Case 5:17-cv-04467-BLF Document 364 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
`John R. Gibson (GA SBN 454507)
`Admitted Pro Hac Vice
`jrgibson@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,
`
` Case No.: 5:17-cv-04467-BLF-VKD
`
`DEFENDANT SONICWALL INC.’S
`MOTION IN LIMINE NO. 5:
`RE EVIDENCE OR ARGUMENTS ABOUT
`POST-GRANT PROCEEDINGS
`Date:
`March 18, 2021
`Time:
`1:30 PM
`Courtroom: 3, 5th Floor
`Judge:
`Hon. Beth Labson Freeman
`
`
`SONICWALL INC., a Delaware Corporation,
`
`
`Defendant.
`
`v.
`
`
`
`
`
`
`DEFENDANT SONICWALL, INC.’S MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS, CASE NO. 5:17-CV-04467-BLF-VKD
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`

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`Case 5:17-cv-04467-BLF Document 364 Filed 03/04/21 Page 2 of 9
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`TABLE OF REFERENCED EXHIBITS
`
`Order on Motions in Limine, Finjan, Inc. v. Cisco Sys., Inc., No. 17-cv-
`72-BLF, Dkt. 660 (N.D. Cal. May 22, 2020)
`January 9, 2020 Transcript of Proceedings, in the case styled, Finjan,
`Inc. v. Cisco Systems, Inc., Case No. 17-cv-00072-BLF (N.D. Cal.), Dkt.
`No. 541-8.
`Ex Parte Reexamination Certificate for U.S. Patent No. 7,975,305
`U.S. Court of Appeals for the Federal Circuit, In Re: Finjan, Inc., 2018-
`2354, Judgment (September 6, 2019)
`Request for Ex Parte Reexamination of U.S. Patent No. 7,975,305,
`Reexamination Control No. 90/014,477 (“’477 Reexam”)
`Request for Ex Parte Reexamination of U.S. Patent No. 7,975,305,
`Reexamination Control No. 90/013,660 (“’660 Reexam”)
`Notice of Intent to Issue Ex Parte Reexamination Certificate dated
`February 4, 2021, ’477 Reexam
`
`Ex. 151
`
`Ex. 29
`Ex. 30
`Ex. 31
`
`Ex. 32
`
`Ex. 33
`
`Ex. 34
`
`
`1 All exhibits are attached to the Declaration of Jarrad M. Gunther.
`
`1
`DEFENDANT SONICWALL, INC.’S MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 364 Filed 03/04/21 Page 3 of 9
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`The Court should preclude Finjan from presenting any evidence or argument about inter
`partes reviews (“IPRs”) and other post-grant proceedings before the U.S. Patent and Trademark
`Office (“PTO”). The jury will be asked to independently evaluate SonicWall’s defenses of invalidity,
`and in doing so will apply different legal standards, hear from different experts, receive different
`evidence, and have a wholly separate record from that before the PTO. Allowing introduction of
`evidence and discussion of these prior PTO proceedings would result in a trial-within-a-trial about
`these post-grant proceedings, which would only confuse the jury and make their task more difficult.
`
`I.
`
`Factual Background
`The eight (8) asserted patents in this case – U.S. Patent Nos. 6,804,780 (’780 Patent),
`6,154,844 (’844 Patent), 8,677,494 (’494 Patent), 8,141,154 (’154 Patent), 7,613,926 (’926 Patent),
`7,975,305 (’305 Patent), 8,225,408 (’408 Patent), and 6,965,968 (’968 Patent) – have been the subject
`of at least 39 IPR petitions and several additional ex parte reexaminations. All of the IPR petitions
`were filed by parties other than SonicWall and primarily involved different prior art combinations
`than those set forth by SonicWall. Only one of the ex parte reexaminations on a single patent (’305
`Patent) was requested by SonicWall. The overall result across all of these post-grant proceedings
`was mixed – many claims were invalidated, while some survived. The difference between the
`surviving claims and the invalidated claims was often quite narrow. See, e.g., Palo Alto Networks,
`Inc. v. Finjan, Inc., 777 Fed. Appx 501, 508 (Fed. Cir. 2019) (confirming invalidity of independent
`claim 1 while affirming Board decision that independent claim 10 was not shown invalid).
`
`II.
`
`All Post-Grant Proceedings Should Be Excluded
`Courts have disallowed evidence of post-grant proceedings under Federal Rule of Evidence
`403 due to their minimal (if any) relevance and significant potential to mislead the jury: “While these
`[proceedings] may have some probative value, [the Court] believe[s] that this will be far outweighed
`by likely confusion to the jury.” Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197-WHO, 2016 WL
`4560071, *14 (N.D. Cal. Aug. 22, 2016) (granting motion to exclude evidence of IPR proceedings
`and citing InterDigital Commc’ns Inv. v. Nokia Corp., No. 13-10, 2014 WL 8104167, *1 (D. Del.
`Sept. 19, 2014)); Milwaukee Elec. Tool Corp. v. Snap-On Inc., No. 14-CV-1296-JPS, 2017 WL
`4570787, at *6-7 (E.D. Wis. Oct. 12, 2017) (excluding IPR evidence where “the IPRs have all been
`
`1
`DEFENDANT SONICWALL, INC.’S MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS, CASE NO. 5:17-CV-04467-BLF-VKD
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`completed and resulted in decisions on the merits upholding patentability.”). As the Sophos Court
`recognized, “[I]it would take a significant amount of time and effort to adequately explain the
`relevance and limitations of the PTO proceedings to the jury . . . .” Id. Finjan itself has argued,
`“evidence of the pending PTO proceedings is irrelevant, non-probative, and prejudicial.” Id. at *9.
`The improper effect of creating a super-patent in the mind of the jury is almost inevitable:
`“Admitting evidence of the IPRs is likely to mislead the jury into believing that because the patents-
`in-suit have survived many attacks, they must be valid against the present attacks.” Milwaukee Elec.
`Tool, 2017 WL 4570787, at *6-7. See also Fairchild Semiconductor Corp. v. Power Integrations,
`Inc., No. 12-540-LPS, 21, U.S. Dist. LEXIS 53324, at *2-3 (“Evidence and argument relating to the
`completed reexamination of PI’s ’366 patent also has minimal probative value – the ’366 has been
`valid and presumed valid since its issuance, and remains so following reexamination – which would
`be substantially outweighed by the risk of unfair prejudice to Fairchild if admitted, as jurors could
`mistakenly apply a higher burden to a challenge to the validity of the claims that have withstood
`reexamination.”); Masimo Corp. v. Philips Elec. N. Am. Corp., No. 09-80-LPS, 2014 WL 4246579,
`at *2 (D. Del. Aug. 27, 2014) (“Whatever probative value there is to evidence that the PTO considered
`a particular piece of art on multiple occasions (i.e., during initial prosecution and again during
`reexamination) is substantially outweighed by the risk of jury confusion and the waste of the jury’s
`time that would be necessitated to put in full context the details of the reexamination. Therefore, the
`balance under Federal Rule of Evidence 403 favors exclusion of the evidence of reexaminations at
`this jury trial.”).
`The facts of this case compel the same result here.
`A.
`Post-Grant Proceedings Not Involving SonicWall
`The unfair prejudice to SonicWall related to IPR proceedings for which SonicWall was not a
`party is clear. See InterDigital Commc’ns, Inc. v. Nokia Corp., No. 13-10-RGA, slip-op at 3 (D. Del.
`Aug. 28, 2014) (“A PTO non-merits decision not involving Defendants has little or no probative
`value, and would require a lot of explanation for the jury to be able to understand… [I]f it were
`assumed to have some minimal probative value, that probative value would be substantially
`outweighed by the danger of unfair prejudice to the Defendants, and the risk of jury confusion from
`
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`DEFENDANT SONICWALL, INC.’S MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 364 Filed 03/04/21 Page 5 of 9
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`the complexity added by such testimony.”); Ziilabs Inc., Ltd. v. Samsung Elecs. Co. Ltd., et al., No.
`2:14-cv-203-JRG-RSP, slip-op at 6-7 (E.D. Tex. Oct. 28, 2015) (excluding evidence or testimony
`relating to the PTAB’s decision in IPR brought by third party prejudiced defendant because defendant
`was not a party to the IPR proceeding). Indeed, Finjan’s counsel conceded this point at the summary
`judgment hearing in the Cisco case. See Ex. 29 (Hearing Transcript) at 8:10-14 (referring to “how
`many time these patents have been IPR’ed and how many time they survived” and stating, “And I
`understand the Court says that doesn’t come in because it’s different parties”).
`B.
`Post-Grant Proceedings Involving SonicWall
`Likewise, the Court should preclude Finjan from presenting evidence or argument about the
`single reexamination request concerning the ’305 Patent filed by SonicWall. The ’305 Patent
`reexamination proceedings are complex and will be confusing to the jury.
`By way of background, claims 1, 2, 5, and 13 of the ’305 Patent already have already been
`canceled as a result of an ex parte reexamination filed by Proofpoint, Inc. in 2015 (“’660 Reexam”)
`– more than two years before Finjan sued SonicWall. Ex. 30 (’660 Reexam. Cert.). The Federal
`Circuit confirmed this cancelation determination. Ex. 31 (Fed. Cir. ’660 Opinion). Then, in March
`2020, SonicWall requested an ex parte reexamination of claims 6, 9, 11-12, 17, and 25 (Reexam
`Control No. 90/014,477, “’477 Reexam”) based on the same prior art references that already
`invalidated claims 1, 2, 5, and 13. Compare Ex. 32 (’477 Reexam Request) at 7, 28-30 with Ex. 33
`(’660 Reexam Request) at ii-iii, 15. The result of this Reexam would be very confusing for a jury.
`Specifically, the claims were confirmed based on limitations found in claim 1, even though claim 1
`was canceled earlier based on the same references, because the claims in the ’477 Reexam were
`construed using the Phillips standard whereas they were construed in the ’660 Reexam using the
`broadest reasonable interpretation (BRI) standard. Ex. 34 (’477 Notice of Intent to Issue Ex Part
`Reexamination Certificate) at 2-4. These seemingly incongruous results will unquestionably confuse
`a jury. Further adding to the confusion is the fact the Patent Office confirmed the patentability of
`claims 6, 9, 11-12, 17, and 25 in the ’477 Reexam based on narrow constructions of “parser rules,”
`“analyzer rules,” and “ruled based content scanner,” id., which terms have not been construed in this
`case. Silver State Intellectual Techs., Inc. v. Garmin Int’l, Inc., No. 2:11-cv-01578-GMN-PAL, 2015
`
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`DEFENDANT SONICWALL, INC.’S MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 364 Filed 03/04/21 Page 6 of 9
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`WL 2152658, at *8 (D. Nev. May 7, 2015) (Excluding evidence concerning reexaminations because
`different standards and claim constructions would confuse jury); Wonderland Nurserygoods Co., Ltd.
`v. Thorley Indus., LLC, Civil Action No. 12-196, 2014 U.S. Dist. LEXIS 23255, at *54-57 (W.D. Pa.
`Feb. 24, 2014) (same). Thus, the Court should exclude all evidence and arguments relating to
`SonicWall’s reexamination proceedings and decisions relating to the ’305 Patent as any probative
`value is significantly outweighed by the confusion to the jury and prejudice to SonicWall.
`C.
`Post-Grant Proceedings Are Irrelevant to Damages and the Hypothetical
`Negotiation
`In Cisco, Finjan persuaded the Court that evidence of IPR decisions on the asserted claims
`(which, by definition, were in Finjan’s favor) should be admitted as relevant to damages –
`specifically, that the post-grant proceedings would be considered at the hypothetical negotiation
`under the “book of wisdom” such that the parties would understand that the patents are really valid.
`Ex. 15 (Order on Motions In Limine) at 15. Respectfully, this rationale is not supported by the law.
`It is well-settled law that a hypothetical negotiation already assumes that the patents are valid;
`this is not a point that could ever be disputed at the hypothetical negotiation. Aqua Shield v. Inter
`Pool Cover Team, 774 F.3d 766, 771 (Fed. Cir. 2014) (“Most basically, the method assumes
`infringement and validity of the patents and willingness of the parties to negotiate an agreement.”);
`Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1325 (Fed. Cir. 2009) (“The hypothetical
`negotiation also assumes that the asserted patent claims are valid and infringed.”); MediaTek Inc. v.
`Freescale Semiconductor, Inc., No. 11-cv-5341-YGR, 2014 WL 2854890, at *2 (N.D. Cal. June 20,
`2014) (“This hypothetical negotiation assumes that both the patentee and the accused infringer are
`willing parties to the negotiation, and that the patent was valid, enforceable, and infringed.”). In other
`words, the parties at the hypothetical negotiation are already deemed to assume that the patents are
`valid, and there is no such thing as a higher recognition of validity as part of that legal construct.
`Courts have thus rejected these types of clever rationales that attempt to use the “hypothetical
`negotiation” rationale to sneak in evidence on a point that is already assumed by the legal construct
`itself. Intellectual Ventures I LLC, v. Symantec Corporation et al., 1-10-cv-01067, slip-op at 2-3 (D.
`Del. Jan. 6, 2015) (excluding evidence of defendant’s knowledge of patents under FRE 403 because
`
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`DEFENDANT SONICWALL, INC.’S MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS, CASE NO. 5:17-CV-04467-BLF-VKD
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`

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`Case 5:17-cv-04467-BLF Document 364 Filed 03/04/21 Page 7 of 9
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`a hypothetical negotiation assumes validity and infringement).
`Seen in its true light, Finjan is arguing exactly what the case law has rejected, i.e., that the
`patents should be credited as more than simply valid, but as some sort of super-patents. But the law
`does not recognize any such thing. See, e.g., Fairchild Semiconductor Corp. v. Power Integrations,
`Inc., No. 12-540-LPS, 21, U.S. Dist. LEXIS 53324, at *2-3 (“the ’366 has been valid and presumed
`valid since its issuance, and remains so following reexamination . . . jurors could mistakenly apply a
`higher burden to a challenge to the validity of the claims that have withstood reexamination.”);
`Milwaukee Elec. Tool, 2017 WL 4570787, at *6-7 ( “Admitting evidence of the IPRs is likely to
`mislead the jury into believing that because the patents-in-suit have survived many attacks, they must
`be valid against the present attacks.”). Any expert opinion suggesting otherwise should thus be
`excluded based on Daubert. Indeed, Finjan’s hypothetical negotiation rationale would take this legal
`error one step further, not only implanting the legally void notion of a super-patent in the mind of the
`jury, but also placing into the minds of the parties themselves at the time of the hypothetical
`negotiation.
`Finally, Finjan’s rationale would swallow the entirety of the case law on excluding post-grant
`proceedings, cited above. Every patent holder whose patents survived IPRs could make this argument
`about getting extra credit at the hypothetical negotiation. And, if Finjan’s rationale were accepted,
`then the parties at the hypothetical negotiation would also know how many IPRs Finjan has lost, and
`just how close the asserted claims came to being invalidated in post-grant proceedings, perhaps
`reducing the assumption of validity at the hypothetical negotiation. None of this is permitted: the
`assumption of validity is binary, and it is fixed as part of the hypothetical negotiation construct.
`Finjan cannot get through the backdoor what it admits is prohibited through the front.
`
`
`
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`DEFENDANT SONICWALL, INC.’S MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 364 Filed 03/04/21 Page 8 of 9
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`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
`DEFENDANT SONICWALL, INC.’S MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 364 Filed 03/04/21 Page 9 of 9
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`CERTIFICATE OF SERVICE
`This is to certify that a true and correct copy of DEFENDANT SONICWALL INC.’S
`MOTION IN LIMINE NO. 5: RE EVIDENCE OR ARGUMENTS ABOUT POST-GRANT
`PROCEEDINGS was served by ECF on all counsel of record on March 4, 2021.
`
`
`
`
`
`
`
`/s/ Nicole E. Grigg
`Nicole E. Grigg
`
`
`
`
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`DEFENDANT SONICWALL INC.’S CERTIFICATE OF SERVICE; 5:17-CV-04467-BLF-VKD
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