Case 4:18-cv-07229-YGR Document 173 Filed 03/17/21 Page 1 of 3
`
`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
`
`Attorneys for Plaintiff
`FINJAN, LLC
`
`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
`
`Aamir A. Kazi (pro hac vice)
`kazi@fr.com
`Lawrence R. Jarvis (pro hac vice)
`jarvis@fr.com
`Fish and Richardson P.C.
`1180 Peachtree Street Ne 21st Floor
`Atlanta, GA 30309
`Phone: (404) 879-7238/ Fax: 404-892-5002
`
`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.
`
`FINJAN, LLC’S LETTER BRIEF
`REQUESTING PRE-FILING
`CONFERENCE FOR PROPOSED
`MOTION FOR SUMMARY JUDGMENT
`
`DATE:
`TIME:
`PLACE:
`
`March 26, 2021
`2:00 pm
`Courtroom 1, 4th Floor
`
` The Hon. Yvonne Gonzalez Rogers
`
`CASE NO. 4:18-CV-07229-YGR (TSH)
`
`FINJAN’S LETTER RE
`PRE-FILING CONFERENCE
`
`

`

`Case 4:18-cv-07229-YGR Document 173 Filed 03/17/21 Page 2 of 3
`
`
`
`
`
`
`Your Honor:
`
`
`Pursuant to the Court’s Standing Order for Civil Cases, Plaintiff Finjan, LLC submits this
`letter brief requesting a pre-filing conference on March 26, 2021 at 2:00 pm or another date and
`time convenient for the Court.1 Finjan seeks leave to file a motion for summary judgment
`
`regarding the prior art status of four references relied upon by defendant Qualys Inc. for
`invalidity. The grounds for this motion are described below.
`
`Four patents remain in the case: U.S. Patent Nos. 6,154,844 (’844 Patent, priority date
`Nov. 8, 1996), 7,418,731 (’731 Patent, priority date Nov. 8, 1996), 8,677,494 (’494 Patent,
`priority date Nov. 8, 1996) and 8,225,408 (’408 Patent, priority date Aug. 30, 2004). Qualys
`contends these four patents are invalid on various grounds. For the ’844, ’731 and ’494 Patents,
`Qualys contends the following prior art references render the claims invalid:
`
` 
`
` “DSAVT,” purporting to be a user manual for a version of Dr. Solomon’s Anti-Virus
`Toolkit for Windows and DOS. DSAVT is used against the ’494 and ’731 Patents.
` “Mounji,” purporting to be a technical report titled Preliminary report on Distributed
`ASAX. Mounji is used against the ’494 Patent.
` “Thomson,” purporting to be a publication of a research paper, is used against the
`’731 Patent.
` “SurfinGate Fax,” a document alleged to be a fax describing Finjan technology. The
`SurfinGate Fax is used against the ’844 and ’731 Patents.
`
`
`Whether a reference qualifies as a “printed publication” under 35 U.S.C. § 102 and is
`thus prior art is “a legal conclusion based on underlying factual determinations.” The key for
`determining whether a reference constitutes a printed publication is whether the reference was
`“publicly accessible” “prior to the date of the application for patent.” CNET Networks, Inc. v.
`Etilize, Inc., 584 F. Supp. 2nd 1260, 1273 (N.D. Cal. Oct. 22, 2008), 35 U.S.C. § 102(b); see also
`SRI Int’l v. Internet Sec. Sys., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
`
`Qualys took no discovery to establish the above four references are what Qualys purports
`them to be and whether they were publicly accessible on the dates required for the references to
`qualify as prior art. The authors were not deposed. The publishers were not deposed. The
`custodians from whom the references or any related evidence were obtained were not deposed.
`Instead, for three of the four references Qualys offers an opinion declaration of its expert.
`
`The issue with Qualys’s opinion testimony is that it does not establish any of the
`references are what they purport to be or were publicly accessible “prior to date of the
`application for patent.” Qualys’s expert, Dr. Sylvia Hall-Ellis, has no personal knowledge of the
`references and all of the uncorroborated non-party sources she relies upon for her opinions did
`not exist before the priority date for each patent. As for the fourth reference—the so-called
`SurfinGate Fax—Dr. Hall-Ellis does not touch it and Qualys offers no evidence to establish it
`qualifies as prior art.
`
`
`1 The pre-filing conference was set for March 26, 2021, though no time is specified. Doc. 160.
`The Court’s Standing Order suggests the time is 2:00 pm. Id. at 9.a.
`
`CASE NO. 4:18-CV-07229-YGR (TSH)
`
`
`
`
`
`FINJAN’S LETTER RE
`PRE-FILING CONFERENCE
`
`2
`
`

`

`Case 4:18-cv-07229-YGR Document 173 Filed 03/17/21 Page 3 of 3
`
`
`
`
`Finjan contends that Qualys cannot meet its burden to establish that each of these four
`references qualify as prior art and respectfully requests leave to move for summary judgment
`accordingly. The proposed motion will focus on public accessibility issues and will not focus on
`the substance of the references vis-à-vis the claim limitations.
`
`
`
`March 17, 2021
`
`
`
`
`
`
`
`Respectfully submitted,
`
`FISH & RICHARDSON P.C.
`
`/s/ Jason W. Wolff
`Jason W. Wolff
`
`Attorneys for Plaintiff
`Finjan, LLC
`
`
`
`
`
`CASE NO. 4:18-CV-07229-YGR (TSH)
`
`
`
`
`
`FINJAN’S LETTER RE
`PRE-FILING CONFERENCE
`
`3
`
`