Case 4:18-cv-07229-YGR Document 126 Filed 10/30/20 Page 1 of 9
`
`EDWARD G. POPLAWSKI (SBN 113590)
`epoplawski@wsgr.com
`OLIVIA M. KIM (SBN 228382)
`okim@wsgr.com
`TALIN GORDNIA (SBN 274213)
`tgordnia@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
`
`Attorneys for Defendant
`QUALYS INC.
`
`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
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`OAKLAND DIVISION
`
`CASE NO.: 4:18-cv-07229-YGR (TSH)
`
`DEFENDANT QUALYS INC.’S
`MOTION TO STRIKE PLAINTIFF
`FINJAN LLC’S INFRINGEMENT
`CONTENTIONS
`
`Judge: Hon. Yvonne Gonzalez
`Rogers
`Date: December 8, 2020
`Time: 2:00pm
`Location: Zoom Teleconference1
`
`)))))))))))))
`
`FINJAN LLC, a Delaware Limited Liability
`Company,
`
`Plaintiff,
`
`v.
`
`QUALYS INC., a Delaware Corporation,
`
`Defendant.
`
`1 Per the Court’s Notice regarding Civil Law and Motion Calendars and its Order at D.I. 48.
`
`CASE NO. 4:18-cv-07229-YGR
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`QUALYS MOTION TO STRIKE
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`Case 4:18-cv-07229-YGR Document 126 Filed 10/30/20 Page 2 of 9
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`NOTICE OF MOTION AND MOTION
`PLEASE TAKE NOTICE that on Tuesday, December 8, 2020 at 2:00pm or as soon
`thereafter as this matter may be heard before Judge Gonzalez Rogers of the United States District
`Court for the Northern District of California via Zoom video conference and/or in Courtroom 1,
`4th Floor, of 1301 Clay Street in Oakland, California (per the Court’s March 12, 2020 Order (D.I.
`48) and its Notice regarding Civil Law and Motion Calendars), defendant Qualys Inc. (“Qualys”)
`will and hereby does move to strike portions of plaintiff Finjan LLC’s (“Finjan”) Infringement
`Contentions.
`
`STATEMENT OF ISSUES AND RELIEF REQUESTED
`Finjan has failed to comply with Patent L.R. 3-1(c)’s requirement to provide claim charts
`“identifying specifically where and how each limitation of each asserted claim is found within
`each Accused Instrumentality” in two ways. First, Finjan’s claim charts for U.S. Patent No.
`8,141,154 (“the ’154 Patent”) fail to identify any feature in any accused product that Finjan
`contends processes modified content, despite that requirement recently being affirmed by the
`Federal Circuit. Second, this Court has determined that the claimed “receiver” and “transmitter”
`limitations found in the asserted claims of the ’154 Patent and U.S. Patent Nos. 6,965,968 (“the
`’968 Patent”), 8,225,408 (“the ’408 Patent”), and 8,677,494 (“the ’494 Patent) each require
`hardware. Despite this determination, Finjan continues to accuse mere software modules of
`practicing the “receiver” and “transmitter” limitations. Qualys therefore requests that the Court
`strike the portions of those charts containing these improper theories, identified by the highlighted
`portions of Exhibit 11 to the Declaration of Christopher D. Mays in support of this Motion.2
`
`2 Citations to “Ex. XX” or “Exhibit XX” refer to the exhibits to the Declaration of
`Christopher D. Mays, filed concurrently with this Motion.
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`CASE NO. 4:18-cv-07229-YGR
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`(continued...)
`QUALYS MOTION TO STRIKE
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`I.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`INTRODUCTION
`Fact discovery has now closed in this Action, but Finjan continues to assert an astounding
`77 patent claims against Qualys.3 Yet many of Finjan’s infringement theories fail to comply with
`the fundamental requirement of “specifically identifying where and how each limitation of each
`asserted claim is found within each Accused Instrumentality.” Patent L.R. 3-1(c). In this motion,
`Qualys seeks to strike two categories of contentions that fail this requirement by failing to comport
`with binding claim constructions from the Federal Circuit and this Court. First, although the
`Federal Circuit recently affirmed that the asserted claims of the ’154 Patent must process modified
`content, Finjan’s Patent L.R. 3-1(c) claim charts do not identify where or how any accused product
`processes such modified content. Second, despite the Court’s Claim Construction Order
`unequivocally holding that the “receiver” and “transmitter” limitations found in the asserted claims
`must include hardware, Finjan continues to assert theories of infringement where it fails to identify
`any hardware whatsoever for these limitations. Finjan has refused to either withdraw or amend
`these improper theories, necessitating this Motion.
`II.
`FACTUAL BACKGROUND
`A.
`Relevant Procedural History
`Finjan filed this action on November 29, 2018. See D.I. 1. Finjan’s complaint alleges that
`Qualys’s products infringe seven Finjan patents (the “Patents-in-Suit”).
`On April 19, 2019, Finjan served its Patent L.R. 3-1 Disclosure of Asserted Claims and
`Infringement Contentions (“Infringement Contentions”). See generally D.I. 100-11. In its
`Infringement Contentions, Finjan identified the following Qualys products as infringing one or
`more claims of the Patents-in-Suit: (1) Malware Detection; (2) Vulnerability Management; (3)
`Web Application Scanning; (4) Web Application Firewall; (5) Secure Seal; (6) Continuous
`Monitoring; (7) ThreatPROTECT; (8) the KnowledgeBase; (9) Qualys research labs; (10)
`
`3 Finjan initially offered to propose a “case narrowing schedule, where Finjan narrows the
`asserted claims and Qualys narrows the invalidity theories” (Exhibit 5 at 18), but unilaterally
`withdrew this offer without ever making such a proposal.
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`CASE NO. 4:18-cv-07229-YGR
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`Indication of Compromise; (11) Policy Compliance; (12) Cloud Agent; (13) Virtual Scanner; and
`(14) Scanner Appliance. See id. at 000003-006.4 Relevant to this motion, every accused product
`except Scanner Appliance is a software product.
`A month after Finjan served its Infringement Contentions in this case, it received an
`adverse summary judgment order in co-pending litigation against the company Juniper. In that
`case, the court construed the ’154 Patent to require processing “modified” content. See Finjan,
`Inc. v. Juniper Networks, Inc., 387 F. Supp. 3d 1004, 1010-1013 (N.D. Cal. 2019) (“Juniper”)
`(“Accordingly, this order construes the term “content processor” as “a processor that processes
`modified content.”). The Court determined that Juniper did not infringe because “Finjan offers no
`evidence that the accused products’ alleged content processor processes modified content.” Id. at
`1013. On October 9, 2020, the Federal Circuit affirmed the district court. See Ex. 1.
` While the Juniper appeal was pending, the parties in this case proceeded through fact
`discovery and claim construction. Qualys made the source code for every accused product
`available for inspection, and Finjan performed over 100-man hours of source code inspection on
`September 10-12, 2019, October 1-4, 2019, January 31, 2020, February 5-6, 2020, February 11-
`14, 2020, and July 1-2, 2020. See Exs. 6-10. On the claim construction front, Qualys first
`disclosed to Finjan its claim construction positions on October 23, 2019. Among these
`constructions, Qualys disclosed its view that the asserted claims of the ’154 Patent must process
`modified content. See Ex. 2 at 2. Qualys also disclosed its position that the “receiver” and
`“transmitter” limitations of the ’154, ’408, ’494, and ’968 Patents were indefinite if the scope of
`those limitations covered software. Id. at 3-4; see also Ex. 3 at 10. On March 16, 2020, Qualys
`filed its claim construction brief wherein it again argued these points. See D.I. 52 at 14-16, 20-23;
`see also D.I. 52-6 at ¶¶ 27-30 and 35-56.
`The Court issued its Claim Construction Order on June 11, 2020. In that Order, the Court
`declined to address the “modified content” issue, noting that “Once the Federal Circuit resolves
`this dispute, its decision will be binding on the district courts” and that “the Federal Circuit
`
`4 D.I. 100-11 contains all of Finjan’s infringement contentions (including claim charts)
`combined into a single document. For the Court’s convenience, Qualys stamped separate bates
`numbers onto this document. Pin citations to D.I. 100-11 are to these separate bates numbers.
`
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`interpretation will govern at trial.” See D.I. 74 at 22. The Court also determined that the claimed
`“receiver” and “transmitter” “are not directed to computer software.” See D.I. 74 at 26.
`On July 23, 2020, Qualys detailed to Finjan the many deficiencies in its contentions and
`specifically requested that Finjan withdraw those theories that were incompatible with the Court’s
`Claim Construction Order. See Ex. 4 at 4-6. On August 13, Finjan rejected Qualys’s request but
`specifically noted that “to keep this case focused on the merits, Finjan agrees to supplement its
`[Infringement Contentions] in response to Qualys’s letter.” Ex. 5.5 However, Finjan never
`followed through on this promise. The parties thereafter met and conferred via telephone
`conference on these issues, but Finjan declined to withdraw any of its theories.
`III.
`LEGAL STANDARDS
`“The overriding principle of the Patent Local Rules is that they are designed [to] make the
`parties more efficient, to streamline the litigation process, and to articulate with specificity the
`claims and theory of a plaintiff's infringement claims.” Theranos, Inc. v. Fuisz Pharma LLC, No.
`11-CV-05236-YGR, 2012 WL 6000798, at *2 (N.D. Cal. Nov. 30, 2012) (citing Bender v. Maxim
`Integrated Prods., Inc., No. C 09–01152 SI, 2010 WL 1135762, at *2 (N.D. Cal. Mar.22, 2010))
`(emphasis added). As the Court has previously noted:
`A party claiming patent infringement must serve a “Disclosure of Asserted
`Claims and Infringement Contentions” on all parties pursuant to Patent L.R.
`3–1. In the disclosure, the party asserting infringement must, among other
`things: (a) identify each claim of each patent that is allegedly being infringed;
`(b) separately for each asserted claim and as “specific[ally] as possible,”
`identify each accused apparatus, product, device, process, method, act or
`other instrumentality (or “Accused Instrumentality”) for each claim of which
`the party is aware; and (c) provide “[a] chart identifying specifically where
`each limitation of each asserted claim is found within each Accused
`Instrumentality.”
`Id. (emphasis added). “The purpose of the rule is to require the party claiming infringement to
`crystallize its theories of the case early in the litigation and to adhere to those theories once
`disclosed.” Id. The degree of specificity required “must be sufficient to provide reasonable notice
`to the defendant why the plaintiff believes it has a reasonable chance of proving infringement.”
`
`5 Qualys understood Finjan to be stating that it would seek leave to amend its contentions, as
`Patent L.R. 3-6 permits amendment “only by order of the Court upon a timely showing of good
`cause.” Qualys never agreed that Finjan could unilaterally amend its contentions without
`following the proper procedure of the Patent Local Rules.
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`Id. To that end, “a patentee must nevertheless disclose what in each accused instrumentality it
`contends practices each and every limitation of each asserted claim to the extent appropriate
`information is reasonably available to it.” Id. Vague and conclusory contentions are inadequate.
`Id. at *4; see Shared Memory Graphics LLC v. Apple, Inc., 812 F.Supp.2d 1022, 1025 (N.D. Cal.
`2010) (“vague contentions and conclusory statements” which invite defendants and the court to
`assume that a limitation exists fall short of providing a “meaningful description of its theories”
`under Patent L.R. 3–1); see also InterTrust Tech. Corp. v. Microsoft Corp., 2003 WL 23120174,
`at *3 (N.D. Cal. Dec. 1, 2003) (“The purpose of Patent Local Rule 3–1, however, is in fact to be
`nit-picky, to require a plaintiff to crystalize its theory of the case and patent claims.”); Bender v.
`Maxim, 2010 WL 1135762 at *2 (“[P]laintiff bears the burden of providing infringement
`contentions that specify the location of every claim element within the accused products, so that
`the Court can make a principled decision on whether discovery will proceed.”).
`IV.
`ARGUMENT
`A.
`Finjan’s ’154 Contentions Do Not Identify Where or How the Accused
`Products Process Modified Content.
`The Federal Circuit’s affirmance confirms that the ’154 Patent requires processing
`modified content. Accordingly, this requirement is now binding in this case, as the Court
`acknowledged in its Claim Construction Order. See D.I. 74 at 22; Juniper, 387 F. Supp. 3d at
`1010-1013; Ex. 1. Moreover, Finjan is collaterally estopped from contending otherwise. See
`Chrimar Sys. Inc. v. Ruckus Wireless, Inc., No. 16-CV-00186-SI, 2020 WL 4431787, at *3 (N.D.
`Cal. July 31, 2020) (noting that collateral estoppel applies where three requirements are met: (1)
`“the first proceeding ended with a final judgment on the merits,” (2) “the party against whom
`collateral estoppel is asserted was a party or in privity with a party at the first proceeding,” and (3)
`“the issue necessarily decided at the previous proceeding is identical to the one which is sought to
`be relitigated.”).
`However, Finjan’s Patent L.R. 3-1(c) claim charts for the ’154 Patent do not address this
`requirement. Nowhere, for example, does Finjan “specifically identify” where or how any accused
`product allegedly processes modified content. See Theranos, 2012 WL 6000798, at *2; Patent
`L.R. 3-1; D.I. 100-11 at 000363-000384 and 000403. In fact, the word “modified” appears
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`nowhere in the claim charts. See D.I. 100-11 at 000363-000384 and 000403. And, despite
`disclosing over half a dozen different theories for this claim limitation, Finjan’s claim charts
`include no discussion whatsoever about how any accused product allegedly processes content
`other than to obtusely claim that every product “processes downloaded web and email content that
`they receive.” Id. at 000362. Finjan simply alleges that the accused products “process[] content
`received over a network” without any reference to how this processing occurs or whether the
`content was previously modified. See id. at 000363, 000375-000381. Such barebones disclosures
`fail to satisfy this Court’s previous admonition that infringement contentions “must be sufficient
`to provide reasonable notice to the defendant why the plaintiff believes it has a reasonable chance
`of proving infringement.” See Theranos, 2012 WL 6000798, at *2. Qualys therefore moves to
`strike those contentions that fail to disclose theories for processing modified content; namely pages
`000362-363, 375-381, 384, 401, and 403 of D.I. 100-11 and Exhibit 11.6
`B.
`Finjan’s Claim Charts Do Not Identify Hardware Receivers / Transmitters.
`Finjan’s Patent L.R. 3-1(c) charts also repeatedly fail to identify hardware components that
`it contends satisfy the “receiver” and “transmitter” limitations of the ’154, ’408, ’494, and ’968
`Patents. In its Claim Construction Order, the Court reasoned that:
`Here, the claims in each of the patents describe receivers as components
`separate from the processor that implements software. For example, in the
`’154 Patent, the claims expressly recite a “content processor” as a separate
`claim limitation from the receiver and the transmitter. (See ’154 Patent at
`claims 1-2, 6-7.) Figure 1 of the ’154 Patent similarly shows the receiver and
`transmitter on the client computer separate from the processor on that
`computer. (See id. at Figs. 2, 4.) Likewise, in the ’494 Patent, the claims
`recite a receiver “coupled” to a database scanner. (’494 Patent at claim 10.)
`The term “coupled” connotes hardware—a software module cannot be
`coupled to a hardware scanner. Additionally, Figure 2 of the ’494 Patent
`shows a processor apart from a communications interface, which the
`specification states may contain communication devices, such as a
`transceiver. (Id. at Fig. 2, 8:49-54.) Finally, although the ’968 Patent does
`not mention a “receiver” in the specification, the claims state the receiver is
`part of the cache manager, which also includes other hardware components,
`such as a memory. (See ’968 Patent at claim 7, claim 1.) In short, the claims
`here appear to be directed to a hardware implementation where the
`“receiver” is a distinct component, not a software module.
`
`6 For the Court’s convenience, Qualys provides an annotated and excerpted copy of D.I. 100-
`11 specifically identifying the material Qualys seeks to strike. The same pin citations identified
`throughout this Motion apply to that exhibit as well.
`
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`D.I. 74 at 27; see also id. at 29 (“As with “receiver,” the specification of the ’154 Patent
`consistently shows the “transmitter” as a hardware component separate from the processor.”). The
`Court’s Claim Construction Order also zeroed in on a key issue with Finjan’s claim construction
`arguments that also apply to its infringement contentions: “Finjan’s arguments . . . conflate
`hardware and software meanings in the extrinsic evidence. Finjan is advised that it has the ultimate
`burden to prove infringement at trial, and that the Court, not the jury, will decide the claim scope
`for that purpose.” Id. at 29 n. 3.
`Here, Finjan’s infringement contentions again improperly conflate hardware and software.
`For example, Finjan’s claim charts for the ’154 Patent include eight alternate theories (“Contention
`1” through “Contention 8”) for the receiver and transmitter limitations. See D.I. 100-11 at 000385-
`000400. Finjan’s Contentions 2 through 8 each respectively contend that each accused Qualys
`software product—Vulnerability Management, Threat Protection, Indication of Compromise,
`Container Security, Web Application Firewall, Web Application Scanning, and Compliance
`Monitoring—“is” or “has” the transmitter/receiver:
`
`Id. at 000386; see also id. at 000386-000392 and 000394-000400 (showing the same for each
`accused software product). Finjan includes similar contentions for the ’408 Patent, the ’494 Patent,
`and the ’968 Patent. Id. at 000409 (’408 Patent, “Each of the Accused Products . . . includes a
`receiver component”); Id. at 000472 (’494 Patent, “Each of the Qualys Accused Products include
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`Case 4:18-cv-07229-YGR Document 126 Filed 10/30/20 Page 9 of 9
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`a respective receiver…”); Id. at 000132-134 (’968 Patent, “Each of the Accused Products . . .
`includes a [transmitter/receiver]”).
`These contentions all suffer from the same overall deficiency. In each instance, Finjan
`contends that every accused product is or has the receiver/transmitter. See id. The problem with
`this is all but one of the accused products in this case are software which, under the Court’s Claim
`Construction Order, cannot “be” or “have” the receiver or transmitter limitations. See id. On top
`of that, these theories fail to identify any hardware components as allegedly satisfying these
`contentions. See id. In short, these theories—Contentions 2-8 of the ’154 Patent; Contention 1
`for Claim 29 of the ’408 Patent; Contention 1 of Claim 10 of the ’494 Patent; and Contention 1 for
`Claims 6 and 7 of the ’968 Patent—do not comport with the Court’s Claim Construction Order.
`Qualys therefore moves to strike those portions of Finjan’s contentions containing these improper
`theories; namely, pages 000132-134, 386-392, 394-400, 404, 405, 409, 410, 435, 443, 451, 465,
`472, and 473 in D.I. 100-11 and Exhibit 11.
`
`V.
`
`CONCLUSION
`For the foregoing reasons, the Court should grant Qualys’s motion to strike Finjan’s
`infringement contentions.
`
`Respectfully submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`
`Dated: October 30, 2020
`
`By:
`
`/s/ Christopher D. Mays
`CHRISTOPHER D. MAYS
`
`Counsel for
`QUALYS INC.
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