Case 5:17-cv-04467-BLF Document 168 Filed 10/07/19 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
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@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.
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
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`
`Case No.: 5:17-cv-04467-BLF-VKD
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`PLAINTIFF FINJAN, INC.’S OPPOSITION
`TO DEFENDANT SONICWALL, INC.’S
`SECOND ADMINISTRATIVE MOTION FOR
`LEAVE TO SEEK CONSTRUCTION OF
`ADDITIONAL CLAIM TERMS [Dkt. 167]
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`v.
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`SONICWALL, INC., a Delaware Corporation,
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`Defendant.
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`OPP. TO SECOND MOT. FOR ADD’L CLAIM CONSTR. CASE NO.: 5:17-cv-004467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 168 Filed 10/07/19 Page 2 of 7
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`I.
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`INTRODUCTION
`The Court should deny SonicWall’s Motion because no good cause exists for additional claim
`construction and any importation of claim constructions from another case without full briefing is
`highly prejudicial to Finjan. In its Motion, SonicWall argues that it should be allowed to import five
`terms and constructions from the Cisco case based on Finjan’s supplemental infringement contentions
`(“SSICs”). However, as demonstrated below, Finjan’s SSICs are completely consistent with its
`original infringement contentions with respect to all of the terms that SonicWall identifies, leaving no
`grounds for SonicWall to request the extraordinary relief it seeks. Moreover, SonicWall’s Motion
`rehashes arguments this Court already rejected, adding only a few curt descriptions of five purported
`disputes with no attempt to show why these arguments could not have been brought before the Court
`during the period set for claim construction. And the record SonicWall’s counsel has created between
`this case and the Cisco action demonstrates that it will manufacture endless disputes no matter how
`many terms the Court construes, which further proves that SonicWall’s Motion should be denied.
`The Motion should also be denied because counsel for SonicWall and Cisco admits to playing
`both cases off of each other, choosing not to select certain terms for construction here because it had
`already selected those terms for construction in Cisco. In this way, SonicWall gets multiple bites at the
`apple and has effectively asked for twenty-seven terms to be construed across both cases. Preventing
`this type of gamesmanship is precisely why the Patent Local Rules were enacted. Finally, if the Court
`does grant any part of this Motion, Finjan respectfully requests full briefing and a Markman hearing, to
`include new argument based on the intrinsic record that was not considered in the Cisco case.
`II.
`BACKGROUND
`SonicWall is represented by the same legal team (“Duane Morris”) as the defendant in Finjan,
`Inc. v. Cisco Systems, Inc., 17-cv-00072-BLF (“Cisco”). Finjan asserts five patents against Cisco and
`ten against SonicWall, but has narrowed its total asserted claims in Cisco to thirty-two and narrowed
`them even further in this case to twenty. All five patents asserted in Cisco are also asserted here.
`On November 20, 2017, Cisco identified five terms whose construction was most significant.
`Cisco, Dkt. 85 at 9. Nine days later, Cisco moved this Court for leave to brief an additional ten terms.
`Cisco, Dkt. 90 at 1. Cisco argued that it should be allowed to brief additional terms because Finjan
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`OPP. TO SECOND MOT. FOR ADD’L CLAIM CONSTR. CASE NO.: 5:17-cv-004467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 168 Filed 10/07/19 Page 3 of 7
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`asserted 32 claims. Id. The Court denied Cisco’s motion and issued a claim construction order on July
`23, 2018. Cisco, Dkt. 134.
`On July 25, 2018, SonicWall identified five terms whose construction was most significant.
`Dkt. 80 at 13. SonicWall’s counsel admitted that it avoided selecting certain terms as significant here
`because it had already selected those terms in the Cisco case, stating “… the five terms that SonicWall
`identifies here are different than those identified in the Cisco case (and are all from the five patents that
`are not at issue in the Cisco case))… the parties should adopt the briefing and arguments set forth in
`the Cisco case for those eight (8) terms addressed in that case….” Id. at 14.
`On September 21, 2018, Cisco moved this Court again to construe four more terms. Cisco,
`Dkt. 144 at 1. Although Cisco repeated its assertion that these four disputes were “fundamental,” one
`was a term Cisco had never mentioned in its first motion to construe additional terms, and only three of
`these terms overlapped with the ten terms Cisco previously identified as requiring construction. Id.
`The Court construed these four more terms on February 5, 2019. Cisco, Dkt. 173.
`On March 26, 2019, the Court issued its claim construction order in the SonicWall case. Dkt.
`132. On April 30, 2019, SonicWall moved this Court to brief ten more terms, including seven terms
`that were construed in Cisco. Dkt. 136. In that motion, SonicWall argued that the Court could easily
`import the briefing from the Cisco case here. Id. The Court denied SonicWall’s motion finding “the
`Patent Local Rules do not contemplate additional claim construction merely because certain terms
`were construed elsewhere,” and that the “ease” of incorporating constructions from Cisco “is not good
`cause.” Dkt. 142 at 1-2. The Court also asked why SonicWall “did not select these terms in the
`original construction or what has changed since that time to warrant additional construction.” Id. at 2.
`Undeterred, on October 3, 2019, SonicWall filed the instant Motion, arguing again that the
`constructions from the Cisco case should be imported here without additional briefing. Motion at 5.
`However, SonicWall never named any of these terms in its original selection of the five most
`significant in this case, and one is a new term that SonicWall did not mention in its first motion for
`additional construction. Cf. Dkt. 136 at 1-2 with Motion at 1 (now identifying terms from the ‘822
`Patent). Finally, contrary to the Court’s guidance that “I need better reasons than I've had in the past,”
`SonicWall provides no analysis here why additional construction is required in light of Finjan’s SSICs,
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`Case 5:17-cv-04467-BLF Document 168 Filed 10/07/19 Page 4 of 7
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`which was purportedly the basis for SonicWall’s request. Dkt. 155 at 33, 44.
`III. ARGUMENT
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`SonicWall Still Fails to Show Good Cause for Additional Claim Constructions
`Good cause does not exist because SonicWall does not identify any changes in Finjan’s SSICs.
`During a recent hearing, this Court allowed SonicWall to bring a motion for additional construction, if
`warranted, based on Finjan’s SSICs. Id. at 28, 33, 44. However, SonicWall did not identify a single
`instance in which the SSICs differed from Finjan’s original infringement contentions. Thus,
`SonicWall has not identified good cause for amending the Patent Local Rules because it had every
`opportunity to select the five terms it believed were fundamental to this dispute in its original selection.
`The ‘633 Patent and ‘822 Patent: SonicWall identifies two constructions that should be
`imported from Cisco, arguing Finjan now identifies an information-destination as a cloud service or
`virtual machine/sandbox in its SSICs. Motion at 3. However, Finjan’s original contentions were
`consistent on this issue and the SSICs did not change that. See Ex. 11, Appx J-1 at 10. (“Capture ATP
`contain or connects to a virtual machine/sandbox (information-destination)”). Thus, no good cause
`exists for adding these constructions because SonicWall could have identified them beforehand.
`The ‘494 Patent: SonicWall argues that the construction of “Downloadable scanner” should be
`imported because Finjan accuses scanners that may also execute code in its SSICs. Motion at 3. But,
`Finjan’s position has been consistent on this issue. See Ex. 2, Appendix B-1 at 8 (“Capture ATP
`includes a Downloadable scanner which ‘executes suspicious code…”’). Thus, SonicWall does not
`identify any good cause for not selecting this term in its original selection.
`The Motion also references a decision relating to an IPR in which the Federal Circuit
`confirmed the validity of these claims. SonicWall requests additional briefing in light of that decision
`but at the same time has the “full expectation that the Court would adopt the Cisco case constructions.”
`Motion at 5. Regardless, the Federal Circuit decision is consistent with Finjan’s infringement
`contentions and there is no good cause to import the Cisco construction because Finjan’s contentions
`on this issue have stayed uniform.
`The ‘780 Patent: SonicWall argues that the term “performing a hashing function…” should be
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`1 All Exhibits (“Ex.”) cited are attached to the Declaration of Austin Manes filed in support herewith.
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`Case 5:17-cv-04467-BLF Document 168 Filed 10/07/19 Page 5 of 7
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`construed because the SSICs accuse hashing multiple files. But Finjan has consistently accused
`engines that have the ability to hash multiple since its original contentions. See Ex. 3, Appendix D-1 at
`13 (accusing hashing on parent (dropper) and target (dropped) files). SonicWall should have selected
`this term in its original selection and does not have good cause for adding this term to the case now.
`The ‘154 Patent: SonicWall argues that the terms “first function” and “second function” should
`be construed because the SSICs identify first functions that infringe the ‘154 Patent. But Finjan’s
`infringement contentions have been consistent on this issue and have consistent accused the same types
`of functions in its original infringement contentions. See Ex. 4, Appendix H-1 at 2 (“Examples of the
`first functions are JavaScript and iframes that can be embedded in HTTP communications”). Thus,
`SonicWall does not identify any good cause for not selecting this term in its original selection.
`The ‘844 Patent: In its Motion, SonicWall does not dispute the Court’s ruling that the terms in
`the ‘844 Patent do not require construction and that the plain and ordinary meaning should apply.
`Thus, there is no reason to reopen claim construction for the ‘844 Patent.
`Contrary to SonicWall’s arguments, the summary judgement orders from Finjan’s other cases
`fail to demonstrate good cause because those are based on the functions of different products, which
`have no application here. As the Court stated, “your construction of a claim doesn’t depend on what
`product you’re accusing. It is what it is.” Motion at 4; Biotec Biologische Naturverpackungen GmbH
`& Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding a purported claim
`construction dispute was actually an infringement issue for the jury). In short, SonicWall identified a
`list of terms that it believed were fundamental to this case and SonicWall has failed to demonstrate any
`change since that original selection that would constitute good cause to depart from the Patent Local
`Rules. Sage Electrochromics, Inc. v. View, Inc., No. 12-cv-6441-JST, 2014 WL 1379282, at *3 n.2, 4
`(N.D. Cal. Apr. 7, 2014) (parties should “explain why” the Court should construe more than ten terms).
`The Motion should be denied.
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`SonicWall’s Manipulation Prejudices Finjan and Sets a Dangerous Precedent
`In denying SonicWall’s first motion on this issue, this Court said: “This request seems geared
`to manipulate the Patent Local Rules where counsel in this case is simultaneously representing a
`different defendant in a separate case involving the same patents. The Patent Local Rules do not
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`Case 5:17-cv-04467-BLF Document 168 Filed 10/07/19 Page 6 of 7
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`condone this conduct and neither does this Court.” At the next CMC, the Court repeated: “We don't
`play one case off against the other.” Dkt. 155 at 34. Yet that is precisely what has occurred.
`Duane Morris selected different terms from different patents as the five most significant for the
`Cisco and SonicWall actions. By itself that decision would be understandable, except that Duane
`Morris admitted it intentionally did not pursue what it refers to as the “Remaining Cisco Terms” in this
`case against SonicWall because its counsel had already sought their construction in the Cisco case.
`Dkt. 80 at 14-15 (“… the five terms that SonicWall identifies here are different than those identified in
`the Cisco case (and are all from the five patents that are not at issue in the Cisco case))… the parties
`should adopt the briefing and arguments set forth in the Cisco case for those eight (8) terms addressed
`in that case, as if they had been set forth and made by the parties to this case…”).
`Then, in serial motion practice across both cases, Duane Morris has asserted that up to
`seventeen additional terms in these patents (on top of the ten it already selected) must be construed
`because a “fundamental dispute exists” over all of them. But this list of fundamental disputes keeps
`changing. And in both cases, Duane Morris inserted a new term into its renewed requests that it
`claimed was “fundamental,” even though neither Cisco nor SonicWall had previously identified those
`terms as fundamental in their first or second requests for the same relief. Cisco, Dkt. 144 (identifying
`the preamble of the ‘633 Patent for the first time); Motion at 1 (identifying the ‘822 Patent for the first
`time). These moving targets demonstrate why merely asserting that a dispute is “fundamental” is
`insufficient to show good cause. For this reason, the Federal Circuit has repeatedly held a Court is
`“not (and should not be) required to construe every limitation present in a patent’s asserted claims.” O2
`Micro Int’l. Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). This
`gamesmanship is unfairly prejudicial to Finjan and goes against the very purpose of the Patent Local
`Rules. Permitting this tactic would also set a dangerous precedent for future actions, especially where
`the same counsel represents the same party. Accordingly, the Court should deny this Motion.
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`If the Motion is Granted, Finjan Requests Full Briefing and a Markman Hearing
`To the extent the Court grants SonicWall’s Motion, Finjan respectfully requests full briefing
`and a Markman hearing. To the extent SonicWall wishes to reopen claim construction, Finjan should
`have the opportunity to present new evidence and argument that was not considered in the Cisco case.
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`Case 5:17-cv-04467-BLF Document 168 Filed 10/07/19 Page 7 of 7
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`Dated: October 7, 2019
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`Respectfully submitted,
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`
`
`By: /s/ Kristopher Kastens
`Paul J. Andre (State Bar. No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`Kristopher Kastens (State Bar No. 254797)
`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
`kkastens@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`OPP. TO SECOND MOT. FOR ADD’L CLAIM CONSTR. CASE NO.: 5:17-cv-004467-BLF-VKD
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