Case 4:18-cv-07229-YGR Document 152 Filed 12/04/20 Page 1 of 2
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
`Plaintiff,
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`vs.
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`QUALYS INC.,
`Defendant.
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`CASE NO. 4:18-cv-07229-YGR
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`ORDER DENYING RELIEF FROM
`MAGISTRATE JUDGE ORDER
`Re: Dkt. No. 114
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`Now before the Court is Finjan, Inc’s motion for relief from the Magistrate Judge Order
`dated September 17, 2020. (Dkt. No. 114.) Under Federal Rule of Civil Procedure 72(a), the
`court must “modify or set aside any part of the [magistrate judge] order that is clearly erroneous or
`is contrary to law.” Under Civil Local Rule 72-2, the motion may be denied at any time, including
`when the court does not deny or set a briefing schedule within 14 days of the filing. In light of the
`time elapsed, Finjan presumably knows that the motion has been denied. The Court writes to
`confirm as much.
`Finjan argues that Magistrate Judge Hixson erred in denying discovery of overseas sales
`because some of the claims are for a “computer-readable medium.” As Judge Hixson found and
`the parties agree, overseas sales are only relevant if they are tied to a domestic act of infringement.
`(See Dkt. No. 105 at 1.) In other words, Finjan cannot recover damages for overseas sales of
`products that infringe entirely abroad. See Power Integrations, Inc. v. Fairchild Semiconductor Int’l,
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`Inc., 711 F.3d 1348, 1371 (Fed. Cir. 2013). Judge Hixson found, and the parties agree, that Finjan’s
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`infringement contentions describe a system that only infringes after assembly. (Dkt. No. 105 at 2.)
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`Since the parties agree that any assembly takes place outside the United States, those products do not
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`infringe, and their overseas sales are not relevant. (See id. at 3.)
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`Finjan now argues that this reasoning does not apply to computer storage medium claims, as
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`Northern District of California
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`Case 4:18-cv-07229-YGR Document 152 Filed 12/04/20 Page 2 of 2
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`opposed to system claims. Judge Hixson expressly rejected this argument because Finjan’s
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`infringement contentions cross-reference identical analysis for both types of claims. (See id. at 3 n.1.)
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`The Court sees no error in this reasoning, which is based on Finjan’s own statements. In any case,
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`Finjan’s contention that the two claim types should be treated differently fails. Computer medium
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`claims are not infringed by computer code that is written in the United States—they are infringed by
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`media that stores infringing code. Finjan’s contentions acknowledge as much by referencing media
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`such as “RAM,” “floppy disks,” “CDs,” and “similar media for storing the software.” The problem of
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`assembly thus remains exactly the same: infringement does not occur until a party stores all relevant
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`code in a single medium. Otherwise, a party could infringe by storing computer code on entirely
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`different media (such as two different devices) that would infringe if someone cobbled it together.1
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`Finjan has not shown the law supports such broad infringement theories, which means that Judge
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`Hixson’s order is not clearly erroneous or contrary to the law.2
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`Accordingly, the Court DENIES Finjan’s motion. Finjan’s motion to seal is DENIED for failure
`to file a supporting declaration supporting confidentiality. See Civ. L. R. 79-5(d)(e); see also Civ. L.
`R. 79-5(d)(1)(A).
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`IT IS SO ORDERED.
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`Dated: December 4, 2020
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`YVONNE GONZALEZ ROGERS
`UNITED STATES DISTRICT COURT JUDGE
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`1 Finjan’s evidence confirms the problem—the deposition transcripts Finjan attaches to its
`motion suggest that Qualys stores code on multiple “platforms” and databases. The transcripts
`also suggest that non-U.S. clients (presumably, the customers who purchase Qualys’ products
`abroad) would download any relevant code from databases outside of the United States.
` Finjan’s citation to Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1205 (Fed.
`Cir. 2010) is particularly unpersuasive because the case used identical analysis for both system
`and computer readable storage claims.
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