`
`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 C. 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) 210-2901
`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’S SEPARATE STATEMENT
`OF UNDISPUTED MATERIAL FACTS
`IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT
`
`Judge: Hon. Yvonne Gonzalez Rogers
`Date: July 6, 2021
`
`Time: 2:00 P.M.
`Location: Courtroom 1, 4th Floor1
`
`)))))))))))))
`
`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,
`hearings are via Zoom videoconference.
`
`CASE NO. 4:18-cv-07229-YGR
`
`QUALYS’S SEPARATE STATEMENT OF UNDISPUTED
`FACTS ISO MOTION FOR SUMMARY JUDGMENT
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`Case 4:18-cv-07229-YGR Document 195-2 Filed 05/10/21 Page 2 of 9
`
`Pursuant to the Court’s Standing Order in Civil Cases, Defendant Qualys Inc. (“Qualys”)
`submits the following statement of material facts as to which there is no genuine issue:
`
`Opposing Party’s Response and
`Supporting Evidence
`
`Issue No.
`
`Issue 1
`(Finjan has
`failed to
`provide
`evidence of
`infringement
`of the ʼ408
`Patent)
`
`Issue 1
`
`Issue 1
`
`Issue 1
`
`Moving Party’s Undisputed Material
`Facts and Supporting Evidence
`Fact 1: Finjan asserts claims 1, 3-8,
`22, 23, and 35 of the ’408 Patent.
`
`Ex. 29 (Finjan’s Infringement
`Contentions) at 1-2 (asserting claims
`1, 3-8, 22, 23, 29, and 35 of ’408
`Patent); D.I. 187 at 2 (order re
`dismissal of claim 29 of ’408
`Patent).
`Fact 2: Claims 1 and 23 of the ’408
`Patent recite “a computer-processor
`based” method wherein one step is
`“receiving by a computer” and
`subsequent steps are performed “by
`the computer” recited in the
`receiving step while claims 22 and
`35 recite “program code for causing
`a computer to perform” each of the
`recited steps.
`
`Ex. 1 (’408 Patent) at 19:45-20:7
`(claim 1), 22:1-27 (claim 23), 21:42-
`67 (claim 22), and 24:7-31 (claim
`35).
`Fact 3: The 2002 edition of the
`Microsoft Computer dictionary
`defines a “computer” as “any device
`capable of processing information to
`produce a desired result.”
`
`Ex. 8 (Microsoft Computer
`Dictionary) at 118.
`Fact 4: In Finjan v. Sonicwall, Finjan
`accused a defendant of infringing the
`’408 Patent based on a theory
`involving multiple discrete
`computing devices, and the Court
`addressed the question of “with
`respect to the ’408 Patent, can the
`receiving, determining, instantiating,
`identifying, dynamically building,
`dynamically detecting, and
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`CASE NO. 3:18-cv-07229-YGR
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`1
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`QUALYS’S SEPARATE STATEMENT OF UNDISPUTED
`FACTS ISO MOTION FOR SUMMARY JUDGMENT
`
`
`
`Case 4:18-cv-07229-YGR Document 195-2 Filed 05/10/21 Page 3 of 9
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`Issue 1
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`Issue 1
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`Issue 1
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`Issue 1
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`indicating be performed by different
`computers?”
`
`Ex. 11 (Sonicwall Order) at p.20,
`ll.10-11.
`Fact 5: In Finjan v. Sonicwall, the
`court found “as a matter of law that
`the recited steps in claims 1 and 22
`of the ’408 Patent must be performed
`by the same computer” and on that
`basis entered summary judgment of
`no infringement as to the ’408
`Patent.
`
`Ex. 11 (Sonicwall Order) at 24.
`Fact 6: The “Qualys cloud platform”
`comprises multiple different
`computers, including scanners
`deployed in a customer’s network,
`cloud agent software installed on
`customer endpoint devices, and
`servers operated by Qualys at
`various locations throughout the
`world.
`
`Ex. 4 (Medvidovic Rpt.) at ¶¶ 87, 88,
`89, 91, 92, 93, 95, 96-102.
`Fact 7: The asserted claims of the
`’408 claims each require
`“dynamically detecting … [patterns
`or combinations] of nodes in the
`parse tree which are indicators of
`potential exploits” and “indicating,
`by the computer, the presence of
`potential exploits within the
`incoming stream.”
`
`Ex. 1 (’408 Patent) at 20:1-7 (claim
`1), 21:62-67 (claim 22), 22:20-27
`(claim 23), and 24:24-31 (claim 35).
`Fact 8: In an IPR proceeding,
`Finjan’s expert, Dr. Medvidovic,
`wrote that a “key feature that
`distinguishes the ‘408 Patent from
`the prior art is its focus on detecting
`exploits ‘being portions of program
`code that are malicious,’ rather than
`
`CASE NO. 3:18-cv-07229-YGR
`
`2
`
`QUALYS’S SEPARATE STATEMENT OF
`UNDISPUTED FACTS ISO MOTION FOR
`SUMMARY JUDGMENT
`
`
`
`Case 4:18-cv-07229-YGR Document 195-2 Filed 05/10/21 Page 4 of 9
`
`Issue 1
`
`Issue 1
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`Issue 1
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`simply recognizing previously
`known malware.”
`
`Ex. 16 (Medvidovic IPR Decl.) ¶ 49.
`Fact 9: In a Patent Owner Response
`in an IPR Proceeding, Finjan wrote
`“Detecting individual exploits,
`particularly using the behavior-based
`scanning techniques disclosed in the
`‘408 Patent, facilitates the ‘zero-day’
`recognition of malicious code, even
`if it is surrounded by otherwise
`benign and/or not previously
`encountered code, based only on the
`behavior associated with the exploit.
`This is the reason the independent
`claims of the ‘408 Patent recite
`dynamically detecting patterns or
`combinations ‘of nodes in the parse
`tree which are indicators of potential
`exploits.’”
`
`Ex. 23 (Patent Owner Response) at
`39-40.
`Fact 10: The asserted claims of the
`’408 patent requires, among other
`limitations, three temporally
`overlapping steps: (1) “receiving
`incoming content,” (2) “dynamically
`building,” and (3) “dynamically
`detecting.”
`
`Ex. 1 (’408 Patent) at 19:45-20:7
`(claim 1), 21:42-67 (claim 22), 22:1-
`27 (claim 23), and 24:7-31 (claim
`35).
`Fact 11: In an IPR proceeding,
`Finjan noted three temporally
`overlapping steps: (1) “receiving
`incoming content,” (2) “dynamically
`building,” and (3) “dynamically
`detecting” of the asserted claims of
`the ’408 Patent and that these
`temporal limitations distinguish the
`’408 Patent over the prior art.
`
`Ex. 23 (Patent Owner Statement) at
`2.
`
`CASE NO. 3:18-cv-07229-YGR
`
`3
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`QUALYS’S SEPARATE STATEMENT OF
`UNDISPUTED FACTS ISO MOTION FOR
`SUMMARY JUDGMENT
`
`
`
`Case 4:18-cv-07229-YGR Document 195-2 Filed 05/10/21 Page 5 of 9
`
`Issue 1
`
`Issue 1
`
`Issue 1
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`Issue 1
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`Fact 12: Finjan’s infringement theory
`for the ’408 Patent is based on
`multiple scanner appliance’s
`operating in parallel.
`
`Ex. 4 (Medvidovic Rpt.) ¶ 284,
`¶ 309; Ex. 12 (Medvidovic Tr.)
`163:1-3, 178:16-20, 213:21-22,
`222:7-8, 285:4-6.
`Fact 13: The asserted claims of the
`’408 Patent require the temporally
`overlapping steps must be performed
`with respect to the incoming stream
`(i.e., the same incoming stream).
`
`Ex. 1 (’408 Patent) at 19:47-48,
`(claim 1: “receiving, by a computer,
`an incoming stream of program
`code); 19:64-65 (claim 1:
`“dynamically building, by the
`computer while said receiving
`receives the incoming stream, a
`parse tree.”); 21:45 (claim 22:
`“receiving an incoming stream of
`program code”); 21:59-60 (claim 22:
`“dynamically building, while said
`receiving receives the incoming
`stream”); 22:10-11 (claim 23:
`“receiving, by a computer, an
`incoming stream of program code),
`22:15-16 (claim 23: “dynamically
`building, while said receiving
`receives the incoming stream”);
`24:17 (claim 35: “receiving an
`incoming stream of program code”);
`24:20-21 (claim 35: “dynamically
`building, while said receiving
`receives the incoming stream”).
`Fact 14: In an IPR proceeding
`involving the ’408 Patent, Finjan’s
`expert, Dr. Medvidovic, stated that
`“the incoming stream” recited by the
`claims “refers to the stream from
`which the parse tree is being built”.
`
`Ex. 16 (Medvidovic IPR Decl.) ¶ 99.
`Fact 15: In an IPR proceeding
`involving the ’408 Patent, Finjan’s
`
`CASE NO. 3:18-cv-07229-YGR
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`4
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`QUALYS’S SEPARATE STATEMENT OF
`UNDISPUTED FACTS ISO MOTION FOR
`SUMMARY JUDGMENT
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`Case 4:18-cv-07229-YGR Document 195-2 Filed 05/10/21 Page 6 of 9
`
`expert, Dr. Medvidovic wrote: “That
`is, a system with stages that can
`operate in parallel will not meet the
`claim language if the stages are not
`interleaved and working to build the
`same parse tree during time periods
`that overlap. In Petitioner’s scenario,
`the hypothetical ‘upstream portions
`of code’ would be used to build a
`different AST, so the receiving and
`building steps are not interleaved
`even if new code could be received
`while an AST was being built.”
`
`Ex. 16 (Medvidovic IPR Decl.) ¶ 99.
`Fact 16: Finjan asserts claims 1, 4-8,
`11, 15-17, 41, and 43 of the ’844
`Patent.
`
`Ex. 29 (Finjan’s Infringement
`Contentions) at 1 (asserting claims 1-
`9, 11, 15-17, 21-23, 32, and
`41-44 of ’844 Patent); D.I. 154 at 2
`(order re dismissal of claims 2, 3,
`9, 21, 22, 23, 32, 42 and 44 of
`the ’844 Patent).
`Fact 17: The asserted claims 1, 4-8,
`and 11 of the ’844 Patent recite
`“receiving by an inspector a
`Downloadable.”
`
`Ex. 2 (’844 Patent) at 11:14.
`Fact 18: The parties agreed to
`construe “Downloadable” as “an
`executable application program,
`which is downloaded from a source
`computer and run on the destination
`computer”.
`
`D.I. 40 at 1.
`Fact 19: Finjan asserts claims 10-16,
`and 18 of the ’494 Patent.
`
`Issue 2
`(Finjan has
`failed to
`provide
`evidence of
`infringement
`of the ʼ844
`and ʼ494
`Patents)
`
`Issue 2
`
`Issue 2
`
`Issue 2
`
`Ex. 29 (Finjan’s Infringement
`Contentions) at 2 (asserting claims
`10-16, and 18 of the ’494 Patent).
`Fact 20: The asserted claims 10-16
`and 18 of the ’494 Patent recite “a
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`CASE NO. 3:18-cv-07229-YGR
`
`Issue 2
`
`QUALYS’S SEPARATE STATEMENT OF
`UNDISPUTED FACTS ISO MOTION FOR
`SUMMARY JUDGMENT
`
`
`
`Case 4:18-cv-07229-YGR Document 195-2 Filed 05/10/21 Page 7 of 9
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`Issue 2
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`Issue 2
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`Issue 2
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`Issue 2
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`Issue 2
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`receiver for receiving an incoming
`Downloadable”.
`
`Ex. 3 (’494 Patent), 22:8.
`Fact 21: The 1997 Merriam-Webster
`Dictionary defines “receive” to mean
`“to come into possession of” or
`“get”.
`
`Ex. 24 (1997 Merriam-Webster
`Dictionary), at 613.
`Fact 22: In the Finjan v. Sonicwall
`Case, the same construction of
`Downloadable (i.e., “an executable
`application program, which is
`downloaded from a source computer
`and run on the destination
`computer”) was applied and Judge
`Freeman held that Sonicwall’s
`products do not infringe because
`there was “no evidence that the
`accused Gateways ever possess a
`reassembled file or executable
`application program.”
`
`Ex. 11 (Sonicwall Order) at 17-18.
`Fact 23: Finjan accuses the
`Vulnerability Management (VM)
`Scanning Engine and the Web
`Application Scanning (WAS)
`Scanning Engine as the “inspector”
`that receives “Downloadables” for
`the asserted claims of the ’844
`Patent.
`
`Ex. 6 (Cole Rpt.) ¶¶ 338, 371.
`Fact 24: Finjan accuses the switches
`in the accused Qualys product as the
`“receiver” that receives
`“Downloadables” as recited by
`asserted claims of the ’494 Patent.
`
`Ex. 6 (Cole Rpt.) ¶¶ 1256, 388
`(quoting Ex. 19, Kruse Tr. at 11:10-
`11).
`Fact 25: The Qualys scanner
`“collects configuration data from
`customer systems.”
`
`CASE NO. 3:18-cv-07229-YGR
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`6
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`QUALYS’S SEPARATE STATEMENT OF
`UNDISPUTED FACTS ISO MOTION FOR
`SUMMARY JUDGMENT
`
`
`
`Case 4:18-cv-07229-YGR Document 195-2 Filed 05/10/21 Page 8 of 9
`
`Issue 2
`
`Issue 2
`
`Issue 3
`(Finjan has
`failed to
`provide
`evidence of
`damages for
`the ʼ844 and
`ʼ494 Patents)
`Issue 3
`
`Issue 3
`
`Ex. 6 (Cole Rpt.) ¶ 340 (quoting Ex.
`25, QUALYS00263186).
`Fact 26: With respect to the accused
`Qualys Cloud Agent, Finjan’s expert,
`Dr. Cole, alleges that the claimed
`“inspector” is the “lightweight
`Cloud Agent installed on host
`systems.”
`
`Ex. 6 (Cole Rpt.) ¶ 358.
`Fact 27: In an IPR proceeding,
`Finjan argued that “[t]he invention
`described in the ‘494 Patent protects
`against potentially malicious content
`by receiving incoming content (i.e. a
`Downloadable) from the Internet and
`establishing that the code will not
`cause any harm before it is allowed
`to run on the computer.”
`
`Ex. 31 (’494 IPR) at 2.
`Fact 28: Finjan’s licensees have sold
`products that practice one or more
`claims of the ’494 Patent.
`
`D.I. 1 at ¶ 241; Ex. 31 (’494 IPR) at
`54, 56-60.
`
`Fact 29: Finjan’s licensees have sold
`products that practice one or more
`claims of the ’844 Patent.
`
`Ex. 32 (’844 IPR) at 60-62.
`Fact 30: On November 12, 2015,
`Finjan’s then in-house counsel sent a
`letter to Qualys; this letter is Exhibit
`33 to the Declaration of Christopher
`Mays, filed concurrently herewith.
`
`Ex. 33 (November 12, 2015 letter).
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`CASE NO. 3:18-cv-07229-YGR
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`QUALYS’S SEPARATE STATEMENT OF
`UNDISPUTED FACTS ISO MOTION FOR
`SUMMARY JUDGMENT
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`Case 4:18-cv-07229-YGR Document 195-2 Filed 05/10/21 Page 9 of 9
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`ATTESTATION
`I attest that the evidence cited herein fairly and accurately supports the facts as asserted.
`
`Respectfully submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`
`Dated: May 10, 2021
`
`By:
`
`/s/ Edward G. Poplawski
`EDWARD G. POPLAWSKI
`
`Counsel for
`QUALYS INC.
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`CASE NO. 3:18-cv-07229-YGR
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`QUALYS’S SEPARATE STATEMENT OF
`UNDISPUTED FACTS ISO MOTION FOR
`SUMMARY JUDGMENT
`
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