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`Case 5:15-cv-03295-BLF Document 316 Filed 09/28/17 Page 1 of 6
`
`
`
`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. 2 TO PRECLUDE EVIDENCE OF
`PURPORTED GOVERNMENT SALES
`
`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. 2
`15-cv-03295-BLF-SVK
`
`
`
`
`

`

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`Case 5:15-cv-03295-BLF Document 316 Filed 09/28/17 Page 2 of 6
`
`
`
`TABLE OF ABBREVIATIONS
`
`
`Plaintiff Finjan, Inc.
`Defendant Blue Coat Systems LLC
`Plaintiff Finjan, Inc.’s Motion in Limine No. 2 to Preclude Evidence of
`Purported Government Sales, Dkt. No. 291
`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
`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. 2
`15-cv-03295-BLF-SVK
`
`
`i
`
`

`

`Case 5:15-cv-03295-BLF Document 316 Filed 09/28/17 Page 3 of 6
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`Finjan asks the Court to decide now that Blue Coat has identified insufficient evidence in
`support of its affirmative defense relating to sales to the Federal government. 3 Blue Coat
`disclosed more than sufficient information—including detailed spreadsheets identifying specific
`
`Federal government entities that have purchased Blue Coat’s products and channel partner
`
`agreements that demonstrate these purchases have been authorized by the Federal government—
`
`for the issue to go to the jury. Finjan’s motion should be denied.
`
`I.
`
`LEGAL STANDARD
`Section 1498 provides that whenever a patented invention is “used or manufactured by or
`
`for the United States without license of the owner thereof or lawful right to use or manufacture
`
`the same, the owner’s remedy shall be by action against the United States in the United States
`
`Court of Federal Claims for the recovery of his reasonable and entire compensation for such use
`
`and manufacture.” 28 U.S.C. § 1498; see also Finjan, Inc. v. Secure Computing, Inc., 626 F.3d
`
`1197, 1209 (Fed. Cir. 2010) (“Finjan concedes that Parr incorrectly considered sales to the
`
`government. See Transcript at 669:20-21 (‘Q: You also included sales to the federal government?
`
`A: Absolutely, yes.’). This was impermissible because a patentee can recover damages only from
`
`the government for patented ‘use or manufacture for the United States.’ 28 U.S.C. § 1498(a).”).
`
`Use or manufacture “by a contractor, a subcontractor, or any person, firm, or corporation for the
`
`Government and with the authorization or consent of the Government, shall be construed as use
`
`or manufacture for the United States.” Id. The Federal Circuit has further held that authorization
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`may be implied. See TVI Energy Corp. v. Blane, 806 F.2d 1057, 1060 (Fed. Cir. 1986).
`
`II.
`
`BLUE COAT’S GOVERNMENT SALES DEFENSE IS ADEQUATELY
`DISCLOSED
`
`A detailed spreadsheet identifying sales to specific government departments and agencies
`
`suffices to present an issue of fact under § 1498 for the jury to decide. See, e.g., Open Text S.A.,
`
`v. Box, Inc., No. 13-cv-04910, 2015 WL 428345, at *2 (N.D. Cal. Jan. 30, 2015) (finding detailed
`
`3 Finjan requests the Court decide the merits of Blue Coat’s affirmative defense, which is an
`improper summary judgment motion. See Tyco Thermal Controls, LLC v. Redwood Industrials,
`LLC, No. 06-cv-07164-SBA, 2012 WL 2792435, at *2 (N.D. Cal. July 9, 2012) (“Tyco’s
`arguments relate to the substantive merit of Tyco’s claim for damages against Rowe, which is
`outside the purview of a motion in limine.”).
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 2
`15-cv-03295-BLF-SVK
`
`
`1
`
`

`

`Case 5:15-cv-03295-BLF Document 316 Filed 09/28/17 Page 4 of 6
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`spreadsheets showing sales to the Federal government sufficient to create a question of fact for
`
`the jury under § 1498); TecSec, Inc. v. IBM Corp., No. 10-cv-115, 2011 U.S. Dist. LEXIS 159356
`
`at *6-10 (E.D. Va. 2011) (same). Finjan does not dispute that Blue Coat sells products to the
`
`Federal government or that Blue Coat produced detailed spreadsheets showing the same. Br. at 2.
`
`For example, in its interrogatory responses, Blue Coat identified spreadsheets extracted from Blue
`
`Coat’s ERP system identifying end users, including government agencies, at BC2-1888571, BC2-
`
`1888578, BC2-1895235. Lee Decl., Ex. 6 at 6; see also Ex. E at 68:13-20, 87:1-13. Finjan
`
`ignores these facts and mischaracterizes the record.
`
`As an initial matter, it is disingenuous for Finjan to claim that it had insufficient notice of
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`Blue Coat’s government sales defense. Finjan’s claim that it had insufficient notice of the
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`support for Blue Coat’s defense is similarly flawed in view of Blue Coat’s disclosures. The
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`spreadsheets produced by Blue Coat sufficiently disclose its government sales and are highly
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`relevant to Blue Coat’s affirmative defense. See, e.g., Open Text, 2015 WL 428345, at *2. They
`
`include detailed sales information by product, identify the distributors and resellers who sold the
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`product, and identify the end customer for the product, such as
`
`
`
`, among others. See,
`
`e.g., Ex. G. These spreadsheets demonstrate that over the damages period, Blue Coat made
`
`
`
`agencies. Ex. H. As these spreadsheets clearly identify Federal government agencies that
`
`purchased Blue Coat products, they alone justify denying Finjan’s motion. See, e.g., Open Text,
`
`, to more than 30 different Federal government
`
`2015 WL 428345, at *2.
`
`Blue Coat also produced and identified agreements with its channel partners. As is typical
`
`for a network security company, Blue Coat sells its products through a distributor network. Ex. F
`
`at 38:7-9. Blue Coat contracts with its channel partners, and its channel partners contract with the
`
`Federal government. Id. at 38:10-39:12.
`
`
`
` Id. at 46:19-47:25. The documents identified in Blue Coat’s
`
`supplemental interrogatory response include letters further supporting Blue Coat’s defense that
`
`these sales were authorized by the Federal government, such as copyright release letters for
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 2
`15-cv-03295-BLF-SVK
`
`
`2
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`

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`Case 5:15-cv-03295-BLF Document 316 Filed 09/28/17 Page 5 of 6
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`government use and
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` See, e.g., Ex. I, Ex. J.
`
`
`
`Blue Coat’s use of Rule 33(d) was also appropriate, given the number of channel partners
`
`implicated, the nature of the documents responsive to Finjan’s request (e.g., spreadsheets,
`
`agreements, and letters), and the burden of determining the precise response to Finjan’s
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`interrogatory, which would have been substantially the same for either party. Fed. R. Civ. P.
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`33(d) (permitting reference to business records “if the burden of deriving or ascertaining the
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`answer will be substantially the same for either party.”); Finjan, Inc. v. Proofpoint, Inc., No. 13-
`
`cv-05808-HSG, 2015 WL 6178165, at *2 (N.D. Cal. Oct. 21, 2015). For example, the produced
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`spreadsheets—which constitute a good summary—demonstrate that at least 10 distributors and 67
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`resellers make sales to the Federal government.
`
`The cases cited by Finjan are inapposite. See, e.g., Wyatt Tech. Corp. v. Malvern
`
`Instruments, Inc., No. 07-cv-08298, 2010 WL 11505684, at *20 (C.D. Cal. Jan. 25, 2010);
`
`Lawman v. City & Cty. of San Francisco, 159 F.Supp.3d 1130, 1140-41 (N.D. Cal. 2016). In
`
`Wyatt, the Court excluded evidence based on responses that did not actually address the
`
`interrogatories at issue. 2010 WL 11505684, at *20. In Lawman, the Court found that documents
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`cited pursuant to 33(d) failed to put the other party on notice of a theory where the documents
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`contained no facts about the theory at issue. 159 F.Supp.3d at 1140-41. In contrast, here, the
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`documents identified are responsive to Finjan’s interrogatory and provide sufficient notice of
`
`Blue Coat’s voluminous support for its affirmative defense.
`
`Finjan also mischaracterizes the testimony of Blue Coat’s 30(b)(6) witness. See Br. at 2
`Finjan never asked Blue Coat’s witness to identify Federal government sales. Ex. F at 69:22-
`
`70:16. Rather, Finjan asked generally about government sales,
`
`
`
` Id. Blue Coat’s witness did not identify how a sale
`
`qualifies as a Federal government sale because that question was never asked. Finjan also heard
`
`deposition testimony, which it ignores, explaining that Blue Coat gives presentations to the
`
`Federal government. Ex. K at 130:5-131:3, 137:2-6, 181:23-182:1, 184:24-185:1.
`
`Finally, this evidence should go before the jury because the probative value far outweighs
`
`BLUE COAT’S OPP. TO MOT. IN LIMINE NO. 2
`15-cv-03295-BLF-SVK
`
`
`3
`
`

`

`Case 5:15-cv-03295-BLF Document 316 Filed 09/28/17 Page 6 of 6
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`
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`any possible jury confusion and there is no undue surprise to Finjan. Blue Coat explained to
`
`Finjan during meet and confers that it does not sell products directly and evidence of government
`
`sales comprise distributor agreements and financial spreadsheets—which Blue Coat specifically
`
`identified—listing sales to the Federal government. Brewer Opp. Decl. at ¶ 15. Blue Coat did
`
`exactly what it said it would, and Finjan’s cases do not support excluding evidence or Blue Coat’s
`
`affirmative defense under these circumstances. See, e.g., Gardner v. Federal Express Corp., 14-
`
`cv-01082-THE, 2015 WL 5821428, at *2-3 (N.D. Cal. Oct. 6, 2015) (excluding evidence of
`
`minimal probative value that risked jury confusion as to a separate issue at trial); Markos v. Sears,
`
`Roebuck & Co., 05-cv-03051-CBM, 2007 WL 5162457, at *2 (C.D. Cal. Mar. 19, 2007)
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`(excluding undisclosed theory for which defendant had no opportunity to take discovery).
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`The identified evidence, individually and certainly in its totality, is more than sufficient to
`
`demonstrate use and implied authorization by the Federal Government. See TVI, 806 F.2d at
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`1060. To find otherwise would preclude all companies reliant on a distributor network from
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`asserting a § 1498 affirmative defense and undermine the policy behind this statute, which is to
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`ensure the Federal government’s supply of products is not interrupted. See, e.g., Open Text, 2015
`
`WL 428345, at *1.
`
`III. CONCLUSION
`Blue Coat identified sufficient evidence in support of its affirmative defense. Finjan’s
`
`motion should be denied, and this issue should be resolved by the jury.
`
`
`
`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. 2
`15-cv-03295-BLF-SVK
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