Case 4:18-cv-07229-YGR Document 158 Filed 01/23/21 Page 1 of 20
`
`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 PORTIONS
`OF PLAINTIFF FINJAN LLC’S
`INFRINGEMENT AND DAMAGES
`EXPERT REPORTS
`
`Judge: Hon. Yvonne Gonzalez
`Rogers
`Date: March 2, 2021
`Time: 2:00pm
`Location: Zoom Teleconference1
`
`))))))))))))))
`
`FINJAN LLC
`
`Plaintiff,
`
`v.
`
`QUALYS INC.,
`
`Defendant.
`
`HIGHLY CONFIDENTIAL – ATTORNEYS EYE ONLY
` REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
`
`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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`Case 4:18-cv-07229-YGR Document 158 Filed 01/23/21 Page 2 of 20
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`TABLE OF CONTENTS
`TABLE OF CONTENTS ................................................................................................................ 1
`NOTICE OF MOTION AND MOTION ...................................................................................... III
`STATEMENT OF ISSUES AND RELIEF REQUESTED .......................................................... III
`MEMORANDUM OF POINTS AND AUTHORITIES ................................................................ 1
`I.
`INTRODUCTION ............................................................................................................... 1
`II.
`FACTUAL BACKGROUND ............................................................................................. 2
`A.
`Background of Qualys’s Products ........................................................................... 2
`B.
`Medvidovic’s Pattern of Introducing New Infringement Theories in
`Reports. ................................................................................................................... 3
`ARGUMENT ...................................................................................................................... 4
`A.
`Medvidovic’s New Cloud Agent Theory ................................................................ 5
`B.
`Medvidovic’s New Dynamic Building and Detection Theories ............................. 5
`1.
`New Theories Re: Building and Detecting “While . . . Receiving the
`Incoming Stream” ........................................................................................ 6
`Different Accused Functionality ................................................................. 8
`2.
`Finjan Consciously Elected Not to Amend Its Contentions ........................ 9
`3.
`Medvidovic’s New Claim 29 Theories ................................................................. 10
`Medvidovic’s New “Receiving” Theory ............................................................... 12
`Medvidovic’s New Date of First Infringement Theory......................................... 13
`Medvidovic Introduces a New Doctrine of Equivalents Theory Not
`Previously Disclosed in the Infringement Contentions. ........................................ 14
`Finjan Failed to Preserve the Foreign Sales Theories in Medvidovic’s,
`Cole’s and McDuff’s Reports ............................................................................... 14
`CONCLUSION ................................................................................................................. 16
`
`C.
`D.
`E.
`F.
`
`G.
`
`III.
`
`IV.
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`Case 4:18-cv-07229-YGR Document 158 Filed 01/23/21 Page 3 of 20
`
`TABLE OF AUTHORITIES
`
`CASES
`
` PAGE(S)
`
`ASUS Comp. Int’l v. Round Rock Research, LLC,
`No. 12-cv-02099-JST, 2014 WL 1463609 (N.D. Cal. Apr. 11, 2014) .............................4, 14
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 5:13-cv-03999-BLF, 2015 WL 3640694 (N.D. Cal. June 11, 2015) ..............................1
`
`Finjan, Inc. v. Blue Coat Sys., LLC,
`No. 15-cv-03295, 2017 U.S. Dist. LEXIS 220192 (N.D. Cal. July 28, 2017) .......................5
`
`Finjan, Inc. v. Cisco Sys., Inc.,
`No. 5:17-cv-00072-BLF, 2019 WL 6174936 (N.D. Cal. Nov. 20, 2019) ..........................1, 3
`
`Finjan, Inc. v. Cisco Sys., Inc.,
`No. 5:17-cv-00072-BLF(SVK), 2020 WL 2322923 (N.D. Cal. May 11,
`2020) ...................................................................................................................................1, 4
`
`Finjan, Inc. v. Juniper Network, Inc., et al.,
`No. 3:17-cv-05659, 2021 WL 75735 (N.D. Cal. Jan. 9, 2021) ..............................................1
`
`Finjan, Inc. v. Proofpoint, Inc.,
`No. 13-CV-05808-HSG, 2015 WL 1517920 (N.D. Cal. Apr. 2, 2015) .................................7
`
`Finjan, Inc. v. Symantec Corp.,
`No. 4:14-cv-02998-HSG(JSC), 2018 WL 620169 (N.D. Cal. Jan. 30, 2018)........................1
`
`Huawei Techs., Co., Ltd. V. Samsung Elecs. Co., Ltd.,
`340 F. Supp. 3d 934 (N.D. Cal. 2018) .................................................................................14
`
`Theranos, Inc. v. Fuisz Pharma LLC,
`No. 11-CV-05236-YGR, 2012 WL 6000798 (N.D. Cal. Nov. 30, 2012) ..........................4, 7
`
`RULES
`
`Patent L.R. 3-1 ...............................................................................................................................4, 7
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`Case 4:18-cv-07229-YGR Document 158 Filed 01/23/21 Page 4 of 20
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`NOTICE OF MOTION AND MOTION
`PLEASE TAKE NOTICE that on Tuesday, March 2, 2021 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”) expert reports
`STATEMENT OF ISSUES AND RELIEF REQUESTED
`Qualys seeks an order striking portions of the “Expert Report of Nenad Medvidovic,
`Ph.D.,” “Opening Expert Report of Eric Cold, Ph.D.,” and “Expert Report of DeForest McDuff,
`Ph.D.” Medvidovic’s, Cole’s and McDuff’s expert reports all proffer infringement theories that
`exceed the scope of Finjan’s Local Patent Rule Contentions. Dr. Medvidovic introduces new
`theories of infringement not previously disclosed in Finjan’s Infringement Contentions. Drs. Cole
`and McDuff offer speculative theories on worldwide infringement and damages even though such
`theories were never disclosed in Finjan’s Infringement Contentions or Damages Contentions and
`have been held as outside the scope of the operative Infringement Contentions. See D.I. 105 at 4;
`D.I. 152. Qualys therefore requests that the Court strike the portions of those expert reports
`containing these improper theories, identified by the highlighted portions of Exhibits 1, 2, and 13
`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 4:18-cv-07229-YGR Document 158 Filed 01/23/21 Page 5 of 20
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`I.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`INTRODUCTION
`Finjan has been repeatedly chastised by courts in this District for failing to properly
`disclose its infringement theories. It has made a pattern out of using expert reports to inject new
`theories into the litigation:
`After discovering its infringement theory covered only a minute portion of
`Juniper’s revenue base, on the eve of [trial] Finjan flip flopped and came up
`with a new infringement theory, one which would capture more of Juniper’s
`products and inflate the target revenue base. Finjan tried to sneak this theory
`in with its expert-damages report, but we caught it, and the Daubert order
`excluded that trick.
`Finjan, Inc. v. Juniper Network, Inc., et al., Case No. 3:17-cv-05659, 2021 WL 75735, at *2 (N.D.
`Cal. Jan. 9, 2021) (emphasis added); see also Finjan, Inc. v. Symantec Corp., Case No. 4:14-cv-
`02998-HSG(JSC), 2018 WL 620169 (N.D. Cal. Jan. 30, 2018) (striking portions of Finjan’s expert
`reports for including theories outside the scope of its contentions); Finjan, Inc. v. Blue Coat Sys.,
`Inc., Case No. 5:13-cv-03999-BLF, 2015 WL 3640694 (N.D. Cal. June 11, 2015) (same); Finjan,
`Inc. v. Cisco Sys., Inc., Case No. 5:17-cv-00072-BLF(SVK), 2020 WL 2322923 (N.D. Cal. May
`11, 2020) (same); and Finjan, Inc. v. Cisco Sys., Inc., Case No. 5:17-cv-00072-BLF, 2019 WL
`6174936 (N.D. Cal. Nov. 20, 2019) (same).
`Now Finjan is at it again. Finjan pervasively offered infringement theories for the ’408
`Patent that were extremely narrow and failed to address every claim limitation. Qualys raised
`these issues with Finjan months before the close of fact discovery, but Finjan consciously elected
`not to seek leave to amend the contentions with the Court. Instead, Finjan resorted to its same old
`playbook by relying on its expert, Dr. Nenad Medvidovic, to slip in a host of new infringement
`theories. Dr. Medvidovic himself has a rocky past with this problem, and has had his reports
`stricken for engaging in the same practices present here. Given this, particular scrutiny of his
`expert report is warranted. As detailed below, Medvidovic frequently exceeds the scope of
`Finjan’s infringement contentions by accusing different devices, different functionality, and
`simply filling in new theories for limitations that Finjan skipped in its contentions. The Court
`should strike these new theories and opinions.
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`Case 4:18-cv-07229-YGR Document 158 Filed 01/23/21 Page 6 of 20
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`Further, despite the fact that the Court in this case has twice determined that Finjan failed
`to preserve any theory of foreign sales in its contentions, Drs. Medvidovic, Cole, and McDuff try
`to inject this issue into this case for a third time. This Court has already ruled that foreign sales is
`not part of the case, and should thus strike the corresponding portions of Medvidovic’s, Cole’s,
`and McDuff’s reports.
`In summary, Qualys seeks to strike the following paragraphs:
`o From Medvidovic’s expert report: ¶¶ 21-22, 160, 170, 172-174, 185, 187 fn. 6, 195-
`196, 214, 235-238, 250-253, 258, 262, 267-274, 276-300, 302-321, 323, 325, 327,
`333-338, 415-425, 427-430, and 446.3
`o From McDuff’s expert report: ¶¶ 8c, 13, 78, 87, 126, Tables 7 and 8, and
`Attachments B-1, B-2, B-4, B-5, B-6, B-8, C-2, and J-1.
`o From Cole’s expert report: ¶¶ 1186, 1188-1189, and 1871-1873.
`FACTUAL BACKGROUND
`A.
`Background of Qualys’s Products
`Qualys is a computer security company that offers vulnerability detection solutions.
`Finjan’s infringement expert, Medvidovic, describes a vulnerability as “a weakness in security that
`is subject to being exploited.” Ex. 1 at ¶ 82. Medvidovic analogizes a vulnerability to “leaving
`the back door to a house unlocked.” Id. Qualys’s solution is called the Qualys Cloud Platform,
`which is Cloud-based (i.e. resides on the Internet) software that enables customers to scan devices
`on their local networks (such as network infrastructure, firewalls, and even end-user devices like
`employee computers) for such vulnerabilities.
`Relevant to this motion, and as depicted by Qualys’s expert, Dr. Rubin, the following is a
`general depiction of Qualys’s architecture:
`
`II.
`
`3 For the Court’s convenience, Qualys provides an index for identifying: (1) the paragraph(s)
`of Medvidovic’s expert report to be struck; (2) the claim element the paragraph(s) pertains to; (3)
`pincites to the relevant portion of the Infringement Contentions; and (4) a brief statement regarding
`the basis for striking the paragraph(s) as Exhibit 10 to this motion.
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`Ex. 12 (Rebuttal Expert Report of Dr. Avi Rubin Regarding U.S. Patent No. 8,225,408) at 42. As
`depicted above, there are three general ways that Qualys’s Cloud Platform interacts with a
`customer. The first uses a “scanner,” which can take the form of a scanner appliance or a virtual
`scanner. The second is a Qualys “Cloud Agent,” which is installed directly on a device that is to
`be scanned. In both cases, the scanners and Cloud Agents collect information and send that
`information to the Qualys Cloud Platform. For the purposes of this motion, a material difference
`between the scanners and the Cloud Agent is that a scanner analyzes the data locally and sends
`the scan result to the Cloud Platform, while the Cloud Agent sends raw data to the Cloud Platform,
`which analyzes that data and generates the scan result. See Ex.9 (Deposition Transcript of Holger
`Kruse (“Kruse Tr.”)) at 33:9-17; 109:5-110:25. Either way, scan results are stored in a database.
`See id. at 76:11-77:23. The third way that customers interact with Qualys’s Cloud Platform is by
`running a scan report, which involves querying the database of stored scan results. See id. at 78:14-
`23. Medvidovic appears to generally agree with this description in his report. See Ex. 1 at ¶¶ 88,
`96-99, 107, 114, 116, 170.
`B.
`Medvidovic’s Pattern of Introducing New Infringement Theories in Reports.
`Medvidovic has a history of providing expert opinions that exceed the scope of the
`Infringement Contentions. See Finjan v. Cisco, 2019 WL 6174936 (granting Cisco’s motion to
`strike portions of Medvidovic’s expert reports for exceeding the scope of Finjan’s infringement
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`contentions and permitting Finjan to amend Medvidovic’s expert report)); Finjan v. Cisco, 2020
`WL 2322923 (granting Cisco’s motion to strike portions of Medvidovic’s amended expert report
`for exceeding the scope of Finjan’s infringement contentions)). For example, in Finjan v. Cisco,
`Medvidovic rendered opinions regarding infringement theories not disclosed in Finjan’s
`infringement contentions. See Finjan v. Cisco, 2020 WL 2322923 at *5-7.
`Here, Medvidovic repeats history by offering multiple new theories of infringement that,
`like in the Cisco case, were not included in Finjan’s infringement contentions. The Court should
`strike those opinions from Medvidovic’s report pertaining to such undisclosed theories (identified
`in Exhibit 1).4 See ASUS Comp. Int’l v. Round Rock Research, LLC, No. 12-cv-02099-JST, 2014
`WL 1463609, at *3-4 (N.D. Cal. Apr. 11, 2014) (striking expert testimony where expert opinions
`advanced new theories not disclosed in infringement contentions).
`III.
`ARGUMENT
`A “party may not use an expert report to introduce new infringement theories, new
`infringing instrumentalities, new invalidity theories, or new prior art references not disclosed in
`the parties’ infringement contentions or invalidity contentions.” ASUS v. Round Rock, LLC, 2014
`WL 1463609 at *1. “[T]he purpose of [Patent Local Rule 3-1] 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.” Theranos, Inc. v. Fuisz Pharma LLC, No. 11-CV-05236-YGR, 2012
`WL 6000798, at *2 (N.D. Cal. Nov. 30, 2012) (emphasis added). Similarly:
`The dispositive inquiry in a motion to strike is thus whether the allegedly undisclosed
`“theory” is in fact a new theory or new element of the accused product alleged to
`practice a particular claim that was not previously identified in the plaintiff’s
`contentions, or whether the “theory” is instead the identification of additional
`evidentiary proof showing that the accused element did in fact practice the limitation.
`. . . If the theory is new, prejudice is “inherent in the assertion of a new theory after
`discovery has closed.”
`
`Finjan, Inc. v. Blue Coat Sys., LLC, No. 15-cv-03295, 2017 U.S. Dist. LEXIS 220192, *13 (N.D.
`Cal. July 28, 2017) (citations omitted).
`
`4 For the Court’s convenience, Qualys provides an annotated and excerpted copy of Medvidovic’s
`expert report specifically identifying the paragraphs Qualys seeks to strike. The same pin citations
`identified throughout this Motion apply to that exhibit as well.
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`Medvidovic’s New Cloud Agent Theory
`A.
`Qualys moves to strike ¶¶ 160, 170, 183, 185, 187 fn. 6, 195-196, 214, 235-238, 258, 287-
`289, 303-309, 325, 327, 415, 417-419, 427-428, and 446 of the Medvidovic report as containing
`previously undisclosed theories containing alleged infringement involving Qualys’s Cloud Agent.
`Finjan’s infringement contentions for the ’408 Patent do not accuse the Cloud Agent of practicing
`any limitation of any asserted claim of the ’408 Patent. Indeed, “Cloud Agent” appears nowhere
`in Finjan’s ’408 claim charts. See generally Ex. 5. Finjan’s only theories of infringement disclosed
`in its claim charts variously accuse either the Qualys Cloud Platform and/or Qualys’s Scanner
`Appliance/Virtual Appliance. See, e.g., id. at 2-3 (accusing the Cloud Platform and Scanner
`Appliance); 6 (referencing databases stored on the Cloud Platform); 15 (referencing API calls to
`Cloud Platform); and 17 (referencing scan reports generated by Cloud Platform). Notably, Finjan
`did specifically include Cloud Agents theories in its contentions for the other Patents-in-Suit. See,
`e.g., D.I. 100-11 at 000036, 000119, 000189, 000321, 000374, and 000486; see id. at 000408-469.
`Finjan consciously declined to include any Cloud Agent theories of infringement for the ’408
`Patent and should not be permitted to have its expert opine on this.
`However, Medvidovic dramatically expands Finjan’s infringement theories by offering
`over two dozen different infringement opinions regarding the Cloud Agents in his report. See Ex.
`1 at ¶¶ 160, 170, 175, 178, 183, 185, 187 fn. 6, 195-196, 214, 235-238, 258, 287-289, 303, 309,
`325, 327, 415, 417-419, 427-428, 446. None of these theories were included in Finjan’s
`infringement contentions, and the Court should strike the foregoing paragraphs from Medvidovic’s
`report accordingly.
`B.
`Medvidovic’s New Dynamic Building and Detection Theories
`Qualys moves to strike ¶¶ 238, 262, 267-274, 276-300, 302-320, 325, 327, 329, 333, and
`335-337 because they pertain to new theories regarding the dynamic building and detection steps
`of the ’408 Claims. Medvidovic’s new theories fall into two groups. First, he provides new
`theories regarding how the building and detection steps occur while still receiving the alleged
`incoming stream of program code. Second, he accuses entirely different features of performing
`the detecting and building step than what Finjan disclosed in its infringement contentions.
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`1.
`
`New Theories Re: Building and Detecting “While . . . Receiving the
`Incoming Stream”
`
`Every claim of the ’408 Patent requires two acts occur “dynamically,” i.e., while receiving
`the incoming stream of program code. First, the Claims each require “dynamically building . . . a
`parse tree whose nodes represent tokens and patterns.” See Ex. 4 (’408 Patent) at Claims 1, 22,
`23, 29, 35. This must occur while still receiving the claimed incoming stream of program code.
`See id. Second, the Claims each require “dynamically detecting . . .indicators of potential exploits”
`while the “dynamic building” is still ongoing. Id. By extension, this means that the dynamic
`detection must also occur while still receiving the claimed incoming stream of program code. See
`id.
`
`Finjan, however, did not disclose theories about these steps in its infringement contentions.
`In its Infringement Contentions, Finjan merely restates parts of the claim language and says it
`occurs “during the scans”:
`
`Ex. 5 at 15. For the claimed “dynamically building” step, Finjan states:
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`Id. at 16. Neither of these contentions say anything about how Finjan contends Qualys’s products
`build a parse tree or detect potential exploits while receiving the incoming stream of program code.
`Finjan says nothing about when or how the code it highlights in its contention executed (let alone
`that it occurs while still receiving the incoming stream of program code). To compound on this
`problem, Finjan completely ignores the further requirement in Element 1g that dynamic detection
`must occur while said dynamically building builds the parse tree. See id. Finjan failed to provide
`a “meaningful description of its theories” for these limitations. See Theranos, Inc. v. Fuisz Pharma
`LLC, No. 11-CV-05236-YGR, 2012 WL 6000798, at *4 (N.D. Cal. Nov. 30, 2012); see also
`Finjan, Inc. v. Proofpoint, Inc., No. 13-CV-05808-HSG, 2015 WL 1517920, at *6 (N.D. Cal. Apr.
`2, 2015) (“Even more troublingly, the little explanation Finjan does provide is framed in high-
`level generalities that do not specifically relate to the claim elements identified in each Claim. See
`Pat. L.R. 3–1(c) (requiring the patentee to identify ‘the structure(s), act(s), or material(s) in the
`Accused Instrumentality that performs the claimed function.’)”).
`the
`to his opinions of
`Dr. Medvidovic repeats
`this same error with regards
`“indicating...within the incoming stream” claim element. See Ex. 1 at ¶ ¶ 321, 323, 325, 327, 329,
`333, 335-337. Specifically, Finjan’s infringement contentions for that element merely refer back to
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`the “dynamic detection” element. See Ex. 5 at 17-18. As noted above, the contentions for the
`dynamic detection element contain no theory of how detection allegedly occurs while still receiving
`an incoming stream.
`Medvidovic’s report attempts to fill these gaps by suddenly injecting theories for the
`missing limitations.
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` None of these features are referenced
`anywhere in Finjan’s ’408 claim charts. See generally Ex. 5. Accordingly, these theories, and
`their corresponding paragraphs, should be struck.
`2.
`Different Accused Functionality
`
`Finjan’s infringement contentions include only one theory about which features of
`Qualys’s products allegedly build a parse tree and detect incoming exploits. For both elements,
`Finjan relies on a single document that describes the operation of the “Qualys API.” See Ex. 11;
`compare id. at FINJAN-QUALYS 042672-673 with Ex. 5 at 15; compare id. at FINJAN-
`QUALYS 042656 with Ex. 5 at 16.
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` Thus, Finjan’s contentions for these elements were limited only to the Qualys API
`functionality found on
` Medvidovic discussed Qualys API in ¶¶ 265 and 307 of his report.
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`However, Medvidovic also went significantly beyond the scope of Finjan’s contentions by
`offering several new alternative theories about different functionality that he opined also met these
`limitations.
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` Medvidovic’s opinions should be limited to functionality actually disclosed in
`Finjan’s infringement contentions and thus the foregoing paragraphs should be struck.
`3.
`Finjan Consciously Elected Not to Amend Its Contentions
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`Tellingly, Finjan knew about these deficiencies months before the close of fact discovery.
`On July 23, 2020, Qualys sent Finjan a letter detailing these and other problems in its infringement
`contentions. Qualys specifically noted that, as to the ’408 Patent:
`In Claim 1, Finjan fails to identify structure or functionality for parse trees that are
`dynamically built or that the nodes of those trees represent tokens and patterns.
`Finjan also fails to identify structure or functionality showing that the dynamic
`detection occurs during the dynamic building of Claim Element 1f.
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`Ex. 6 at 15 (emphasis in original). Finjan ignored this issue in its August 13 response. See Ex. 7
`at 15-17. Finjan did, however, acknowledge it would “supplement its [Infringement Contentions]
`in response to Qualys’s letter.” Id. at 18. Yet, even after fact discovery concluded, Finjan never
`lived up to its promise and never sought leave to amend its infringement contentions. Finjan
`should not now be allowed to use Medvidovic’s report to sneak in contentions on elements it all
`but ignore in its contentions.
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`Medvidovic’s New Claim 29 Theories
`C.
`Qualys moves to strike ¶¶ 415-417 and 427-430 of Medvidovic’s Report because they
`include new infringement theories as to Claim 29. There are two elements of Finjan’s Claim 29
`infringement contentions are problematic:
`[Element 29b] a non‐transitory computer‐readable storage medium storing
`computer-executable program code that is executed by a computer to scan
`incoming program code
`[Element 29c] an accessor, stored on the medium and executed by the
`computer, for accessing descriptions of exploits in terms of patterns of tokens
`and rules, wherein exploits are portions of program code that are malicious,
`wherein tokens are lexical constructs of any one of a plurality of
`programming languages, and wherein rules designate certain patterns of
`tokens as forming programmatical constructs.
`In Element 29b, Finjan provides a non-substantive and ambiguous contention that fails
`to identify any feature of the accused products with any specificity:
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`Ex. 5 at 42. The only theory Finjan discloses for where this nondescript “storage medium” is
`located is found in its call-back to Element 1(d), which shows Finjan’s contention that the “storage
`medium” is the database residing on the Cloud Platform, not a component of the scanner:
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`Id. at 6. Finjan’s contentions similarly allege this same database satisfies the Element 29c’s
`“accessor”:
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`Id. at 43.
`Medvidovic’s report offers a different theory for these limitations.
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`. Finjan should be bound by its original theory and Medvidovic’s
`improper new theory struck.
`D.
`Medvidovic’s New “Receiving” Theory
`Qualys moves to strike ¶¶ 185, 187, 195-197, and 214 of Medvidovic’s Report as including
`an improper new theory
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`Finjan’s Infringement Contentions identify two theories of infringement:
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` Theory 1: the Qualys Cloud Platform “receives content based on a client device
`requesting the content from a source computer, such as the Internet.” Ex. 5 at 2.
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` Theory 2: In the second theory, Qualys’s Scanner Appliance and Virtual Scanner
`“receives content based on a client device requesting the content from a source
`computer, such as the Internet.” Id. at 3-4.
`Both of Finjan’s theories involve a client device (i.e., not the scanner) requesting content from an
`Internet-based source computer. Also, both of Finjan’s theories accuse distinct components
`operating alone – i.e., the Cloud Platform alone and/or the Scanner Appliance/Virtual Scanners
`alone.
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`Medvidovic’s report jettisons the above-described theories.
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`Medvidovic also offers the new theory that the Scanner Appliance and Virtual Scanner
`infringe by directly requesting content, rather than (as disclosed in Finjan’s contentions)
`intercepting content requested by a distinct client device:
`Finjan’s Infringement Contentions
`Medvidovic Report (Ex. 1) at ¶ 186:
`Appendix F (Ex. 5) at 3:
`As shown below, the content is received by
`each Accused Product (via the receiver of
`the Appliance Scanner) when a particular
`client device requests content provided by
`a source computer.
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`And, as discussed above in Section A above, Medvidovic includes a theory of Cloud Agent-based
`reception, a theory nowhere included in Finjan’s infringement contentions. Compare Ex. 5 at 2-4
`with Ex. 1 at ¶¶ 185, 187 fn. 6, 195-196. Qualys asks that the Court strike these new theories.
`E.
`Medvidovic’s New Date of First Infringement Theory
`Qualys moves to strike ¶¶ 21-22, 262, and 277-283 from Medvidovic’s report. In
`paragraph 21, Medvidovic opines that the first date of infringement for the ’408 Patent is “no
`earlier than 2005.” Ex. 1 at ¶ 21.6 This is a new theory. Finjan’s Infringement and Damages
`Contentions list November 29, 2018 as the theoretical date of first infringement for the ’408 Patent.
`See D.I. 100-11 at 11, Ex. 8 at 4. Even Finjan’s damages expert, McDuff, disputes Medvidovic’s
`new opinion by identifying a different date of first infringement than Medvidovic. See Ex. 3 at
`Attachment F-2.
`Medvidovic’s identification of a new date of first infringement appears aimed at capturing
`a particular feature change in Qualys’s Scanner Appliances and Virtual Scanners.
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`6 Qualys also objects to 2005 (years before the ’408 issued) as legally correct.
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` This new theory is subject to being struck for the reasons discussed above. In any
`event, because Medvidovic’s 2005 theory is different from the theoretical date of first infringement
`Finjan