Case 5:17-cv-04467-BLF Document 359-3 Filed 03/04/21 Page 1 of 8
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`DUANE MORRIS LLP
`D. Stuart Bartow (CA SBN 233107)
`dsbartow@duanemorris.com
`Nicole E. Grigg (CA SBN 307733)
`negrigg@duanemorris.com
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`Telephone: 650.847.4150
`Facsimile: 650.847.4151
`DUANE MORRIS LLP
`Joseph A. Powers (PA SBN 84590)
`Admitted Pro Hac Vice
`japowers@duanemorris.com
`Jarrad M. Gunther (PA SBN 207038)
`Admitted Pro Hac Vice
`jmgunther@duanemorris.com
`30 South 17th Street
`Philadelphia, PA 19103
`Telephone: 215.979.1000
`Facsimile: 215.979.1020
`Attorneys for Defendant
`SONICWALL INC.
`
`DUANE MORRIS LLP
`Matthew C. Gaudet (GA SBN 287789)
`Admitted Pro Hac Vice
`mcgaudet@duanemorris.com
`John R. Gibson (GA SBN 454507)
`Admitted Pro Hac Vice
`jrgibson@duanemorris.com
`Robin L. McGrath (GA SBN 493115)
`Admitted Pro Hac Vice
`rlmcgrath@duanemorris.com
`David C. Dotson (GA SBN 138040)
`Admitted Pro Hac Vice
`dcdotson@duanemorris.com
`Jennifer H. Forte (GA SBN 940650)
`Admitted Pro Hac Vice
`jhforte@duanemorris.com
`1075 Peachtree NE, Suite 2000
`Atlanta, GA 30309
`Telephone: 404.253.6900
`Facsimile: 404.253.6901
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`FINJAN, LLC, a Delaware Limited Liability
`Company,
`
`Plaintiff,
`
`v.
`
`SONICWALL INC., a Delaware Corporation,
`
`Defendant.
`
`Case No.: 5:17-cv-04467-BLF-VKD
`
`DEFENDANT SONICWALL INC.’S
`MOTION TO EXCLUDE IMPROPER
`EXPERT TESTIMONY BASED ON
`FINJAN’S WILLFULNESS
`ALLEGATIONS
`(MOTION IN LIMINE NO. 1)
`Date:
`March 18, 2021
`Time:
`1:30 PM
`Courtroom: 3, 5th Floor
`Judge:
`Hon. Beth Labson Freeman
`
`REDACTED
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`SONICWALL’S MOTION TO EXCLUDE IMPROPER EXPERT TESTIMONY BASED ON FINJAN’S WILLFULNESS ALLEGATIONS
`(MOTION IN LIMINE NO. 1) CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 359-3 Filed 03/04/21 Page 2 of 8
`
`TABLE OF REFERENCED EXHIBITS1
`
`September 4, 2020 Expert Report of DeForest McDuff, Ph.D
`Order on Daubert Motions [Re: ECF 421, 423, 425, 427, 429, 431],
`Finjan, Inc. v. Cisco Systems, Inc., Case No. 17-cv-00072-BLF, Dkt.
`No. 555 (N.D. Cal. April 21, 2020)
`September 3, 2020 Expert Report of Dr. Eric Cole Regarding
`Technology Tutorial and Infringement by SonicWall, Inc. of Patent Nos.
`6,154,844; 7,058,822; 7,647,633; and 8,677,494
`September 3, 2020 Expert Report of Michael Mitzenmacher, Ph.D.
`Regarding Infringement by SonicWall, Inc. of Patent Nos. 6,804,780;
`6,965,968; and 7,613,926
`September 3, 2020 Expert Report of Dr. Nenad Medvidovic Regarding
`Infringement by SonicWall, Inc. of Patent Nos. 8,225,408; 7,975,305;
`and 8,141,154
`September 3, 2020 Expert Report of Dr. Aaron Striegel
`October 22, 2020 Deposition Transcript of Eric B. Cole, Ph.D.
`October 26, 2020 Deposition Transcript of Michael Mitzenmacher,
`Ph.D.
`November 3, 2020 Deposition Transcript of Aaron Striegel, Ph.D.
`
`Ex. 1
`
`Ex. 2
`
`Ex. 3
`Ex. 4
`
`Ex. 5
`
`Ex. 6
`Ex. 7
`Ex. 8
`
`Ex. 9
`
`
`1 All exhibits are attached to the Declaration of Jarrad M. Gunther.
`
`i
`SONICWALL’S MOTION TO EXCLUDE IMPROPER EXPERT TESTIMONY BASED ON FINJAN’S WILLFULNESS ALLEGATIONS
`(MOTION IN LIMINE NO. 1) CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 359-3 Filed 03/04/21 Page 3 of 8
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`Pursuant to Federal Rule of Evidence 702 and Daubert, SonicWall seeks to exclude two sets
`of opinions provided by Finjan’s experts, both of which relate to Finjan’s willfulness allegations: (1)
`Dr. McDuff’s opinions that discounting back to the start of damages is not appropriate because of
`SonicWall’s “ongoing infringement”; and (2) the opinions of Drs. Cole, Mitzenmacher, and Striegel
`regarding SonicWall’s purported prior knowledge of Finjan’s technology and patents.
`
`I.
`
`Dr. McDuff’s Discounting Opinions
`Finjan’s damages expert (Dr. McDuff) uses three methods to calculate a reasonable royalty
`for SonicWall’s alleged infringement: (1)
`
`
`
`
`. Ex. 1 ¶ 8(c). For each of his three methods, Dr.
`
`
`
`
`
`
`
`McDuff provides
`
`.” Id. ¶ 114 (emphasis added).
`“Discounting is the process by which courts take into account the time value of money to
`avoid overcompensating the injured party.” Looksmart Grp., Inc. v. Microsoft Corp., No. 17-CV-
`04709-JST, 2019 WL 4009263, at *3 (N.D. Cal. Aug. 5, 2019) (quoting Christopher P.
`Bowers, Courts, Contracts, and the Appropriate Discount Rate: A Quick Fix for the Legal Lottery,
`63 U. CHI. L. REV. 1099, 1099 (1996)). Dr. McDuff thus recognizes that
`
`.” Ex. 1
`¶ 114. Just like Finjan’s damages report from Dr. Layne-Farrar in Cisco, however, Dr. McDuff opines
`that the most appropriate calculation here does not discount SonicWall’s prior sales (thereby inflating
`his damages figures), and Dr. McDuff does this based primarily on Finjan’s willfulness allegations.
`
`1
`SONICWALL’S MOTION TO EXCLUDE IMPROPER EXPERT TESTIMONY BASED ON FINJAN’S WILLFULNESS ALLEGATIONS
`(MOTION IN LIMINE NO. 1) CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 359-3 Filed 03/04/21 Page 4 of 8
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`sales “
`
`Id. ¶ 114 (opining that no discount for past sales is appropriate because
`
`
`
`”); Ex. 2 at 10 (“The Court agrees with Cisco that Dr. Layne-Farrar’s
`justifications for not applying the time value of money discount is based solely on the assumption
`that Cisco willfully infringed Finjan’s patents.”).
`Curiously, Dr. McDuff tries to offer additional cover by opining that not discounting past
`
`
`).” Ex. 1 ¶ 114. But this suggestion
`is legally incorrect. The question with respect to a reasonable royalty is what the parties would have
`agreed to at the hypothetical negotiation—which the parties agree would have occurred between
`2012-2014—not what they would have agreed to in 2020 or 2021. See Lucent Techs., Inc. v. Gateway,
`Inc., 580 F.3d 1301, 1325 (Fed. Cir. 2009) (“The hypothetical negotiation tries, as best as possible,
`to create the ex ante licensing negotiation scenario and to describe the resulting agreement. In other
`words, if infringement had not occurred, willing parties would have executed a license agreement
`specifying a certain royalty payment scheme.”). At the time of the hypothetical negotiation, all
`infringement would be “projected expected infringement,” and thus discounting would be necessary.
`Indeed, as Dr. McDuff himself acknowledges,
`
`
`.” Ex. 1 ¶ 116(b). For this reason, Finjan’s
`damages experts in other matters have explicitly acknowledged that Finjan’s negotiations applied
`“discounts … for the time value of money.” Ex. 2 at 11 (citing Dr. Layne-Farrar’s Report).
`Because Dr. McDuff’s justifications for not applying a discount to past sales do not conform
`to the facts of this case and are merely disguised willfulness opinions, this Court should find—as it
`did in Cisco—that his damages “opinion lacks proper foundation for concluding that time value of
`money discount would not have been applied” to SonicWall’s past sales at the hypothetical
`negotiations and exclude Dr. McDuff’s damages figures that do not apply the time value of money
`discount to past sales, which can be found in Attachments B-2 (Method 1), I-2 (Method 2), and J-1
`
`2
`SONICWALL’S MOTION TO EXCLUDE IMPROPER EXPERT TESTIMONY BASED ON FINJAN’S WILLFULNESS ALLEGATIONS
`(MOTION IN LIMINE NO. 1) CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 359-3 Filed 03/04/21 Page 5 of 8
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`to Dr. McDuff’s Report. See Ex. 1. Moreover, “presenting both discount calculations to a jury would
`be intractably confusing.” Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 WL
`4272870, at *7 (N.D. Cal. July 14, 2015).
`Granting SonicWall’s motion on this issue alone would reduce Dr. McDuff’s worldwide
`damages figures as follows:
`
`. (SonicWall has separately
`moved for summary judgment as to Dr. McDuff’s worldwide figures and his damages start dates.
`Dkt. 320.)
`
`II.
`
`SonicWall’s Alleged Prior Knowledge of Finjan’s Technology and Patents
`Drs. Cole, Mitzenmacher, Medvidovic, and Striegel each offer virtually identical “opinions”
`regarding SonicWall’s purported prior knowledge of Finjan’s technology and patents. In doing so,
`however, each does little more than simply cite documents produced during the litigation while
`providing no testimony regarding the content of these documents that would in any way assist the
`jury in understanding them. These opinions are not based on any scientific, technical, or other
`specialized knowledge, but are thinly disguised “willfulness” opinions. What SonicWall knew or
`believed about Finjan’s patents is far afield from technical expertise of these witnesses, as this Court
`(and others) have held in striking similar opinions in other Finjan cases. See, e.g., Ex. 2, at 2-4;
`Finjan, Inc. v. Blue Coat Sys., No. 13-cv-03999-BLF, 2015 WL 4272870, at *3; Finjan, Inc. v. ESET,
`LLC, No. 17-cv-183-CAB, 2019 WL 5212394, at *5 (C.D. Cal. Oct. 16, 2019). None of these experts
`have any expertise or particularized knowledge regarding the law of willfulness in patent cases nor
`have they been instructed on the law of willfulness. Instead, their testimony is the equivalent of
`lawyer argument that will not assist the trier of fact and will be prejudicial to SonicWall. The Court
`should strike or exclude these opinions.
`
`A.
`Factual Background
`Finjan served reports on the issue of infringement from Drs. Cole, Mitzenmacher, and
`Medvidovic, and also served the report of Dr. Striegel addressing SonicWall’s alleged use of Finjan’s
`technology in the accused products. Each report includes a section discussing SonicWall’s alleged
`prior knowledge of Finjan’s technology and patents. See Ex. 3, ¶¶ 112-114; Ex. 4, ¶¶ 70-71; Ex. 5,
`
`3
`SONICWALL’S MOTION TO EXCLUDE IMPROPER EXPERT TESTIMONY BASED ON FINJAN’S WILLFULNESS ALLEGATIONS
`(MOTION IN LIMINE NO. 1) CASE NO. 5:17-CV-04467-BLF-VKD
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`

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`Case 5:17-cv-04467-BLF Document 359-3 Filed 03/04/21 Page 6 of 8
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`¶¶ 62-63; Ex. 6, ¶ 85. These sections are substantively the same and cite many of the same
`documents, including Wikipedia and news articles, press releases, and email correspondence between
`the parties. Ex. 3 ¶¶ 112-114; Ex. 4 ¶¶ 70-71; Ex. 5 ¶¶ 62-63; Ex. 6 ¶ 85. These sections constitute
`an improper attempt by Finjan to offer a willfulness opinion under the guise of technical expert
`testimony.
`None of Finjan’s experts have any legal training, much less training in patent law. Likewise,
`none have personal knowledge of SonicWall’s internal legal evaluation of Finjan’s patents or any
`specialized knowledge or expertise as to what SonicWall knew about Finjan’s technology or patents.
`Ex. 3, Appendix A, at 1-2; Ex. 4, Appendix A, at 1; Ex. 5, Appendix A, at 2; Ex. 6, Appendix A, at
`1; see also Ex. 7 at 58:4-59:16; Ex. 8 at 61:17-25.
`
`B.
`Expert Testimony on the Finjan-SonicWall Relations is Improper
`Finjan’s experts’ testimony regarding SonicWall’s knowledge of Finjan’s technology and
`patents is not “scientific, technical, or other specialized knowledge [that] will help the trier of fact”
`under FRE 702(a), nor is it “based on sufficient facts or data” under FRE 702(b). Instead, Finjan is
`improperly using the hearsay exception for experts to have its paid witnesses walk through the factual
`history and related facts between Finjan and SonicWall, without offering any analysis of the
`documents to which they cite and without any first-hand knowledge. Ex. 9 at 51:16-52:4 (“I believe
`in this particular paragraph [85] I’m merely reciting the history.”).
`The underlying documents upon which the experts base their opinions – Wikipedia and news
`articles, press releases, and email correspondence between the parties – are readily understandable by
`laypersons, such that expert testimony regarding those documents is unnecessary. Fujifilm Corp. v.
`Motorola Mobility LCC, No. 12-cv-03587-WHO, 2015 WL 757575, at *27 (N.D. Cal. Feb. 20, 2015)
`(excluding expert testimony that provided nothing more than a factual narrative of evidence jurors
`were perfectly capable of understanding); Ex. 2 at 2-4. Indeed, there is nothing in these reports that
`even purports to apply special expertise to anything in these documents. Permitting Finjan’s technical
`experts to simply narrate the factual background of SonicWall’s history with Finjan would be an
`unfair and prejudicial vouching of evidence, thereby usurping the jury’s role and function. Arista
`Networks, Inc. v. Cisco Sys., Inc., No. 16-cv-00923-BLF, 2018 WL 8949299, at *3 (N.D. Cal. June
`
`4
`SONICWALL’S MOTION TO EXCLUDE IMPROPER EXPERT TESTIMONY BASED ON FINJAN’S WILLFULNESS ALLEGATIONS
`(MOTION IN LIMINE NO. 1) CASE NO. 5:17-CV-04467-BLF-VKD
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`

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`Case 5:17-cv-04467-BLF Document 359-3 Filed 03/04/21 Page 7 of 8
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`15, 2018) (citing United States v. Freeman, 498 F.3d 893, 903 (9th Cir. 2007)); Prime Media Group,
`LLC. v. Acer Am. Corp., No. 12-cv-05020-BLF, 2015 WL 452192, at *6-7 (N.D. Cal. Jan. 22, 2015)
`(excluding expert testimony that “appears to be simply performing the role of a jury”). The Court
`should strike these improper opinions under FRE 403 and 702 as it did in the Cisco case. See Ex. 2
`at 2-3 (excluding testimony where “experts appear to merely set forth a high-level timeline of the
`relationship and communications between the parties and cite to documents produced in this
`litigation”).
`
`
`Dated: March 4, 2021
`
`
`
`Respectfully Submitted,
`
`
`/s/ Nicole E. Grigg
`
`Nicole E. Grigg (formerly Johnson)
`Email: NEGrigg@duanemorris.com
`DUANE MORRIS LLP
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`
`Matthew C. Gaudet (Pro Hac Vice)
`Email: mcgaudet@duanemorris.com
`John R. Gibson (Pro Hac Vice)
`Email: jrgibson@duanemorris.com
`Robin L. McGrath (Pro Hac Vice)
`Email: rlmcgrath@duanemorris.com
`David C. Dotson (Pro Hac Vice)
`Email: dcdotson@duanemorris.com
`Jennifer H. Forte (Pro Hac Vice)
`Email: jhforte@duanemorris.com
`1075 Peachtree Street, Ste. 2000
`Atlanta, GA 30309
`
`Joseph A. Powers (Pro Hac Vice)
`Email: japowers@duanemorris.com
`Jarrad M. Gunther (Pro Hac Vice)
`Email: jmgunther@duanemorris.com
`30 South 17th Street
`Philadelphia, PA 19103
`
`Attorneys for Defendant
`SONICWALL INC.
`
`
`
`
`
`5
`SONICWALL’S MOTION TO EXCLUDE IMPROPER EXPERT TESTIMONY BASED ON FINJAN’S WILLFULNESS ALLEGATIONS
`(MOTION IN LIMINE NO. 1) CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 359-3 Filed 03/04/21 Page 8 of 8
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`CERTIFICATE OF SERVICE
`This is to certify that a true and correct copy of DEFENDANT SONICWALL INC.’S
`MOTION TO EXCLUDE IMPROPER EXPERT TESTIMONY BASED ON FINJAN’S
`WILLFULNESS ALLEGATIONS was served by ECF on all counsel of record on March 4,
`2021.
`
`
`
`
`
`
`
`/s/ Nicole E. Grigg
`Nicole E. Grigg
`
`
`
`
`1
`DEFENDANT SONICWALL INC.’S CERTIFICATE OF SERVICE, CASE NO. 5:17-CV-04467-BLF-VKD
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