Case 4:18-cv-07229-YGR Document 192 Filed 04/19/21 Page 1 of 17
`
`Philip W. Goter (pro hac vice)
`goter@fr.com
`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
`
`
`
`
`
`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
`
`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
`
`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.
`
`FINJAN LLC’S MOTION FOR
`SUMMARY JUDGMENT THAT
`CERTAIN REFERENCES ARE NOT
`ADMISSIBLE AS PRIOR ART
`
`
`
`July 6, 2021
`DATE:
`2:00 P.M.
`TIME:
`JUDGE: Hon. Yvonne Gonzalez Rogers
`Courtroom 1, 4th Floor
`PLACE:
`
`
`
`
`
`
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 2 of 17
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ................................................................................................................. 1
`
`II. STATEMENT OF ISSUES ................................................................................................... 1
`
`III.
`
`LEGAL STANDARDS ...................................................................................................... 1
`
`IV.
`
`FACTUAL BACKGROUND ............................................................................................ 3
`
`A. Dr. Solomon’s Anti-Virus Toolkit for Windows and DOS (DSAVT) Manual .................... 4
`
`B. Mounji and Thomson ......................................................................................................... 6
`
`V. ARGUMENT ........................................................................................................................ 8
`
`A. Qualys cannot show DSAVT is admissible prior art. .......................................................... 8
`
`B. Qualys cannot show Mounji and Thomson are admissible prior art. ................................... 9
`
`VI. CONCLUSION ................................................................................................................10
`
`
`
`
`
`
`
`i
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 3 of 17
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ............................................................................................. 2
`
`Celotext Corp. v. Catrett,
`477 U.S. 317 (1986) ......................................................................................... 1, 2
`
`CNET Networks, Inc. v. Etilize, Inc.,
`584 F. Supp. 2d 1260 (N.D. Cal. 2008) ................................................................ 9
`
`CNET Networks, Inc. v. Etilize, Inc.,
`584 F. Supp. 2nd 1260 (N.D. Cal. Oct. 22, 2008)................................................. 2
`
`Heishman v. Ayers,
`621 F.3d 1030 (9th Cir. 2010) .............................................................................. 3
`
`House v. Bell,
`547 U.S. 518 (2006) ............................................................................................. 2
`
`Matsushita Elec. Indus. Co., Ltd., v. Zenith Radio Corp.,
`475 U.S. 574 (1986) ............................................................................................. 2
`
`Microsoft Corp. v. I4I Limited Partnership et al.,
`564 U.S. 91 (2011) ............................................................................................... 2
`
`Nobel Biocare Servs. AG v. Instradent USA, Inc.,
`903 F.3d 1365 (Fed. Cir. 2018) ...................................................................... 9, 10
`
`Silver State Intell. Techs., Inc. v. Garmin Int’l, Inc.,
`32 F. Supp. 3d 1155 (D. Nev. 2014) .................................................................... 3
`
`SRI Int’l v. Internet Sec. Sys.,
`511 F.3d 1186 (Fed. Cir. 2008) ........................................................................ 3, 8
`
`TypeRight Keyboard Corp. v. Microsoft Corp.,
`374 F.3d 1151 (Fed. Cir. 2004) ............................................................................ 8
`
`Wi-LAN Inc. v. Sharp Elecs. Corp.,
`No. 2020-1041, 2021 WL 1257074 (Fed. Cir. Apr. 6, 2021) ................................ 3
`
`
`
`ii
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 4 of 17
`
`
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................ 2, 3, 9
`
`35 U.S.C. § 282 ........................................................................................................ 2
`
`Other Authorities
`
`Fed. R. Civ. P. 56(a) ............................................................................................. 1, 2
`
`Fed. R. Evid. 104 ...................................................................................................... 3
`
`Fed. R. Evid. 703 ...................................................................................................... 3
`
`Fed. R. Evid. 801, 803 and 902 ................................................................................. 3
`
`Fed. R. Evid. 803(6)(D) ............................................................................................ 3
`
`
`
`
`
`iii
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 5 of 17
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`NOTICE OF MOTION AND MOTION
`
`PLEASE TAKE NOTICE that on July 6, 2021, at 2:00 P.M., or at another such date as
`
`determined by Judge Gonzalez Rogers of the United States District Court for the Northern District
`
`of California, the Court will hear this motion via Zoom video conference and/or in Courtroom 1, 4th
`
`Floor, 1301 Clay Street, Oakland, California. Finjan LLC respectfully requests the Court find that
`
`Qualys Inc. has not satisfied its burden to establish that certain references, relied upon by Qualys
`
`Inc. to support its invalidity allegations against U.S. Patent Nos. 7,418,731 (’731 Patent), and
`
`8,677,494 (’494 Patent), are admissible as prior art.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`
`10
`
`I.
`
`INTRODUCTION
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`Plaintiff Finjan LLC (“Finjan”) moves for summary judgment concerning the admissibility
`
`and public accessibility of three references Defendant Qualys Inc. (“Qualys”) asserts as prior art
`
`against the ’731 and ’494 Patents. Qualys failed to present sufficient evidence to establish these
`
`references qualify as prior art. First, Qualys made no effort to pursue discovery from the authors,
`
`custodians or publishers of three of the references and thus Qualys relies solely on the opinion
`
`testimony of its expert, Dr. Hall-Ellis, to establish the authenticity and dates of public accessibility.
`
`Second, the evidence used by Dr. Hall-Ellis cannot support her conclusions—it either does not
`
`match the references or does not establish public accessibility. Because Qualys bears the burden of
`
`proof to establish both the admissibility and the prior art status of the references and has failed to
`
`do carry its burden, Finjan seeks summary judgment that the specific references at issue are not
`
`admissible and do not qualify as prior art.
`
`22
`
`II.
`
`STATEMENT OF ISSUES
`
`Whether Finjan is entitled to summary judgment that certain references relied upon by
`
`Qualys for invalidity are admissible and qualify as prior art.
`
`III. LEGAL STANDARDS
`
`Summary judgment is appropriate if, viewing the evidence and drawing all reasonable
`
`inferences in the light most favorable to the nonmoving party, there are no genuine issues of material
`
`fact, and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); Celotext Corp.
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`1
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`Case No. 4:18-cv-07229-YGR (TSH)
`
`

`

`Case 4:18-cv-07229-YGR Document 192 Filed 04/19/21 Page 6 of 17
`
`
`
`v. Catrett, 477 U.S. 317, 322-23 (1986). At the summary judgment stage, the Court “does not assess
`
`the credibility or weigh the evidence, but simply determines whether there is a genuine issue of fact
`
`for trial.” House v. Bell, 547 U.S. 518, 559-60 (2006). A fact is material if it “might alter the
`
`outcome of the suit under the governing law,” and a dispute as to a material fact is genuine if there
`
`is sufficient evidence for a reasonable trier of fact to decide in favor of the nonmoving party.
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “If the evidence is merely colorable, or
`
`is not significantly probative, summary judgment may be granted.” Id. at 249-50 (internal citations
`
`omitted).
`
`The moving party bears the initial burden of identifying those portions of the pleadings,
`
`discovery, and affidavits that demonstrate the absence of a genuine issue of material fact. Celotext,
`
`477 U.S. at 323. Once the moving party meets its burden, the nonmoving party must set forth, by
`
`affidavit or as otherwise provided in Rule 56, “specific facts showing that there is a genuine issue
`
`for trial.” Anderson, 477 U.S. at 250 (internal quotations omitted). To defeat a motion for summary
`
`judgment, the nonmoving party must “do more than simply show that there is some metaphysical
`
`doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd., v. Zenith Radio Corp., 475 U.S.
`
`574, 586 (1986). The “mere existence of some alleged factual dispute between the parties will not
`
`defeat an otherwise properly supported motion for summary judgment;” a factual dispute is genuine
`
`only where “the evidence is such that a reasonable jury could return a verdict for the nonmoving
`
`party.” Anderson, 477 U.S. at 247-248. The “mere existence of a scintilla of evidence” in support
`
`of the nonmoving party’s position is insufficient to defeat a motion for summary judgment: the must
`
`be “evidence on which the jury could reasonably find” for the nonmoving party. Id. at 252.
`
`A patent is presumed to be valid, and the burden of establishing invalidity of a patent rests
`
`on the party asserting invalidity, which must establish invalidity by clear and convincing evidence.
`
`35 U.S.C. § 282; Microsoft Corp. v. I4I Limited Partnership et al., 564 U.S. 91, 95 (2011). Whether
`
`a reference qualifies as prior art as a “printed publication” under 35 U.S.C. § 102 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 for patent.” CNET Networks, Inc. v. Etilize, Inc., 584 F. Supp. 2nd 1260, 1273 (N.D.
`
`
`
`2
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 7 of 17
`
`
`
`Cal. Oct. 22, 2008), 35 U.S.C. § 102(b); SRI Int’l v. Internet Sec. Sys., 511 F.3d 1186, 1194 (Fed.
`
`Cir. 2008). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such
`
`document has been disseminated or otherwise made available to the extent that persons interested
`
`and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id.
`
`at 1194 (citing Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).
`
`For a document to be admitted at trial, it must be admissible evidence. Fed. R. Evid. 104.
`
`Prior art documents are hearsay, unless they fall into some hearsay exception or they are otherwise
`
`self-authenticating. See Fed. R. Evid. 801, 803 and 902; see also Silver State Intell. Techs., Inc. v.
`
`Garmin Int’l, Inc., 32 F. Supp. 3d 1155, 1171 (D. Nev. 2014) (finding that a press release alleged to
`
`be prior art was “unauthenticated hearsay, which cannot support a summary judgment motion.”)
`
`(citing Orr v. Bank of Am., NT & SA, 285 F.3d 764, 773, 776 (9th Cir. 2002)).
`
`While a testifying expert may be considered a “qualified witness,” to establish certain
`
`information about a document, the expert cannot be a vehicle with which to publish hearsay. Fed.
`
`R. Evid. 803(6)(D); Wi-LAN Inc. v. Sharp Elecs. Corp., No. 2020-1041, 2021 WL 1257074, at *7
`
`(Fed. Cir. Apr. 6, 2021) (finding Fed. R. Evid. 703 does not permit a party to use “its expert as a
`
`substitute for a fact witness to circumvent the rules of evidence to admit otherwise inadmissible
`
`evidence.”); see also Heishman v. Ayers, 621 F.3d 1030, 1042–43 (9th Cir. 2010) (finding Fed. R.
`
`Evid. 703 “does not convert the underlying inadmissible hearsay into admissible testimony–it only
`
`makes the opinion admissible.”).
`
`IV.
`
`FACTUAL BACKGROUND
`
`Four patents remain at issue in this case: U.S. Patent Nos. 6,154,844 (’844 Patent), 7,418,731
`
`(’731 Patent), 8,677,494 (’494 Patent), and 8,225,408 (’408 Patent). To establish whether the three
`
`references at issue in this motion are prior art, Qualys took no discovery on the authors, custodians
`
`or publishers of the three references. See FSS Supporting Motion for Summary Judgment (“FSS”)
`
`at Facts 1, 4, 7; see also Exh.1 1 (Hall-Ellis Dep. Tr.) at 72:14-18. Instead, Qualys offers the opinion
`
`testimony of Dr. Sylvia Hall-Ellis to establish the authenticity and public availability of the
`
`following references it contends are prior art to three of the Asserted Patents:
`
`
`1 “Exh.” citations are to the Declaration of Jason W. Wolff filed in support herewith.
`
`
`
`3
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 8 of 17
`
`
`
` “DSAVT,” purported to be a user manual for a version of Dr. Solomon’s Anti-Virus
`
`Toolkit for Windows and DOS, and used against the ’494 and ’731 Patents;
`
` “Mounji,” purported to be a technical report titled Preliminary report on
`
`Distributed ASAX, and used against the ’494 Patent; and
`
` “Thomson,” purported to be a publication of a research paper and used against the
`
`’731 Patent.
`
`Qualys disputes the priority dates Finjan asserts for the ’494 and ’731 Patents and says the
`
`priority date is November 6, 1997 for both patents. In analyzing the references for this motion, the
`
`Court may assume the priority dates alleged by Qualys.
`
`Dr. Hall-Ellis admits that her opinions are not based on personal knowledge that any of the
`
`references are authentic or were in fact published before these dates. See, e.g., FSS at Facts 1, 4, 7;
`
`see also Exh. 1 (Hall-Ellis Dep. Tr.) at 56:4-57:1, 60:16-17, 61:5-18, 63:24-25, 65:20-23, 67:6-9,
`
`and 73:10-19. Instead, Dr. Hall-Ellis uses so-called “content analysis” to determine the alleged
`
`dates of public dissemination. Exh. 1 (Hall-Ellis Dep. Tr.) at 14:7-15:9. According to Dr. Hall-
`
`Ellis, content analysis is the act of examining the contents of a document, or the documents surrogate
`
`records such as its corresponding library catalog record, to determine the date it was disseminated.
`
`Exh. 1 (Hall-Ellis Dep. Tr.) at 14:19-15:21.
`
`First, Dr. Hall-Ellis admits her opinion regarding the public availability of DSAVT is based
`
`on a library catalog record for a different reference. FSS at Fact 2; see, e.g., Exh. 1 (Hall-Ellis Dep.
`
`Tr.) at 51:15-19. And second, to prove Mounji and Thomson were publicly accessible before
`
`November 6, 1997, Qualys offered no evidence that the references were indexed and published by
`
`the dates it alleges. Instead, Dr. Hall-Ellis relies on her ability to find these references on websites
`
`that did not exist until after the public accessibility date she ascribes to the references. FSS at Facts
`
`5, 6, 8, 9; see also e.g., Exh. 1 (Hall-Ellis Dep. Tr.) at 64:25-65:12, 76:16-18, 77:25-78:2.
`
`A.
`
`Dr. Solomon’s Anti-Virus Toolkit for Windows and DOS (DSAVT) Manual
`
`Qualys asserts that DSAVT is prior art to the ’494 and ’731 Patents. Qualys specifically
`
`relies on a document that is purportedly a third edition manual describing Version 7.5 of
`
`Dr. Solomon’s Anti-Virus Toolkit for Windows and DOS. See e.g., Exh. 2 (QUALYS00002805)
`
`
`
`4
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 9 of 17
`
`
`
`at. 2807. Qualys offers no testimony from the authors, custodians or publishers of the DSAVT
`
`reference to establish its authenticity or date. Instead, it offers opinion testimony from Dr. Hall-
`
`Ellis, who opines the DSAVT reference is an authentic document that was publicly accessible no
`
`later than April 3, 1996 based on a library machine-readable cataloging (“MARC”) record, which
`
`bears a title similar to the DSAVT reference. Exh. 3 (Hall-Ellis Exp. Rep.) at ¶¶ 59-60, Attachment
`
`2a; see also Exh. 1 (Hall-Ellis Dep. Tr.) at 40:11-18, and 41:12-22.
`
`The relied-upon MARC record, which is the sole alleged corroborating basis of Dr. Hall
`
`Ellis’ opinion regarding the DSAVT reference, is admittedly “rather scant” and incomplete
`
`according to Qualys’s expert. Exh. 1 (Hall-Ellis Dep. Tr.) at 44:11-14. More importantly, there is
`
`no dispute that the MARC record is for a different manual. Exh. 1 (Hall-Ellis Dep. Tr.) at 50:5-9;
`
`51:15-19. First, according to Dr. Hall-Ellis, “[e]ditions are noted [in the MARC record] if they
`
`appear on the resource itself.” Exh. 1 (Hall-Ellis Dep. Tr.) at 44:21-45:3. Here, Dr. Hall-Ellis relies
`
`on a MARC record that includes no version or edition information, while Qualys relies on a version
`
`of DSAVT that includes edition information on the resource. Exh. 3 (Hall-Ellis Exp. Rep.) at
`
`Attachment 2a; see also Exh. 2 (QUALYS00002805) at 2807. Furthermore, the MARC record
`
`indicates that the corresponding reference has a 20 page preface and 222 pages of text, and the cover
`
`of the book bears the words “Complete Virus Protection: Prevention, Detection, and Repair.” Exh.
`
`3 (Hall-Ellis Exp. Rep.) at Attachment 2a; see also Exh. 1 (Hall-Ellis Dep. Tr.) at 36:3-16, 47:13-
`
`24. However, the DSAVT reference itself, which the MARC recorded is supposed to match, has a
`
`32-page preface, 208 pages of text, and nowhere mentions the words “Complete Virus Protection”
`
`on its cover. Exh. 2 (QUALYS00002807); see also Exh. 1 (Hall-Ellis Dep. Tr.) at 43:13-15, 47:25-
`
`48:5, 48:9-49:4.
`
`Moreover, Dr. Hall-Ellis admits the MARC record she relies on is for a different version of
`
`DSAVT, she had never seen or inspected the contents of the book that actually corresponds to the
`
`MARC record, and she did not know whether the versions are substantively similar. Exh. 1 (Hall-
`
`Ellis Dep. Tr.) at 50:5-16, 51:15-19. In sum, Dr. Hall-Ellis received a scanned version of DSAVT
`
`from Qualys’ counsel and made no effort to independently obtain a version of the book that
`
`accurately matches the MARC record or vice-versa. Exh. 1 (Hall-Ellis Dep. Tr.) at 40:20-41:7.
`
`
`
`5
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 10 of 17
`
`
`
`B. Mounji and Thomson
`
`Qualys asserts that Mounji is prior art to the ’494 Patent and Thomson is prior art to the ’731
`
`Patent. According to Qualys, the prior date for the ’494 and ’731 Patents is November 6, 1997.
`
`Qualys provides no declaration or testimony from the authors, custodians or publishers of Mounji
`
`or Thomson to establish their authenticity or dates of publication. See FSS at Facts 4 and 7. Rather,
`
`Qualys again relies upon Dr. Hall-Ellis, who admits she has no personal knowledge of these matters.
`
`For the Mounji reference, Dr. Hall-Ellis offers her opinions about authenticity and the date
`
`of public availability based upon the document itself and where she claims to have located Mounji.
`
`Exh. 3 (Hall-Ellis Exp. Rep.) at ¶¶ 104-05. Dr. Hall-Ellis admits to having no knowledge of where
`
`the Mounji reference was originally submitted, when or where it was first published, or when or
`
`where it was publicly accessible before November 6, 1997. Exh. 1 (Hall-Ellis Dep. Tr.) at 56:4-
`
`57:1, 60:16-17, 61:5-18.
`
`Nevertheless, Dr. Hall-Ellis opines that Mounji was publicly accessible no later than May
`
`27, 1994 because this date is found on the document itself. Exh. 4 (QUALSYS00024282); Exh. 1
`
`(Hall-Ellis Dep. Tr.) at 55:8-18, 56:4-57:1. However, the cover of the document provides no
`
`indication that this is a publication date, it provides no indication of where it was published or to
`
`whom it might have been provided. Id. Inasmuch, Dr. Hall Ellis admits she has “no idea” if or
`
`where the document was published on May 27, 1994, and she could only offer her personal opinion
`
`of what the date means. Exh. 1 (Hall-Ellis Dep. Tr.) at 55:8-18, 57:10-12, 60:16-61:18.
`
`As for any corroborating evidence of a publication by before November 6, 1997, there is
`
`none. Dr. Hall Ellis claims to have downloaded Mounji from the CiteSeerX and ResearchGate
`
`websites. Exh. 3 (Hall-Ellis Exp. Rep.) at ¶¶ 104-05. However, Qualys offers no evidence that the
`
`reference was published on these websites on May 27, 1994, much less that it was otherwise indexed
`
`and discoverable (and where) by May 27, 1994. In particular, CiteSeerX and ResearchGate are
`
`digital repositories and information exchange sites that do not implement or rely on traditional
`
`library cataloging procedures. Exh. 1 (Hall-Ellis Dep. Tr.) at 14:5-7, 17:17-25, 18:9-10, 60:16-17,
`
`61:5-18. Dr. Hall-Ellis instead assumed Mounji has been available on CiteSeerX for 25 years merely
`
`because it is available on the website now and there is no reason “why [the authors would not have]
`
`
`
`6
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 11 of 17
`
`
`
`put it there” before. Exh. 1 (Hall-Ellis Dep. Tr.) at 58:1-20. Dr. Hall-Ellis’ opinion ignores the fact
`
`that CiteSeerX and ResearchGate did not exist in 1994 and that Qualys offers no evidence to the
`
`contrary. Exh. 5 (Hall-Ellis Dep. – Ex. 8), Exh. 6 (Hall-Ellis Dep. – Ex. 9).
`
`Similarly, for the Thomson reference, Dr. Hall-Ellis offers her opinions about authenticity
`
`and the date of public availability based on websites where she recently located the reference.
`
`Dr. Hall Ellis’ downloaded Thomson from the ResearchGate and Semantic Scholar websites, and
`
`she asserts the reference was publicly accessible no later than May 31, 1997 or “shortly thereafter.”
`
`Exh. 3 (Hall-Ellis Exp. Rep.) at ¶¶ 116-17. Again, Qualys offers no evidence that the reference was
`
`published on these websites or that these websites were indexed and discoverable by persons of
`
`ordinary skill in the art by May 31, 1997.
`
`First, with regard to the Semantic Scholar website, Dr. Hall-Ellis admits it was released in
`
`November 2015—nearly 20 years after the alleged publication. Exh. 3 (Hall-Ellis Exp. Rep.) at ¶
`
`23; see also Exh. 1 (Hall-Ellis Dep. Tr.) at 27:1-7. Thus, once again, the source Dr. Hall-Ellis relies
`
`upon did not exist until after the prior art date alleged, in this case November 6, 1997. Id.
`
`Second, as to the ResearchGate website, Dr. Hall-Ellis alleges Thomson was publicly
`
`accessible by at least May 31, 1997 because this date is located on the ResearchGate opening page
`
`for the reference. Exh. 1 (Hall-Ellis Dep. Tr.) at 64:25-65:12. Dr. Hall-Ellis offers this opinion
`
`despite testifying she does not know how to determine when an article from ResearchGate was
`
`publicly accessible. Exh. 1 (Hall-Ellis Dep. Tr.) at 24:5-13. The existing opening page at the
`
`hyperlink cited in her report provides no publication date or information. Exh. 3 (Hall-Ellis Exp.
`
`Rep.) at n. 21. More importantly, neither the first page of Thomson itself, much less the remainder
`
`of the reference, bear a May 1997 date. Exh. 7 (QUALYSS00112670).
`
`Lastly, Dr. Hall-Ellis also admits to having no personal knowledge of when or where
`
`Thomson was published, or when and how ResearchGate or Semantic Scholar acquired Thomson.
`
`Exh. 1 (Hall-Ellis Dep. Tr.) at 63:24-25, 65:20-23, 67:6-9, 73:10-19.
`
`
`
`7
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 12 of 17
`
`
`
`V.
`
`ARGUMENT
`
`Qualys cannot show that three references upon which it relies, namely DSAVT, Mounji and
`
`Thomson, are admissible evidence and qualify as prior art to patents they to the ’494 and ’731
`
`Patents.
`
`A.
`
`Qualys cannot show DSAVT is admissible prior art.
`
`Qualys cannot show that DSAVT is admissible evidence that was publicly accessible. In
`
`order to establish DSAVT is authentic and is what it purports to be, Qualys needs a witness with
`
`personal knowledge or an otherwise qualified witness to establish these facts. It has neither. Qualys
`
`relies solely on the uncorroborated testimony of its expert, Dr. Hall-Ellis, who has no personal
`
`knowledge of the DSAVT reference to establish its authenticity or date. See FSS at Fact 1. Dr. Hall-
`
`Ellis, asserting it is authentic, without more, is insufficient. See TypeRight Keyboard Corp. v.
`
`Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004) (“[C]orroboration is required of any witness
`
`whose testimony alone is asserted to invalidate a patent.” (citation omitted)).
`
`Further, even if Qualys could establish the authenticity of the DSAVT reference, it offers no
`
`evidence DSAVT was publicly accessible. In order to establish the reference was publicly
`
`accessible, Qualys needed some proof such as an admissible card catalog or MARC record for the
`
`DSAVT reference it wishes to introduce into evidence. SRI Int’l, 511 F.3d at 1194 (“A given
`
`reference is ‘publicly accessible’ upon a satisfactory showing that such document has been
`
`disseminated or otherwise made available to the extent that persons interested and ordinarily skilled
`
`in the subject matter or art exercising reasonable diligence, can locate it.”). It has no such evidence.
`
`So instead, Qualys offers the MARC record for a reference Dr. Hall-Ellis admits is a different
`
`reference. See FSS at Fact 2; see also Exh. 1 (Hall-Ellis Dep. Tr.) at 50:5-9, 51:15-19. The MARC
`
`record establishes nothing because it is not a record of public accessibility of the DSAVT reference
`
`upon which Qualys’s invalidity expert relies. Because it offers no evidence to establish both its
`
`authenticity and a date of public availability, as a matter of law, DSAVT is not admissible and it
`
`cannot meet the public accessibility requirement to qualify as prior art.
`
`
`
`8
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 13 of 17
`
`
`
`B.
`
`Qualys cannot show Mounji and Thomson are admissible prior art.
`
`Qualys also cannot show that Mounji and Thomson are admissible and were publicly
`
`accessible before the priority dates of the ’494 and ’731 Patents. Qualys relies on the uncorroborated
`
`testimony of its expert, Dr. Hall-Ellis, who has no personal knowledge of the Mounji and Thomson
`
`references to establish their authenticity or dates of public accessibility. See FSS at Facts 4 and 7.
`
`Instead, Dr. Hall-Ellis recites her ability to retrieve Mounji and Thomson from online websites today
`
`as evidence that the references are authentic and were publicly accessible over two decades ago.
`
`See FSS at Facts 5, 6, 8, and 9; see also e.g., Exh. 1 (Hall-Ellis Dep. Tr.) at 65:3-8.
`
`While an article obtained from an online website can qualify as a printed publication under
`
`§ 102(b) after it is made publicly accessible via the website, Qualys offers no evidence that the
`
`references were publicly accessible from their respective sources as of the dates required to be prior
`
`art. CNET Networks, Inc. v. Etilize, Inc., 584 F. Supp. 2d 1260, 1273 (N.D. Cal. 2008) (noting that
`
`the purported prior art reference must be publicly accessible more the one year before the earliest
`
`priority date). Qualys offered no proof about when the references were first indexed and publicly
`
`accessible on the respective websites. See FSS at Facts 4 and 7. The reason Qualys can offer no
`
`proof is the sources upon which Qualys relies (CiteSeerX, ResearchGate and SemanticScholar) did
`
`not exist before the alleged dates of publication. See FSS at Facts 5, 6, 8, and 9; see also Exh. 1
`
`(Hall-Ellis Dep. Tr.) at 76:19-22; Exh. 5 (Hall-Ellis Dep. Ex. 8); Exh. 6 (Hall-Ellis Dep. Ex. 9); Exh.
`
`3 (Hall-Ellis Exp. Rep.) at ¶ 23.
`
`Dr. Hall-Ellis also relies on a date found on the cover of Mounji as evidence that Mounji is
`
`authentic and was publicly accessible before the priority date of the ’494 Patents. See FSS at Fact
`
`4. She similarly relies on a date on a ResearchGate’s page for Thomson as evidence that Thomson
`
`is authentic and was publicly accessible before the priority dates of the ’731 Patent. See FSS at Fact
`
`7; see also, e.g., Exh. 1 (Hall-Ellis Dep. Tr.) at 65:2-8. The date alone, on a reference, or recently
`
`located on some unauthenticated third party website, is not dispositive of the reference’s date of
`
`public accessibility. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1376 (Fed.
`
`Cir. 2018) (finding that the date on the cover of a product catalog, alone, was not dispositive of the
`
`date of public accessibility); see also CNET Network., 584 F. Supp. 2d at 1273 (finding that the
`
`
`
`9
`
`
`
`FINJAN LLC’S MOT. FOR SUMM. J.
`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 192 Filed 04/19/21 Page 14 of 17
`
`
`
`copyright date of the purported prior art reference did not prove the reference was publicly
`
`accessible more the one year before the patent’s earliest priority date). Instead, to support a finding
`
`of public accessibility, the party asserting the reference must also provide evidence to corroborate
`
`the date, such as testimony from an individual with personal knowledge about the reference’s public
`
`availability. Id. at 1379-80. Thus, the fact that Mounji bears the date May 27,