Case 5:17-cv-04467-BLF Document 112-2 Filed 01/31/19 Page 1 of 4
`Case 5:17-cv-04467-BLF Document 112-2 Filed 01/31/19 Page 1 of 4
`
`EXHIBIT 1
`
`
`
`
`
`EXHIBIT 1
`
`
`
`
`
`
`
`
`

`

`Case 5:17-cv-04467-BLF Document 112-2 Filed 01/31/19 Page 2 of 4
`
`
`
`Kris Kastens
`Associate
`T 650.752.1715
`F 650.752.1815
`kkastens@kramerlevin.com
`
`July 30, 2018
`
`Via E-mail (DCDotson@duanemorris.com)
`
`David C. Dotson
`Duane Morris LLP
`1075 Peachtree Street NE, Suite 2000
`Atlanta, CA 30309-3929
`
`
`
`990 Marsh Road
`Menlo Park, CA 94025-1949
`T 650.752.1700
`F 650.752.1800
`
`
`
`Re: Finjan, Inc. v. SonicWall, Inc., Case No. 5:17-cv-04467-BLF
`
`Dear David:
`
`We are in receipt of your July 11, 2018 letter (“Letter”) regarding Finjan’s Patent
`Local Rule 3-1 disclosures, which were served on April 10, 2018 (“Infringement
`Contentions”). Contrary to SonicWall’s assertions, Finjan’s Infringement Contentions
`provide notice of all of Finjan’s infringement theories. Furthermore, SonicWall’s own
`invalidity contentions, served on May 25, 2018 (“Invalidity Contentions”), are deficient
`because they do not provide any analysis for why certain claim elements are met, and
`are vastly less detailed than what Finjan provided in its Infringement Contentions.
`
`Finjan’s Infringement Contentions Are Sufficient
`
`Finjan’s Infringement Contentions provide 31 separate charts detailing how the
`accused products infringe the asserted patents, amounting to over 1,400 pages of
`contentions. The complaints that SonicWall raises with respect to Finjan’s infringement
`contentions are without merit. For example, your first complaint is that Appendix A-1
`“do[es] not identify where SonicWall Gateways alone generate a threat report, which is
`alleged to be the claimed ‘Downloadable security profile.’” However, on page 7 of
`Appendix A-1, Finjan asserts that SonicWall’s Gateways alone generate a Downloadable
`security profile. See Appendix A-1 at 7 (“[t]he below threat report was generated by a
`SonicWall Gateway and shows that the downloadable was determined to be malicious,
`in part because embedded code was found in the downloadable.”). Following this
`sentence—at the top of page 8—Finjan describes a threat report (downloadable
`security profile) generated by a SonicWall Gateway. In another example, you complain
`
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`
`
`
`
`
`
`SILICON VALLEY | NEW YORK | PARIS
`
`

`

`Case 5:17-cv-04467-BLF Document 112-2 Filed 01/31/19 Page 3 of 4
`
`David C. Dotson
`July 30, 2018
`
`
`further that “the Infringement Contentions do not identify where the alleged
`Downloadable security profile, i.e., the threat report, ‘identifies suspicious code in the
`received Downloadable’ as expressly required by the claims.” The same proof at the top
`of page 8 shows that the threat report discovered embedded code (“embedded code
`found”), which is an identification of suspicious code. SonicWall’s other arguments that
`Finjan’s Infringement Contentions do not satisfy Local Rule 3-1 are similarly without merit.
`
`SonicWall’s Invalidity Contentions
`
`SonicWall’s Invalidity Contentions, on the other hand, do not comply with the
`Patent Local Rules, and are universally deficient because they provide no explanation
`for how each reference excerpt applies to its corresponding claim limitation. The Patent
`Local Rules require detailed disclosures of a party’s invalidity contentions. See Patent
`Local Rule 3-3. In fact, in this district “the level of specificity required by Rule 3-3(c) for
`invalidity contentions is the same as that required by Rule 3-1 for infringement
`contentions. Broad or general disclosures are insufficient.” Slot Speaker Techs., Inc. v.
`Apple, Inc., No. 13-CV-01161-HSG(DMR), 2017 WL 235049, at *2 (N.D. Cal. Jan. 19, 2017)
`(internal quotations omitted) (granting plaintiff’s motion to strike defendant’s invalidity
`contentions for failure to satisfy Rule 3-3(c)). Instead of meeting this standard, for each
`claim limitation, SonicWall provides bare excerpts, quoted verbatim from an applied
`reference, without any explanation for the relevance excerpt. See, e.g., Invalidity
`Contentions, Exhibit A02. This is improper, and certainly inconsistent with the level of
`specificity that SonicWall asserted was required in its Letter. As such, SonicWall is required
`by the Local Rules to describe and explain how each disclosure discloses the claim
`element.
`
`Proposed Compromise
`
`In the spirit of resolving this issue without involving the Court, and given that fact
`discovery doesn’t end until May 2020, Finjan proposes that the parties agree to a
`schedule for mutual supplementation of contentions. Finjan proposes that it supplement
`its Infringement Contentions after the Court issues a claim construction order and Finjan
`has an opportunity to take 30(b)(6) depositions of SonicWall. While Finjan does not agree
`that the issues raised in SonicWall’s Letter have any merit, Finjan will attempt to
`supplement its Infringement Contentions to address these issues to the extent possible.
`Furthermore, Finjan will update its Infringement Contentions to reflect any documents
`that have been produced subsequent to Finjan’s initial Infringement Contentions.
`Similarly, SonicWall will then supplement its Invalidity Contentions within 45-days of Finjan
`serving its supplemental Infringement Contentions. In its supplement, SonicWall will
`
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`
`
`
`
`SILICON VALLEY | NEW YORK | PARIS
`
`

`

`Case 5:17-cv-04467-BLF Document 112-2 Filed 01/31/19 Page 4 of 4
`
`David C. Dotson
`July 30, 2018
`
`specifically identify what in the prior art references it alleges meets each claim element,
`as required by the Local Rules. Let us know if SonicWall would like to discuss this
`proposed schedule.
`
`KK:jr
`
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`
`SILICON VALLEY | NEW YORK | PARIS
`
`