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`Case 5:15-cv-03295-BLF Document 315 Filed 09/28/17 Page 1 of 7
`
`
`
`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,
`
`Case No.: 15-cv-03295-BLF-SVK
`
`Plaintiff,
`
`v.
`
`BLUE COAT SYSTEMS LLC, a Delaware
`Corporation,
`
`Defendant.
`
`DEFENDANT BLUE COAT SYSTEMS
`LLC’S OPPOSITION TO PLAINTIFF
`FINJAN, INC.’S MOTION IN LIMINE
`NO. 1 TO PRECLUDE DISCUSSION
`OF IRRELEVANT INFORMATION
`
`Pretrial: October 5, 2017
`Time:
`1:30 p.m.
`Place: Courtroom 3, 5th Floor
`Judge: Honorable Beth Labson Freeman
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 1
`15-cv-03295-BLF-SVK
`
`
`
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`

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`Case 5:15-cv-03295-BLF Document 315 Filed 09/28/17 Page 2 of 7
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`
`
`TABLE OF ABBREVIATIONS
`
`
`Plaintiff Finjan, Inc.
`Defendant Blue Coat Systems LLC
`Deposition Transcript of Dr. Atul Prakash
`Expert Report of Dr. Atul Prakash
`Plaintiff Finjan, Inc.’s Motion in Limine No. 1 to Preclude Discussion
`of Irrelevant Information, Dkt. No. 290
`Declaration of Hannah Lee in Support of Plaintiff Finjan Inc.’s Motions
`in Limine Nos. 1-4 and Daubert Motion, Dkt. No. 304
`Declaration of Robin L. Brewer in Support of Defendant Blue Coat
`Systems LLC’s Motions in Limine, Dkt. No. 307
`Declaration of Robin L. Brewer in Support of Defendant Blue Coat
`Systems LLC’s Oppositions to Motions in Limine
`
`Finjan or Plaintiff
`Blue Coat or Defendant
`Prakash Dep. Tr.
`Prakash Rpt.
`Br.
`
`Lee Decl.
`
`Brewer Decl.1
`
`Brewer Opp. Decl. 2
`
`
`1 Unless otherwise specified, all numeric exhibits refer to those attached to the Brewer Decl.
`2 Unless otherwise specified, all alphabetic exhibits refer to those attached to the Brewer Opp.
`Decl.
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 1
`15-cv-03295-BLF-SVK
`
`
`i
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`

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`Case 5:15-cv-03295-BLF Document 315 Filed 09/28/17 Page 3 of 7
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`Finjan shoehorns into one motion three unrelated categories of evidence that courts
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`regularly admit: (1) information regarding Blue Coat’s patents is relevant and admissible as
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`background to introduce Blue Coat to the jury; (2) expert testimony regarding the technological
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`background of the asserted patents is relevant and beneficial to the jury; and (3) the amount
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`Finjan has paid its experts across repeated litigations is relevant and probative of bias.
`
`I.
`
`BLUE COAT’S PATENTS ARE DIRECTLY RELEVANT TO THIS CASE
`Ruling on Finjan’s motion to exclude evidence of Blue Coat’s patent portfolio3 in Blue
`Coat I, this Court held: “[T]o the extent Plaintiff seeks to preclude Defendant from introducing
`
`generalized background information about its business and patented technology, that request is
`
`denied.” See Finjan, Inc. v. Blue Coat Sys., No. 13-cv-03999-BLF, 2015 U.S. Dist. LEXIS
`
`88760, at *5 (N.D. Cal. July 8, 2015); see also Model Patent Jury Instructions for the Northern
`
`District of California (July 16, 2015) A.3 (contemplating introduction of defendant’s patents). As
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`Blue Coat informed Finjan, Blue Coat seeks to introduce evidence of its patent portfolio for that
`
`exact purpose here, i.e., to provide “generalized background information about its business and
`
`patented technology.” See Brewer Opp. Decl. at ¶ 1. Blue Coat seeks to do so through the same
`
`witness who testified on the topic in Blue Coat I, Steven Schoenfeld, Senior Vice President of
`
`Product Management at Symantec and previously Senior Vice President of Products at Blue Coat.
`
`Blue Coat’s patents are relevant to rebut Finjan’s allegations of copying and willful
`
`infringement. See Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197-WHO, 2016 U.S. Dist. LEXIS
`
`189272, at *26 (N.D. Cal. Aug. 22, 2016) (“[Defendant]’s patents may be relevant to rebut
`
`Finjan’s claim of willful infringement.”) (citing Carnegie Mellon Univ. v. Marvell Tech. Grp.,
`
`Ltd., No. 09-290, 2012 U.S. Dist. LEXIS 157335, at *7 (W.D. Pa. Nov. 2, 2012) (“[T]he size and
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`scope of [defendant]’s patent portfolio, and the complexity of the patents-in-suit, are relevant
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`[and] ha[ve] the tendency to make the existence of no acts of copying/willfulness [and] non-
`
`
`3 Finjan attempts to differentiate the instant motion from its motion in Blue Coat I by now calling
`the same subject patent portfolio “Symantec’s patents.” See Br. at 1-4. Blue Coat does not seek
`to introduce evidence regarding patents developed by Symantec. Blue Coat only seeks to
`introduce evidence regarding patents developed or acquired by Blue Coat prior to its acquisition
`by Symantec. That Blue Coat’s patents are now assigned to Symantec is irrelevant and highlights
`another concern: Finjan’s confusing use of “Symantec,” rather than “Blue Coat.”
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 1
`15-cv-03295-BLF-SVK
`
`
`1
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`Case 5:15-cv-03295-BLF Document 315 Filed 09/28/17 Page 4 of 7
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`infringement . . . ‘more probable than it would be without such evidence.’”)).
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`Finjan additionally cannot claim lack of notice because Mr. Schoenfeld testified on the
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`same subject matter in Blue Coat I, and Blue Coat’s disclosures in this case are the same as they
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`were in Blue Coat I. See Br. at 3. Blue Coat disclosed that Mr. Schoenfeld may testify regarding
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`“the accused products,” “Blue Coat’s . . . organization, and policies,” and “Blue Coat’s history
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`and research and development; Blue Coat’s acquisition and licensing.” See Lee Decl., Ex. 5 at 2;
`
`Ex. E at 5. Mr. Schoenfeld was also Blue Coat’s designated 30(b)(6) witness regarding
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`“identification of all licensing agreements between Blue Coat and any third party regarding
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`patents, proprietary technology, or know-how related to the accused instrumentalities.” See
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`Brewer Opp. Decl. at ¶ 2. Finjan did not seek a witness, and Blue Coat never designated or
`
`expected Mr. Schoenfeld to testify regarding the technical content of the patents. Finjan did not
`
`complain about lack of knowledge after taking his deposition and should not be allowed to do so
`
`now. Finally, Finjan distorts Mr. Schoenfeld’s prior trial testimony on the subject, which was
`
`brief. See Br. at 3. The testimony shows Mr. Schoenfeld’s general knowledge of Blue Coat’s
`patents.4 See Lee Decl., Ex. 1 (Trial Tr.) at 1214:3-1215:8.
`That Blue Coat innovates and owns approximately 200 of its own patents is no surprise to
`
`Finjan. Mr. Schoenfeld is a knowledgeable, disclosed witness on Blue Coat’s patents. Blue
`
`Coat’s patents are relevant to Blue Coat’s story, the accused products, and Finjan’s
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`copying/willfulness allegations. The Court denied the version of this motion that Finjan filed in
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`Blue Coat I, and Finjan’s motion in limine should again be denied.
`
`II.
`
`COURTS ROUTINELY ALLOW EXPERT TECHNOLOGY TUTORIALS
`“Several courts in this district have allowed parties to use undisclosed references to show
`
`the background of the art or the knowledge of one of ordinary skill in the art. . . . [Defendant]
`
`may use references, regardless of whether they have been previously disclosed, to show the
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`background of the art or the knowledge of one of ordinary skill in the art.” Ex. A, Finisar Corp.
`
`
`4 Finjan also misrepresents Mr. Schoenfeld’s lack of knowledge regarding IBM’s patents as lack
`of knowledge about Blue Coat’s patents. See Br. at 3 n.2 (citing Lee Decl., Ex. 1 (Trial Tr.) at
`1286:15-1287:4).
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 1
`15-cv-03295-BLF-SVK
`
`
`2
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`

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`Case 5:15-cv-03295-BLF Document 315 Filed 09/28/17 Page 5 of 7
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`v. Nistica, No. 13-cv-03345-BLF, slip op. at 2-3 (N.D. Cal. Dec. 1, 2015) (denying motion to
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`strike undisclosed background art from expert report); Finjan, Inc. v. Sophos, Inc., No. 14-cv-
`
`01197-WHO, 2016 U.S. Dist. LEXIS 68128, at *35-36 (N.D. Cal. May 24, 2016) (same); see
`
`also In re Omeprazole Patent Litig. No. M-21-81, 2002 U.S. Dist. LEXIS 3225, at * (S.D.N.Y.
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`Feb. 27, 2002) (“[I]t is, of course, acceptable for an expert to consult reference materials to create
`
`a background for an opinion at trial . . . .”).
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`Blue Coat’s invalidity expert Dr. Atul Prakash includes a section in his expert report titled
`
`“Background of the Relevant Technologies,” in which he “sets forth a brief overview of the
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`technology at issue in this litigation,” i.e., a “tutorial.” See Ex. B (Prakash Rpt.) at 11-56. Dr.
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`Prakash confirmed during deposition that he offers that section “[j]ust as general background
`
`knowledge that a person skilled in the art would have known” and not as “part of [his]
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`obviousness analysis.” See Ex. C (Prakash Dep. Tr.) at 17:23-18:4. Similarly, Finjan offers a
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`“Technology Tutorial” by Dr. Harry Bims, who is only disclosed to testify about “[t]echnology
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`involved in this case.” See Dkt. No. 289-1 at 1. Dr. Prakash should be allowed to respond.
`
`Finjan’s only case cite supports Blue Coat’s position. See Br. at 5 (citing Largan
`
`Precision Co., Ltd. v. Genius Elec. Optical Co., Ltd., No. 13-cv-02502-JD, 2014 WL 6882275, at
`
`*5 (N.D. Cal. Dec. 5, 2014)). In Largan, the court struck an expert report that used an
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`undisclosed prior art reference for invalidity of a claim limitation, distinguishing between such
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`improper use and use “only as background material.” Largan, 2014 WL 6882275, at *5-6.
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`Unlike the expert in Largan, Dr. Prakash has no intention to use background references to opine
`
`on invalidity of specific claim limitations, as he explained in his deposition. See Ex. C (Prakash
`
`Dep. Tr.) at 17:23-18:4. Thus, Finjan’s motion must be denied.
`
`III. THE AMOUNT FINJAN HAS PAID FOR REPEATED TESTIMONY FROM THE
`SAME EXPERTS IS ADMISSIBLE EVIDENCE RELEVANT TO BIAS
`
`“[C]ompensation is unquestionably relevant to a witness’s bias and is usually one of the
`
`first questions in cross-examining a retained expert.” Blue Coat Sys., 2015 U.S. Dist. LEXIS
`
`88760, at *12 (distinguishing employee-like fact witnesses from experts); see also Garlick v.
`
`Cnty. of Kern, No. 1:13-CV-01051-LJO-JLT, 2016 U.S. Dist. LEXIS 50520 *18-19 (E.D. Cal.
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 1
`15-cv-03295-BLF-SVK
`
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`3
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`

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`Case 5:15-cv-03295-BLF Document 315 Filed 09/28/17 Page 6 of 7
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`Apr. 14, 2016) (allowing potential bias questions regarding “any business affiliation [expert] has
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`with a party to this litigation; that he has testified hundreds of times in police dog cases and never
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`conceded a bad bite; or, that he receives compensation for his work as an expert (including what
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`percentage of his income that produces)”); Accentra Inc. v. Staples, No. CV 07-5862 ABC(RZx),
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`2010 U.S. Dist. LEXIS 144330, at *29 (C.D. Cal. Sept. 22, 2010) (denying motion in limine
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`because “any compensation arrangement (or lack thereof) and alleged bias are matters of
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`credibility at trial, not admissibility at this stage”).
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`Finjan concedes that “payments made in connection with this litigation” may be allowed.
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`See Br. at 5. Finjan also concedes that “the total number of cases they have worked on for
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`Finjan” is allowed. See Sophos, Inc., 2016 U.S. Dist. LEXIS 189272, at *25; Br. at 5. But Finjan
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`contests Blue Coat’s ability to reference “the total amount an expert has billed, invoiced or been
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`paid by the parties or to a particular law firm” based on a supposed privacy right under
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`California’s Constitution. See Br. at 5. Experts have no such right. See People v. Buffington,
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`152 Cal. App. 4th 446, 459 (2007) (allowing testimony that expert earned $180,000 in one year as
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`“relevant because a rational inference can be drawn that the more defendants for whom [expert]
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`testifies, the more he is not giving his true opinion in these cases, or that his analysis is not as
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`trustworthy as it might be”).
`
`Finjan cites two inapposite cases. See Br. at 5 (citing Int’l Fed’n of Prof’l & Tech. Eng’rs
`
`v. Superior Court, 165 P.3d 488, 491 (Cal. 2007) (excluding “public employee names and
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`salaries”); Music Grp. Macao Commercial Offshore Ltd. v. Foote, No. 14-cv-03078-JSC, 2015
`
`WL 2170121, at *2 (N.D. Cal. May 8, 2015) (holding that employment agreements are not
`
`discoverable)). Finjan’s experts are not employees, and this is not a discovery issue. To the
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`contrary, due to the importance of a “full inquiry into such potential sources of bias,” the Federal
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`Rules of Civil Procedure require full disclosure of an expert’s compensation. See Fed. R. Civ. P.
`
`26; Fed. R. Civ. P. 26 advisory committee’s note to 2010 amendment (“It is not limited to
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`compensation for work forming the opinions to be expressed, but extends to all compensation for
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`the study and testimony provided in relation to the action. Any communications about additional
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`benefits to the expert, such as further work in the event of a successful result in the present case,
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 1
`15-cv-03295-BLF-SVK
`
`
`4
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`

`

`Case 5:15-cv-03295-BLF Document 315 Filed 09/28/17 Page 7 of 7
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`
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`would be included.”). Given the importance and allowability of establishing whether Finjan’s
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`experts are biased, Finjan’s request to exclude evidence and argument regarding expert
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`compensation must be denied.
`
`IV. CONCLUSION
`For the foregoing reasons, Finjan’s motion in limine to exclude three unrelated categories
`
`of evidence—all of which are regularly allowed—must be denied.
`
`Dated: September 28, 2017
`
`
`MORRISON & FOERSTER LLP
`
`By:
`
`/s/ Stefani E. Shanberg
`Stefani E. Shanberg
`
`Attorneys for Defendant
`BLUE COAT SYSTEMS LLC
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`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 1
`15-cv-03295-BLF-SVK
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`5
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