Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 1 of 8
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`Juanita R. Brooks (CA SBN 75934) brooks@fr.com
`Roger A. Denning (CA SBN 228998) denning@fr.com
`Jason W. Wolff (CA SBN 215819) wolff@fr.com
`John-Paul Fryckman (CA 317591) fryckman@fr.com
`K. Nicole Williams (CA291900) nwilliams@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Ste. 400
`San Diego, CA 92130
`Telephone: (858) 678-5070 / Fax: (858) 678-5099
`
`Proshanto Mukherji (Pro Hac Vice) mukherji@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Phone: (617) 542-5070/ Fax: (617) 542-5906
`
`Robert Courtney (CA SNB 248392) courtney@fr.com
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Phone: (612) 335-5070 / Fax: (612) 288-9696
`
`Attorneys for Plaintiff
`FINJAN LLC
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`(SAN JOSE DIVISION)
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`FINJAN LLC., a Delaware Limited Liability
`Company,
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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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`Case No. 5:17-cv-04467-BLF (VKD)
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`PLAINTIFF FINJAN LLC’S MOTION IN
`LIMINE NO. 1 TO PRECLUDE
`TESTIMONY ON WRITTEN
`DESCRIPTION FROM SONICWALL’S
`TECHNICAL EXPERTS
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`Date: March 18, 2021
`Time: 1:30 PM
`Hon. Beth Labson Freeman
`Ctrm: 3, 5th Floor
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`UNREDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
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`Case No. 17-cv-04467-BLF (VKD)
` FINJAN LLC’S MOTION IN LIMINE NO. 1
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`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 2 of 8
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`I.
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`INTRODUCTION
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`Pursuant to Federal Rules of Evidence 401, 402, 403, and 702, Finjan LLC (“Finjan”)
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`respectfully requests that the Court exclude from presentation at trial any testimonial opinions that
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`any asserted patent claim lacks sufficient written description, and/or is invalid for that reason.
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`II.
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`ARGUMENT
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`SonicWall proposes to present the jury with technical opinions concerning the sufficiency
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`of the written description supporting Finjan’s patent claims. SonicWall’s technical experts did not
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`base these opinions on the Court’s claim constructions, but used improper alternative claim
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`constructions the experts invented themselves. Such opinions are improper, and the Court should
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`preclude SonicWall from presenting them to the jury.
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`A.
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`For Written Description, SonicWall’s Technical Experts Relied on Alternative
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`Constructions Not Adopted by the Court
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`Each of SonicWall’s technical experts, Aviel Rubin, Ph.D; Kevin Almeroth, Ph.D.; and
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`Patrick McDaniel, Ph.D., applied the same methodology opining on written description:
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`1.
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`Identifying a Finjan infringement contention against a SonicWall product;
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`2.
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`Based on the contention, forming an alternative construction of a claim
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`limitation(s);
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`3.
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`4.
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`Reasoning that Finjan would have adopted this alternative construction; then
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`Opining that the patent’s written description fails to teach or suggest an
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`embodiment conforming to the alternative claim construction.
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`The written description opinions of all four experts use this approach. (See Exh. 1 at 212–
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`40; Exh. 2 at 253–86; Exh. 3 at 128–41.) The Opening Rubin report is illustrative. It begins by
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`analyzing Finjan’s infringement contentions. (Exh. 1 at 212 (“Finjan contends this claim language
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`is met . . . .”).) It then hypothesizes that Finjan’s basis for those contentions might have been an
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`alternative interpretation of some claim term (here, the ’408 claim term “an incoming stream of
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`FINJAN LLC’S MOTION IN LIMINE NO. 1
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`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 3 of 8
`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 3 of 8
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`programming code”) such that the term would cover the limitation in question (here,-
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`(Id. at 213.) The Report assigns this hypothetical
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`construction to Finj an, though it cites neither any filing by Finjan adopting that construction, nor
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`the Court’s claim construction order.
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`(Id) Finally, the Repo1t compares its alternative
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`construction to the specification of the ’408 patent to look for disclosure of the exact alleged
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`fimctionality and, fmdiiig none, opines that a skilled artisan would not fmd support for the claim
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`lmder this alternative, hypothetical construction never adopted by (or even submitted to) the Court.
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`(Id. at 213—14.)
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`B.
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`Depositions Confirmed The Experts’ Reliance on Alternative Constructions
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`When challenged at deposition, the SonicWall Technical Experts confirmed that their
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`analysis of written description primarily relied on Finjan’s infringement contentions, and not on
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`the Court’s Claim Construction Order or the terms’ ordinary meaning to one of skill in the art.
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`Dr. Rubin confirmed that under the proper construction of the claims, he was “not
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`challenging” written description. (Exh. 4 50:11—18(‘—
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`” (objection omitted)).) He confnmed that his written
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`description opinions were based entirely on constructions that the Court has not adopted, and
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`would apply only if the Cowl‘—
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`-_” (Id. at 4629—47: 1.)
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`Dr. Almeroth described his written description argument as a “conditional” argument, and
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`that he was not providing a written description opinion under “the proper” interpretation of the
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`claims. (Exh. 5 6222—632, 64: 13—19.) His analysis was expressly “predicated based on a claims
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`“-
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`scope” that he purportedly discerned from Finjan s mfringement allegations.” (Id. at 67:8—15.)
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`Case No. l7-cv—04467—BLF (VKD)
`FINJAN LLC ’8 MOTION INLIMINE NO. 1
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`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 4 of 8
`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 4 of 8
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`Dr. McDaniel confirmed that he—like all the SonicWall experts—was applying a different
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`claim construction for written description than he applied to either infringement or other aspects of
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`invalidity. (Exh. 6 54: 12—21 (describing how his written description discussion ‘—
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`—”)-) And, like the other expem, he offered
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`no written description opinion under the claim construction actually entered by the Court. (Id. at
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`55:16—20.)
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`C.
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`The Court Should Not Permit Presentation of Hypothetical, Alternative
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`Constructions, or Opinions Based Thereon, to the Jury
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`The SonicWall Technical Expert’s hypothetical-construction methodology is improper as a
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`matter of law, per se unreliable, and inappropriate for the jury. Unless the Court precludes it, such
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`testimony would confuse the jury as to the meaning of claim terms, which meanings should only
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`every be set by the Court. The jury should only be presented with one set of claim constructions:
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`those in the Court’s Claim Construction Order.
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`1.
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`Legal Standards
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`The Supreme Court has long held that patent claim interpretation is an issue of law, to be
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`resolved exclusively by the court. Markman v. Westview Instrmnents, Inc., 517 US. 370, 372
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`(1996). In jury trials, the court supplies its constructions to the jury via instructions. E.g., Every
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`Penny Counts, Inc. v. American Express C0,, 563 F.3d 1378, 1383 G‘ed. Cir. 2009) (“[T]he court’s
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`obligation is to ensure that questions of the scope of the patent claims are not left to the jury.”)
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`Claim interpretation is not, in any sense, a jury issue. Id. Courts construing patent claims give
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`terms the meaning they would have to a person of ordinary skill in the art at the time of the
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`invention in view of the specification and the prosecution history. Phillips v. A WH Corp, 415
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`F.3d 1303, 1312—13 (Fed. Cir. 2005) (en banc). As to written description, patents must contain a
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`sufficient written description “as to enable any person skilled in the art .
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`. to make and use the
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`same[.]” 35 U.S.C. § 112, 1[ 1. Specifically, the description must “clearly allow persons of
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`Case No. l7-cv-04467-BLF (VKD)
`FlNJAN LLC ’8 MOTION IN LIMINE NO. 1
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`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 5 of 8
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`ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharms.,
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`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quote marks omitted).
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`“[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably
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`conveys to those skilled in the art that the inventor had possession of the claimed subject matter as
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`of the filing date.” Id. The sufficiency of written description is evaluated based on “the four
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`corners of the specification.” Id. A patent satisfies the written description requirement where its
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`specification is adequate “to support the full scope of the claims as construed [by the court].”
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`Energy Trans. Grp. v. William Demant Holding A/S, 697 F.3d 1342, 1350 (Fed. Cir. 2012). Fact-
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`finders evaluating the sufficiency of a patent’s written description apply a presumption that the
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`description is sufficient. A patent may be invalidated on written description grounds only upon
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`clear and convincing evidence that the full scope of the claims, using the construction assigned by
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`the court, lacks support in the written description. Ariad, 598 F.3d at 1354.
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`2.
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`Opinions Based on Alternative Claim Constructions Derived From
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`Infringement Allegations are Improper
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`The written description opinions offered by Drs. Rubin, Almeroth, and McDaniel should
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`be precluded. For written description, claims must only interpreted according to their ordinary
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`meaning at the time of the invention, in view of the specification and the prosecution history.
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`Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1336 (Fed. Cir.
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`2010) (“A district court must base its analysis of written description . . . on proper claim
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`construction.”); see also Phillips, 415 F.3d at 1312–13. This Court properly held claim
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`construction proceedings, and issued an order. (See Claim Constr. Order (Mar. 26, 2019), D.I.
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`132.) Eliciting testimony using constructions neither Finjan nor the Court have adopted flatly
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`abridges that law.
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`Further, infringement contentions are not a recognized source for claim construction. Post-
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`patent documents—such as contentions—that do not help establish what claim terms meant at the
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`FINJAN LLC’S MOTION IN LIMINE NO. 1
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`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 6 of 8
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`time of the invention, are “not considered.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334
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`F.3d 1294, 1299 (Fed. Cir. 2003). None of the SonicWall Experts contend that the infringement
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`allegations are valid claim construction evidence, yet all of them rely on them for that purpose.
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`Dr. Rubin confirmed that his written description opinions could apply only if the Court adopts
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`those constructions—which it has not done. (Exh. 4 at 46:9–47:1.) Dr. Almeroth stated that his
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`analysis was discerned from Finjan’s “infringement allegations,” and that he had no written
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`description opinion under “the proper” (i.e., the Court’s) interpretation of the claims. (Exh. 5
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`62:22–63:2, 64:13–19, 67:8–15.) Dr. McDaniel confirmed that but for considering the allegations,
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`he had no other opinion as to written description, and was basing his opinions on “what Finjan
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`appeared to be arguing.” (Exh. 6 at 54:12–21, 55:16–20.)
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`Finjan is unaware of any authority endorsing an expert applying alternative constructions
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`in jury testimony. The Federal Circuit has expressly reminded district courts to be vigilant against
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`attempts to make claim construction a jury issue. Every Penny Counts, 563 F.3d at 1383 (Fed.
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`Cir. 2009) (“[T]he court’s obligation is to ensure that questions of the scope of the patent claims
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`are not left to the jury.”). And it has noted that failure to sufficiently protect the jury may be
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`grounds for reversal. In its words, “The risk of confusing the jury is high when experts opine on
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`claim construction before the jury[.]” CytoLogix Corp. v. Ventana Medical Sys. Inc., 424 F.3d
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`1168, 1172 (Fed. Cir. 2005).
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`Tendering invalidity theories based on alternative claim constructions that are (1)
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`unendorsed by the Court, and (2) expressly derived from documents that are not cognizable claim
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`construction evidence would promote confusion by the jury, to Finjan’s clear prejudice. Because it
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`is not disputed that none of SonicWall’s experts have disclosed any written description opinions
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`except those based on the infringement allegations (and the hypothetical claim constructions
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`derived therefrom), the Court should order that SonicWall may not present any expert opinion at
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`trial on written description.
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`Case No. 17-cv-04467-BLF (VKD)
`FINJAN LLC’S MOTION IN LIMINE NO. 1
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`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 7 of 8
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`Dated: March 4, 2021
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`Respectfully Submitted,
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`By: /s/ Robert Courtney
`Juanita R. Brooks (CA SBN 75934)
`brooks@fr.com
`Roger A. Denning (CA SBN 228998)
`denning@fr.com
`Jason W. Wolff (CA SBN 215819)
`wolff@fr.com
`John-Paul Fryckman (CA 317591)
`fryckman@fr.com
`K. Nicole Williams (CA 291900)
`nwilliams@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Ste. 400
`San Diego, CA 92130
`Phone: (858) 678-5070 / Fax: (858) 678-5099
`
`Proshanto Mukherji (Pro Hac Vice)
`mukherji@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Phone: (617) 542-5070/ Fax: (617) 542-5906
`
`Robert Courtney (CA SNB 248392)
`courtney@fr.com
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Phone: (612) 335-5070 / Fax: (612) 288-9696
`
`Attorneys for Plaintiff
`FINJAN LLC
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`Case No. 17-cv-04467-BLF (VKD)
`FINJAN LLC’S MOTION IN LIMINE NO. 1
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`Case 5:17-cv-04467-BLF Document 369 Filed 03/04/21 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on March 4, 2021 to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF system. Any other counsel of record will
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`be served by electronic mail and regular mail.
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`/s/ Robert Courtney
`Robert Courtney
`courtney@fr.com
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