Case 5:15-cv-03295-BLF Document 405 Filed 11/05/17 Page 1 of 7
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`PAUL 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
`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.
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`
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`
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`Plaintiff,
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`v.
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`SAN JOSE DIVISION
`FINJAN, INC., a Delaware Corporation,
`Case No.: 15-cv-03295-BLF-SVK
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`FINJAN’S RESPONSE TO BLUE COAT’S
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`NOVEMBER 2, 2017 OBJECTIONS
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`REGARDING INFRINGEMENT UNDER
`§ 271(A) BY ITS MANUFACTURE AND
`USE OF GIN
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`BLUE COAT SYSTEMS LLC, a Delaware
`Corporation,
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`Defendant.
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`FINJAN’S RESP. TO BLUE COAT’S NOV. 2, 2017 OBJS.
`RE: INFRINGEMENT UNDER § 271(A)
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`CASE NO. 15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 405 Filed 11/05/17 Page 2 of 7
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`Finjan has substantial evidence that Blue Coat infringes under 35 U.S.C. § 271(a) through its
`making and using the Global Intelligence Network (“GIN”) within the United States. Blue Coat
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`improperly conflates different concepts of the law of infringement to allege that Finjan must show that
`GIN is made, used, and sold in the U.S. to prove infringement under §271(a), when in fact, Finjan can
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`establish infringement through any one of these actions. Carnegie Mellon Univ. v. Marvell Tech. Grp.,
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`Ltd., 807 F.3d 1283, 1306–07 (Fed. Cir. 2015), reh’g en banc denied in part, 805 F.3d 1382 (Fed. Cir.
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`2015) (“§ 271(a)…states a clear definition of what conduct Congress intended to reach—making or
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`using or selling in the United States or importing into the United States, even if one or more of those
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`activities also occur abroad.”) (emphasis in original). As proven at trial, GIN and each of its
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`components, infringes Finjan’s asserted patents under § 271(a) because it is made and used in the U.S.
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`Thus, infringement under § 271(a) can be proven by a preponderance of the evidence without a
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`showing that GIN is sold in the U.S.
`A.
`Blue Coat is estopped from arguing that “WebPulse” (a component of GIN) is not made in the
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`Blue Coat is Estopped from Arguing that WebPulse is Made Outside the U.S.
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`U.S., because Blue Coat attempt to make this argument in the first case in its post-trial motion for
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`judgment as a matter of law (“JMOL”) and failed to prevail. Blue Coat I, Dkt. No. 543 at 9-10. In that
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`case, this Court held that Blue Coat infringed by making WebPulse in Draper, Utah and that “Blue
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`Coat did not contest Finjan’s evidence that WebPulse was made and pushed out of Utah . . . . there was
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`substantial evidence for the jury to conclude that WebPulse was made in the United States.” Id. at 10.
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`Blue Coat did not appeal the JMOL Order to the Federal Circuit, and it is now collaterally estopped
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`from arguing that WebPulse is not made in the U.S. Dkt. No. 276 at 22-23 (collaterally estopping Blue
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`Coat from re-litigating the “identical” issues); see also Roche Palo Alto LLC v. Apotex, Inc., 526 F.
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`Supp. 2d 985, 995 (N.D. Cal. 2007), aff’d, 531 F.3d 1372 (Fed. Cir. 2008) (finding that issue
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`preclusion (collateral estoppel) prevented accused infringer from re-litigating issues it previously
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`raised and lost). Blue Coat cannot argue that there are any new circumstances from the previous case,
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`as neither Finjan nor Blue Coat dispute now that WebPulse is still made and updated from the U.S. for
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`1
`FINJAN’S RESP. TO BLUE COAT’S NOV. 2, 2017 OBJS.
`RE: INFRINGEMENT UNDER § 271(A)
`
`CASE NO. 15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 405 Filed 11/05/17 Page 3 of 7
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`all its users worldwide. Trial Tr. at 889:9-23 (admissions that WebPulse developed in the U.S. and
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`updates pushed from the U.S.).
`B.
`Every component of GIN is made in the U.S. This has already been, and will be further
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`GIN is Made in the U.S.
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`established at trial with substantial evidence through admitted trial exhibits, expert testimony, fact
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`testimony, and Blue Coat’s admissions. Software is made when the source code is compiled into a
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`program. CNET Networks, Inc. v. Etilize, Inc., 528 F. Supp. 2d 985, 994 (N.D. Cal. 2007). The
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`evidence at trial has shown that all of GIN’s source code is maintained in the U.S., it is compiled in the
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`U.S., and all updates of GIN are made in the U.S. and are pushed out to all of its data centers.
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`Accordingly, every version of GIN running on any of Blue Coat’s worldwide data centers are made in
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`the U.S. This is true for every component of GIN involved in this case – WebPulse and FRS
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`(including GIN sandboxing with MAA).
`Microsoft Corp. v. AT&T Corp., 127 S.Ct. 1746 (2007), is not relevant to § 271(a)1 here,
`because this is not a case where the parties agree that infringement only occurs when software is
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`installed abroad. To the contrary, in this case GIN is undisputedly made (compiled) in the U.S and
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`GIN itself infringes without the need for any additional components to be installed outside of the U.S.
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`Under § 271(a), “[w]hen [the accused infringer] made the [accused products] in this country, it
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`infringed [the claim at issue] … [and] [w]hether those [accused products] were sold in the U.S. or
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`elsewhere is therefore irrelevant . . . .” See Card-Monroe Corp. v. Tuftco Corp., No. 1:14-cv-292,
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`2017 WL 3841878, at *43–45 (E.D. Tenn. Sept. 1, 2017) (quoting Railroad Dynamics, Inc. v. A. Stuki
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`Co., 727 F.2d 1506, 1519 (Fed. Cir. 1984) (holding that a royalty award could reach units made in the
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`U.S.—valued at their sale price—regardless of whether they were sold abroad)); see also Goulds’ Mfg.
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`Co. v. Cowing, 105 U.S. 253, 256 (1881) (approving an award based on defendant’s profits, reaching
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`units made in the U.S. where some were to be used only abroad).
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`1 Microsoft involves infringement for a combination of components abroad under § 271(f), and not
`infringement under § 271(a) for making or using an infringing component in the U.S.
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`2
`FINJAN’S RESP. TO BLUE COAT’S NOV. 2, 2017 OBJS.
`RE: INFRINGEMENT UNDER § 271(A)
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`CASE NO. 15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 405 Filed 11/05/17 Page 4 of 7
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`1.
`Blue Coat argues that Finjan’s expert, Dr. Meyer, is not entitled to use worldwide users as part
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`Evidence Proves Blue Coat Makes GIN in the U.S.
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`of her user-based damages opinions “until substantial evidence supporting infringement under § 271(a)
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`is proffered.” Blue Coat’s November 2, 2017 Objections, Dkt. No. 403 at 1. Even before the close of
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`evidence, Finjan has already established with substantial evidence that all of GIN is made in the U.S.
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`First, Finjan’s experts have already testified, based on an internal Blue Coat document and Blue Coat
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`depositions, that all development of GIN is done in the U.S., and that all versions of GIN are pushed
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`out of the U.S. Trial Tr. at 495:7-496:21 (Cole testimony that all GIN development is in the U.S.);
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`764:17-765:22 (Mitzenmacher testimony that all GIN development is in U.S. and updates are pushed
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`from the U.S.); PTX-216 at BC2-0776971. Finjan also submitted the deposition testimony of Patrik
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`Runald, the head of the Global Intelligence Network, who unequivocally stated that (1) “[t]here’s no
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`development for GIN done outside of Draper,” (2) the source code for GIN is maintained in the U.S.,
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`and (3) WebPulse is developed “[o]nly in Draper.” Trial Tr. at 535:12-536:16; PTX-1275 at 233:21-
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`234:18. Finjan also entered Blue Coat’s own admissions to Finjan’s discovery requests into evidence,
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`which further confirmed that GIN and its components, WebPulse and DRTR, are made in the U.S.
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`Trial Tr. at 889:9-23 (reading Blue Coat’s RFA responses into the record). As such, to date, Finjan has
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`presented substantial evidence that Blue Coat makes GIN in the U.S.
`C.
`In addition to the undisputed fact that GIN is made in the U.S., it is also used in the U.S. Finjan
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`Blue Coat Uses GIN in the U.S.
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`anticipates that Blue Coat may attempt to allege that certain components of GIN are made and used
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`outside the U.S. As such, Finjan also provided substantial evidence for the alternative infringement
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`theory that Blue Coat uses GIN in the U.S. because the GIN components used abroad are controlled by
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`Blue Coat in the U.S. and Blue Coat gains the benefit from those GIN components in the U.S. As
`Finjan only asserted system claims against GIN, any component Blue Coat alleges was used outside
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`the U.S. still infringes because the system as a whole is controlled by Blue Coat in the U.S. and Blue
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`Coat obtains the benefit from those GIN components in the U.S. NTP, Inc. v. Research In Motion,
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`Ltd., 418 F.3d 1282, 1316-17 (Fed. Cir. 2005).
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`3
`FINJAN’S RESP. TO BLUE COAT’S NOV. 2, 2017 OBJS.
`RE: INFRINGEMENT UNDER § 271(A)
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`CASE NO. 15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 405 Filed 11/05/17 Page 5 of 7
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`1.
`Finjan can reasonably support its user based damages model based on worldwide users because
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`Evidence Proves Blue Coat Uses GIN in the U.S.
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`the evidence provided at trial supports that worldwide use of GIN is controlled by Blue Coat in the
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`U.S. for its own benefit. Finjan presented substantial evidence that the GIN system as a whole is
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`controlled in the U.S. and that the benefit of GIN is for Blue Coat in the U.S. Specifically, both Drs.
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`Cole and Mitzenmacher testified that any GIN component located abroad was not only made in the
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`U.S., but also that Blue Coat in the U.S. exercised control of every component of the system and
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`received the benefit from every component in the U.S. Trial Tr. at 496:5-21, 513:16-515:3, 530:7-
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`532:18, 535:12-536:16 (Dr. Cole testifying about Blue Coat’s controlling and benefiting from GIN in
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`the U.S.); Trial Tr. at 828:2-829:20, 830:6-13 (Dr. Mitzenmacher testifying about Blue Coat’s
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`controlling and benefiting from GIN in the U.S.). Blue Coat’s documents also confirmed the control
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`and benefit aspect of GIN. See JTX-3043 at BC2-0031075 (every Blue Coat product is reliant on GIN,
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`stating that “[e]very Blue Coat thing uses some kind of data from GIN . . . Most things also contribute
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`some kind of data to GIN.”); PTX-105 at 2 (GIN provides [Blue Coat] valuable data to feed [their]
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`analytics engines; PTX-49 at FINJAN-BLCT 011588 (“The Blue Coat Global Intelligence Network
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`contains web and threat data gained from our partnership with over 15,000 of the largest global
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`enterprises”). Even Blue Coat’s own engineers confirmed that the U.S. is where control of the GIN
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`system is exercised and beneficial use of the GIN system is obtained. Trial Tr. at 531:15-532:18 (Mr.
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`Runald deposition testimony that MAAs operated for benefit of FRS in GIN); 513:3-514:3 (Mr. C.
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`Larsen deposition testimony that Blue Coat runs MAAs for benefit of GIN); 535:12-536:16 (Mr.
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`Runald’s deposition testimony that GIN is controlled in the U.S.). As such, Finjan presented
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`substantial evidence that GIN worldwide use is infringement under § 271(a) based on the worldwide
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`user base of GIN.
`D.
`Blue Coat misapplies the case law in attempting to exclude evidence of GIN’s worldwide user
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`Blue Coat Misapplies the Relevant Case Law
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`base. Dkt. No. 403 at 1. First, Blue Coat misapplies Microsoft Corp. v. AT&T Corp. to argue that GIN
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`is not “made” in the U.S., when that case relates to 35 U.S.C. § 271(f) on exporting a component to be
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`FINJAN’S RESP. TO BLUE COAT’S NOV. 2, 2017 OBJS.
`RE: INFRINGEMENT UNDER § 271(A)
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`CASE NO. 15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 405 Filed 11/05/17 Page 6 of 7
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`later assembled outside the U.S. to manufacture an accused product. Microsoft does not apply to this
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`case here where the infringing product is completely made in the U.S. Similarly, Microsoft is not
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`applicable to a case where the benefit and control of a system claim is in the U.S. Instead, in Microsoft
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`the Court concluded that exporting a component that would later be assembled into an infringing
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`system did not amount to infringement under 35 U.S.C. § 271(f). Microsoft, 127 S.Ct. at 1755-60. As
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`such, Microsoft is inapplicable, because the complete infringing product, GIN, and components like
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`WebPulse, FRS, DRTR, and MAA, are all made and used in the U.S. Notably, this Court in CNET
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`Networks, Inc. v. Etilize, Inc. considered Microsoft and concluded that an infringing product was made
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`in the U.S. when it was “expressed and stored as machine-readable object code, e.g. burned on a CD–
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`ROM or written to a server hard drive such that it is capable of being downloaded from the
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`internet…[and the] software become an actual, physical component amenable to combination.” 528 F.
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`Supp. 2d 985, 994 (N.D. Cal. 2007) (citing Microsoft, 127 S.Ct. at 1756). CNET mirrors this case
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`because Finjan provided evidence that GIN and it subcomponents were developed, compiled and
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`stored on a computer readable medium in the U.S. as a complete infringing system.
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`Blue Coat also relies on Ziptronix, Inc. v. Omnivision Techs., Inc., but this case is also
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`inapposite because it focuses on whether the accused products were “sold” in the US and not if they
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`were “made” in the U.S. 71 F. Supp. 3d 1090, 1094 (N.D. Cal. 2014) (“Because it is undisputed that
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`neither TSMC Ltd. nor TSMC NA make, use, or import into the United States the accused image
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`sensors or the wafers used in the image sensors, the question before the Court with respect to TSMC
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`Ltd.’s and TSMC NA’s direct infringement liability is whether the transactions between the TSMC
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`entities and OmniVision constitute sales or offers to sell ‘within the United States.’”). As such,
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`Ziptronix is inapplicable where there is substantial evidence that the infringing product is made in the
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`U.S. Similarly, nothing in Fr. Telecom S.A. v. Marvell Semiconductor Inc. extends the holding in
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`Microsoft in a way to discredit all the evidence of infringement by GIN within the U.S, as the accused
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`product in Fr. Telecom was never made, used or sold within the U.S. 39 F. Supp. 3d 1080, 1102–03
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`(N.D. Cal. 2014) (recognizing that accused infringer established “undisputed evidence that the
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`manufacturing, sale, and delivery of the accused chips all occurred outside the United States”).
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`5
`FINJAN’S RESP. TO BLUE COAT’S NOV. 2, 2017 OBJS.
`RE: INFRINGEMENT UNDER § 271(A)
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`CASE NO. 15-cv-03295-BLF-SVK
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`Case 5:15-cv-03295-BLF Document 405 Filed 11/05/17 Page 7 of 7
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`Dated: November 5, 2017
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`Respectfully submitted,
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`By: /s/ Paul J. Andre
`Paul J. Andre
`Lisa Kobialka
`James Hannah
`KRAMER LEVIN NAFTALIS
`& FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`6
`FINJAN’S RESP. TO BLUE COAT’S NOV. 2, 2017 OBJS.
`RE: INFRINGEMENT UNDER § 271(A)
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`CASE NO. 15-cv-03295-BLF-SVK
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