Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 1 of 9
`
`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
`
`SONICWALL INC.’S MOTION TO
`EXCLUDE DR. STRIEGEL’S
`TECHNICAL APPORTIONMENT
`OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON
`(MOTION IN LIMINE NO. 3)
`Date:
`March 18, 2021
`Time:
`1:30 PM
`Courtroom: 3, 5th Floor
`Judge:
`Hon. Beth Labson Freeman
`
`REDACTED
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`SONICWALL, INC.’S MOTION TO EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON (MOTION IN LIMINE NO. 3), CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 2 of 9
`
`TABLE OF REFERENCED EXHIBITS1
`
`September 4, 2020 Expert Report of DeForest McDuff, Ph.D
`September 3, 2020 Expert Report of Dr. Aaron Striegel
`November 3, 2020 Deposition Transcript of Aaron Striegel, Ph.D.
`Chart marked as Striegel Deposition Ex. No. 8
`SonicWall SonicWave and SonicPoint Series Wireless Access Points
`datasheet, bearing bates numbers SonicWall-Finjan_00365304 -
`SonicWall-Finjan_00365305 and SonicWall-Finjan_00365316 -
`SonicWall-Finjan_00365317, marked as Striegel Deposition Ex. No. 12
`SonicWall SuperMassive Series data sheet, bearing bates numbers
`SonicWall-Finjan_00000655 - SonicWall-Finjan_00000666, marked as
`Striegel Deposition Ex. No. 6
`
`Ex. 1
`Ex. 6
`Ex. 9
`Ex. 19
`Ex. 20
`
`Ex. 21
`
`
`1All exhibits are attached to the Declaration of Jarrad M. Gunther.
`
`1
`SONICWALL, INC.’S MOTION TO EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON (MOTION IN LIMINE NO. 3), CASE NO. 5:17-CV-04467-BLF-VKD
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 3 of 9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`SonicWall moves to exclude the technical apportionment opinions of Dr. Aaron Striegel (Ex.
`6, at ¶¶ 86-123), pursuant to FRE 702 and Daubert. These opinions follow the following framework.
`Ignorant of the systems that Finjan actually accuses of infringement, Dr. Striegel grouped the accused
`products into ten “
`” (Ex. 6 ¶ 87): (1)
`Supermassive/TZ SOHO Appliances/Network Security Appliances (“Gateways”); (2) SonicWave;
`(3) Advanced Gateway Security Suite (“AGSS”); (4) Comprehensive Gateway Security Suite
`(“CGSS”); (5) Capture ATP; (6) Gateway Antivirus, Antispyware, Intrusion Prevention, Application
`Intelligence and Control software bundle (“GAV/IPS”); (7); Email Security Appliances and
`Software; (8) Hosted Email; (9) Capture Client; and (10) WAN Acceleration Appliance (“WXA”).
`For each of these 10 categories, Dr. Striegel identified “
`
`” Id. He then determined which top-level functions “overlap”
`with a given “Asserted Patent.” Id. at ¶ 114. Finjan’s damages expert (Dr. McDuff) then accepts
`Striegel’s opinions (Ex. 6 at App. D; see also Ex. 19) in toto and puts it into percentage form, i.e., if
`Dr. Striegel opines that an accused product is in a “category” that has 12 top-level functions and that
`5 of the functions overlap with a patent, then Dr. McDuff applies an apportionment factor of 41.7%
`(5/12) to the products’ revenue for that patent. Ex. 1 at Attachment E-1. This is a legally insufficient
`apportionment methodology for the reasons described below.
`
`I.
`
`Legal Standard
`The “Supreme Court made clear that ‘when a patent is for an improvement, … the patentee
`must show in what particulars his improvement has added to the usefulness of the machine or
`contrivance. He must separate its results distinctly from those of the other parts, . . . .’ In other words,
`the patent holder should only be compensated for the approximate incremental benefit derived from
`his invention.” Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1233 (Fed. Cir. 2014). The Federal
`Circuit has thus held “[w]hen the accused technology does not make up the whole of the accused
`product, apportionment is required.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1309 (Fed.
`Cir. 2018). “This principle – apportionment – is the governing rule where multi-component products
`are involved. Consequently, to be admissible, all expert damages opinions must separate the value
`of the allegedly infringing features from the value of all other features.” Commonwealth Sci. & Indus.
`
`1
`SONICWALL, INC.’S MOTION TO EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON (MOTION IN LIMINE NO. 3), CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 4 of 9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Research Organisation v. Cisco Sys., Inc., 809 F.3d 1295, 1301 (Fed. Cir. 2015) (“CSIRO”). The
`apportionment evidence “must be reliable and tangible, and not conjectural or speculative.”
`Garretson v. Clark, 111 U.S. 120, 121 (1884). “[G]iven the great financial incentive parties have to
`exploit the inherent imprecision in patent valuation, courts must be proactive to ensure that the
`testimony presented … is sufficiently reliable to support a damages award.” CSIRO, 809 F.3d at
`1301.
`
`Dr. Striegel’s technical apportionment opinions cannot meet this essential requirement
`because they are “plagued by logical deficiencies” and use data that is “not sufficiently tied to the
`facts of the case.” Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1297 (Fed. Cir. 2015).
`
`II.
`
`Dr. Striegel’s Technical Apportionment Opinions Should Be Struck for Two Reasons
`A.
`Dr. Striegel Failed to Undertake the Necessary Further Apportionment
`When an initial apportionment still leaves multiple discrete functions – some of which are
`alleged to infringe, others not – then further apportionment is required. VirnetX, Inc. v. Cisco Sys.,
`Inc., 767 F.3d 1308, 1327 (Fed. Cir. 2014) (“Where the smallest salable unit is, in fact, a multi-
`component product containing several non-infringing features with no relation to the patented feature
`… , the patentee must do more to estimate what portion of the value of that product is attributable to
`the patented technology.”); Blue Coat, 879 F.3d at 1311 (“[I]f the … smallest identifiable technical
`component—contains non-infringing features, additional apportionment is still required.”).
`As noted above, Dr. Striegel opined that each of his 10 product groups consisted of various
`top-level functions and then determined which top-level functions overlap with the Asserted Claims
`of the Asserted Patents. Ex. 6 at ¶¶ 111-123. Dr. Striegel confirmed at his deposition that, in
`determining whether “overlap” existed, he made no attempt to determine whether the top-level
`function he identified also included substantial non-patented features that must be apportioned out,
`but instead only whether the function “would receive a reasonable benefit from the asserted patents.”
`Ex. 9 at 223:17-23; see also id. at 54:11-21, 56:17-57:8, 57:24-58:22, 83:12-84:1, 109:16-110:1,
`137:19-138:17. Indeed, rather than rigorously avoid the inclusion of substantial non-patented
`features, Dr. Striegel testified that he simply sought to determine whether his decision to attribute the
`top-level function to a benefit of the patent would “pass a sniff test,” such that the overlap would not
`
`2
`SONICWALL, INC.’S MOTION TO EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON (MOTION IN LIMINE NO. 3), CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 5 of 9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`be considered “miniscule” or “just minor or an edge case or a niche case that’s almost meaningless.”
`Id. at 225:12-228:4; see also id. at 173:23-174:12 (describing the question as whether it would be
`“plausible,” and to confirm for himself that the overlap would be “not just small and miniscule”).
`This is a meaningless standard, and is neither reliable nor repeatable. Moreover, by attributing to
`Finjan 100% of the benefits of a top-level function merely when the alleged overlap is “not just small
`and miniscule,” he did not conduct the further apportionment required by the law to exclude the value
`provided by non-accused features within the top-level function. Blue Coat, 879 F.3d at 1310-11;
`VirnetX, 767 F.3d at 1327.
`To be clear, Dr. Striegel did not even examine the top-level features to see if non-accused or
`non-patented functions are present within these top-level functions, much less determine their relative
`significance. For example, Dr. Striegel opined that the benefits provided by the ’305 and ’408 Patents
`overlap with the top-level function of Comprehensive Wireless Security for SonicWave Access
`Points. Ex. 6 at App. D; Ex. 19. The same marketing document that Dr. Striegel relies on to identify
`this top-level function also lists 12 sub-features under this one top-level function; Dr. Striegel only
`points to one of those 12 sub-features of this top-level feature as overlapping with the patent (in other
`words, he lifts one of these 12 sub-features word-for-word, and says nothing about the other 11). Ex.
`9 at 260:17-262:20; Ex. 20. Dr. Striegel admitted that he did not render any opinion as to whether
`any of the Patents-in-Suit have anything to do with the other 11 features. Id. at 265:24-267:22. But
`his opinions have the effect of Finjan – via Dr. McDuff’s damages opinions – capturing 100% of the
`value of all 12 of these sub-features, even though Dr. Striegel’s actual opinion is only that 1 of the 12
`(1/12th of that top-level feature) is implicated by the patent. Likewise, for the Gateways, he concluded
`it was “much cleaner” for him to ignore – rather than apportion out – the scores of features listed
`under each of his 12 top-level functions. Id. at 249:5-251:13; Ex. 21. Dr. Striegel also failed to
`apportion numerous other non-accused features: the same datasheet that he relies on to identify 12
`top-level functions for the Gateways (Ex. 9 at 147:17-149:5; Ex. 21) includes a page titled “Feature
`summary” that contains 12 different bolded headings with bulleted sub-features, many of which –
`e.g., “Wireless,” “VoIP,” and “SSL/SSH decryption and inspection” – are clearly not accused of
`infringement. Dr. Striegel conceded that he made no attempt to map these non-accused features to
`
`3
`SONICWALL, INC.’S MOTION TO EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON (MOTION IN LIMINE NO. 3), CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 6 of 9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`his top-level functions and, therefore, did not apportion them out. Ex. 9 at 157:14-159:6.  
`
`B.
`Dr. Striegel Did Not Perform the Necessary Analysis to Conduct Apportionment
`The substantive failure described above is a direct result of the fundamental defects in Dr.
`Striegel’s methdology. As a matter of basic methodological process, Dr. Striegel did not take the
`steps required by the law to make his apportionment opinion reliable and tied to the facts of this case.
`No Knowledge of Finjan’s Infringement Allegations. Dr. Striegel admitted having no
`understanding of the specific product features alleged to infringe each patent, and instead generically
`assumed that the list of product groups he was provided by counsel infringed. See, e.g., Ex. 9 at 53:8-
`54:1, 67:8-70:6, 109:5-111:7, 135:2-15, 248:18-249:4, 290:4-291:14. Indeed, he testified that it
`would simply have been too much work to “go through and check the box” with Finjan’s other experts
`to learn what was actually accused of infringing each patent. Id. at 292:19-22. By definition then,
`Dr. Striegel’s technical apportionment opinions are not tied to “the claimed inventions’ footprint in
`the marketplace,” nor do they address the “harm caused by infringement of the claimed invention.”
`ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010); see also Riles v. Shell
`Exploration & Production Co., 298 F.3d 1302, 1312 (Fed. Cir. 2002) (excluding damages expert;
`“model does not account for the actual losses due to infringement of the patented method”).
`On the ’968 Patent, for example, Dr. Striegel’s apportionment opinion included functionality
`within products that Finjan admitted it is not accusing. Compare Ex. 6 ¶¶ 114, 116 (and App. D
`thereto) and Ex. 19 (identifying “Content Filtering” as a “top-level function” of the Gateways and
`AGSS software bundle that maps to a benefit provided by the ’968 Patent), with Dkt. 320-36 (Finjan’s
`counsel admitting that Content Filtering is not accused). This failure to understand what Finjan
`actually accuses of infringement permeates the entirety of Dr. Striegel’s apportionment analysis. Ex.
`6 ¶¶ 114-123. His opinions should be struck on this basis alone.
`No Knowledge of the State of the Art to Assess Incremental Improvement. Dr. Striegel
`admitted that he “did not attempt to identify the incremental value” that the patented invention adds
`to the end product – despite this being a legal requirement for apportionment. Ex. 9 at 139:14-23;
`Ericsson, 773 F.3d at 1233. He further made no effort to isolate the value of the patented
`improvement found in the accused products or identify the incremental improvement that the patent
`
`4
`SONICWALL, INC.’S MOTION TO EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON (MOTION IN LIMINE NO. 3), CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 7 of 9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`brings over the prior art. Id. at 139:24-141:2. Indeed, he confirmed he “was not asked to assess the
`prior art.” Id.. These failures led Dr. Striegel to capture on Finjan’s behalf value that Dr. Striegel
`himself conceded was present in the prior art. For example, as to the Gateways, Dr. Striegel opined
`that the “top-level function” of “RFDPI Engine” “overlaps” with the benefits of the ’844, ’494, and
`’926 Patents merely because it is involved in “receiving” network traffic. See, e.g., Ex. 6 ¶ 114. But
`he admitted that receiving network traffic is a component of all networks and is not a function whose
`value can be attributed to the patents-in-suit. Ex. 9 at 150:4-12. As another example, he captured on
`Finjan’s behalf value provided by functionality found in unasserted Claim 1 of the ’305 Patent (from
`which asserted claims 11 and 12 depend), because he was unaware that Claim 1 had been cancelled.
`Id. at 116:25-117:5, 120:2-20, 121:6-122:7. Attributing to Finjan the value of functionality present
`in the prior art is the exact opposite of what the governing principles of apportionment require.
`Dr. Striegel went so far as to attribute to Finjan 100% of the value of SonicWall’s patented
`security processing known as “Reassembly-Free Deep Packet Inspection” (or “RFDPI”). Ex. 6 ¶ 114.
`Specifically, he admitted that “DPI would have been around for quite some time,” “Finjan did not
`invent the DPI portion” of RFDPI, and none of the Patents-in-Suit “focus on the aspects of doing
`[DPI] in a manner as espoused by the RFDPI in the sense of the reassembly-free version of DPI that
`SonicWall touts as a top-level feature.” Ex. 9 at 251:15-21. Nevertheless, Dr. Striegel opined that
`SonicWall’s “
`” of the Gateways (Ex. 6 ¶¶ 91) that maps to
`the benefits provided by all 8 of the Patents-in-Suit (id. ¶ 114) and, therefore, he attributed 100% of
`the value of that function to Finjan. This is improper. Exmark Mfg. Co. v. Briggs & Stratton Power
`Products Grp., Inc., 879 F.3d 1332, 1350 (Fed. Cir. 2018) (where defendant owns patents on the
`accused functionality, the patentee must do more than conclude these patented “components do not
`affect the value of the accused mower,” because that “amounts to nothing more than speculation.”).
`The Court should strike paragraphs 86-123 of Dr. Striegel’s report and preclude Dr. Striegel
`from offering these opinions. Because Dr. McDuff relies on Dr. Striegel as the sole basis for
`apportionment, Dr. McDuff’s opinions should similarly be excluded. See NetFuel, Inc. v. Cisco Sys.,
`Inc., No. 5:18-cv-02352-EJD, 2020 WL 1274985, *10-*11 (N.D. Cal. Mar. 17, 2020); AVM Techns.,
`LLC v. Intel Corp., No. 15-33-RGA, 2017 WL 1536390, *4-*5 (D. Del. Apr. 27, 2017).
`
`5
`SONICWALL, INC.’S MOTION TO EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON (MOTION IN LIMINE NO. 3), CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 8 of 9
`
`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.
`
`
`
`6
`SONICWALL, INC.’S MOTION TO EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR. MCDUFF’S
`RELIANCE THEREON (MOTION IN LIMINE NO. 3), CASE NO. 5:17-CV-04467-BLF-VKD
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 5:17-cv-04467-BLF Document 362 Filed 03/04/21 Page 9 of 9
`
`CERTIFICATE OF SERVICE
`This is to certify that a true and correct copy of SONICWALL INC.’S MOTION TO
`EXCLUDE DR. STRIEGEL’S TECHNICAL APPORTIONMENT OPINIONS AND DR.
`MCDUFF’S RELIANCE THEREON was served by ECF on all counsel of record on March 4,
`2021.
`
`
`
`
`
`
`
`/s/ Nicole E. Grigg
`Nicole E. Grigg
`
`
`
`
`1
`SONICWALL, INC.’S CERTIFICATE OF SERVICE, CASE NO. 5:17-CV-04467-BLF-VKD
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`