Case 4:18-cv-07229-YGR Document 172 Filed 03/17/21 Page 1 of 4
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`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
`
`EDWARD G. POPLAWSKI (SBN 113590)
`epoplawski@wsgr.com
`OLIVIA M. KIM (SBN 228382)
`okim@wsgr.com
`TALIN GORDNIA (SBN 274213)
`tgordnia@wsgr.com
`STEPHANIE CHENG (SBN 319856)
`stephanie.cheng@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.
`
`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 LETTER REQUESTING
`A PRE-FILING CONFERENCE FOR ITS
`SUMMARY JUDGMENT MOTION
`
`Hon. Yvonne Gonzalez Rogers
`Date: March 26, 2021
`Time: 2:00 PM
`Location: Zoom Teleconference1
`
`)))))))))))))
`
`FINJAN LLC
`
`Plaintiff,
`
`v.
`
`QUALYS INC.,
`
`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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`QUALYS’S LETTER RE PRE-FILING CONFERENCE
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`Case 4:18-cv-07229-YGR Document 172 Filed 03/17/21 Page 2 of 4
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`Dear Judge Gonzalez Rogers:
`
`Qualys respectfully submits this letter brief requesting a pre-filing conference regarding
`Qualys’s proposed motion for summary judgment of non-infringement of the asserted patents2 and
`for partial summary judgment of certain damages issues. Please find the following summary of
`Qualys’s proposed motion for summary judgment:
`
`No Infringement of the ’408 Patent3
`
`Qualys requests leave to move for summary judgment of non-infringement of the asserted
`claims of the ’408 Patent on the following three grounds, any one of which would dispose of the
`’408 Patent:
`
`1. There is no genuine factual dispute that Qualys products do not perform the
`limitation “dynamically building, while said receiving receives the incoming stream…”.
`Each asserted claim of the ’408 Patent requires that a “computer” receive “an incoming stream of
`program code” and that the computer performs the step of “dynamically building, while said
`receiving receives the incoming stream…” There is no dispute that Qualys’s scanners do not
`“dynamically build” while receiving the incoming stream. Facing an untenable infringement
`theory, Finjan’s expert witness submitted a report with an entirely new theory. Namely, that the
`claimed “computer” was actually portions of distinct Qualys scanners as well as portions of
`Qualys’s server architecture. Even if Finjan is permitted to advance a theory of infringement never
`disclosed in its contentions, summary judgment is still warranted because the claim language is
`not satisfied by one device dynamically building after receiving a first stream while a totally
`different device coincidentally receives a different stream that is unrelated to the first stream.4 The
`claims require dynamically building from the same incoming stream of program code as stated in
`the “receiving” step.
`
`2. There is no genuine factual dispute that Qualys products do not perform
`“dynamically building” while “dynamically detecting.” Each asserted claim requires that the
`“dynamic detecting” step must occur while the “dynamically building” step occurs. Further,
`because the dynamic detection involves identifying combinations of nodes in a parse tree, this step
`must also necessarily occur after the parse tree has started being built. It is undisputed, however,
`that the accused products perform the alleged “detection” and “building” steps in reverse: they
`first analyze a set of data and then build an alleged parse tree based on that analysis. And there is
`no evidence that these steps overlap or that any detection occurs on a parse tree.
`
`2 The remaining “asserted patents” in this case include U.S. Patent Nos. 6,154,844 (“the ’844
`Patent”); 7,418,731 (“the ’731 Patent”); 8,225,408 (“the ’408 Patent”); and 8,677,494 (“the ’494
`Patent”).
`3 Qualys’s pending Motions to Strike (D.I. Nos. 126 and 158) each pertain to the patents and/or
`claim limitations discussed below. Should the Court grant one or both motions in whole or in part,
`it would likely reduce the number of issues for the Court to address in Qualys’s proposed summary
`judgment motion. Qualys submits it may reduce the overall burden on the Court and the parties if
`its summary judgment motion were due after the Court resolves these two pending motions.
`4 To the extent the Court permits this theory to proceed, Qualys requests supplemental claim
`construction on the terms “the incoming stream” and “the computer,” as the dispute over these
`terms was not disclosed to Qualys prior to expert reports.
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`QUALYS’S LETTER RE PRE-FILING CONFERENCE
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`CASE NO. 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 172 Filed 03/17/21 Page 3 of 4
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`3. There is no genuine factual dispute that Qualys products do not indicate “the
`presence of potential exploits within the incoming stream.” Finjan cannot show that the
`accused products indicate potential exploits, as required by the asserted claims. At most, Finjan’s
`experts have opined that Qualys performs signature-based pattern matching of known
`vulnerabilities. But Finjan successfully argued to the U.S. Patent & Trademark Office that
`signature-based pattern matching is outside the scope of the ’408 Patent and otherwise lacks the
`ability to indicate potential exploits. Finjan also failed to show that this pattern matching involves
`identifying potentially malicious code within the incoming stream itself, as the claims require.
`
`No Infringement of the ’844 and ’494 Patents
`
`Qualys requests leave to file a motion for summary judgment of non-infringement of the
`’844 Patent and ’494 Patent because there is no evidence that Qualys received “Downloadables,”
`which was construed as “an executable application program, which is downloaded from a source
`computer and run on the destination computer.” Executable applications are neither downloaded
`nor run on Qualys scanners. Nor has Finjan shown evidence of a “destination computer.”
`
`No Damages for Qualys’s Foreign Sales
`
`Qualys seeks leave to file a motion for summary judgment of no damages on Qualys’s
`foreign sales. Foreign sales revenues are excluded from royalty damages absent a predicate act of
`domestic infringement for each unit sale. See Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd.,
`807 F.3d 1283, 1306 (Fed. Cir. 2015). Finjan alleges direct and inducing infringement under 35
`U.S.C. §§ 271(a) and (b). This requires a predicate act of domestic infringement; namely “making
`or using or selling in the United States or importing into the United States.” Id. (emphasis in
`original). There is not any factual dispute that all of these predicate domestic acts are missing for
`the Qualys products reflected in the foreign sales revenues. The Court previously held these
`products are not “made” in the U.S. because they are assembled outside the U.S., and writing or
`compiling software in the U.S. does not alone show an act of “making” the patented invention.
`D.I. Nos. 105, 152. Finjan’s infringement contentions do not allege any other infringing act and
`Finjan’s only argument—that foreign customers benefit from security updates Qualys develops
`from information gained by domestic uses of the accused products—is incorrect as a matter of law.
`See, e.g., Carnegie Mellon Univ., 807 F.3d at 1307 (emphasizing the need to rigorously require
`the aforementioned predicate acts “given the ease of finding cross-border causal connections.”).
`Finally, Finjan does not have foreign sales evidence for its royalty calculations because it failed to
`collect this information during discovery. D.I. Nos. 105, 152 (denying motion to compel foreign
`sales).
`
`No Damages for the ’844 and ’494 Patents
`
`Qualys seeks leave to file a motion for summary judgment of no damages for the ’844 and
`’494 Patents. Because Finjan’s licensees failed to mark practicing products with the ’844 and ’494
`patents, Finjan was required to provide Qualys with actual notice of infringement. See 35 U.S.C.
`§ 287(a); Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1373 (Fed. Cir. 2010) (“To
`serve as actual notice, a letter must be sufficiently specific to support an objective understanding
`that the recipient may be an infringer.”). Finjan’s alleged notice to Qualys in November 2015 was
`not sufficiently specific as it merely noted that Qualys may have “exposure” to unidentified claims
`in a laundry list of patents. The ’844 and ’494 patents then expired in January 2017. Finjan did
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`CASE NO. 4:18-cv-07229-YGR
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`QUALYS’S LETTER RE PRE-FILING CONFERENCE
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`Case 4:18-cv-07229-YGR Document 172 Filed 03/17/21 Page 4 of 4
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`not file this action until November 2018. Finjan’s insufficient notice, therefore, precludes recovery
`of any damages for alleged infringement. Chrimar Systems Inc. v. Ruckus Wireless, Inc., C 6-
`00186 SI, 2020 WL 4431787, at *6 (N.D. Cal. July 31, 2020) (granting summary judgment based
`on insufficient notice).
`
`No Willful Infringement for the ’731 and ’408 Patents
`
`Qualys requests leave to file a motion for summary judgment of no willful infringement
`for the ’731 and ’408 Patents. Willful infringement requires pre-suit knowledge of the asserted
`patents. See, e.g., Finjan, Inc. v. Juniper Networks, Inc., No. C 17-05659 WHA, 2018 WL 905909,
`at *3 (N.D. Cal. Feb. 14, 2018) (dismissing Finjan’s willful infringement claim for failing to allege
`that defendant “had pre-suit knowledge of the patents-in-suit”). Here, however, it is undisputed
`that Finjan provided no pre-suit letter or other notice to Qualys pertaining to the ’731 or ’408
`patents. Nor has Finjan adduced any other evidence that Qualys knew of the ’731 or ’408 patents
`before this lawsuit.
`
`Respectfully submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`
`Dated: March 17, 2021
`
`By:
`
`/s/ Ryan R. Smith
`Ryan R. Smith
`
`Counsel for
`QUALYS INC.
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`CASE NO. 4:18-cv-07229-YGR
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`QUALYS’S LETTER RE PRE-FILING CONFERENCE
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