Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 1 of 46
`Case 4:18-cv-07229—YGR Document 195-16 Filed 05/10/21 Page 1 of 46
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 11
`
`EXHIBIT 11
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 2 of 46
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`FINJAN LLC,
`Plaintiff,
`
`v.
`
`SONICWALL, INC.,
`Defendant.
`
`Case No. 17-cv-04467-BLF
`
`ORDER GRANTING IN PART AND
`DENYING IN PART DEFENDANT'S
`MOTION FOR PARTIAL SUMMARY
`JUDGMENT
`
`Plaintiff Finjan, Inc. (“Finjan”) brings this patent infringement lawsuit against Defendant
`
`SonicWall, Inc. (“SonicWall”), alleging infringement of eight1 of Finjan’s patents: 6,154,844 (the
`
`“’844 Patent”), 6,804,780 (the “ʼ780 Patent”), 7,613,926 (the “’926 Patent”), 8,141,154 (the “’154
`
`Patent”), 8,677,494 (the “’494 Patent”), 7,975,305 (the “’305 Patent”), 8,225,408 (the “’408
`
`Patent”), and 6,965,968 (the “’968 Patent”) (collectively, the “Asserted Patents”). Complaint
`
`(“Compl.”), ECF 1. Finjan alleges that it is entitled to enhanced damages pursuant to 35 U.S.C. §
`
`284 because SonicWall has engaged in willful infringement of each of the Asserted Patents. Id. ¶¶
`
`72, 90, 106, 123, 140, 158, 170, 189, 206, 224.
`
`Before the Court is SonicWall’s Motion for Partial Summary Judgment. Motion (“Mot.”),
`
`ECF 319-3; see also ECF 320 (redacted motion). On December 21, 2020, Finjan filed an
`
`opposition brief to the motion. Opposition Brief (“Opp.”), ECF 327-4; see also ECF 326 (redacted
`
`opposition brief). On December 31, 2020, SonicWall filed a reply brief. Reply Brief (“Reply”),
`
`1 Finjan originally alleged infringement of ten patents. See Compl. The parties have since
`stipulated dismissal of Finjan’s claims of infringement of U.S. Patent Nos. 7,058,822 and
`7,647,633. ECF 324.
`
`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
`
`Northern District of California
`
`United States District Court
`
`Mar 05 2021
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 3 of 46
`
`
`
`ECF 335-3; see also ECF 336 (redacted reply brief). The Court heard oral arguments on January
`
`14, 2021. ECF 341; see also Transcript (“Tr.”), ECF 354. The Court GRANTS IN PART and
`
`DENIES IN PART SonicWall’s Motion for Partial Summary Judgment.
`
`I.
`
`THE ACCUSED PRODUCTS
`
`The infringement allegations subject to SonicWall’s motion for summary judgment relate
`
`to SonicWall’s cybersecurity products, to include (1) Gateways; (2) Email Security products (“ES
`
`products,” also referred to as “ESA”); (3) Capture Advanced Threat Protection (“Capture ATP”);
`
`(4) Gateways and Capture ATP; (5) ES products and Capture ATP; (6) Capture Client and Capture
`
`ATP; (7) Gateways and WAN Acceleration Appliance (WXA). Mot. at v.
`
`SonicWall describes its products as follows: ES products receive emails that may contain
`
`attachments and perform numerous security-related tasks. In certain situations, the ES products
`
`may send email attachments to Capture ATP for analysis. SonicWall Senior Vice President and
`
`Chief Technology Officer John Gmuender Declaration (“Gmuender Decl.”), ECF 319-5 ¶ 8.
`
`Gateways operate similarly to ES products, but
`
`at ¶ 5. When a Gateway sends packets to Capture ATP,
`
`
`
` Id.
`
`
`
`. Id. at ¶ 12.
`
` Id. at ¶¶ 5, 8.
`
`Capture Client runs on an endpoint device. Just like Gateways and ES products, Capture Client
`
`can send files to Capture ATP for analysis. Id. at ¶ 10. Capture ATP analyzes files as they are
`
`received. As part of its analysis, Capture ATP
`
`
`
` Id. at ¶¶ 12-13.
`
`II.
`
` LEGAL STANDARD
`
`Federal Rule of Civil Procedure 56 governs motions for summary judgment. Summary
`
`judgment is appropriate if the evidence and all reasonable inferences in the light most favorable to
`
`the nonmoving party “show that there is no genuine issue as to any material fact and that the
`2
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 4 of 46
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`moving party is entitled to a judgment as a matter of law.” Celotex Corp. v. Catrett, 477 U.S. 317,
`
`322 (1986). The current version of Rule 56 authorizes a court to grant “partial summary judgment”
`
`to dispose of less than the entire case and even just portions of a claim or defense. See Fed. R. Civ.
`
`P. advisory committee’s note, 2010 amendments; Ochoa v. McDonald’s Corp., 133 F. Supp. 3d
`
`1228, 1232 (N.D. Cal. 2015). As such, a court can, “when warranted, selectively fillet a claim or
`
`defense without dismissing it entirely.” Id.
`
`The moving party bears the burden of showing there is no material factual dispute, by
`
`“identifying for the court the portions of the materials on file that it believes demonstrate the
`
`absence of any genuine issue of material fact.” T.W. Elec. Serv. Inc. v. Pac. Elec. Contractors
`
`Ass’n, 809 F.2d 626, 630 (9th Cir. 1987). In judging evidence at the summary judgment stage, the
`
`Court “does not assess credibility or weigh the evidence, but simply determines whether there is a
`
`genuine factual issue for trial.” House v. Bell, 547 U.S. 518, 559–60 (2006). A fact is “material” if
`
`it “might affect 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).
`
`In cases like this, where the nonmoving party will bear the burden of proof at trial on a
`
`dispositive issue (e.g., patent infringement), the nonmoving party must “go beyond the pleadings
`
`and by her own affidavits, or by the ‘depositions, answers to interrogatories, and admissions on
`
`file,’ designate ‘specific facts showing that there is a genuine issue for trial.’” Celotex, 477 U.S. at
`
`324. For a court to find that a genuine dispute of material fact exists, “there must be enough doubt
`
`for a reasonable trier of fact to find for the [non-moving party].” Corales v. Bennett, 567 F.3d 554,
`
`562 (9th Cir. 2009). In considering all motions for summary judgment, “[t]he evidence of the non-
`
`movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson, 477
`
`Northern District of California
`
`United States District Court
`
`24
`
`U.S. at 255.
`
`III. DISCUSSION
`
`25
`
`26
`
`3
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 5 of 46
`
`
`
`
`
`
`
`SonicWall asks the Court to issue an Order finding that:
`
`• SonicWall does not infringe claim 1 of Patent ’154;
`
`• The combination of SonicWall’s Email Security products and Capture ATP cannot infringe
`the asserted claims of Patent ’844, ’494 and ’926;
`
`• SonicWall Gateways do not receive “Downloadables” and therefore cannot infringe the
`asserted claims 10 and 14 of Patent ’494, claims 41 and 43 of Patent ’844, and the asserted
`claim of Patent ’780 Patent;
`
`• SonicWall does not infringe the asserted claims Patents ’305 and ’408 based on a
`combination of separate, remote computers;
`
`• SonicWall does not infringe the asserted claims of Patents ’926 and ’305;
`
`• Finjan is not entitled to a royalty on SonicWall’s Non-U.S. Sales; and
`
`• Finjan is not entitled to damages prior to actual notice of infringement of Patents ’926,
`’968, ’844, and ’780.
`
`
`Mot. at viii. The Court considers each request in turn.
`
`A. Non-Infringement of the ’154 Patent
`
`SonicWall first requests the Court find that the Accused Products do not infringe claim 1
`
`of Patent ’154. The ’154 Patent is directed to a system and a method “for protecting a client
`
`computer from dynamically generated malicious content[.]” ’154 Patent at Abstract. Conventional
`
`reactive antivirus applications perform file scans looking for a virus’s signature against a list
`
`known virus signatures kept on a signature file and thus, cannot protect against first time viruses
`
`or if a user’s signature file is out of date. ’154 Patent at 1:25-31, id. at 2:32-37. Proactive anti-
`
`virus application, on the other hand, use “a methodology known as ‘behavioral analysis’ to
`
`analyze computer content for the presence of viruses.” Id. at 1:56-58.
`
`Dynamic virus generation occurs at runtime where dynamically generated HTML contains
`
`malicious JavaScript code. ’154 Patent at 3:53-64. For example the JavaScript function
`
`document.write() is used to generate dynamic HTML at runtime. Id. at 3:53-57. Malicious code
`
`inserted in a document.write() function would not be caught prior to runtime because the
`
`4
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 6 of 46
`
`
`
`malicious code is not present in the content prior to runtime. Id. at 3:65-4:4. To this point, the ’154
`
`Patent concerns a “new behavioral analysis technology [that] affords protection against
`
`dynamically generated malicious code, in addition to conventional computer viruses that are
`
`statically generated.” Id. at 4:31-34.
`
`The basic setup of the ’154 Patent involves three components: (1) gateway computer
`
`including a content modifier, (2) client computer including a content processor, and (3) security
`
`computer including an inspector, a database of client security policies, and an input modifier. ’154
`
`Patent at 9:5-11. A preferred embodiment describes a gateway computer that receives content
`
`including a call to an original function and an input. Id. at 5:6-9. The gateway computer then
`
`substitutes the call to the original function with a corresponding call to a substitute function, which
`
`operates to send the input to a security computer for inspection. Id. at 5:10-15. The gateway
`
`computer transmits the “modified content from the gateway computer to the client computer,
`
`processing the modified content at the client computer.” Id. at 5:13-15. The client computer then
`
`transmits “the input to the security computer for inspection when the substitute function is
`
`invoked.” Id. at 5:15-17. The security computer first determines “whether it is safe for the client
`
`computer to invoke the original function with the input.” Id. at 5:17-19. The security computer
`
`then transmits “an indicator of whether it is safe for the client computer to invoke the original
`
`function with the input,” to the client computer. Id. at 5:19-22. The client computer invokes the
`
`original function “only if the indicator received from the security computer indicates that such
`
`invocation is safe.” Id. at 5:22-24.
`
`Claim 1 of the ’154 Patent provides:
`
`A system for protecting a computer from dynamically generated
`malicious content, comprising:
`
` a
`
` content processor (i) for processing content received over a network,
`the content including a call to a first function, and the call including
`an input, and (ii) for invoking a second function with the input, only
`if a security computer indicates that such invocation is safe;
`5
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 7 of 46
`
`
`
` a
`
` transmitter for transmitting the input to the security computer for
`inspection, when the first function is invoked;
`
`and a receiver for receiving an indicator from the security computer
`whether it is safe to invoke the second function with the input.
`
`’154 patent, 17:32-44 (emphasis added).
`
`The parties stipulated to the same constructions of “first function” and “second function”
`
`as the Court determined in Finjan Inc. v. Cisco Systems, Inc., No. 17-cv-00072-BLF (“Cisco”).
`
`ECF 214; see also Cisco, Order Construing Claims in U.S. Patent Nos. 6,154,844; 6,804,780;
`
`7,647,633; 8,141,154; 8,677,494, ECF 134 at 35. Relevant here, the Court in Cisco construed
`
`“first function / second function” as “substitute function / original function, which is different than
`
`the first function.” Id.
`
`Both parties reference this Court’s prior Order in Cisco where the Court granted in part and
`
`denied in part Cisco’s motion for summary judgment on claim 1 of the ’154 Patent. Cisco, Order
`
`Granting in Part and Denying in Part Cisco’s Motion for Partial Summary Judgment of
`
`Noninfringement (“Cisco MSJ Order”), ECF 487 at 6-12. The Court granted summary judgment
`
`with respect to noninfringement of the asserted claims of the ’154 Patent by Cisco AMP Products.
`
`Id. at 11. In doing so, the Court agreed with Cisco that the accused AMP Products “[did] not
`
`substitute calls to functions into any content that it receives.” Cisco MSJ Order at 6. It also
`
`rejected Finjan’s remote creation infringement theory that a “hacker or some other process
`
`modifies the original content by inserting a substitute function in place of the original function.”
`
`Id. at 6-7. To the contrary, the Court found that the ’154 Patent’s own language required that the
`
`invention itself “replaces the ‘original’ function with a ‘substitute’ function – not an external factor
`
`such as a hacker.” Cisco MSJ Order at 7.
`
`The Court denied summary judgment with respect to the infringement by the URL
`
`rewriting feature of the Cisco ESA Outbreak Filters. Cisco MSJ Order at 11-12. There, “Cisco
`
`6
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 8 of 46
`
`
`
`acknowledge[d] that Finjan identifie[d] some sort of substitution as to the URL rewriting feature –
`
`namely, the rewritten URL is a substitute for the original URL,” but nonetheless argued that “a
`
`URL is simply an address and thus, is neither a function nor a call to a function.” Cisco MSJ Order
`
`at 11 (internal quotation marks omitted). The Court rejected this argument, explaining that
`
` the parties’ dispute concerning the manner in which Cisco’s URL
`rewriting feature utilizes URL functionality precludes summary
`judgment. Specifically, the parties dispute whether a URL (or a
`portion thereof) can be a “function,” or a “call to function” – with
`Cisco arguing that URLs are nothing more than addresses and Finjan
`responding that the processing of a URL can be a function.
`
`Id. at 12 (emphasis added).
`
`1. Literal Infringement
`
`SonicWall argues that “none of the ’154 Accused Products2 receives content including a
`
`call to a substitute function, as required by the claim and the agreed claim constructions.” Mot. at
`
`2. It urges the Court to resolve as a matter of law two Finjan theories of literal infringement—
`
`remote creation of a first function and a URL rewriting—each of which parallels the issues raised
`
`and discussed in the Court’s Cisco summary judgment order. See Mot. at 3-5; see also Opp. at 1-2.
`
`i. Remote Creation of a First Function
`
`SonicWall argues that Finjan’s expert fails to “identify any call to a function that was
`
`substituted into the received content as part of the Accused Systems” and instead opines that “both
`
`the call to the ‘substitute function’ and the ‘original function’ can exist within the content as
`
`originally created.” Mot. at 3 (emphasis added). SonicWall argues that this interpretation “renders
`
`the word ‘substitute’ in the Court’s construction meaningless,” “ignores the Court’s construction[,]
`
`and fails as a matter of law, as it did in the Cisco case.” Mot. at 3-4. SonicWall also contends that
`
`
`2 The ’154 Accused Products are (1) Gateways, (2) Capture ATP, (3) Gateways with Capture
`ATP, (4) Capture Client with Capture ATP, (4) ES products, and (5) ES products with Capture
`ATP. See Mot. at v. Finjan’s ’154 infringement theories against the Gateways and Capture ATP
`alone are subject to SonicWall’s motion to strike. See ECF 299 at 7-9.
`7
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 9 of 46
`
`
`
`“nothing Finjan identifies as the ‘substitute function’ performs the security functionality of the
`
`claim – i.e., sending the ‘input’ to a security computer for inspection when invoked.” Mot. at 4.
`
`“Finjan does not dispute that if the Court applies the claims as it did in Cisco, then the
`
`Court could grant summary judgment on that theory for the same reasons articulated in Cisco,
`
`namely the first function was substituted remotely by an ‘external factor.’” Opp. at 4. With respect
`
`to SonicWall’s second argument, Finjan asserts that “SonicWall’s argument is unclear, but the
`
`premise seems to be that the substitute function in the accused products does not ‘perform[] the
`
`security functionality of the claim.’” Id. According to Finjan, “that is not a requirement of the
`
`claim or the Court’s construction of the ‘first function.’” Id.
`
`Nothing within the record persuades the Court to apply the claim language to Finjan’s
`
`remote creation theory differently than it did in Cisco. In Cisco, the Court explicitly rejected
`
`Finjan’s remote creation theory as “inconsistent with the patent’s specification and the Court’s
`
`Markman Order.” Cisco MSJ Order at 7. The Court explained that under this theory—where, as
`
`here, the “substitute function” is supplied by an external source outside the control of any accused
`
`product—was contrary to the plain language of the ’154 Patent:
`
`“To enable the client computer to pass function inputs to the security
`computer and suspend processing of content pending replies from the
`security computer, the present invention operates by replacing
`original function calls with substitute function calls within the
`content, at a gateway computer, prior to the content being received
`at the client computer.”
`
`
`Id. at 7 (quoting ’154 Patent at 4:55-60) (emphasis in original). Based on this claim language, the
`
`Court again concludes that “it is the ‘[i]nvention’ that replaces the ‘original’ function with a
`
`‘substitute’ function – not an external factor such as a hacker.” MSJ Order at 7; see also Finjan,
`
`Inc. v. Juniper Nets., Inc., 387 F.Supp.3d 1004 at 1010-11 (N.D. Cal. 2019) (“The claimed ‘first
`
`function’ then clearly involves the ‘substitute function,’ which sends the content’s input to the
`
`security computer for inspection once invoked. . . . the substitute function exists only after the
`
`8
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 10 of 46
`
`
`
`original content is modified at the gateway computer.”); Finjan, Inc. v. Juniper Networks, Inc.,
`
`No. C 17-05659 WHA, 2019 WL 3302717, at *2 (N.D. Cal. July 23, 2019) (explaining that a
`
`“substitute function” supplied by an external system “ultimately amounts to the original content
`
`initially received by the claimed system” and not a “substitute” function). Because Finjan’s
`
`infringement theory fails to identify a substitute function consistent with the claim language, the
`
`Court need not reach SonicWall’s second argument regarding whether the identified substitute
`
`function preforms a security function.
`
`ii. ES Products: URL Rewriting Theory
`
`Finjan’s remaining theory of infringement against the ’154 Patent involves the URL
`
`rewriting feature in SonicWall’s ES products. See Medvidovic Report (“Medvidovic Rep.”), ECF
`
`319-6 ¶ 288 (outlining theory). SonicWall argues this theory is subject to summary judgment
`
`because “it is undisputed that it is the accused ES products that insert the rewritten URL into the
`
`received email.” Mot. at 5 (citing Medvidovic Rep. ¶ 293). In other words, according to
`
`SonicWall, its ES products do not receive content that includes a call to a “first function” as the
`
`claim requires because the rewritten URL does not exist until the ES product itself inserted it into
`
`a received email. Mot. at 5-6.
`
`Finjan responds that its expert “Dr. [Nenad] Medvidovic explained that the ESA ‘has a
`
`content processor which processes-Internet-based content, e.g., with its email plugin chain,’ and
`
`that based on that processing the ‘ESA rewrites the URLs where the first function is the rewritten
`
`URLs,’ thus receiving substitute URL.” Opp. at 2 (internal citations omitted) (citing Medvidovic
`
`Rep. ¶¶ 292-293); see also Tr. 20:13-15 (“ESA takes the content that was received, passes it off to
`
`the plugin that does the rewrite, and receives the written URL back.”). Finjan further contends that
`
`a SonicWall witness confirmed this process when the witness stated that “Yes, the e-mail has a
`
`URL in it. When it gets rewritten, the original e-mail is removed, and the rewritten URL gets put
`
`in its place within the email.” Id. (citing King Transcript (“King Tr.”), ECF 392-8 at 66:1-4).
`9
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 11 of 46
`
`
`
`In Cisco, as here, Finjan alleged a URL rewriting infringement theory of the ’154 Patent.
`
`Cisco MSJ Order at 12. But in Cisco, the “content processor” was a client device that received an
`
`email with a re-written URL (i.e., the first function). Id. The first function was substituted into the
`
`email by Cisco’s Outbreak Filters—which were entirely distinct from the client device. Id. Here,
`
`Finjan asserts that the “content processor” is the email plugin chain within the ES product.
`
`Medvidovic Rep. ¶¶ 292-293 (the ESA “has a content processor which processes-Internet based
`
`content, e.g., with its email plugin chain”); see also Tr. 21:16-24 (“the plugin is part of the ESA,
`
`part of the content processor”).
`
`Claim 1 of the ‘154 Patent requires “a content processor (i) for processing content received
`
`over a network, the content including a call to a first function . . . ” Under this plain language, the
`
`content “received over a network” must include the “call to a first function” when it is received.
`
`Thus, the parties’ dispute can be distilled to whether the ES product receives content containing a
`
`first function over a network from the email plugin—despite the fact that the email plugin is part
`
`of the ES product.
`
`There is no evidence before the Court that the ES products receive content over a network
`
`from the email plugin. The Medvidovic Report explains only that “ESA has a content processor
`
`which processes Internet-based content, e.g., with its email plugin chain,” “ESA processes emails
`
`and determines whether there are suspicious scripts or URLs in the content it receives,” and “ESA
`
`rewrites [] URLs.” Medvidovic Rep. ¶¶ 292-293. Nowhere does Finjan, let alone Dr. Medvidovic,
`
`offer any evidence that content leaves the ESA, traverses over a network to the ESA’s email
`
`plugin, and comes back to the ESA with a first function. See Tr. 21:1-8. Thus, as a matter of law
`
`the Court concludes that ESA does not satisfy the claim requirement of “processing content
`
`received over a network, the content including a call to a first function.”
`
`2. DOE Theory
`
`10
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 12 of 46
`
`
`
`
`
`SonicWall argues that Finjan’s DOE theories of infringement against the ’154 Patent are
`
`conclusory and that Dr. Medvidovic fails to provide a “purported equivalent for receiving content
`
`including a call to a first function.’” Mot. at 6 (citing Medvidovic Rep. ¶¶ 260, 278, 298, 319).
`
`Finjan responds that Dr. Medvidovic’s analysis is “sufficient” and that “this is not a summary
`
`judgment issue, rather it is a cross examination issue for trial.” Opp. at 3 (citing Medvidovic Rep.
`
`¶¶ 296-299).
`
`Although infringement under the doctrine of equivalents is a question of fact, summary
`
`judgment is proper “[w]here the evidence is such that no reasonable jury could determine two
`
`elements to be equivalent.” Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.
`
`8 (1997). “A patentee must establish ‘equivalency on a limitation-by-limitation basis’ by
`
`‘particularized testimony and linking argument’ as to the insubstantiality of the differences
`
`between the claimed invention and the accused device.” Akzo Nobel Coatings, Inc. v. Dow
`
`Chemical Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016) (citation omitted).
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`
`
`Because Finjan has failed to establish “equivalency on a limitation-by-limitation basis”
`
`summary judgment is proper here. Dr. Medvidovic’s discussion of DOE is broad and conclusory.
`
`Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed.Cir.2001) (“Broad
`
`conclusory statements offered by Telemac's expert are not evidence and are not sufficient to
`
`establish a genuine issue of material fact.”). Dr. Medvidovic states that SonicWall’s ES products
`
`“perform the same function the same way because they receive incoming content that include[s] a
`
`call to a first function” and “achieve the same results because they modify content that they
`
`receiving incoming content [sic] inspect the content using an engine, as antivirus, static analysis,
`
`and dynamic analysis, for scanning, and proceed with the function call of the content is
`
`determined safe [sic].” Even excusing that this general explanation is partially unintelligible,
`
`nowhere does Dr. Medvidovic articulate an equivalent to the claim’s requirement of receiving
`
`11
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 13 of 46
`
`
`
`content that includes “a call to a first function.” This failure is particularly glaring given Finjan has
`
`not successfully identified a “first function” in its literal infringement theories.
`
`***
`Finjan has failed to establish a material dispute of facts as to any of Finjan’s theories of
`
`infringement of the ’154 Patent. The Court GRANTS SonicWall’s Motion for Summary Judgment
`
`and finds that the Accused Products do not infringe claim 1 of Patent ’154.
`
`B. The Combination of SonicWall’s ES Products and Capture ATP Cannot Infringe
`The ’844, ’494, And ’926 Patents
`
`SonicWall moves for a finding that the combination of SonicWall’s ES products and
`
`Capture ATP cannot infringe the asserted claims of Patent ’844, ’494 and ’926. Mot. at 6-8. In
`
`support of this request, SonicWall contends that “Capture ATP was not available for use with any
`
`ES product until [after the relevant patents expired].” Id. at 7. It also argues that “the only sandbox
`
`accused of infringement in this case is the sandbox that is part of Capture ATP.” Id. at 8. Finjan
`
`responds that SonicWall’s argument errs because “[l]egally, commercial availability is not a
`
`requirement for infringement” and “[f]actually, the record is overwhelming that the combination
`
`of Capture ATP and SonicWall’s ESA products was at least made and used long before the ’844,
`
`’494, and ’926 Patents expired in 2017.” Opp. at 4-5.
`
`The Court credits Finjan’s legal argument that commercial availability is not the
`
`appropriate standard to consider. See 35 U.S.C. § 271(a) (“[W]hoever without authority makes,
`
`uses, offers to sell, or sells any patented invention, within the United States or imports into the
`
`United States any patented invention during the term of the patent therefor, infringes the patent.”);
`
`Netlist v. Smart Storage Sys, No. 13-5889, 2014 WL 1320325, at *3 (N.D. Cal. Apr. 1, 2014) (35
`
`U.S.C. § 271 “does not require that the infringing product be ‘commercially available.’”). And it is
`
`undisputed that each of the ’844, ’494, and ’926 Patents claims priority to U.S. Patent Application
`
`No. 08/790,097 (now U.S. Patent No. 6,167,520), which was filed on January 29, 1997. See ECF
`
`1-2 (’844 Patent) at 19; ECF 1-5 (’926 Patent) at 27; ECF 1-8 (’494 Patent) at 3); see also Opp. at
`12
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 14 of 46
`
`
`
`4-6. Thus, the relevant patents expired on January 29, 2017. 35 U.S.C. § 154; see McDuff Report
`
`(“McDuff Rep.”), ECF 319-7 ¶ 95 (showing 1/29/2017 patent expiration date).
`
`The outstanding question before the Court is whether there is a material dispute of fact as
`
`to whether SonicWall made and used Capture ATP in combination with ES products before
`
`January 29, 2017. SonicWall argues there is no dispute of fact that it did not make and use Capture
`
`ATP in combination with ES until February 2017, see, e.g., Reply at 3, and points to the
`
`Gmuender Declaration in support. According to Gmuender, while the release of Capture ATP with
`
`select SonicWall firewalls occurred in August 2016, SonicWall’s ES products were unable to send
`
`content (e.g., email attachments) to Capture ATP until February 2017, when SonicWall Email
`
`Security 9.0 was released. Gmuender Decl. ¶ 7 (emphasis added). SonicWall also cites to two
`
`documents to corroborate Gmuender’s account. See SonicWall Email Security 9.0 Release Notes,
`
`February 2017, ECF 320-13 at 2-3 (describing Capture ATP as a new feature); SonicWall Email
`
`Security 9.0.1 Release Notes, April 2017, ECF 320-14 at 3-4 (“Capture Advanced Threat
`
`Protection (Capture ATP) is a cloud-based service that analyzes various types of content for
`
`malicious behavior, and this function is being extended to Email Security beginning with version
`
`9.0.” (emphasis added)); see also SonicWall SonicOS 6.2.6.0 Release Notes, August 2016
`
`(explaining that Capture ATP is “an add-on security service to the firewall” (emphasis added)).
`
`Finjan points the Court to two pieces of evidence it believes create a meaningful dispute of
`
`fact. Opp. at 4-5. First, it identifies expert testimony from Dr. Eric Cole. Cole Transcript (“Cole
`
`Tr.”), ECF 327-14. Dr. Cole testified that the first date of infringement for “SonicWall’s
`
`Gateways, Capture ATP and Email Security combinations” was in 2012. Id. at 52:8-14. Finjan
`
`also cites a SonicWall document that “corroborate[s] that the combined system was made and sold
`
`long before 2017.” Opp. at 5. The document is titled “Capture ATP/Email Security Integration –
`
`Extending Advance Threat Protection to Email” and dated September 2016. Capture ATP/Email
`
`Security Integration Document, ECF 327-12. On a page titled “MRD: Integrate Capture ATP into
`13
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 4:18-cv-07229-YGR Document 195-16 Filed 05/10/21 Page 15 of 46
`
`
`
`Email Security,” the document includes several bullet points including
`
`” and
`
`
`
`
`
`
`
`
`
` Id. at 00549277. Elsewhere, the
`
`document describes “ES/Capture Integration Challenges” and “ES/Capture: Additional Work.” Id.
`
`at 00549282, 00549290.
`
`This evidence is neither “overwhelming” nor sufficient to raise a triable issue of fact. See
`
`Opp. at 5. Dr. Cole’s statement that “the first date of infringement would be the 2012 date” was in
`
`response to the question “So SonicWall's Gateways, Capture ATP and Email Security
`
`combinations that you set forth above in paragraph 19 are not deemed to infringe [the ’844 patent]
`
`prior to 2012; correct?” Cole Tr. at 52:8-14. This testimony does not meaningfully speak to the
`
`alleged infringement of the specific combination of ES products and Capture ATP. See Reply at 4.
`
`And, even ignoring this flaw, Finjan fails to provide any