Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 1 of 22
`
`
`
`Juanita R. Brooks (CA SBN 75934)
`brooks@fr.com
`Roger A. Denning (CA SBN 228998)
`denning@fr.com
`Jason W. Wolff (CA SBN 215819)
`wolff@fr.com
`Megan A. Chacon (CA SBN 304912)
`chacon@fr.com
`K. Nicole Williams (CA SBN 291900)
`nwilliams@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Phone: (858) 678-5070 /Fax: (858) 678-5099
`
`Robert P. Courtney (CA SBN 248392)
`courtney@fr.com
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South 6th Street
`Minneapolis, MN 55402
`Phone: (612) 335-5070 /Fax: (612) 288-9696
`
`Proshanto Mukherji (pro hac vice)
`mukherji@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Phone: (617) 542-5070/ Fax (617) 542-8906
`
`Attorneys for Plaintiff
`FINJAN LLC
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`(OAKLAND DIVISION)
`
`
`
`FINJAN LLC, a Delaware Limited Liability
`Company,
`
`Case No. 4:18-cv-07229-YGR (TSH)
`
`
`
`Plaintiff,
`
`v.
`
`QUALYS INC., a Delaware Corporation,
`
`
`
`Defendant.
`
`PLAINTIFF FINJAN LLC’S
`OPPOSITION TO QUALYS INC.’S
`MOTION TO STRIKE PORTIONS OF
`PLAINTIFF’S INFRINGEMENT AND
`DAMAGES EXPERT REPORTS
`
`[REDACTED VERSION OF DOCUMENT
`SOUGHT TO BE SEALED]
`
`
`March 2, 2021
`DATE:
`1:30 PM
`TIME:
`JUDGE: Hon. Yvonne Gonzalez Rogers
`Courtroom 1, 4th Floor
`PLACE:
`
`
`
`
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 2 of 22
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`Introduction ....................................................................................................... 1
`
`I.
`
`II. Background ....................................................................................................... 2
`
`A. Finjan’s Infringement Contentions.................................................................. 2
`
`B. Qualys’s Complaints ....................................................................................... 2
`
`III. LEGAL STANDARDS .................................................................................. 3
`
`IV. Argument ........................................................................................................ 4
`
`A. Finjan’s Contentions Disclosed “Cloud Agents” ............................................. 4
`
`B. Finjan’s Contentions Disclosed Dynamic Building and Detecting .................. 6
`
`1. Qualys’s Claim Construction Arguments are Incorrect and Irrelevant ......... 6
`
`2. Finjan Disclosed Its Theory that Qualys Used an XML Parse Tree.............. 6
`
`3. Finjan Disclosed the Accused Functionality ................................................ 8
`
`4. Finjan Did Not Need to Supplement its Contentions .................................... 9
`
`C. Finjan Disclosed its Infringement Theories for Claim 29 ...............................10
`
`1. Finjan disclosed that the “scanner” limitation .............................................10
`
`2. Finjan disclosed the “accessor” limitation...................................................11
`
`D. Finjan Disclosed its “Receiving” Theory .......................................................12
`
`E. Dr. Medvidovic Is Not Offering a New Theory Regarding the Date of
`Qualys’s First Infringement ................................................................................13
`
`F. Finjan’s Contentions Disclosed its Doctrine of Equivalents Theory...............14
`
`G. Regarding Foreign Sales, the Reports are Consistent with the Court’s Orders. 15
`
`V. Conclusion ......................................................................................................18
`
`
`
`
`
`
`
`i
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 3 of 22
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Apple v. Samsung Elecs. Co., Ltd.,
`5:12-CV-0630-LHK-PSG, 2014 WL 173409 (N.D. Cal. Jan. 9, 2014) ..................................... 9
`
`Apple, Inc. v. Samsung Elecs. Co.,
`No. 12-CV-00630-LHK, 2014 U.S. Dist. LEXIS 43907 (N.D. Cal. Mar. 28,
`2014) ....................................................................................................................................... 3
`
`ASUS Computer Int’l v. Round Rock Research, LLC,
`No. 12-CV-02099 JST (NC), 2014 WL 1463609 (N.D. Cal. Apr. 11, 2014) ........................... 14
`
`Atmel Corp. v. Info. Storage Devices, Inc.,
`No. C 95-1987 FMS, 1998 WL 775115 (N.D. Cal. 1998) ........................................................ 3
`
`Digital Reg of Texas, LLC v. Adobe Sys. Inc.,
`No. CV 12-01971-CW (KAW), 2014 WL 1653131 (N.D. Cal. Apr. 24, 2014) ................. 4, 7, 8
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 13-CV-03999-BLF, 2015 WL 3640694 (N.D. Cal. June 11, 2015) .................................. 15
`
`Finjan, Inc. v. Cisco Sys., Inc.,
`Case No. 5:17-cv-00072-BLF, Dkt. No. 72 (N.D. Cal. Aug. 29, 2017) ..................................... 3
`
`Finjan, Inc. v. Cisco Sys., Inc.,
`Case No. 5:17-cv-00072-BLF(SVK), Dkt. No. 79 (N.D. Cal. Oct. 10, 2017)............................ 3
`
`Finjan, Inc. v. Rapid7, Inc.,
`Case No. 18-1519 (MN), 2020 WL 565377 (D. Del. Feb. 5, 2020)........................................... 6
`
`Genentech, Inc. v. Trustees of Univ. of Pennsylvania,
`No. C 10-2037 LHK (PSG), 2012 WL 424985 (Feb. 9, 2012) .................................................. 4
`
`Largan Precision Co. v. Genius Elec. Optical Co.,
`Case No. 13-cv-02502-JD, 2014 WL 6882275 (N.D. Cal. Dec. 5, 2014) .................................. 6
`
`Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006) ................................................................................................ 3
`
`Oracle Am., Inc. v. Google Inc.,
`Case No. 10-cv3561, 2011 WL 4479305 (N.D. Cal., Sept. 26, 2011) ....................................... 3
`
`Power Integrations, Inc. v. ON Semiconductor Corp.,
`396 F. Supp. 3d 851 (N.D. Cal. 2019) ...................................................................................... 8
`
`Other Authorities
`
`Patent L.R. 3-1 .................................................................................................................. 3, 16, 17
`
`
`
`ii
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 4 of 22
`
`
`
`I.
`
`INTRODUCTION
`
`Qualys, Inc.’s (“Qualys”) motion to strike the expet report of Dr. Nenad Medvidovic on
`
`U.S. Pat. No. 8,225,408 (Dkt. No. 156, “Mot.”) should be denied. The purpose of infringement
`
`contentions is to put the accused infringer on notice of the patent owner’s infringement
`
`allegations. Finjan’s contentions do this.
`
`Qualys puts forth six arguments for striking technical analysis in Dr. Medvidovic’s report.
`
`The first concerns whether Finjan’s infringement contentions accuse “Cloud Agents.” Qualys
`
`argues that the word “Cloud Agent” does not appear in Finjan’s infringement charts. But Finjan
`
`identified “Cloud Agents” in its infringement contentions as an accused product, and identified
`
`how Qualys’s accused products (including Cloud Agents) received data from different sources.
`
`Second, Qualys argues that Dr. Medvidovic’s theory for the “dynamic building . . .” of an XML
`
`like data structure and “dynamic detection . . .” using that XML like data structure was not
`
`disclosed in Finjan’s contentions. Finjan disclosed that very theory, however, even annotating the
`
`exemplary evidence to highlight Qualys’s use of an XML data structure for both of these
`
`limitations. Qualys’s third and fourth arguments are that Finjan did not disclose Dr. Medvidovic’s
`
`theory for claim 29 or for the “receiving . . .” limitation of claim 1, respectively. Qualys’s
`
`arguments are based on a misinterpretation of Finjan’s infringement contentions and Dr.
`
`Medvidovic’s expert opinions. Fifth, Qualys seeks to strike Finjan’s doctrine of equivalents
`
`theory. But unlike the boilerplate reservation of rights language this District has struck in other
`
`cases, Finjan’s contentions set forth a specific theory as to how Qualys’s products satisfy the
`
`function-way-result test. Finally, Qualys asks the Court to strike Dr. Medvidovic’s opinions on
`
`the date of first infringement, but Dr. Medvidovic does not offer an opinion on any such date.
`
`Rather, Dr. Medvidovic provides the underlying technical analysis of the accused products, from
`
`which Finjan’s damages expert determined a date of first infringement—a date which Qualys is
`
`not seeking to strike.
`
`As to the damages issue (the “foreign sales” item), Qualys’s motion tries to characterize
`
`two discovery orders as effectively entering summary judgment against the inclusion of Qualys’s
`
`non-U.S. sales in the damages base at trial. The Court entered no such judgment. What the Court
`
`
`
`1
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 5 of 22
`
`
`
`did was make findings about the types of theories Finjan’s infringement contentions did and did
`
`not disclose. The “foreign sales” items in the Reports were guided by, and are consistent with,
`
`those findings—a point Qualys effectively concedes by failing to identify even one inconsistency
`
`between the reports and the contentions as to foreign sales.
`
`The Court should reject Qualys’s attempt to gain a windfall at trial through
`
`misinterpretation of Finjan’s contentions and the Court’s past orders.
`
`II.
`
`BACKGROUND
`
`A.
`
`Finjan’s Infringement Contentions
`
`Finjan served its infringement contentions on April 19, 2019. In those contentions, Finjan
`
`set forth its theories of infringement for the ’408 Patent. At a high level, Finjan showed that the
`
`Qualys products receive program code from a number of different sources. Exh. A [408 Inf chart]
`
`at 2. The Qualys products identify specific programming languages in that received code (id. at 5)
`
`and then scan that code for vulnerabilities, including analyzing it against rules stored in a Qualys
`
`database. Id. at 7. The Qualys products then build a parse tree using functionality for building
`
`XML like structures (id. at 15) and perform vulnerability scans using the information from that
`
`tree structure. Id. at 16. Finally, the Qualys products present these potential exploits on a user
`
`interface. Id. at 17.
`
`Dr. Medvidovic followed that same theory, adding evidence that Finjan learned during
`
`discovery. Exh. B [Medvidovic Op.] at ¶¶ 158-161. For example, Dr. Medvidovic identified the
`
`database of vulnerabilities as
`
` Id. ¶ 136. He further identified specific features that
`
`made use of the
`
`
`
`
`
` Dr. Medvidovic
`
`also cited deposition testimony from Qualys’s engineers explaining how all of these limitations
`
`were satisfied. See, e.g., Id. at ¶¶ 184-195, 282-296, 305-309.
`
`B.
`
`Qualys’s Complaints
`
`Qualys did not complain about any defects when Finjan served its contentions. Rather,
`
`Qualys waited until there were three months left in discovery—fifteen months after Finjan served
`
`
`
`2
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 6 of 22
`
`
`
`its contentions—to identify the purported deficiencies. By this point in the case, the parties had
`
`exchanged discovery, exchanged contentions, and participated in claim construction with no issue.
`
`Qualys cites orders from other Finjan cases and refers to a “pattern” from those cases, but
`
`this case is nothing like the cases where the Court struck Finjan’s contentions. For example, Cisco
`
`pressed Finjan for supplemental contentions early and ultimately moved to compel contentions
`
`from Finjan instead of idling through discovery like Qualys has done. Finjan, Inc. v. Cisco Sys.,
`
`Inc., Case No. 5:17-cv-00072-BLF, Dkt. No. 72 (N.D. Cal. Aug. 29, 2017). As a result, the
`
`contentions in Cisco were subject to extensive motion practice. Finjan, Inc. v. Cisco Sys., Inc.,
`
`Case No. 5:17-cv-00072-BLF(SVK), Dkt. No. 79 (N.D. Cal. Oct. 10, 2017). Thus, while Qualys
`
`is correct that the court ultimately excluded some of Dr. Medvidovic’s opinions (and allowed
`
`others), the court did so on a record that was much different than in this case.
`
`Here, Qualys bears the burden of showing that Dr. Medvidovic’s opinions include theories
`
`not set forth in Finjan’s contentions. On a Motion to Strike, the moving party bears the burden of
`
`proof. See, e.g., Apple, Inc. v. Samsung Elecs. Co., No. 12-CV-00630-LHK, 2014 U.S. Dist.
`
`LEXIS 43907, at *46 (N.D. Cal. Mar. 28, 2014) (on a motion to strike, the moving party bears the
`
`burden of proof). While Qualys broadly asks the Court to strike more than 80 paragraphs from
`
`Dr. Medvidovic’s report, Qualys does little to explain how those specific paragraphs include
`
`theories that allegedly were not disclosed in the contentions.
`
`III. LEGAL STANDARDS
`
`Patent L.R. 3-1, which governs infringement contentions, “‘require[s] parties to crystallize
`
`their theories of the case early in the litigation. 02 Micro Int 7 Ltd. v. Monolithic Power Sys., Inc.,
`
`467 F.3d 1355, 1364 (Fed. Cir. 2006) Atmel Corp. v. Info. Storage Devices, Inc., No. C 95-1987
`
`FMS, 1998 WL 775115, at *2 (N.D. Cal. 1998)) (emphasis added). The operative word “theories”
`
`does not mean, for example, marshalling all evidence or citing minutia regarding implementation
`
`details. See Oracle Am., Inc. v. Google Inc., Case No. 10-cv3561, 2011 WL 4479305, at *3 (N.D.
`
`Cal., Sept. 26, 2011) (establishing that the local rules do not require infringement contentions to
`
`identify specific evidence of implementation level details—only an identification of the
`
`infringement theory).
`
`
`
`3
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 7 of 22
`
`
`
`Instead, “[t]he purpose of the disclosure rules is ‘to further the goal of full, timely
`
`discovery and provide all parties with adequate notice of and information with which to litigate
`
`their cases.” Genentech, Inc. v. Trustees of Univ. of Pennsylvania, No. C 10-2037 LHK (PSG),
`
`2012 WL 424985, at *1 (Feb. 9, 2012) (quoting IXYS Corp. v. Advanced Power Tech., Inc., No. C
`
`02-3942, 2004 WL 1368860, at *3 (N.D. Cal. June 16, 2004)). While “[e]xpert reports may not
`
`introduce theories not set forth in the infringement contentions,” Digital Reg of Texas, LLC v.
`
`Adobe Sys. Inc., No. CV 12-01971-CW (KAW), 2014 WL 1653131, at *4 (N.D. Cal. Apr. 24,
`
`2014), “[t]he scope of contentions and expert reports are not, however, coextensive.” Id. (quoting
`
`Apple v. Samsung Elecs. Co., Ltd., 5:12-CV-0630-LHK-PSG, 2014 WL 173409, at *1 (N.D. Cal.
`
`Jan. 9, 2014)). “Infringement contentions need not disclose specific evidence, whereas expert
`
`reports must include a complete statement of the expert’s opinions, the basis and reasons for them,
`
`and any data or other information considered when forming them.” Id. “The threshold question in
`
`deciding whether to strike an expert report is whether the expert has permissibly specified the
`
`application of a disclosed theory or impermissibly substituted a new theory altogether.” Id.
`
`IV. ARGUMENT
`
`A.
`
`Finjan’s Contentions Disclosed “Cloud Agents”
`
`Finjan infringement contentions state clearly that the Qualys Cloud Agent infringes the
`
`’408 Patent: “Finjan accuses the following of Defendant’s products and services, and associated
`
`software and subscriptions, of infringing claims 1, 3-8, 22-23, 29, and 35 of the ‘408 Patent: . . .
`
`Cloud Agent (CA).” Exh. C [2019-04-19 Finjan’s Initial Disclosure of Asserted Claims and
`
`Infringement Contentions] at 4 (emphasis added). Despite this, Qualys contends that Finjan’s
`
`contentions did not encompass the Cloud Agent. Other than the fact that Finjan did not say
`
`“Cloud Agent” in its claim chart (Finjan instead substituted the phrase “Accused Products”),
`
`Qualys fails to provide any reason to exclude the more than 30 paragraphs identified from
`
`Dr. Medvidovic’s report.
`
`Assuming that Qualys’s motion concerns the subject matter disclosed in the cited
`
`paragraphs (and not the mere fact that those paragraphs did not use the words “Cloud Agent”)
`
`Qualys seeks to strike two categories of paragraphs. First, Qualys seeks to strike paragraphs that
`
`
`
`4
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 8 of 22
`
`
`
`refer to collecting data from a Cloud Agent. Mot. at 5 (citing Medvidovic Op. ¶¶ 160, 170, 183,
`
`185, 187 fn. 6, 195-196). Yet Finjan’s contentions include a diagram that identifies networked
`
`data collected from sensors in the Qualys system (which would include data collected from a
`
`Cloud Agent). See Exh. A [408 Inf chart] at 2. Indeed, as set forth in Qualys’s motion, there are
`
`only two ways the Qualys system receives data from a user: (1) from a scanner; or (2) from a
`
`Cloud Agent. See Mot. at 3 (referring to two interactions with a user that pertain to collecting
`
`data); see also Exh. B [Medvidovic Op.] at ¶¶ 96-100. Finjan’s contentions purposefully cover
`
`both mechanisms for data collection in the system. See Exh. A [408 Inf chart] at 2 (annotation
`
`showing that all data collected from the Qualys network is considered “received” data, and not just
`
`data received from the scanners, as Qualys suggests).
`
`Qualys next seeks to strike paragraphs that refer to functionalities other than collecting
`
`data (such as handling and processing the data after it was collected). Mot. at 5 (citing
`
`Medvidovic Op. ¶¶ 214, 235-238, 258, 287-289, 303-309, 325, 327, 415, 417-419, 427-428, and
`
`446). Qualys’s motion does not identify any purportedly new theory in these paragraphs. And it
`
`cannot, because there are none: Qualys engineers have testified that
`
`
`
`
`
`
`
`
`
`
`
`
`
`Thus, any reference to these functionalities in the Finjan contentions applies to both scanners and
`
`Cloud Agents. And notably, Qualys is not moving to strike analogous paragraphs referring to the
`
`processing of data from scanners.
`
`Finjan’s contentions identify Cloud Agents, refer to data collected by the Cloud Agents,
`
`and then refer to a data processing technique generally (which is not the subject of Qualys’s
`
`motion and thus, not a undisclosed theory) that also applies to Cloud Agents. The Court should
`
`thus deny Qualys’s motion to strike Cloud Agents.
`
`
`
`5
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 9 of 22
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`B.
`
`Finjan’s Contentions Disclosed Dynamic Building and Detecting
`
`Qualys next seeks to strike more than 60 paragraphs from Dr. Medividovic’s report for
`
`supposedly disclosing “new theories regarding the dynamic building and detection steps.”1
`
`Qualys’s argument is based on an improper reading of the patent. But even then, Qualys concedes
`
`(1) Finjan’s infringement contentions were pointing to the building and parsing of an XML to
`
`satisfy these limitations; and (2) Finjan’s expert has adhered to that same theory, only including
`
`additional evidence.
`
`1.
`
`Qualys’s Claim Construction Arguments are Incorrect and Irrelevant
`
`The premise for Qualys’s motion is that the claims require the “dynamically building. . .”
`
`and “dynamically detecting . ..” steps occur “while receiving the incoming stream of program
`
`code.” Mot. at 6. However, the plain language requires only (1) that “building” occurs “while . . .
`
`receiving . . . the incoming stream” and (2) “detecting” occurs “while said dynamically building.”
`
`Dkt. No. 1-4 (’408 Patent) at claim 1. There is no requirement that all three occur at the same
`
`time, and Qualys did not raise its contrary interpretation during claim construction. Rather, it is
`
`sufficient, for example, for “building . . .” to begin while receiving an incoming stream of data,
`
`and for “detecting . . .” to begin while “building . . .” was occurring (but after the incoming stream
`
`of data had been fully received). See Finjan, Inc. v. Rapid7, Inc., Case No. 18-1519 (MN), 2020
`
`WL 565377, at *12 (D. Del. Feb. 5, 2020) (endorsing the conclusion that there is no requirement
`
`that all three happen at the same time).
`
`2.
`
`Finjan Disclosed Its Theory that Qualys Used an XML Parse Tree
`
`Dr. Medvidovic’s report identifies evidence and support for the theories in Finjan’s
`
`infringement contentions; it does not introduce new theories. Largan Precision Co. v. Genius
`
`
`1 Eight of the paragraphs from Dr. Medvidovic’s report cited Qualys’s motion (paragraphs 238,
`
`325, 327, 329, 333, and 335-337) do not concern the “dynamic building” and “dynamic detection”
`
`limitations. Qualys appears to include them because they are part of the subsequent “indicating . .
`
`.” limitation that refers back to the “dynamically detecting . . .” limitations. Thus, Qualys’s
`
`argument for these paragraphs falls with its argument for the “dynamic building” and “dynamic
`
`detection” limitations.
`
`
`
`6
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 10 of 22
`
`
`
`Elec. Optical Co., Case No. 13-cv-02502-JD, 2014 WL 6882275, at *7 (N.D. Cal. Dec. 5, 2014)
`
`(“[E]xpert reports are meant to provide more detail than contentions.”); Digital Reg of Texas, LLC
`
`v. Adobe Sys. Inc., No. CV 12-01971-CW (KAW), 2014 WL 1653131, at *5 (N.D. Cal. Apr. 24,
`
`2014) (denying a motion to strike allegedly new allegations after determining that the theory had
`
`not changed only additional evidence was presented).
`
`More particularly, Finjan’s contentions refer to building a “tree” using data from an XML
`
`structure. See Exh. A [408 chart] at 15 (red annotation around the command to build a “tree” from
`
`an XML input). This command to build a “tree” is the basis for Finjan’s belief and theory that
`
`Qualys uses a parse tree. Finjan’s contentions go on to state that such parse trees are built
`
`“[d]uring the scans described above” (id. at 15), referring to scans identified in the previous claim
`
`limitations. Id. at 6 (referring to, for example, Web Application Scanning and Vulnerability
`
`Scanning). Thus, Finjan’s contentions disclosed a theory that the “dynamically building” step was
`
`satisfied by building an XML-based tree during a pending Qualys scan.
`
`Dr. Medvidovic’s infringement theory in the challenged paragraphs is the same as the
`
`theory in Finjan’s infringement contentions. He explains how Qualys appears to have used XML
`
`because
`
`
`
`. E.g., Exh. B
`
`[Medvidovic Op.] at ¶¶ 264-265. Then, Dr. Medvidovic identifies the evidence supporting this
`
`theory. E.g., Id. ¶ 266. Even Qualys seems to agree with this characterization: Qualys describes
`
`Dr. Medvidovic’s opinions in paragraphs 262, 282-286, 290, 294, 298, 299, and 301 as setting
`
`forth a theory that Qualys products
`
`
`
` See Mot. at 8.
`
`For the remaining paragraphs (302-304, 308-318, 319-320), Qualys describes them as
`
` related to Dr. Medvidovic’s infringement theory. Id. Qualys does not (and
`
`cannot) contend that these “features” are new “theories.” Finjan’s contentions referred
`
`categorically to processes that occurred “during” a scan. Exh. A [408 inf chart] at 15. Based on
`
`these statements in the contentions, Finjan’s theory of infringement was clear (as Qualys notes
`
`elsewhere in its motion, Finjan was accusing
`
` processing that occurred during a scan, see
`
`
`
`7
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 11 of 22
`
`
`
`supra at 10-11). Similarly, the “features” that Qualys cites in its motion are evidence of the
`
`claimed processes occurring during a scan. Exh. B [Medvidovic Op.] at ¶¶ 285, 290 and 312
`
`(
`
`”); 309
`
`); 311-312 (
`
`) and 319 (
`
`
`
`
`
`
`
`
`
`”). These “features” are the exact type of
`
`detailed evidence that should be included in an expert report, but need not be included
`
`infringement contentions. See Digital Reg of Texas, LLC, 2014 WL 1653131, at *5 (“In patent
`
`litigation, expert reports are expected to provide more information than is contained in
`
`infringement contentions.”); Power Integrations, Inc. v. ON Semiconductor Corp., 396 F. Supp.
`
`3d 851, 890 (N.D. Cal. 2019) (determining that the expert “simply added greater detail to the
`
`theory, which does not provide a basis for striking it” and the theory itself had not changed).
`
`3.
`
`Finjan Disclosed the Accused Functionality
`
`Qualys’s motion takes a second swipe at the same paragraphs from Dr. Medvidovic’s
`
`report, this time referring to them as “different functionality.” Mot. at 9. If anything, Qualys’s
`
`motion provides another reason why those paragraphs should not be struck: because both Finjan’s
`
`contentions and Dr. Medvidovic’s report identify the use of XML based parse trees by Qualys’s
`
`.
`
`Specifically, the operative excerpt from the contentions refers to the use of an XML-based
`
`structure to store data from a scan. See, e.g., Motion at 8 (identifying relevant “parse tree”
`
`limitations from Finjan’s contentions). Qualys argues that these contentions are limited
`
` with features identified in Dr. Medvidovic’s report. Mot. at 9
`
`
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`25
`
`26
`
`27
`
`28
`
`
`
`24
`
`(
`
`). However, as Qualys’s engineers have testified and
`
`the evidence shows,
`
` is what practices those accused features. Exh. B [Medvidovic Op.] at
`
`¶ 114 (citing testimony that
`
`
`
`
`
`8
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 12 of 22
`
`
`
`testimony, including testimony that
`
`); ¶ 280 (citing
`
`
`
`); ¶ 238 (citing similar
`
`); ¶ 284 (citing a
`
`
`
`); ¶ 285 (citing a
`
`); ¶291 (citing
`
`); ¶312 (citing
`
`
`
`).
`
`Qualys may respond that Finjan’s contentions describe only an API for
`
`. Motion at
`
`8-9. API stands for “Application Programming Interface” and an API is a way for a programmer
`
`to access certain functionality in a program or system (such as
`
`). Thus, the API for
`
`
`
`cited in Finjan’s contentions was evidence of Finjan’s theory that
`
` used an XML based
`
`structure. Exh. B [Medvidovic Op.] at 265 (
`
`
`
`4.
`
`Finjan Did Not Need to Supplement its Contentions
`
`).
`
`The threshold question is whether Finjan’s contentions put Qualys on notice of Finjan’s
`
`infringement theories. Apple, 2014 WL 173409, at *1. As set forth above, Finjan’s contentions
`
`did that for the “building . . .” and “detecting . . .” limitations, and thus, the inquiry should end
`
`there.
`
`Qualys does not explain how it believes Finjan’s contentions changed directions on these
`
`limitations. That is, Qualys does not state that Finjan’s contentions were directed to an original
`
`theory that it no longer relies upon. Instead, Qualys takes the position that Finjan’s contentions
`
`disclosed “no theory” for these two limitations, and that after Qualys brought this to Finjan’s
`
`attention, Finjan acknowledged that it would supplement. Mot. at 9.
`
`Qualys’s argument is a red herring. Because Finjan properly set forth its theories in its
`
`contentions, a supplement was not necessary. The first time Qualys identified the specific alleged
`
`defects was fifteen months after Finjan served its contentions (and a little over two months before
`
`the close of discovery). By this point in time, the parties had exchanged contention discovery and
`
`participated in claim construction. Nevertheless, in response to Qualys’s letter, Finjan explained
`
`the theories in its contentions and offered to supplement its contentions after Qualys produced
`
`
`
`9
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 13 of 22
`
`
`
`technical documentation that Finjan had requested. Mot. Ex. 7 at 18. Qualys never made a timely
`
`production. And even with respect to the technical documentation that Qualys did subsequently
`
`make available for inspection, Qualys produced much of it in a corrupted form that it refused to
`
`fix. Exh. E [Email thread re obtaining access to corrupted file from source code computer].
`
`C.
`
`Finjan Disclosed its Infringement Theories for Claim 29
`
`Qualys also moves to strike Finjan’s expert report regarding two separate limitations of
`
`claim 29 of the ’408 Patent: (1) the “scanner”, i.e., limitation 29(b); and (2) the “accessor”, i.e.,
`
`limitation 29(c). Because, as explained below, both theories were disclosed in Finjan’s Patent
`
`L.R. disclosures, Qualys’s motion should be denied.
`
`1.
`
`Finjan disclosed that the “scanner” limitation
`
`Qualys’s motion is premised on its misunderstanding or misrepresentation of Finjan’s
`
`infringement contentions. According to Qualys, Finjan’s contentions set forth that limitation
`
`29(b) is limited to a database on the Cloud Platform. But there is no such statement in Finjan’s
`
`contentions, and thus the premise of Qualys’s motion is flawed.
`
`Limitation 29(b) refers to a scanner – either a hardware scanner or software scanner
`
`running on a computer. See ’408 Pat. at cl. 29(b) (“a non‐transitory computer‐readable storage
`
`medium storing computer-executable program code that is executed by a computer to scan
`
`incoming program code”). For this limitation, Finjan’s contentions cross reference limitation 1(d).
`
`See’408 chart (citing cl. 1(d)). Limitation 1(d) also requires a scanner. ’408 Pat. at cl.
`
`1(d)(“instantiating, by the computer, a scanner . . .”).
`
`The cross reference in Finjan’s contentions for limitation 29(b) was to the disclosure of a
`
`scanner in claim 1. That disclosure in Finjan’s contentions for claim 1 refers to scanners
`
`distributed throughout the Qualys Cloud. See Exh. A [’408 Inf chart] at 6 (referring to scanners
`
`generally); id. at 4 (illustrating scanners distributed throughout the Qualys Cloud). One exemplary
`
`disclosure of scanners from Finjan’s contentions is below (with annotations in the original):
`
`
`
`10
`
`
`
`FINJAN OPPOSITION TO MOTION TO STRIKE
`Case No. 4:18-cv-07229-YGR (TSH)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 4:18-cv-07229-YGR Document 164 Filed 02/08/21 Page 14 of 22
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`From this disclosure in Finjan’s Patent L.R. contentions, it is clear the infringement theory
`
`refers to the scanners themselves distributed throughout the network, and thus, Qualys was
`
`sufficiently on notice that the “non‐transitory computer‐readable storage medium storing
`
`c