joint Claim Construction
`Statement. Dkt. 40. In both its PLR 4-2 disclosures, and again in the JCCS, Finjan expressly disclosed
`that, to the extent Qualys offered an expert opinion that the terms “transmitter” and “receiver” are
`indefinite, Finjan would offer a rebuttal opinion from Dr. Goodrich:
`
`Finjan will rely on expert testimony to rebut Qualys’ proposed expert opinion that
`“a person of ordinary skill in the art as of the priority dates of the respective patents,
`reading the respective patents’ specifications, would not be able to identify
`corresponding structure for the term [‘receiver.’]/[‘transmitter’]”
`Mays Decl., Ex. E at 8-9, 17-19, and 25-26; see also Dkt. 40 (JCCS) at 7, Ex. A at 4-10, 16-19 and 25.
`Qualys’ disclosure of proposed expert opinions in the Joint Claim Construction Statement was
`far more ambivalent than Finjan’s disclosure. For example, Qualys disclosed the following for the term
`“transmitter,” which is just the inverse of Finjan’s disclosure:
`
`Dr. Aviel Rubin . . . may opine that a person of ordinary skill in the art as of the
`priority dates of the respective patents, reading the respective patents’ specifications,
`would not be able to identify corresponding structure for the term “transmitter.”
`Dkt. 40 (JCCS), Ex. A at 10.
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`FINJAN’S RESPONSE TO OBJECTION TO EVIDENCE
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`CASE NO.: 4:18-cv-07229-YGR
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`Finjan filed its Opening Claim Construction Brief on February 10, 2020. Dkt. 42. Qualys filed
`its Responsive Brief on March 16, 2020. Dkt. 52. Qualys submitted a declaration from Dr. Rubin with
`its Responsive Brief in which Dr. Rubin opined that the terms “receiver” and “transmitter” are
`indefinite. Dkt. 52-6. Finjan filed its Reply on April 6, 2020, and submitted the Declaration of Dr.
`Goodrich for the purpose of rebutting Dr. Rubin’s invalidity opinions. Dkt. 59; Dkt. 59-1.
`III. ARGUMENT
`Dr. Goodrich’s Declaration is Proper Rebuttal Evidence Under the PLR
`A.
`The PLR permitted Finjan to submit Dr. Goodrich’s declaration with its reply claim
`construction brief. Dr. Goodrich’s declaration is a direct rebuttal to Dr. Rubin’s declaration on
`invalidity, which Qualys submitted with its responsive brief. The PLR provide that “the party claiming
`patent infringement… shall serve and file any reply brief and any evidence directly rebutting the
`supporting evidence contained in an opposing party’s response.” PLR 4-5(c) (emphasis added).
`Because the PLR expressly authorize such submissions, Civil Local Rule 7-3(d), upon which Qualys’
`Objections are premised, does not apply.
`For this reason, Qualys’ arguments that Dr. Goodrich’s opinions are untimely and were not
`sufficiently disclosed fail. Finjan could not have submitted Dr. Goodrich’s rebuttal evidence in its PLR
`4-2 disclosure or its opening brief because it had no way of knowing what evidence to rebut. Qualys’
`short and ambivalent disclosure under PLR 4-2 simply declared that an expert “may” opine regarding
`the “transmitter” term. Dkt. 40, Ex. A at 10. Qualys did not provide a definitive declaration that it was,
`in fact, providing an expert opinion or the substance of that possible disclosure. As such, Finjan learned
`for the first time the specifics of Dr. Rubin’s opinion would when it received Qualys’ responsive brief.2
`Courts in this District recognize that PLR 4-5 permits submission of new rebuttal evidence for
`the first time on reply. Competitive Techs. v. Fujitsu Ltd., 286 F. Supp. 2d 1161, 1169 (N.D. Cal. 2003)
`(“Patent Local Rule 4–5 expressly permits such rebuttal testimony.”). Competitive Technologies is
`instructive because there, as here, the defendant filed Objections to Evidence under the civil local rules
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`2 Qualys initially disclosed that it may rely on expert opinions for ten terms, and later narrowed those
`terms to “receiver” and “transmitter,” but did not inform Finjan of this narrowing until it filed the
`responsive brief. Dkt. 40, Ex. A at 4-10, 16-19 and 25.
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`FINJAN’S RESPONSE TO OBJECTION TO EVIDENCE
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`to seek to exclude an expert declaration filed with the reply claim construction brief. Id. In that case,
`the Court rejected the same argument that Qualys asserts here because “at least part of [the expert]’s
`declaration constitutes rebuttal,” which is permitted under PLR 4-5(c). Id. Further, Competitive
`Technologies also rejected the defendant’s argument that some evidence in the declaration went beyond
`rebuttal, since the defendant had an opportunity to address any such evidence at the claim construction
`hearing. Id.; Genentech, Inc. v. Trustees of the Univ. of Penn., No. 10-cv-02037-LHK, 2011 WL
`866599, at *2 (N.D. Cal. Mar. 10, 2011)(allowing new evidence on reply to rebut new evidence in the
`claim construction response, because “[j]ustice is best served when issues are decided on the merits”).
`This application of the PLR to permit reply declarations in response to invalidity arguments
`makes sense because Qualys, as the proponent of the indefiniteness defense and of the requisite
`showing that these are means-plus-function elements despite the absence of the word “means,” bears
`the burden of production on its defense. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372-74
`(Fed. Cir. 2003) (party seeking to overcome presumption that an element is not a means-plus-function
`element if it does not use “means” bears the burdens of production and proof); Core Wireless Licensing
`S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018) (defendant bears “the initial burden of
`going forward with evidence to support its invalidity allegation” and the burden of proof by clear and
`convincing evidence). Therefore, Finjan should have an opportunity to respond after Qualys has
`attempted to demonstrate indefiniteness.
`The only case that Qualys cites does not support its Objections because it dealt with very
`different facts from those presented here. See Quantum Corp. v. Crossroads Sys., Inc., No. C 14-04293
`WHA, 2015 WL 5693734, at *5 (N.D. Cal. Sept. 29, 2015). In Quantum Corp., an expert’s opinions
`were excluded because he refused to answer questions at his deposition regarding the opposing party’s
`claim constructions, claiming he had no opinions, but later asserted those opinions on reply. Id. at *3
`(“Dr. Hospodor gave opinions rebutting Crossroads’ proposed constructions in his declaration, although
`he claimed he had no such opinions at his deposition”). Here, by contrast, Qualys never sought to
`depose Dr. Goodrich and, therefore, there is no situation where Dr. Goodrich refused to answer
`questions or claimed he had no opinion on an issue.
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`FINJAN’S RESPONSE TO OBJECTION TO EVIDENCE
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`Case 4:18-cv-07229-YGR Document 65-1 Filed 04/20/20 Page 6 of 8
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`B.
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`Dr. Goodrich’s Opinions Are Consistent with Finjan’s Opening Brief
`and PLR 4-2 Disclosures
`Dr. Goodrich’s declaration is consistent with Finjan’s opening brief because both documents
`identify the structure for the challenged terms by citing to the patents’ specifications. Dr. Goodrich
`takes this analysis one-step further by using those citations to rebut Dr. Rubin’s opinions and evidence,
`which Qualys did not disclose prior to providing its responsive brief. Compare Opening Brief (Dkt. 42)
`at 6-17 (citing structure in the specifications) with Goodrich Decl. (Dkt. 59-1) at 13-25 (same, while
`comparing those citations to Dr. Rubin’s citations). Dr. Goodrich’s declaration is also consistent with
`Finjan’s PLR 4-2 disclosures because Finjan disclosed his opinion that a person of ordinary skill would
`recognize structure for the terms “receiver” and “transmitter.” Mays Decl., Ex. E at 8-9, 17-19, 25-26.
`Qualys’ objection that Dr. Goodrich cited to some evidence not identified in the Joint Claim
`Construction Statement rings hollow because Dr. Rubin relied on evidence that Qualys did not identify
`in its own PLR 4-2 disclosures, including citations to the ‘154 Patent at 14:59-62; the ‘968 Patent at
`2:53-67; and the ‘494 Patent at 4:5-6. Compare Rubin Decl. (Dkt. 52-6) at 8-10 with Mays Decl., Ex. F
`at 10. Therefore, Dr. Goodrich should be permitted to rely on additional evidence to rebut Dr. Rubin’s
`analysis which, itself, is based on evidence outside of the JCCS. Genentech, supra, 2011 WL 866599,
`at *2 (“Justice is best served when issues are decided on the merits”).
`Finally, Qualys should not be heard to complain that Finjan’s PLR 4-2 disclosure of Dr.
`Goodrich’s potential opinion was insufficiently detailed, especially given that, on indefiniteness, Qualys
`bears the burdens of proof and production on invalidity and to establish that these are means-plus-
`function elements even though the claims do not use the word “means,” and Finjan is only offering a
`rebuttal opinion. Apex, 325 F.3d at 1372 (defendant has the initial burden of “going forward with
`evidence”); Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007-08 (Fed. Cir. 2018) (defendant bears the
`burden to rebut the presumption against the application of § 112, ¶ 6). As shown below, Qualys’
`disclosure of Dr. Rubin’s potential opinion on the same issue contains the same level of details that
`Finjan’s disclosure provides, even though Qualys has the burden of proof for its claims. Therefore, any
`consideration of Qualys’ objection applies even more so to Dr. Rubin’s opinion, which is no more
`supported by Qualys’ PLR 4-2 disclosure, making it also the subject of being stricken.
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`4
`FINJAN’S RESPONSE TO OBJECTION TO EVIDENCE
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`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 65-1 Filed 04/20/20 Page 7 of 8
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`Finjan’s PLR 4-2 Disclosure
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`Qualys’ PLR 4-2 Disclosure
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`Finjan will rely on expert testimony to
`rebut Qualys’ proposed expert opinion
`that “a person of ordinary skill in the art as
`of the priority dates of the respective
`patents, reading the respective patents’
`specifications, would not be able to identify
`corresponding structure for
`the
`term
`[‘receiver.’]/[‘transmitter’]”
`
`Expert testimony of Dr. Aviel Rubin, who
`may opine that a person of ordinary skill in
`the art as of the priority dates of the
`respective patents, reading the respective
`patents’ specifications, would not be able to
`identify corresponding structure for the
`term [“receiver”]/[“transmitter.”]
`
`Qualys’ Legal Standards Objection is Without Merit
`C.
`Qualys’ complaint about Dr. Goodrich’s reference to the strong presumption against finding
`terms not using “means” to be mean-plus-function is a red herring. His analysis does not depend on the
`strength of the presumption, which he references only by way of background in a single paragraph.
`Goodrich Decl. (Dkt. 59-1) at ¶ 20. Notwithstanding his prefatory reference to a “strong” presumption,
`Dr. Goodrich correctly states and then applies the controlling Federal Circuit standard that “elements
`[not using ‘means’] are only deemed to be means-plus-function elements if the words in the element, in
`view of the specification, would not be understood by a POSITA to have a sufficiently definite meaning
`as the name for structure.” Id.; id. at, e.g., ¶¶ 39, 42, 48, 49, 60, 61 (applying standard to show a person
`of ordinary skill in the art would understand the structures); Zeroclick, 891 F.3d at 1007-08 (“the
`essential inquiry remains ‘whether the words of the claim are understood by persons of ordinary skill in
`the art to have a sufficiently definite meaning as the name for structure’”).
`Qualys’ cases do not support excluding Dr. Goodrich’s opinions. For example, the Apple, Inc.
`v. Samsung Elecs. Co. case is inapposite because the Court excluded a damages expert’s apportionment
`where no apportionment was allowed under the applicable statute. No. 11-cv-01846-LHK, 2012 WL
`2571332, at *6 (N.D. Cal. June 30, 2012). Here, no statute bars Dr. Goodrich’s validity rebuttal opinion
`and the Federal Circuit continues to recognize the presumption against construing terms that do not use
`the word “means” as means-plus-function elements. Zeroclick, 891 F.3d at 1007-08.
`IV. CONCLUSION
`For the reasons above, the Court should overrule Qualys’ Objections.
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`FINJAN’S RESPONSE TO OBJECTION TO EVIDENCE
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`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 65-1 Filed 04/20/20 Page 8 of 8
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`Dated: April 20, 2019
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`Respectfully submitted,
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`By: /s/ James Hannah
`
`Paul J. Andre (State Bar No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`Austin Manes (State Bar No. 284065)
`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
`amanes@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`6
`FINJAN’S RESPONSE TO OBJECTION TO EVIDENCE
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`CASE NO.: 4:18-cv-07229-YGR
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