Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 1 of 19
`Case 4:18-cv-07229—YGR Document 126-6 Filed 10/30/20 Page 1 of 19
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`EXHIBIT 5
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`EXHIBIT 5
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 2 of 19
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`990 Marsh Road
`Menlo Park, CA 94025-1949
`T 650.752.1700
`F 650.752.1800
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`
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`Kris Kastens
`Partner
`T 650.752.1715
`F 650.752.1815
`kkastens@kramerlevin.com
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`August 13, 2020
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`VIA EMAIL
`
`Christopher D. Mays
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, Ca 94304
`cmays@wsgr.com
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`Re:
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`Finjan Inc. v. Qualys, Inc., N.D. Ca. Case No. 4:18-cv-07229-YGR
`
`Counsel,
`
`Finjan writes in response to Qualys’ July 23, 2020 letter regarding Finjan’s Infringement
`Contentions ("IC"). This was Qualys’ first correspondence on the matter, despite having Finjan’s
`ICs for over 15 months. Finjan is willing to discuss and resolve these issues with Qualys, even
`though Qualys has waived the majority of its complaints by not raising them in a timely manner.
`
`
`As an overarching matter, Finjan complied with the Patent Local Rules because it
`included a “chart identifying specifically where and how each limitation of each asserted claim
`is found within each Accused Instrumentality, including for each limitation that such party
`contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in
`the Accused Instrumentality that performs the claimed function.” Patent L.R. 3-1(c). Finjan fully
`addressed the different claim elements and provided support from Qualys’ documentation
`establishing where each element is met. Furthermore, Finjan provided source code citations to
`the specific files that meet each of these claim element in its response to Interrogatory No. 7,
`establishing beyond a doubt that crystalized its infringement theories and put Qualys on notice
`of what Finjan is accusing of infringement.
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`Qualys' allegations that there are "Accused Products for which Finjan did not provide
`contentions for each and every limitation" is untrue, as Finjan has provided charts for all Accused
`Products, alone or in combination, compliant with Patent L.R. 3-1(c). As Finjan's ICs state, the
`Accused Products include various Qualys "applications" which are "sold a la carte or as part of a
`bundled package, including but not limited to the Qualys Cloud Suite (Enterprise, Express,
`Express Lite), the Qualys Cloud Platform (Enterprise, Mid-sized business, or Small business), and the
`Qualys Cloud Platform for Consultants."
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`We respond to each of Qualys' allegations below, to the extent that these allegations
`are coherent. However, many of Qualys’ arguments are confusing and difficult to understand
`and we have responded to the extent we can understand what Qualys is alleging. Additionally,
`it appears Qualys is attempting the "kitchen sink" approach and alleging most every element of
`
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`KL3 3307624.4
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`SILICON VALLEY | NEW YORK | PARIS
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 3 of 19
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`Christopher D. Mays
`August 13, 2020
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`all of Finjan's ICs are non-compliant with the Patent Local Rules, which is unhelpful to identify
`what Qualys really believes is at issue. It is simply incredible that Qualys would have delayed
`raising these issues for well over a year if it had any bona fide concerns. Additionally Finjan notes
`that, to date, Qualys continues to resist Finjan’s repeated requests to produce any substantive
`internal technical documents, hampering Finjan’s ability to obtain discovery on Qualys’ Accused
`Products.
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`I.
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`Court's Claim Constructions
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`We have reviewed Qualys’ arguments related to Finjan’s ICs in view of the Court’s claim
`construction order. As set forth below, all of the contentions disclosed in Finjan’s ICs are
`consistent with the claim construction ordervalid.
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`A. Term 1, “instantiating, by the computer, a scanner for the specific programming language
`(’408 Patent)
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`Court’s Construction: “generating or requesting a scanner that can scan the programming
`language by providing a generic scanner instance with language specific data, rules, or
`both.” Markman Order at 9.
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`Finjan has identified the structures in the accused products that meet this element under
`the Court's Construction. As shown below in the excerpt from Finjan’s ICs, Qualys includes a
`computer which instantiates a scanner for a specific programming language such as
`JavaScript, ActiveX, etc. For example, Qualys includes Web Application Scanning (“WAS”),
`generates or requests a scanner that can scan the programming language by providing a
`generic scanner instance with language specific data, rules, or both to detect threats such as
`cross-site scripting, SQL injection, etc.
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`KL3 3307624.4
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 4 of 19
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`Christopher D. Mays
`August 13, 2020
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`See Appendix F (‘408 Patent) at page 8.
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`B. Term 2, “dynamically generating a policy index.” (’968 Patent)
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`Court’s Construction: “adding allowability information to a policy index in response to user
`requests for cached and non-cached content.” Markman Order at 13.
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`Finjan identified the functionality in the Accused Products that meets each claim
`element under the Court's Construction. As shown in the screenshot provided in Qualys’ letter,
`Qualys’ Accused Products dynamically generate a policy index by adding allowability
`information (e.g., “update findings”) to a policy index (“WAF Policy”) in response to user requests
`for cached and non-cached content (“[w]hether users are permitted to modify the
`vulnerabilities detected by Web Application scans.”). This is “dynamically generating a policy
`index,” as the Court construed the term.
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`KL3 3307624.4
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 5 of 19
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`Christopher D. Mays
`August 13, 2020
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`See Appendix B (‘968 Patent) at page 56.
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`C. Term 5, “incoming files from the Internet” (’731 Patent)
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`Court’s Construction: “files requested by an intranet computer from the Internet.”
`Markman Order at 17-19.
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`Finjan disclosed how this element is met by the accused Qualys products. The IC's
`explain how the Accused Products perform behavioral analysis for content received by systems
`operating the Qualys Accused Products, from web servers located on the Internet, such as
`encoded JavaScript, and Web Applications. See for example, Appendix C ('731 Patent) at 4-
`9. Further examples include Qualys Vulnerability Management ("VM"), which "identif[ies]
`vulnerabilities, exploits, malware, patches, & unsupported technologies" and derives security
`profiles, which "allows customers to analyze zero-day threats and estimate their impact on their
`assets and critical systems based on information collected from previous scan results." Appendix
`C ('731 Patent) at 10. This satisifes the Court’s construction.
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`KL3 3307624.4
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 6 of 19
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`Christopher D. Mays
`August 13, 2020
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`KL3 3307624.4
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 7 of 19
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`Christopher D. Mays
`August 13, 2020
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`D. Term 6, “web client” (’844 Patent)
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`Court’s Construction: “an application on the end-user’s computer that requests a
`downloadable from the web server.” Markman Order at 20.
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`Again, Finjan identified how the Accused Products meet this requirement under the
`Court's Construction. The Court's Construction for "web client" may be satisfied by applications
`on an end-user's computer, such as a web browser, email client, etc. It is inherent that content
`on the Internet is accessed by a web browser or other type of client software that resides on a
`computer. For example, a web browser may request content from a web server which may
`include a threat such as malware. As the Ics show, in the Accused Products the Downloadable
`security profile (DSP) is linked to the Downloadable before it is made available. See, e.g.,
`Appendix A ('844 Patent) at 19-29.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 8 of 19
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`Christopher D. Mays
`August 13, 2020
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`7
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`E. Term 7, “a content processor” (’154 Patent)
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`Court’s Construction: requires the claimed “content processor” to be located “on the
`protected computer.” See Markman Order at 21-24.
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`The disclosure in Finjan’s ICs of the content processor in the Accused Products is
`consistent with the Court's Construction. For example, Finjan identifies Qualys’ Cloud Platform
`and Virtual Scanner Appliances which include software installed on the protected
`computer. For example, Qualys Cloud Platform includes modules that reside on a protected
`computer (e.g., agent software and applications) to scan content received from "your internal
`network." Appendix E ('154 Patent) at 4. Thus, the Accused Products satisfy the Court’s
`construction of “content processor.”
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`KL3 3307624.4
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 9 of 19
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`Christopher D. Mays
`August 13, 2020
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`F. Terms 9 and 10, “transmitter” and “receiver” (’154, ’494, and ’968 Patents)
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`Finjan has fully identified the “transmitter” and “receiver” elements in its ICs. Additionally,
`Qualys is incorrect that “the Court unequivocally stated that the claimed transmitters and
`receivers of the ’154, ’494, and ’968 Patents each require both hardware and software structural
`components.” Qualys appears to misunderstand the Court’s ruling, which ruled in Finjan’s favor,
`and simply states that “35 U.S.C. § 112 ¶ 6 does not apply” to the “transmitter” and “receiver”
`terms. As such, since 35 U.S.C. § 112 ¶ 6 does not apply in this case, under the Patent Local Rules
`there is no requirement to “identity of the structure(s), act(s), or material(s) in the Accused
`Instrumentality that performs the claimed function.” Patent L.R. 3-1(c). No further construction
`was provided for these elements. Furthermore, Qualys confirms that its products (other than the
`Qualys Scanner Appliance, which is hardware) are software operating on hardware in the cloud
`and controlled by Qualys. Thus, these elements are met under both Qualys' improper
`interpretation as well as the correct interpretation of the Court's Construction.
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`II.
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`A. Claim Chart A:’844 Patent
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`Finjan's Contentions.
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`Finjan’s Ics identify all elements in the Asserted Claims of the ‘844 Patent. Qualys makes
`an incorrect assertion that "[f]or Claims 1, 22, 23, and 42, Finjan fails to provide a contention
`identifying structure or functionality regarding whether and how the linking step occurs before a
`web server makes the downloadable available to web clients," apparently not having reviewed
`the charts. The charts explicitly state, with proofs using Qualys' public material, that the DSP is
`linked before the Downloadable is made available to web clients. See, e.g., Appendix A ('844
`Patent) at 19-29.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 10 of 19
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`Christopher D. Mays
`August 13, 2020
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`See, e.g., Appendix A ('844 Patent) at 19-29.
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`Id.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 11 of 19
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`Christopher D. Mays
`August 13, 2020
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`B. Claim Chart B: the ’968 Patent
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`Finjan's IC's are compliant with Patent L.R. 3-1(c) because they describe how the
`Accused Products meet each element. For example, regarding the “indication of the results of
`said determining whether the piece of digital content is allowable within the policy index”
`elements of Claims 26 and 32, Finjan includes the following contention, and also notes this claim
`element is similar to Claim elements 13g and 23g, for which Finjan also provides detailed
`contentions, ignored by Qualys.
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`Appx. B ('968 Patent) at 58; see also 44, 53, 65.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 12 of 19
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`Christopher D. Mays
`August 13, 2020
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`Id.
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`Regarding Claims 26 and 32’s limitation of “adding an entry in the policy index indicating
`the allowability or the non-allowability of the piece of digital content relative to the given user
`policy, based on the results of said determining,” Qualys appears to agree that Finjan includes a
`contention for this element. Appx. B ('968 Patent) at 59, 66.
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`C. Claim Chart C: the ’731 Patent
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`Finjan's IC's are compliant with Patent L.R. 3-1(c) for the ‘731 Patent. First, Qualys admits
`that "Finjan provides a contention on each element of Claim 1 of the ’731 Patent are Web
`Application Firewall (WAF) and Compliance Monitoring (CM)." Thus, Qualys agrees that Finjan's
`ICs are compliant for at least Claim 1. Qualys then incorrectly alleges that "for the limitation “is
`indexed by a file identifier,” [which is part of Claim 1] Finjan provides a contention only for
`Indications of Compromise. See Appendix C at 29 (citing https://vimeo.com/289582255, a
`training video on IoC)." However, Finjan includes 15 pages of contentions for this claim element,
`which Qualys ignores. See Appx. C ('731 Patent) at 20-34. Thus, it is unclear what exactly Qualys
`is claiming, other than conceding that "Finjan provides a contention on each element of Claim 1
`of the '731 Patent."
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 13 of 19
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`Christopher D. Mays
`August 13, 2020
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`Similarly, Qualys states that "[f]or Claim 14, Finjan fails to provide a complete contention
`for any ’731 Accused Product because it fails to provide a contention as to the claimed
`“network gateway” in any of Finjan’s products." This is similarly incorrect, for the same reasons as
`discussed above.
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`D. Claim Chart D: the ’305 Patent
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`Finjan's IC's for the ‘305 Patent identify each claimed element. Qualys' complaints
`against Finjan’s ICs are unclear and confusing. For example, Qualys states that Finjan provided
`four contentions for the "rule-based content scanner…" limitation of at least Claims 1, 13, and 25
`that incorporate by reference the preceding "database of parser and analyzer rules…"
`limitation. For example, this limitation clearly includes a rule-based content scanner (e.g., Cloud
`Agent Scanner) coupled with a database of parser and analyzer rules (e.g., Cloud Agent
`Scanner DB). See e.g. Appx. D ('305 Patent) at 11-22. Qualys does not, however, allege what it
`contends is missing from the ICs.
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`See e.g. Appx. D ('305 Patent) at 11-22.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 14 of 19
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`Christopher D. Mays
`August 13, 2020
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`Qualys' allegations that the "network traffic probe…" element is not compliant, are also
`unfounded. For example, the excerpt below identifies the functionality of the network traffic
`probe.
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`See e.g. Appx. D ('305 Patent) at 23-25.
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`Qualys' allegation that the "rule update manager…" element is not met is similarly
`baseless. See below for example.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 15 of 19
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`Christopher D. Mays
`August 13, 2020
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`See e.g. Appx. D ('305 Patent) at 26-28.
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`E. Appendix E: the ’154 Patent
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`Qualys admits Finjan provides "eight separate contentions for Claim Element 1b," and
`does not dispute the sufficiency of the ICs’ disclosure for any other element. However, Qualys
`then claims that claim element 1b is not compliant. However, Finjan provides over 20 pages of
`contentions for element 1b, including "first function" and "second function," as shown below,
`which fully comply with Patent L.R. 3-1. Appx. E ('154 Patent) at 2-24.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 16 of 19
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`Christopher D. Mays
`August 13, 2020
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`15
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`Appx. E ('154 Patent) at 2-24.
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`F. Appendix F: the ’408 Patent
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`Qualys’ sole complaint for the ‘408 Patent ICs appears to be directed to claim element
`1h ("indicating…"). Qualys states that "Finjan provides structure and functionality only for the
`“Free Scan” product which is not an accused in this case." Qualys is incorrect. As the claim
`charts illustrate, Secure Seal - which includes Malware Detection and Vulnerability Scanning – is
`implicated, and Finjan's contentions also state "each Accused Product generates reports that
`identify “vulnerabilities” (computer exploits) based on malicious content downloaded from a
`source computer such as the Internet." Appx. F ('408 Patent) at 17-18. Finjan’s ICs include a
`screenshot of results of a vulnerability scan from Qualys' Free Scan product and even more
`comprehensive results and reports for the Qualys Cloud Product and other Accused Products,
`demonstrating that the Accused Products satisfy this element.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 17 of 19
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`Christopher D. Mays
`August 13, 2020
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`Appx. F ('408 Patent) at 17-18.
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 18 of 19
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`Christopher D. Mays
`August 13, 2020
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`Appx. F ('408 Patent) at 17-18.
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`G. Appendix G: the ’494 Patent
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`Finally, Finjan's IC's for the ‘494 Patent are compliant with Patent L.R. 3-1(c). Qualys
`appears to confirm as much, stating that, for "Claim 10, Finjan identifies alleged Downloadable
`scanners for only the following products: MD, WAS, WAF, SS, VM, CM, TP, and CA." Thus, Qualys
`concedes that the ICs are compliant for at least claim 10. Qualys' allegations regarding Claim 12
`are also baseless. Qualys' statement that in "Claim 12, Finjan’s contentions merely include a
`snippet from a third-party book…" is factually incorrect, as the "third-party book" is actually a
`book available on Qualys' website entitled "Web Application Security for Dummies."
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`Case 4:18-cv-07229-YGR Document 126-6 Filed 10/30/20 Page 19 of 19
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`Christopher D. Mays
`August 13, 2020
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`H. Next Steps
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`As discussed above, Finjan’s ICs fully disclose the infringement issues in the case.
`However, in the spirit of compromise and to keep this case focused on the merits, Finjan agrees
`to supplement its ICs in response to Qualys’ letter, including, but not limited to, providing
`citations to source code and new technical documents. Finjan will promptly provide this
`supplementation after Qualys produces the technical documents it promised to produce
`months ago.
`
`Additionally, Finjan proposes that the parties agree to a case narrowing schedule, where
`Finjan narrows the asserted claims and Qualys narrows the invalidity theories. Finjan is available
`to meet and confer early next week.
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`Sincerely,
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`Kris Kastens
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`KL3 3307624.4
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