Case 4:18-cv-07229-YGR Document 145 Filed 11/20/20 Page 1 of 7
`
`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)
`
`QUALYS INC.’S REPLY IN
`SUPPORT OF MOTION TO
`STRIKE 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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`REPLY ISO MOTION TO STRIKE
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`Case 4:18-cv-07229-YGR Document 145 Filed 11/20/20 Page 2 of 7
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`I.
`
`INTRODUCTION
`Qualys’s Motion (Dkt. 126, “Mot.”) asks the Court to strike select infringement
`contentions—those that violate the Court’s claim construction order by either: (1) failing to
`identify hardware in the accused software products for the “receiver” and “transmitter” claim
`limitations; or (2) failing to identify where or how the accused products process “modified
`content”.
`As to the first category, Finjan agrees, at least for the ’154, ’968, and ’494 patents, that the
`Court determined the claimed “receiver” and “transmitter” limitations require hardware. Finjan
`also agrees that thirteen of the fourteen accused products are software products. Finjan’s
`contentions, which do not identify any hardware in the accused software products for the
`“receiver” and “transmitter” limitations in the contentions at issue in this Motion, violate Patent
`L.R. 3-1(c) and should be stricken. Nothing in Finjan’s opposition refutes this. Instead, Finjan
`attempts to confuse and mislead the Court by citing to other contentions not at issue here and that
`Qualys does not ask the Court to strike.
`As to the second category, Finjan argues that its infringement contentions were not required
`to identify “modified” content because Finjan was not collaterally estopped from advancing a
`proposed construction that contained no such limitation. Again, Finjan’s strawman argument
`misses the point. During claim construction, this Court deferred addressing whether the “content
`processor” of the ’154 patent must process “modified” content, explaining that the Federal
`Circuit’s decision would be binding. Finjan elected to not amend its infringement contentions
`despite knowing that the “modified” content requirement may be applicable. Now, in light of the
`Federal Circuit’s affirmance, Finjan’s infringement contentions are deficient and should be
`stricken.
`II.
`FINJAN HAS NOT IDENTIFIED HARDWARE COMPONENTS IN THE
`ACCUSED SOFTWARE PRODUCTS FOR THE RECEIVER AND
`TRANSMITTER CLAIM LIMITATIONS
`Finjan does not dispute the two key issues underlying Qualys’s motion with respect to the
`“receiver” and “transmitter” limitations. First, Qualys has argued that the Court determined the
`claimed “receiver” and “transmitter” limitations require hardware. Mot. 6-7. Finjan agrees with
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`CASE NO. 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 145 Filed 11/20/20 Page 3 of 7
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`Qualys on this point. See Opp. at 4 (alleging Finjan’s contentions for the ’408, ’494, and ’968
`patents “explicitly identify physical scanning appliances as the receivers and/or transmitters of the
`accused products”); id. at 7 (alleging Finjan’s contentions for the ’154 patent “identify accused
`hardware for the transmitter and receiver limitations”). Second, Qualys has argued that with the
`sole exception of the Scanner Appliance product, the thirteen other accused products are all
`software products. Mot. at 2-3. Finjan also does not dispute this.
`As explained for each individual patent below, Finjan erects strawman arguments by
`pointing to contentions that Qualys has not asked the Court to strike. In each instance, Qualys
`neglects to address the contentions Qualys is actually moving on.
`’408 patent
`For the ’408 patent, Qualys asks to strike the entirety of Contention 1 for ’408 patent claim
`1b. Dkt. 126-12 at 409. Finjan’s opposition is silent as to this contention, instead focusing on
`alternative infringement theories not at issue in this motion. Qualys also seeks to strike only a
`portion of Contention 2 for ’408 patent claim 1b—the phrase “includes a receiver component”—
`because Finjan has not identified a hardware receiver for “[e]ach of the Accused [software]
`Products.” Id. at 410. Finjan provides no reason why this portion of Contention 2 should not be
`stricken. Instead, Finjan’s Opposition reproduces an excerpt from Contention 2 and highlights
`portions of that Contention that Qualys is not moving on. See Opp. at 5 (citing Dkt. 126-12 at p.
`410). Finjan also misleadingly crops out the heading above the excerpt, which states “1b.
`Contention 2” and clearly shows this excerpt is not from Contention 1. Dkt. 126-12 at 410.
`’494 patent
`Finjan’s response regarding the ’494 patent is likewise misleading and incorrect. Qualys
`asks to strike the entirety of Contention 1 for ’494 patent claim 10b. Dkt. 126-12 at 472. Finjan’s
`opposition is silent as to this contention. Qualys also seeks to strike only a portion of Contention
`2 for ’494 patent claim 10b—the word “virtual” describing the “Qualys scanner”—because Finjan
`has not identified how a virtual (i.e. software) scanner is a hardware receiver in “[e]ach of the
`Qualys Accused [software] Products.” Id. at 473. Finjan provides no reason why this portion
`should not be stricken. Instead, Finjan’s Opposition reproduces an excerpt from Contention 2 and
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`highlights portions of that Contention that Qualys is not moving on. See Opp. at 5 (citing Dkt.
`126-12 at p. 473). Once again, Finjan strategically crops out the heading above the excerpt, which
`states “10b. Contention No. 2” and clearly shows this excerpt is not from Contention 1. Dkt. 126-
`12 at 473.
`’968 patent
`Finjan takes a similar misleading approach for the ’968 patent. Qualys asks to strike the
`entirety of Contention 1 for ’968 patent claims 6 and 7. Dkt. 126-12 at 132 (claim 6), 134 (claim
`7). Finjan’s opposition is silent as to these contentions. Qualys also seeks to strike only a portion
`from Contention 2 for ’968 patent claim 6—the word “virtual” describing the “Scanners”—
`because Finjan has not identified how a virtual (i.e., software) scanner is a hardware transmitter
`in “[e]ach of the Accused [software] Products.” Id. at 133. Finjan provides no reason why this
`portion should not be stricken. Instead, Finjan’s Opposition reproduces an excerpt from
`Contention 2 and highlights portions of that Contention that Qualys does not seek to strike here.
`See Opp. at 6 (citing Dkt. 126-12 at p. 133). Once again, Finjan strategically crops out the heading
`above the excerpt, which states “6. Contention No. 2” and clearly shows this excerpt is not from
`Contention 1. Dkt. 126-12 at 133.
`’154 patent
`Finjan’s response for the ’154 patent is perhaps the most misleading of all. Here, Qualys
`seeks to strike Contentions 2 through 8 for ’154 patent claims 1c, 1d, 2, 4c, and 4d. Dkt. 126-12
`at 386-392 (claim 1c), 394-400 (claim 1d), 401 (claim 2), 404 (claim 4c), 405 (claim 4d).2 Finjan,
`however, does not address these specific contentions. Finjan only repeats the same conclusory
`statement from its contentions alleging that the accused software products have transmitters
`because they have “network interfaces.” Opp. at 7. But Finjan does not explain how any of the
`accused software products could have hardware network interfaces or transmitters. Instead,
`Finjan hinges its argument on an excerpt from Contention 1 for claim 1’s transmitter element.
`
`2 Qualys does not ask the Court to strike the contentions for ’154 patent claim 1b or 4b based
`on the hardware receiver and transmitter limitations argument. See Dkt. 126-12 at 362-363, 375-
`381, 384 (claim 1b), 403 (claim 4b). Qualys’s dispute for these claim limitations concerns the
`“content processor” limitation, which is addressed below in the next Section of this Reply. See
`Section III, infra.
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`Opp. at 7 (“1c. Contention 1 – The Internet Gateway is the transmitter.”). But this is not a
`contention Qualys is moving on. Finjan does not provide a citation to the record for this excerpt
`and, in fact, Contention 1 for claim 1c is not even part of the exhibit (Dkt. 126-12) to Qualys’s
`Motion that identifies (with highlighting) the specific portions of the contentions Qualys is asking
`the Court to strike. Whether an “Internet Gateway is a transmitter” for the purpose of Contention
`1 is not relevant to whether Contentions 2-8 violate Patent L.R. 3-1(c).
`Finjan also argues that the Qualys Cloud Platform provides the necessary hardware
`receiver and transmitter limitations. Opp. at 7-8.3 The issue with this is that Finjan relies on both
`“physical” appliances, which Qualys does not dispute can be hardware, as well as “virtual
`appliances, or lightweight agents,” which are not hardware. Finjan has not disclaimed its theory
`that software appliances are hardware, and this is the improper contention that Qualys is asking
`the Court to strike. To be clear, Qualys is not asking to strike the entirety of Finjan’s infringement
`contentions, only those contentions that violate Patent L.R. 3-1(c).
`Finally, the remainder of Finjan’s arguments for the ’154 patent are legally incorrect.
`Finjan argues that the gaps in its infringement theories can be filled by the knowledge of a person
`of ordinary skill in the art. Opp. at 7-9. But Finjan points to no authority permitting it to rely on
`a person of ordinary skill in the art to plug gaps in its contentions. To the contrary, the Patent
`Local Rules require “a chart identifying specifically where and how each limitation of each
`asserted claim is found within each Accused Instrumentality.” Patent L.R. 3-1(c); see also
`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)) (“The rule is also intended 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.”) (internal quotations omitted). While Finjan’s argument lacks legal
`merit and should be rejected, it does serve as a helpful admission by Finjan that there are in fact
`deficiencies in the contentions and the contentions thus violate Patent L.R. 3-1(c).
`
`3 Qualys’s Cloud Platform is also a software program and provides a website interface through
`which customers can access Qualys’s other software products.
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`Case 4:18-cv-07229-YGR Document 145 Filed 11/20/20 Page 6 of 7
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`III.
`
`FINJAN HAS NOT IDENTIFIED ANYTHING IN THE ACCUSED PRODUCTS
`THAT PROCESSES MODIFIED CONTENT AS REQUIRED BY THE ’154
`PATENT
`During claim construction, the Court stated that the outcome of the appeal in the Juniper
`case would determine whether the content processor must process “modified” content in the ’154
`patent and declined to decide this particular claim construction issue at the Markman stage. Dkt.
`74 at 22 (the Federal Circuit’s “decision will be binding” and “govern at trial”). The appeal has
`concluded and the Federal Circuit did not disturb Judge Alsup’s claim construction from the
`Juniper case. Mot. at 3-4, 5-6. Accordingly, there is no reason why this Court should now
`suddenly reject that construction in favor of some other construction. Unable to provide any reason
`why this Court should adopt a construction that is inconsistent with the construction of another
`court in the same District, Finjan once again creates a strawman argument, this time about
`collateral estoppel. But Qualys’s Motion does not turn on the application of collateral estoppel.
`This issue is simply whether the Court should adopt the construction from the Juniper case as it
`had indicated and anticipated it would when it issued the Markman order.
`Finjan’s collateral estoppel argument, while unnecessary, is also incorrect. Finjan posits
`that the Federal Circuit affirmed summary judgment of no infringement not because it agreed with
`the district court’s decision regarding claim construction and the application of that construction
`for infringement but rather because Finjan’s counsel had argued that a reversal of the non-
`infringement decision without a reversal of the District Court’s exclusion of Finjan’s damages
`expert would leave Finjan unable to receive a remedy even if it ultimately won on infringement.
`Opp. at 3, 11. Finjan provides absolutely no support that the Federal Circuit followed this line of
`reasoning rather than addressing the only issue that was actually raised on appeal for the ’154
`patent—“[d]id the district court err by importing from the description a requirement that the
`claimed ‘content processor’ process only ‘modified content,’ which was the basis for summary
`judgment of no infringement?” Finjan, Inc. v. Juniper Networks, Inc., No. 19-2405, Dkt. 18 at 2
`(Fed. Cir. Dec. 18, 2019).
`Assuming that Judge Alsup’s construction applies here, Finjan has not shown where in its
`contentions it identifies features of the accused products that process modified content. Finjan
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`Case 4:18-cv-07229-YGR Document 145 Filed 11/20/20 Page 7 of 7
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`merely makes a circular argument that modified content is processed because the content processor
`processes modified content. Opp. at 9. This does not move the needle at all. Finjan had the
`opportunity in its Opposition to make some substantive argument about why it believes its
`contentions adequately disclose this limitation and instead it elected to waive its hands. In short,
`Judge Alsup’s claim interpretation from the Juniper case is proper and should apply here, and
`under that claim interpretation, Finjan’s infringement contentions violate Patent L.R. 3-1(c) and
`thus should be stricken.
`IV.
`FINJAN SHOULD NOT BE GRANTED LEAVE TO AMEND ITS
`INFRINGEMENT CONTENTIONS
`Finjan has had more than a reasonable amount of time to address the deficiencies in its
`contentions. Finjan served its infringement contentions on April 19, 2019, over a year before the
`Court issued the Claim Construction Order on June 11, 2020 (Dkt. 74). Finjan’s contentions, thus,
`did not address the Court’s constructions and Finjan elected not to revisit its contentions after it
`had those constructions. It was only after Qualys’s July 23, 2020 letter identifying the many
`deficiencies in the contentions in view of the Court’s constructions that “Finjan agree[d] to
`supplement its [Infringement Contentions] in response to Qualys’s letter.” Mot. at 4. Finjan,
`however, never sought leave to supplement its contentions, thus necessitating this motion. Id. Nor
`has Finjan made any effort to show good cause for making amendments so late in the case.
`
`V.
`
`CONCLUSION
`For the foregoing reasons and the reasons provided in Qualys’s Motion, the Court should
`grant Qualys’s Motion to strike portions of Finjan’s Infringement Contentions
`
`Dated: November 20, 2020
`
`By:
`
`Respectfully submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`/s/ Talin Gordnia
` Talin Gordnia
`
`Counsel for Defendant
`QUALYS INC.
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