Case 4:18-cv-07229-YGR Document 175-3 Filed 03/22/21 Page 1 of 6
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`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
`
`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
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`(OAKLAND DIVISION)
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`FINJAN, LLC, a Delaware Limited Liability
`Company,
`
`Case No. 4:18-cv-07229-YGR (TSH)
`
`Plaintiff,
`
`v.
`
`QUALYS INC., a Delaware Corporation,
`
`LETTER TO THE HONORABLE
`YVONNE GONZALEZ ROGERS FROM
`FINJAN LLC REGARDING QUALYS
`INC.’S LETTER REQUESTING A PRE-
`FILING CONFERENCE FOR ITS
`SUMMARY JUDGMENT MOTION
`
`Defendant.
`
`[REDACTED VERSION OF
`DOCUMENT SOUGHT TO BE SEALED]
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`Finjan Letter Reponse re Pre-Filing
`Conference for Summary Judgment Motion
`Case No. 4:18-cv-07229-YGR (TSH)
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`

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`Case 4:18-cv-07229-YGR Document 175-3 Filed 03/22/21 Page 2 of 6
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`
`
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`March 22, 2021
`
`VIA CM/ECF
`
`The Honorable Yvonne Gonzalez Rogers
`United States District Court
`for the Northern District of California
`1301 Clay Street
`Oakland, CA 94612
`
`Re:
`
`Finjan LLC v. Qualys Inc.,
`CAND Case No. 4:18-cv-07229-YGR
`
`Dear Judge Gonzalez Rogers:
`
`Fish & Richardson P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`
`858 678 5070 main
`858 678 5099 fax
`
`
`Jason W. Wolff
`Principal
`wolff@fr.com
`858 678 4719 direct
`
`Plaintiff Finjan LLC (“Finjan”) respectfully submits this letter brief in response to Qualys Inc.’s
`Letter Requesting a Pre-Filing Conference for its Summary Judgment Motion as filed with the
`court on March 17, 2021 (Dkt. 172).
`
`Liability—’408 Patent. The relevant limitations of the ’408 Patent describe how a system scans
`content (such as a website), builds a “parse tree” based on that scan (including, for example, the
`content that has been scanned), and then detects issues in what it has scanned (such as potential
`malware). Qualys asks the Court to resolve factual disputes relating to these limitations.
`
`For the “dynamically building” a parse tree “while said receiving receives the incoming stream”
`limitation, Finjan’s expert (Dr. Medvidovic) analyzed source code, Qualys documentation, and
`deposition testimony to identify a parse tree structure (
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` that is built during a scan.1 E.g., Med. Rep.
`¶¶ 276-283; 296-299. Qualys’s expert disagrees, stating that the data structure is
`
`. Qualys’s expert (Dr. Rubin) cites no evidence to support his
`conclusion, but even if he did, this is a classic dispute of fact—and not appropriate for summary
`judgment. Rubin Tr. 211:2-24 (
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`)
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`Qualys’s argument for the “dynamically detecting” limitation is similarly flawed. Although
`Qualys now says that the accused products do not perform “detection” while “building” a data
`structure from the scan results, the evidence shows otherwise. Med. Rep. ¶ 303 (
`). In fact, Qualys’s documentation states
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`1 Qualys incorrectly states that Finjan did not timely disclose its infringement theory. Finjan
`disclosed all of its infringement theories. See generaly Finjan Opp. re Qualys Mtn to Strike (ECF
`No. 163-3). Undercutting Qualys’s argument is the fact that its own expert analyzed Finjan’s
`contentions and expert report and identified only two places where he contended that Finjan’s
`expert opined on theories not disclosed in Finjan’s contentions—neither of which is at issue for
`this limitation. Rubin Tr. 200:14-205:19 (as an example:
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`Finjan Letter Reponse re Pre-Filing
`Conference for Summary Judgment Motion
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 175-3 Filed 03/22/21 Page 3 of 6
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`
`
`
`The Honorable Yvonne Gonzalez Rogers
`March 22, 2021
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`
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` Med. Rep. ¶ 319 (
` [QUALYS00534616].). On this record, there is at least a
`dispute of material fact and Qualys’s argument and motion is futile.
`
`Finally, Qualys’s last argument for the ’408 Patent appears to be the following: (1) those of skill in
`the art make a categorical distinction between vulnerabilities in code and an “indicator” of a
`“potential exploit”; and (2) Qualys’s products identify the former and not the latter. For one thing,
`even Qualys’s expert disagrees with Qualys’s premise, referring to the two as “intertwined” and
`stating that “[i]n some respects, the only difference between a code quality problem and a
`vulnerability to a malicious virus is the intent of the person who creates or exploits the problem.”
`Decl. of Dr. Rubin, Ex. 1002 to IPR2016-0967 ¶¶ 103-104. Additionally, both sides’ experts cited
`actions that the Qualys products take to identify potential exploits. See Med. Rep. ¶ 237
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`; e.g., Rubin Reb. at 1072 (
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`). Qualys now appears to disagree with these facts,
`but the Court cannot resolve this disagreement at summary judgment.
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`Liability—’844 and ’494 Patents. Qualys ignores ample evidence of “Downloadables” and a
`“destination computer” in the accused product. To the extent Qualys is arguing that what Finjan’s
`expert has identified with respect to each limitation is insufficient, that is squarely a dispute of
`fact. Dr. Cole gives a clear example of a Downloadable:
`
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` Cole Tr. at 67:18-24.
`And Dr. Cole identifies numerous types of files in his report that qualify as Downloadables in the
`Qualys system. See, e.g., Cole Rep. at ¶ 421 (
`), ¶ 433 (
`
`), ¶ 652 (
`), and ¶ 405 (
`). That Qualys’s expert disagrees that these are Downloadables is insufficient for
`summary judgment. Qualys’s argument that
` misses the mark, because there is no requirement in the claims that this occurs:
`
`.” Cole Tr. at 128:9-18.
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`.” Id. at 68:9-18.
`Again, that Qualys’s expert disagrees (see, e.g., Stubblebine Reb. at ¶ 159) is insufficient for
`summary judgment.
`
`Damages—Foreign Sales. The portion of Qualys’ letter regarding overseas sales is a redux of its
`motion to strike (D.I. 158), and the Court should reject it for the reasons in Finjan’s opposition
`brief (D.I. 164). Qualys also fails to recognize that there is, at the least, a material fact question
`about the manner in which Qualys’ domestic infringement—particularly in view of expert
`
`“
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`As to the destination computer, Finjan’s expert opines that it “
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`Finjan Admin Mot to File Under Seal
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 175-3 Filed 03/22/21 Page 4 of 6
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`
`
`The Honorable Yvonne Gonzalez Rogers
`March 22, 2021
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`opinions from Drs. Cole and Medvidovic that domestic infringements which
`
`
` are
`necessary for Qualys’ products to have value anywhere in the world, including overseas. The
`Federal Circuit has held that where domestic infringement is the cause of overseas sales, as it is
`here, it is “irrelevant” that some of the sales are to foreign customers. R.R. Dynamics, Inc. v. A.
`Stucki Co., 727 F.2d 1506, 1519 (Fed. Cir. 1984) (holding that where domestic infringement made
`the overseas sales possible, “[w]hether the [goods] were sold in the U.S. or elsewehere is . . .
`irrelevant, and no error occurred in including [overseas sales]” in the royalty base). Qualys’
`statement that there is “not any factual dispute that all of these predicate domestic acts are
`missing” is incorrect, at least because both Dr. Cole and Dr. Medvidovic expressly identified the
`predicate domestic acts, and showed how they lead to overseas sales. The Court should not permit
`Qualys’ to seek summary judgment where such fact issues exist.
`
`Damages—’844 and ’494 Patents. Qualys’ attack on pre-expiration notice of infringement
`contravenes the record and the law. Finjan wrote to Qualys on November 12, 2015, claiming
`infringement and inviting Qualys to take a license. Finjan wrote, “[W]e believe one or more of
`Finjan’s patents reads on Qualys’ Cloud Platform. We believe[,] however, a licensing arrangement
`can be reached.” (D.I. 1-23) It attached a table identifying which Finjan patents read on which
`Qualys products, which identified Qualys’ “Vulnerability Management” product as infringing both
`the ’844 and ’494 Patents. (Id. at 9.) The Federal Circuit has held this is all § 287 requires. “To
`serve as actual notice, a letter must be sufficiently specific to support an objective understanding
`that the recipient may be an infringer. The letter must communicate a charge of infringement of
`specific patents by a specific product or group of products.” Funai Elec. Co. v. Daewoo Elecs.
`Corp., 616 F.3d 1357, 1373 (Fed. Cir. 2010) (emphasis added). Indeed, the infringement notice in
`Funai—the only controlling authority in Qualys’ letter brief—read simply “We confirmed Your
`[specific products] that was infringed [sic] at least our patents as follows: [list of six U.S. patent
`numbers].” Id. at 1372–73. The law requires no more; Qualys is unable to argue otherwise. See
`also Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994) (actual
`notice requires only “affirmative communication of a specific charge of infringement by a specific
`accused product”); 7 Chisum on Patents § 20.03[7][c][iv] (2020 ed.) (“[T]he notice need not
`contain a detailed statement or an explication of the patent owner’s theory concerning
`infringement.”). Because pre-suit notice for the ’844 and ’494 Patents amply satisfied the
`requirements of § 287, including under the sole controlling authority Qualys cites, the Court
`should not permit Qualys to move for summary judgment.
`
`Willfulness—’731 and ’408 Patents. Qualys errs when it states that there was no pre-suit notice
`to Qualys pertaining to these patents. On September 12, 2018 (i.e., before the complaint) , Finjan
`had a virtual meeting with Qualys to discuss Qualys’ infringement, attended by Qualys General
`Counsel Bruce Posey. At that meeting, Qualys presented a slide deck identifying Qualys’
`infringement of both the ’408 Patent and the ’731 Patent. Because Qualys’ sole basis for seeking
`leave to move for summary judgment is its assertion that it is “undisputed that Finjan provided no
`pre-suit notice letter or other notice to Qualys pertaining to the ’731 and ’408 patents,” Ltr. 3, and
`because that assertion is demonstrably incorrect, the Court should not permit Qualys to move for
`summary judgment on this issue.
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`Finjan Admin Mot to File Under Seal
`Case No. 4:18-cv-07229-YGR (TSH)
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`Case 4:18-cv-07229-YGR Document 175-3 Filed 03/22/21 Page 5 of 6
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`The Honorable Yvonne Gonzalez Rogers
`March 22, 2021
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`Respectfully Submitted,
`
`/s/ Jason W. Wolff
`
`Jason W. Wolff
`
`cc: All Counsel of Record (via email)
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`Case 4:18-cv-07229-YGR Document 175-3 Filed 03/22/21 Page 6 of 6
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`The Honorable Yvonne Gonzalez Rogers
`March 22, 2021
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on March 22, 2021, to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF system. Any other counsel of record will
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`be served by electronic mail and regular mail.
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`
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`/s/ Jason W. Wolff
`Jason W. Wolff
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`CERTIFICATE OF SERVICE
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