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`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 1 of 18
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`
`
`PAUL J. ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`HANNAH LEE (State Bar No. 253197)
`hlee@kramerlevin.com
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`STEFANI E. SHANBERG (State Bar No. 206717)
`sshanberg@mofo.com
`JENNIFER J. SCHMIDT (State Bar No. 295579)
`jschmidt@mofo.com
`NATHAN B. SABRI (State Bar No. 252216)
`nsabri@mofo.com
`ROBIN L. BREWER (State Bar No. 253686)
`rbrewer@mofo.com
`EUGENE MARDER (State Bar No. 275762)
`emarder@mofo.com
`MADELEINE E. GREENE (State Bar No. 263120)
`mgreene@mofo.com
`MICHAEL J. GUO (State Bar No. 284917)
`mguo@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105
`Telephone:
`(415) 268-7000
`Facsimile:
`(415) 268-7522
`
`DAVID A. NELSON (Pro Hac Vice)
`davenelson@quinnemanuel.com
`NATHAN A. HAMSTRA (Pro Hac Vice)
`nathanhamstra@quinnemanuel.com
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`500 W. Madison Street, Suite 2450
`Chicago, Illinois 60661
`Telephone:
`(312) 705-7400
`Facsimile:
`(312) 707-7401
`
`Attorneys for Defendant
`BLUE COAT SYSTEMS LLC
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`FINJAN, INC., a Delaware Corporation,
`
`Plaintiff,
`
`v.
`
`BLUE COAT SYSTEMS LLC, a Delaware
`Corporation,
`
`Defendant.
`
`
`
`Case No.: 15-cv-03295-BLF-SVK
`
`[PROPOSED] JOINT PRETRIAL
`STATEMENT AND ORDER
`
`Date: October 5, 2017
`Time:
`1:30 pm
`Place: Courtroom 3, 5th Floor
`Judge: Hon. Beth Labson Freeman
`
`
`
`
`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
`
`
`

`

`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 2 of 18
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`Pursuant to Paragraph B of the Court’s Standing Order re Final Pretrial Conference – Jury
`
`Trial, plaintiff Finjan, Inc. (“Finjan”) and defendant Blue Coat Systems LLC (“Blue Coat”)
`
`(collectively, “Parties”) hereby submit the Joint Pretrial Statement and Order.
`
`I.
`
`THE ACTION
`A.
`The Parties
`The Parties to this action are Finjan, a Delaware corporation with its principal place of
`
`business at 2000 University Ave., Ste. 600, East Palo Alto, California 94303, and Blue Coat, a
`
`Delaware limited liability company with its principal place of business at 350 Ellis Street,
`
`Mountain View, California 94043.
`
`B.
`Substance of the Action
`This is an action for patent infringement, and the jurisdiction of the court arises under the
`
`Patent Act, 35 U.S.C. § 271 et. seq.
`
`Finjan alleges that Blue Coat directly infringes pursuant to 35 U.S.C. § 271(a) the
`
`following U.S. patents:
` U.S. Patent No. 6,154,844 (“the ’844 patent”), entitled “System and Method for
`Attaching a Downloadable Security Profile to a Downloadable”;
` U.S. Patent No. 6,965,968 (“the ’968 patent”), entitled “Policy Based Caching”;
` U.S. Patent No. 7,418,731 (“the ’731 patent”), entitled “Method and System for
`Caching at Secure Gateways”;
` U.S. Patent No. 8,079,086 (“the ’086 Patent”), entitled “Malicious Mobile Code
`Runtime Monitoring System and Methods”;
` U.S. Patent No. 8,225,408 (“the ’408 patent”), entitled “Method and System for
`Adaptive Rule-Based Content Scanners”;
` U.S. Patent No. 8,677,494 (“the ’494 patent”), entitled “Malicious Mobile Code
`Runtime Monitoring System and Methods”;
` U.S. Patent No. 9,189,621 (“the ’621 patent”), entitled “Malicious Mobile Code
`Runtime Monitoring System and Methods”; and
` U.S. Patent No. 9,219,755 (“the ’755 patent”), entitled “Malicious Mobile Code
`Runtime Monitoring System and Methods.”
`Collectively, these patents are referred to as the “asserted patents.” Finjan alleges
`
`infringement of claims 1, 7, and 15 of the ’844 patent, claim 1 of the ’968 patent, claims 1 and 2
`
`of the ’731 patent, claim 24 of the ’086 patent, claim 22 of the ’408 patent, claims 10, 14, and 16
`
`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
`
`1
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`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 3 of 18
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`
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`of the ’494 patent, claims 1 and 10 of the ’621 patent, and claim 3 of the ’755 patent (collectively,
`
`“asserted claims”). To the extent Blue Coat claims it does not practice any specific element
`
`literally, Finjan has asserted that Blue Coat directly infringes the asserted claims of the ’844,
`
`’968, ’731, ’494, ’086, and ’621 patents under the doctrine of equivalents.
`
`Finjan alleges that the following Blue Coat products, methods and/or services infringe:
`ProxySG,1 Content Analysis System (“CAS”), Advanced Secure Gateway (“ASG”), Malware
`Analysis Appliance (“MAA”) for which the cloud-based service is called “MAS,” Web Security
`Service (“WSS”), Global Intelligence Network (“GIN”), WebPulse, 2 and Security Analytics
`(“SA”) (collectively, “accused products”).
`
`Specifically, Finjan alleges that:
`1.
`
`WebPulse/GIN; WSS with WebPulse/GIN; WSS with MAS; and/or ASG with
`
`MAA infringes, literally or under the doctrine of equivalents, claims 1, 7, and 15
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`of the ’844 patent;
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`ASG with MAA; WSS with WebPulse/GIN; and/or WSS with MAS infringes,
`
`literally or under the doctrine of equivalents, claim 1 of the ’968 patent;
`
`ASG with MAA; WSS with WebPulse/GIN; and/or WSS with MAS infringes,
`
`literally or under the doctrine of equivalents, claims 1 and 2 of the ’731 patent;
`
`WebPulse/GIN; WSS with WebPulse/GIN; and/or WSS with MAS infringes,
`
`literally or under the doctrine of equivalents, claim 24 of the ’086 patent;
`
`WebPulse/GIN; and/or WSS with WebPulse/GIN directly infringes claim 22 of the
`
`’408 patent;
`
`WebPulse/GIN; WSS with WebPulse/GIN; WSS with MAS; ASG with MAA;
`
`ProxySG and CAS with MAA; and/or SA with MAA infringes, literally or under
`
`the doctrine of equivalents, claims 10, 14, and 16 of the ’494 patent;
`
`7.
`
`WebPulse/GIN; WSS with MAS; ProxySG and CAS with MAA; and/or ASG with
`
`
`1 ProxySG includes the Secure Web Gateway Virtual Appliance, the virtual version of ProxySG.
`2 Finjan refers to GIN and WebPulse collectively as “WebPulse/GIN.” Blue Coat does not agree
`that WebPulse/GIN is a product.
`
`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
`
`2
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`

`

`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 4 of 18
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`
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`MAA infringes, literally or under the doctrine of equivalents, claims 1 and 10 of
`
`the ’621 patent; and
`
`8.
`
`ProxySG and CAS with MAA; and/or ASG with MAA directly infringes claim 3
`
`of the ’755 patent.
`
`Blue Coat denies infringement of any of the asserted claims of the asserted patents and
`
`denies that Finjan is entitled to any damages. Blue Coat also alleges that the asserted claims of
`
`the ’086, ’408, ’621, and ’755 patents are invalid based on the following theories:
`1.
`
`The combination of “Dynamic Detection and Classification of Computer Viruses
`
`Using General Behavior Patterns” (“Swimmer”) and U.S. Patent No. 5,983,348
`
`(“Ji ’348”) renders obvious claim 24 of the ’086 patent pursuant to 35 U.S.C. §
`
`103;
`
`2.
`
`The combination of U.S. Patent No. 5,860,011 (“Kolawa”) and U.S. Patent No.
`
`6,128,774 (“Necula ’774”) renders obvious claim 22 of the ’408 patent pursuant to
`
`35 U.S.C. § 103;
`
`3.
`
`The combination of Kolawa, U.S. Patent No. 7,398,553 (“Li”), and U.S. Patent
`
`No. 7,636,945 (“Chandnani”) renders obvious claim 22 of the ’408 patent pursuant
`
`to 35 U.S.C. § 103;
`
`4.
`
`The combination of U.S. Patent No. 5,951,698 (“Chen ’698”), U.S. Patent No.
`
`5,623,600 (“Ji ’600”), and “A Secure Environment for Untrusted Helper
`
`Applications (Confining the Wily Hacker)” (“Goldberg”) renders obvious claims 1
`
`5.
`
`6.
`
`and 10 of the ’621 patent pursuant to 35 U.S.C. § 103; and
`
`The combination of Goldberg and Chen ’698 renders obvious claim 3 of the ’755
`
`patent pursuant to 35 U.S.C. § 103.
`
`In response to Blue Coat’s counterclaims for a declaration of noninfringement and
`
`invalidity of the asserted patents, Finjan asserted failure to state a claim, waiver,
`
`collateral estoppel and reserved defenses relating to Blue Coat’s counterclaims.
`
`Dkt. No. 171.
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`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
`
`3
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`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 5 of 18
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`
`
`C.
`Relief Sought
`Finjan’s Position
`
`As set forth in Finjan’s Amended Complaint and Rule 26(a)(1) disclosures, Finjan seeks
`
`monetary and equitable relief. Finjan is seeking a reasonable royalty for Blue Coat’s
`
`infringement and, separately, injunctive relief for future infringement. Finjan also seeks an
`
`accounting of past damages for infringement up to the date of the payment, along with
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`prejudgment and post-judgment interest. Finjan also seeks a declaratory judgment that Blue Coat
`
`infringes all asserted claims and that each and every asserted claim is valid and enforceable.
`
`Finjan’s Amended Complaint identifies the following points of relief:
` an entry of judgment that Blue Coat is infringing the asserted patents;
` an entry of judgment that claims 1, 7, and 13 of the ’844 patent, claims 1 and 2 of
`
`the ’731 patent, and claim 1 of the ’968 patent are valid;
` an injunction to stop Blue Coat and those in privity with Blue Coat from
`
`infringing the asserted patents;
` an award of damages in the form of a reasonable royalty;
` a finding that Blue Coat’s infringement has been willful, wanton, and deliberate
`
`and that Finjan is entitled to trebled damages on this basis;
` a finding the case is exceptional;
` an award of Finjan’s costs and reasonable attorneys’ fees permitted under 35
`
`U.S.C. § 285;
` an accounting of Blue Coat’s infringing sales and revenues, along with
`
`prejudgment and post-judgment interest from the first date of infringement to the
`present3; and
` an injunction to stop future infringement; and
` any further relief that the Court may deem proper and just.
`
`
`3 Blue Coat has improperly refused to produce revenue information for the accused products after
`December 1, 2016. Finjan reserves the right to supplement its damages analysis upon receipt of
`this information.
`
`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
`
`4
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`Blue Coat’s Position
`
`Blue Coat denies that Finjan is entitled to any of its requested relief. To the extent that
`
`any products are found to infringe the asserted patents, Blue Coat further denies that Finjan is
`
`entitled to its requested damages. Properly apportioned, the amount of potential damages is no
`
`more than $627,000. Blue Coat also denies that Finjan is entitled to injunctive relief, particularly
`
`since five of eight asserted patents have expired, and Finjan makes no products that practice the
`
`asserted patents. Further, Blue Coat denies that Finjan is entitled to injunctive relief because,
`
`among other things, Finjan has requested a lump sum damages award that would cover any
`
`alleged future infringement. As set forth in Blue Coat’s Third Amended Answer, Dkt. No. 161,
`
`Blue Coat seeks the following relief:
`1.
`
`A declaration that Blue Coat does not infringe literally or by the doctrine of
`
`equivalents, any valid enforceable claims of the ’494, ’086, ’408, ’844, ’968, ’731,
`
`2.
`
`3.
`4.
`
`’621, and ’755 patents;
`
`A declaration that each and every claim of the ’086, ’408, ’621, and ’755 patents is
`
`invalid;
`
`Dismissal of all of Finjan’s claims in their entirety with prejudice;
`
`A judgment that this is an “exceptional case” and an award of Blue Coat’s
`
`reasonable attorney’s fees, expenses, and costs in this action under 35 U.S.C.
`
`§ 285; and
`
`5.
`
`An award of such other relief as the Court may deem appropriate and just under
`
`the circumstances.
`
`D.
`Federal Jurisdiction and Venue
`The Court has original jurisdiction over this controversy pursuant to 28 U.S.C. §§ 1331
`
`and 1338(a). Jurisdiction and venue are not disputed.
`
`II.
`
`FACTUAL BASIS OF THE ACTION
`A.
`1.
`
`Undisputed Facts
`Finjan is a Delaware corporation with its principal place of business at 2000
`
`University Ave., Ste. 600, East Palo Alto, California 94303.
`
`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
`
`5
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`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 7 of 18
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`2.
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`3.
`4.
`5.
`6.
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`7.
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`8.
`9.
`10.
`11.
`12.
`13.
`14.
`15.
`16.
`17.
`18.
`19.
`20.
`21.
`22.
`23.
`24.
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`Blue Coat is a Delaware limited liability company with its principal place of
`
`business at 350 Ellis Street, Mountain View, California 94043.
`
`Finjan is the owner of the asserted patents.
`
`Shlomo Touboul and Nachson Gal are listed as inventors on the ’844 patent.
`
`Shlomo Touboul is listed as an inventor on the ’968, ’731, ’621, and ’755 patents.
`
`Yigal Mordechai Edery, Nimrod Itzhak Vered, David R. Kroll, and Shlomo
`
`Touboul are listed as inventors on the ’086 and ’494 patents.
`
`Moshe Rubin, Moshe Matitya, Artem Melnick, Shlomo Touboul, Alexander
`
`Yermakov, and Amit Shaked are listed as inventors on the ’408 patent.
`
`The ’844 patent was filed on December 22, 1997.
`
`The ’968 patent was filed on February 27, 2003.
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`The ’731 patent was filed on May 3, 2004.
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`The ’086 patent was filed on May 26, 2009.
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`The ’408 patent was filed on August 30, 2004.
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`The ’494 patent was filed on November 7, 2011.
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`The ’621 patent was filed on February 11, 2015.
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`The ’755 patent was filed on June 5, 2015.
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`The Court has found that the ’844 patent has a priority date of December 22, 1997.
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`The ’968 patent has a priority date of February 27, 2003.
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`The Court has found that the ’731 patent has a priority date of November 6, 1997.
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`The ’408 patent has a priority date of August 30, 2004.
`The ’494 patent has a priority date of November 8, 1996.4
`The ’621 patent has a priority date of January 29, 1997.
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`The ’755 patent has a priority date of January 29, 1997.
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`The ’844 patent issued on November 28, 2000.
`
`The ’968 patent issued on November 15, 2005.
`
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`4 Blue Coat reserves the right to dispute the priority date of the ’494, ’621, and ’755 patents in
`other proceedings.
`
`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
`
`6
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`25.
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`34.
`35.
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`The ’731 patent issued on August 26, 2008.
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`The ’086 patent issued on December 13, 2011.
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`The ’408 patent issued on July 17, 2012.
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`The ’494 patent issued on March 18, 2014.
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`The ’621 patent issued on November 17, 2015.
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`The ’755 patent issued on December 22, 2015.
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`The ’844, ’086, ’494, ’621, and ’755 patents expired on January 29, 2017.
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`The ’968 patent will expire on July 21, 2023.
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`The ’731 patent will expire on April 27, 2019.
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`The ’408 patent will expire on May 27, 2021.
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`If Blue Coat is found to infringe any of the asserted claims of any of the valid
`
`asserted patents, then any damages for such infringement start from August 28,
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`2013 for the ’086 and ’408 patents; March 1, 2016 for the ’786, ’621, and ’755
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`patents; and July 15, 2015 for the ’731 and ’968 patents.
`
`36.
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`The Second Joint Case Management Statement, dated May 1, 2014, references the
`
`’494, ’086 and ’408 patents so Blue Coat was aware of those patents as of that
`
`date. See Finjan, Inc. v. Blue Coat Systems, Inc., No. 13-cv-03999-BLF, Dkt. No.
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`58 (N.D. Cal. filed May 1, 2014) (Second Joint Case Management Statement &
`
`Proposed Order, Appendix B at 1-3).
`
`37.
`
`Blue Coat has been aware of the ’844, ’968, and ’731 patents as of the filing date
`
`of Finjan’s Complaint filed on August 28, 2013. See Finjan, Inc. v. Blue Coat
`
`Systems, Inc., No. 13-cv-03999-BLF, Dkt. No. 1 (N.D. Cal. filed August 28, 2013)
`
`(Complaint for Patent Infringement).
`
`38.
`
`Blue Coat has been aware of the ’621 and ’755 patents as of the filing date of
`
`Finjan’s First Amended Complaint in this action on March 1, 2016.
`
`B.
`1.
`
`Disputed Facts
`Whether the hypothetical negotiation date for the ’494 patent is February 7, 2011
`
`or March 18, 2014.
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`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
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`2.
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`3.
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`4.
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`5.
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`Whether the hypothetical negotiation date for the ’086 patent is February 7, 2011,
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`or December 13, 2011.
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`Whether the hypothetical negotiation date for the ’621 patent is September 22,
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`2015 or November 17, 2015.
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`Whether the hypothetical negotiation date for the ’755 patent is September 22,
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`2015 or December 22, 2015.
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`Whether Blue Coat’s WebPulse/GIN; WSS with WebPulse/GIN; WSS with MAS;
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`and/or ASG with MAA infringes, literally or under the doctrine of equivalents,
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`claims 1, 7, and 15 of the ’844 patent.
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`6.
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`Whether Blue Coat’s ASG with MAA; WSS with WebPulse/GIN; and/or WSS
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`with MAS infringes, literally or under the doctrine of equivalents, claim 1 of the
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`’968 patent.
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`7.
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`Whether Blue Coat’s ASG with MAA; WSS with WebPulse/GIN; and/or WSS
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`with MAS infringes, literally or under the doctrine of equivalents, claims 1 and 2
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`of the ’731 patent.
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`8.
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`Whether Blue Coat’s WebPulse/GIN; WSS with WebPulse/GIN; and/or WSS with
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`MAS infringes, literally or under the doctrine of equivalents, claim 24 of the ’086
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`patent.
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`9.
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`Whether Blue Coat’s WebPulse; and/or WSS with WebPulse directly infringes
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`claim 22 of the ’408 patent.
`10. Whether Blue Coat’s WebPulse/GIN; WSS with WebPulse/GIN; WSS with MAS;
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`ASG with MAA; ProxySG and CAS with MAA; and/or SA with MAA infringes,
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`literally or under the doctrine of equivalents, claims 10, 14, and 16 of the ’494
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`patent.
`11. Whether Blue Coat’s WebPulse/GIN; WSS with MAS; ProxySG and CAS with
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`MAA; and/or ASG with MAA infringes, literally or under the doctrine of
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`equivalents, claims 1 and 10 of the ’621 patent.
`12. Whether Blue Coat’s ProxySG and CAS with MAA; and/or ASG with MAA
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`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
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`directly infringes claim 3 of the ’755 patent.
`13. Whether the combination of Swimmer and Ji ’348 renders obvious claim 24 of the
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`’086 patent pursuant to 35 U.S.C. § 103.
`14. Whether the combination of Kolawa and Necula ’774 renders obvious claim 22 of
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`the ’408 patent pursuant to 35 U.S.C. § 103.
`15. Whether the combination of Kolawa, Li, and Chandnani renders obvious claim 22
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`of the ’408 patent pursuant to 35 U.S.C. § 103.
`16. Whether the combination of Chen ’698, Ji ’600, and Goldberg renders obvious
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`claims 1 and 10 of the ’621 patent pursuant to 35 U.S.C. § 103.
`17. Whether the combination of Goldberg and Chen ’698 renders obvious claim 3 of
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`the ’755 patent pursuant to 35 U.S.C. § 103.
`18. Whether long-felt need for the claimed inventions, copying by others, licensing,
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`praise by others, industry recognition, and commercial success show that the
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`claimed inventions were not obvious.
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`19.
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`The amount adequate to compensate Finjan for Blue Coat’s infringement
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`separately for each of the asserted patents if Blue Coat is found to infringe any
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`asserted claims of any valid asserted patents.
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`20.
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`If Blue Coat is found to infringe the ’494 patent, whether damages start on August
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`28, 2013 or March 18, 2014.
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`21.
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`If Blue Coat is found to infringe the ’844 patent, whether damages start on August
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`28, 2013 or 2014.
`22. Whether Blue Coat was aware of the ’621 and ’755 patents before March 1, 2016
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`when Finjan filed an Amended Complaint against Blue Coat.
`23. Whether Blue Coat was aware of the ’844, ’086, ’731, ’968, and ’408 patents
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`before August 28, 2013 when Finjan filed a complaint against Blue Coat.
`24. Whether the prosecution histories of the ’086, ’494, ’621, and ’755 patents show
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`that the examiner rejected pending claims of each patent for nonstatutory
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`obviousness-type double patenting as being unpatentable over other patents
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`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 11 of 18
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`
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`assigned to Finjan and that, in response, Finjan filed terminal disclaimers, which
`overcame the double patenting rejections.5
`25. Whether the ’086 patent is terminally disclaimed over U.S. Patent Nos. 7,613,926;
`7,480,962; 6,167,520; and 7,647,633.6
`26. Whether the ’494 patent is terminally disclaimed over U.S. Patent Nos. 8,078,086;
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`7,613,926; 7,418,731; 6,480,962; 6,167,520; 7,647,633; 6,804,780; 6,154,844; and
`6,092,194.7
`27. Whether the ’621 patent is terminally disclaimed over U.S. Patent No. 7,480,962.8
`28. Whether the ’755 patent is terminally disclaimed over U.S. Patent No. 7,480,962.9
`29. Whether U.S. Patent No. 7,480,962 is terminally disclaimed over the ’844 patent.10
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`III. DISPUTED LEGAL ISSUES
`1.
`Whether Blue Coat infringes, literally or under the doctrine of equivalents, claims
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`1, 7, and 15 of the ’844 patent under 35 U.S.C. § 271(a).
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`Whether Blue Coat infringes, literally or under the doctrine of equivalents, claim 1
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`of the ’968 patent under 35 U.S.C. § 271(a).
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`Whether Blue Coat infringes, literally or under the doctrine of equivalents, claims
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`1 and 2 of the ’731 patent under 35 U.S.C. § 271(a).
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`Whether Blue Coat infringes, literally or under the doctrine of equivalents, claim
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`24 of the ’086 patent under 35 U.S.C. § 271(a).
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`Whether Blue Coat directly infringes claim 22 of the ’408 patent under 35 U.S.C.
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`2.
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`3.
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`4.
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`5.
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`5 Finjan disputes the relevance of this fact and moves to exclude any evidence or argument
`regarding terminal disclaimers as set forth in its pretrial motion filed concurrently.
`6 Id.
`7 Id.
`8 Id.
`9 Id.
`10 Id.
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`JOINT PRETRIAL STATEMENT
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`6.
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`7.
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`8.
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`9.
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`§ 271(a).
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`Whether Blue Coat infringes, literally or under the doctrine of equivalents, claims
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`10, 14, and 16 of the ’494 patent under 35 U.S.C. § 271(a).
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`Whether Blue Coat infringes, literally or under the doctrine of equivalents, claims
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`1 and 10 of the ’621 patent under 35 U.S.C. § 271(a).
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`Whether Blue Coat directly infringes claim 3 of the ’755 patent under 35 U.S.C. §
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`271(a).
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`Whether the ’086 patent is entitled to an effective filing date of November 8, 1997
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`based upon U.S. Provisional Application No. 60/030,639 under 35 U.S.C. §§
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`119(e), 120.
`10. Whether claim 24 of the ’086 patent is invalid under 35 U.S.C. § 103.
`11. Whether claim 22 of the ’408 patent is invalid under 35 U.S.C. § 103.
`12. Whether claims 1 and 10 of the ’621 patent are invalid under 35 U.S.C. § 103.
`13. Whether claim 3 of the ’755 patent is invalid under 35 U.S.C. § 103.
`14. Whether Finjan is entitled to any damages.
`15. Whether secondary considerations of nonobviousness show that the patented
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`inventions are not obvious.
`16. Whether Finjan is entitled to a finding that Blue Coat’s infringement is willful,
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`wanton, and deliberate and that Finjan is entitled to trebled damages on this basis.
`17. Whether Finjan is entitled to a judgment and order that this is an exceptional case
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`within the meaning of 35 U.S.C. § 285 and awarding Finjan its costs, enhanced
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`damages, and reasonable attorneys’ fees.
`18. Whether Blue Coat is entitled to a judgment and order that this is an exceptional
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`case within the meaning of 35 U.S.C. § 285 and awarding to Finjan its costs,
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`enhanced damages, and reasonable attorneys’ fees.
`19. Whether Finjan is entitled to a permanent injunction pursuant to 35 U.S.C. § 283
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`for Blue Coat’s infringement.
`20. Whether Finjan is entitled to a judgment and order requiring Blue Coat to give an
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`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 13 of 18
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`accounting of all infringing sales and revenues, together with prejudgment and
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`post-judgment interest from the date of first infringement of the asserted patents.
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`35 U.S.C. § 284; 28 U.S.C. § 1961.
`21. Whether Finjan may argue that Blue Coat had awareness of the ’621, ’755, ’844,
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`’086, ’731, ’968, and ’408 patents prior to the filing of the operative complaint
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`asserting each of the respective patents for the first time.
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`22.
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`The Parties also incorporate the disputed facts listed in Section II.B above to the
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`extent that they involve disputed legal issues and/or mixed questions of law and
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`fact.
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`IV.
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`ESTIMATE OF TRIAL TIME
`The Parties anticipate that each party will have 18 hours of trial time, excluding jury
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`selection, opening statements, and closing statements, lasting from October 30, 2017 to
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`November 10, 2017. The Parties agree that there will be no more than one hour per side for
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`opening statements and no more than one hour per side for closing statements.
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`V.
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`TRIAL ALTERNATIVES AND OPTIONS
`A.
`Settlement Discussion
`The Parties have engaged in settlement discussions, which have been unsuccessful.
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`Further negotiations are not likely to be productive at this time.
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`B.
`Amendments or Dismissals
`Neither party has any proposed amendments to the pleadings or dismissals of Parties,
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`claims, or defenses.
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`C.
`Bifurcation or Separate Trial of Issues
`Neither party desires bifurcation or separate trial of specific issues.
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`VI. APPENDICES
`The following Appendices are attached hereto:
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`Finjan’s Witness List
`Appendix A
`Blue Coat’s Witness List
`Appendix B
`Joint Exhibit List
`Appendix C-1
`Appendix C-2 Finjan’s Exhibit List and Objections Thereto
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`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 14 of 18
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`Appendix E
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`Appendix C-3 Blue Coat’s Exhibit List and Objections Thereto
`Appendix D
`Finjan’s Discovery Responses (including Deposition Designations) and
`Objections Thereto
`Blue Coat’s Discovery Responses (including Deposition Designations) and
`Objections Thereto
`VII. STIPULATIONS
`The following stipulations were agreed upon by the Parties as discussed below, and are
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`made a part of this Pretrial Order.
`1.
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`The Parties agree the testimony of experts will be limited to the opinions disclosed
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`in the expert’s report. Any opinion that is not disclosed in an expert’s report is
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`objectionable and shall not be allowed into evidence in the event the objection is
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`sustained.
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`2.
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`The Parties agree that no party may argue or present evidence to the jury regarding
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`any issues of law or equitable issues upon which the jury will not be making a
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`determination. Specifically, the Parties agree that no party will argue or present
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`evidence to the jury that Finjan seeks an injunction, that the Court may award
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`interest on any damages awarded, or that there may be an appeal of the verdict.
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`3.
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`Blue Coat agrees not to refer in this proceeding to Finjan at trial as a “patent troll”
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`or “patent assertion entity.” Finjan may not refer to Blue Coat at trial as a
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`“copycat” or “efficient infringer.” The Parties may make neutral, factual
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`statements concerning each other’s business.
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`Blue Coat agrees not to present in this proceeding any invalidity theory against the
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`’494 patent.
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`Neither party may seek testimony about billings or payments made to fact
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`witnesses.
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`Blue Coat agrees not to argue in this proceeding that Blue Coat did not exist
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`during the time of infringement or for purposes of calculating damages.
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`Blue Coat agrees not to offer in this proceeding evidence regarding non-infringing
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`alternatives or design arounds.
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`Blue Coat agrees not to present in this proceeding an invalidity defense based upon
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`4.
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`5.
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`6.
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`7.
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`8.
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`JOINT PRETRIAL STATEMENT
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`Case 5:15-cv-03295-BLF Document 289 Filed 09/21/17 Page 15 of 18
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`obviousness-type double patenting.11
`Blue Coat agrees not to present in this proceeding any evidence, argument, or
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`9.
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`testimony regarding a laches defense.
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`10.
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`The Parties agree to work together to narrow all objections, including the
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`objections to exhibits and deposition testimony found in this Pretrial Statement.
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`11.
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`The Parties agree to the following procedure which will govern the disclosure of
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`witnesses, exhibits, deposition testimony, and demonstratives to use at trial and the
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`process to identify any objections remaining between the Parties with regard to
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`these disclosures:
`a.
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`At 7:30 PM two days before each day of trial (e.g., Sunday night for a
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`Tuesday trial day), each party will exchange by email the following for that
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`trial day:
`i.
`ii.
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`A list of witnesses the party intends to call for direct examination;
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`A list of trial exhibits for each witness it intends to present through
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`direct examination;
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`iii.
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`A list of the deposition testimony it intends to introduce (either by
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`video or through a reading of the transcript);
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`b.
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`At 7:30 PM the day before a day of trial (e.g., Monday night for a Tuesday
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`trial day), each party will exchange by email the following for that trial
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`day:
`i.
`ii.
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`Copies of demonstratives to be used during direct examination.
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`Identification of deposition counter designations to be included
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`when the other party introduces its identified deposition testimony.
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`c.
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`At 9:00 PM the day before a day of trial, the Parties shall meet and confer
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`regarding objections to witnesses, trial exhibits, deposition testimony, and
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`11 Blue Coat intends to raise double patenting and related issues in the context of damages.
`Finjan opposes this as set forth in its pretrial motion filed concurrently.
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`JOINT PRETRIAL STATEMENT
`15-cv-03295-BLF-SVK
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`demonstratives. To the extent there are unresolved issues, the issues will
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`be presented to the Court the morning of the trial day.
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`12.
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`In addition, the Parties agree to the following procedures for the exchange of
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`demonstratives to be used during opening and closing arguments, physical
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`exhibits, and source code:
`a.
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`The Parties will exchange demonstratives to be used during opening and
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`closing arguments by 7:30 PM the day before the trial day they will be
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`used, and a meet-and-confer at 9:00 PM that day regarding objections to
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`those demonstratives.
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`b.
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`Copies of physical exhibits will be available for inspection 48 hours before
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`a party intends to