Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 1 of 29
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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
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Telephone: (858) 678-5070 /
`Fax: (858) 678-5099
`
`Additional attorneys on signature page
`
`Attorneys for Plaintiff
`FINJAN LLC
`
`
`
`D. Stuart Bartow (CA SBN 233107)
`dsbartow@duanemorris.com
`Nicole E. Grigg (CA SBN 307733)
`negrigg@duanemorris.com
`DUANE MORRIS LLP
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`Telephone: 650.847.4146
`Facsimile: 650.847.4151
`Additional attorneys on signature page
`Attorneys for Defendant
`SONICWALL, INC.
`
`
`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)
`[PROPOSED] JOINT PRETRIAL
`STATEMENT AND ORDER
`
`Date: March 18, 2021
`Time:
`1:30 PM
`Place: Courtroom 3, 5th Floor
`Judge: Hon. Beth Labson Freeman
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`JOINT PRETRIAL STATEMENT
`5:17-cv-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 2 of 29
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`Pursuant to Judge Freeman’s Standing Order regarding Civil Jury Trials, Plaintiff Finjan
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`LLC (“Finjan”) and Defendant SonicWall, Inc. (“SonicWall”) (collectively, “Parties”) hereby
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`submit the Joint Pretrial Statement and Order.
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`I.
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`THE ACTION
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`A.
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`The Parties
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`The Parties to this action are Finjan, a Delaware Limited Liability Company with its
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`principal place of business at 2000 University Ave., Ste. 600, East Palo Alto, California 94303, and
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`SonicWall, a Delaware Corporation with its headquarters and principal place of business at 1033
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`McCarthy Blvd., Milpitas, California 95035.
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`B.
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`Substance of the Action
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`This is an action for patent infringement, and the jurisdiction of the court arises under the
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`Patent Act, 35 U.S.C. § 271 et seq.
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`Finjan alleges that SonicWall directly infringes pursuant to 35 U.S.C. § 271(a) the following
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`U.S. patents:
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`1. U.S. Patent No. 6,965,968 (“the ’968 Patent”)
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`2. U.S. Patent No. 7,975,305 (“the ’305 Patent”)
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`3. U.S. Patent No. 8,225,408 (“the ’408 Patent”)
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`4. U.S. Patent No. 6,154,844 (“the ’844 Patent”)
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`5. U.S. Patent No. 8,677,494 (“the ’494 Patent”)
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`6. U.S. Patent No. 8,141,154 (“the ’154 Patent”)
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`7. U.S. Patent No. 6,804,780 (“the ’780 Patent”)
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`8. U.S. Patent No. 7,613,926 (“the ’926 Patent”)
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`JOINT PRETRIAL STATEMENT
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 3 of 29
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`Collectively, these patents are referred to as the “Asserted Patents.” Finjan alleges infringement of
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`the following claims (collectively referred to as the “Asserted Claims”):
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`Patent
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`Asserted Claims
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`’968 Patent
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`’305 Patent
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`’408 Patent
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`’844 Patent
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`’494 Patent
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`’154 Patent
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`’780 Patent
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`’926 Patent
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`To the extent SonicWall claims it does not practice any specific element literally, Finjan
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`has asserted that SonicWall directly infringes certain elements of the Asserted Claims of each of
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`the Asserted Patents under the doctrine of equivalents.
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`Finjan also alleges that SonicWall infringes the Asserted Claims pursuant to 35 U.S.C.
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`§ 271(b) by inducing its contractual partners (including its customers) and agents to practice the
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`Asserted Claims using the Accused Products listed below.
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`Finjan alleges that SonicWall has made, used, sold and offered to sell the following
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`products, methods and/or services (referred to collectively as “Accused Products”), which infringe,
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`literally or under the doctrine of equivalents, one or more of the Asserted Claims of one or more of
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`the Asserted Patents, as shown in the chart below:
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`JOINT PRETRIAL STATEMENT
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 4 of 29
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`Accused Products
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`’968
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`’305
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`’408
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`’844
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`’494
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`’154
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`’780
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`’926
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`Gateway
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`Gateway + Capture
`ATP
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`Capture ATP
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`Email Security +
`Capture ATP
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`Email Security
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`Capture Client
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`Capture Client +
`Capture ATP
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`Gateway + WXA
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`SonicWall disagrees with Finjan’s statement of the accused products it accuses of infringing
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`the ʼ154 Patent in view of the Court’s orders and Finjan’s operative infringement contentions.
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`SonicWall’s position is that Finjan does not have a ʼ154 infringement theory as to SonicWall’s
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`gateways, Capture ATP, Email Security, and Capture Client by themselves. Likewise, SonicWall’s
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`position is that Finjan’s ʼ154 infringement theories for the gateways, Email Security, and Capture
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`Client all require these components combined with Capture ATP. SonicWall’s disagreement
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`regarding the ’154 Patent will be resolved upon resolution of SonicWall’s Motion to Strike (Dkt.
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`Nos. 299-3).
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`SonicWall also (i) denies that it has in the past infringed any Asserted Claim of the Asserted
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`Patents, either literally or through the doctrine of equivalents, (ii) denies that it literally or through
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`the doctrine of equivalents infringes the three Asserted Patent that have not yet expired (the ’154
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`Patent, the ʼ408 Patent, and the ʼ968 Patent), and (iii) denies that Finjan is entitled to any damages
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`or an injunction. SonicWall also contends that Finjan’s claims of infringement as to the ʼ844, ʼ780,
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 5 of 29
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`’968, and ʼ494 Patent are barred, in whole or in part, by the doctrine of prosecution history estoppel.
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`Finally, SonicWall contends that the Asserted Claims of the Asserted Patents are invalid based
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`upon one or more of the following: lack of patentable subject matter, anticipation, obviousness, and
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`written description. Specifically, SonicWall alleges that:
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`
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`
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`
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`
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`the Asserted Claims of the Asserted Patents are invalid for lack of a written
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`description;
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`the asserted claims of the ʼ780 and ʼ494 Patents are invalid for lack of patentable
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`subject matter;
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`the asserted claims of the ’154 Patent are invalid based upon obviousness in view of
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`view of Sweep/InterCheck1 and in view of Ross2;
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`the asserted claims of the ’780 Patent are invalid as obvious from Atkinson3 and
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`obvious from Dongarra4;
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`1 The Sweep/InterCheck system consists of Sophos’ SWEEP anti-virus detection utility, which
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`can run on a server, and Sophos’ InterCheck software, which runs on a workstation/client device
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`(“Sweep/InterCheck”).
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`2 U.S. Patent Application Publication No. 2007/0113282 to Ross (“Ross”).
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`3 U.S. Patent No. 5,892,904 (“Atkinson”).
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`4 Dongarra, “Management of the NHSE – A Virtual Distributed Library” (“Dongarra”).
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 6 of 29
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`
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`
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`the asserted claims of the ’494 Patent are invalid as anticipated by and/or obvious
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`from Zwienenberg5 and obvious from Testbed6 in view of Zwienenberg;
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`the asserted claims of the ʼ844 Patent are invalid as obvious from Zwienenberg,
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`obvious from the combination of Shear 7 and Zwienenberg, obvious from the
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`combination of Islam8 and Testbed, and obvious from the combination of Shear and
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`Testbed;
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`
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`the asserted claims of the ’408 Patent are invalid based upon anticipation and/or
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`obviousness in view of Zurko9 and obviousness in view of the combination of Li10
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`and Zurko;
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`
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`the asserted claims of the ’305 Patent are invalid based upon anticipation in view of
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`Li and obviousness in view of the combination of Zurko and Jordan11 and in view
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`of the combination of Sandu12 and Jordan;
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`5 Zwienenberg, “Heuristic Scanners: Artificial Intelligence?” (“Zwienenberg”).
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`6 Crawford et al., “A Testbed for Malicious Code Detection: A Synthesis of Static and
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`Dynamic Analysis Techniques,” (“Testbed”).
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`7 U.S. Patent No. 6,157,721 (“Shear”).
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`8 A Flexible Security System for Using Internet Content,” by Islam et al. (“Islam”).
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`9 U.S. Patent Application 2005/0198692 (“Zurko”).
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`10 U.S. Patent 7,398,553 (“Li”).
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`11 U.S. Patent 8,839,417 (“Jordan”).
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`12 U.S. Patent 7,707,634 (“Sandu”).
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 7 of 29
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`
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`the asserted claims of the ’968 Patent are invalid based upon anticipation and/or
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`obviousness in view of McClain, 13 anticipation and/or obviousness in view of
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`Shunsuke,14 and anticipation and/or obviousness in view of Hege15;
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`
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`the asserted claims of the ’926 Patent are invalid based upon obviousness in view of
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`the combination of Grecsek16 and Zwienenberg and the combination of Dongarra
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`and Zwienenberg.
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`SonicWall previously alleged that the ’494 Patent is unenforceable due to inequitable conduct
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`occurring during the prosecution thereof, but solely in the interests of streamlining issues in
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`preparation for trial, is hereby withdrawing that allegation. Further, this case is exceptional under
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`35 U.S.C. § 285, and SonicWall seeks its fees and expenses thereunder and any other relief the
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`Court deems appropriate.
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`C.
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`Relief Sought
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`1.
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`Finjan’s Position
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`As set forth in Finjan’s Complaint and Rule 26(a)(1) disclosures, Finjan seeks, among other
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`relief, monetary and equitable relief. Finjan is seeking no less than a reasonable royalty for
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`SonicWall’s infringement (past, present, and future) and, separately, injunctive relief against future
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`infringement of the ’154 Patent, ’968 Patent, and ’408 Patent (the “Unexpired Patents”). Finjan
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`also seeks an accounting of past damages for infringement up to the date of the payment, along
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`with prejudgment and post-judgment interest. In addition, upon a finding of willful infringement,
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`13 U.S. Patent 6,772,214 (“McClain”).
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`14 Japanese Patent Publication No. 2002-358229 (“Shunsuke”).
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`15 German Patent Document DE10104486 (“Hege”).
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`16 U.S. Patent 6,088,801 (“Grecsek”).
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 8 of 29
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`Finjan further seeks enhanced damages up to the statutorily permissible trebling of damages, as
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`well as reasonable attorney’s fees and costs. Finjan identifies the following points of relief:
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` an entry of judgment that the Asserted Claims are not invalid;
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` an entry of judgment that SonicWall has infringed the Asserted Patents;
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` an entry of judgment that SonicWall continues to infringe the Unexpired Patents;
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` an injunction to enjoin SonicWall and those in privity with SonicWall from
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`infringing the Unexpired Patents;
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` an award of damages in the form of a reasonable royalty;
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` a finding that SonicWall’s infringement has been willful, wanton, and deliberate
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`and that Finjan is entitled to trebled damages on this basis;
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` a finding that the case is exceptional;
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` an award of Finjan’s costs and reasonable attorneys’ fees permitted under 35
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`U.S.C. § 285;
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` an accounting of SonicWall’s infringing sales and revenues, along with
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`prejudgment and post-judgment interest from the first date of infringement to the
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`present; and
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` any further relief that the Court may deem proper and just.
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`2.
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`SonicWall’s Position
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`SonicWall denies that it has infringed or is infringing any of the Asserted Patents, and Finjan
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`is not entitled to any of its requested relief. To the extent any Accused Product is found to infringe
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`any valid claim of the Asserted Patents, SonicWall further denies that Finjan is entitled to its
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`requested damages or an accounting. Finjan has also failed to carry its burden of establishing an
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`appropriate reasonable royalty in this matter, and the damages it does seek do not comply with
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`Federal Circuit law relating to the calculation of reasonable royalty damages. SonicWall also
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`JOINT PRETRIAL STATEMENT
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 9 of 29
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`denies that Finjan is entitled to recover foreign sales or worldwide damages. SonicWall also denies
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`that Finjan is entitled to injunctive relief as to the Unexpired Patents, including because (i) Finjan
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`presently makes and sells no products that practice the Unexpired Patents, and (ii) the damages
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`opinions presented by both parties cover any alleged future infringement, and would thus constitute
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`a fully paid up royalty. Further, the parties have agreed that whether an injunction is warranted as
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`to the Unexpired Patents is an issue for the Court, not the jury, as set forth in Section VII. SonicWall
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`seeks the following relief:
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`
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`A judgment that SonicWall does not infringe, directly or indirectly, whether literally
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`or under the doctrine of equivalents, any of the Asserted Claims of the Asserted
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`
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`
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`
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`
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`
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`
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`
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`
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`Patents.
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`A judgment that Finjan is precluded from any relief under the doctrine of equivalents
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`based on claim vitiation.
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`A judgment that Finjan is precluded from any relief under the doctrine of equivalents
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`based on ensnarement.
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`A judgment that the asserted claims of the ʼ780 and ʼ494 Patents are invalid under
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`§ 101.
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`A judgment that the Asserted Claims of the Asserted Patents are invalid under § 102
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`and/or 103.
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`A judgment that the Asserted Claims of the Asserted Patents are invalid under § 112.
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`A judgment that Finjan is not entitled to any damages pursuant to at least 35 U.S.C.
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`§§ 286 and 287.
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`A judgment that Finjan is not entitled to an injunction.
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`A judgment that this is an “exceptional case” and an award of SonicWall’s
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`reasonable attorneys’ fees, expenses, and costs in this action under § 285.
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`JOINT PRETRIAL STATEMENT
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 10 of 29
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`D.
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`Federal Jurisdiction and Venue
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`The Court has original jurisdiction over this controversy pursuant to 28 U.S.C. §§ 1331 and
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`1338(a). Jurisdiction and venue are not disputed.
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`II.
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`FACTUAL BASIS OF THE ACTION
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`A.
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`Undisputed Facts
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`1.
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`The Parties
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`13.
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`Finjan is a Delaware corporation with its principal place of business at 2000
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`University Ave., Ste. 600, East Palo Alto, California 94303.
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`SonicWall is a Delaware Corporation incorporated on September 23, 2016, with its
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`headquarters and principal place of business at 1033 McCarthy Blvd., Milpitas,
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`California 95035.
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`2.
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`The Patents in Suit
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`Finjan filed the Complaint alleging infringement of the Asserted Patents on August
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`4, 2017.
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`Finjan is the owner of the Asserted Patents.
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`The patent application for the ’844 Patent was filed on December 22, 1997.
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`Shlomo Touboul and Nachson Gal are listed as inventors on the ’844 Patent.
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`The ’844 Patent issued on November 28, 2000.
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`The ’844 Patent expired on January 29, 2017.
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`The patent application for the ’780 Patent was filed on March 30, 2000.
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`Shlomo Touboul is listed as an inventor on the ’780 Patent.
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`The ’780 Patent issued on October 12, 2004.
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`The ’780 Patent expired on November 6, 2017.
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`The patent application for the ’926 Patent was filed on March 7, 2006.
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 11 of 29
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`14.
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`Yigal Mordechai Edery, Nimrod Itzhak Vered, David R. Kroll, and Shlomo Touboul
`
`are listed as inventors on the ’926 Patent.
`
`The ’926 Patent issued on November 3, 2009.
`
`The ’926 Patent expired on January 29, 2017.
`
`The patent application for the ’154 Patent was filed on June 14, 2010.
`
`David Gruzman and Yuval Ben-Itzhak are listed as inventors on the ’154 Patent.
`
`The ’154 Patent issued on March 20, 2012.
`
`The ’154 Patent expires on December 12, 2025.
`
`The patent application for the ’494 Patent was filed on November 7, 2011.
`
`Yigal Mordechai Edery, Nimrod Itzhak Vered, David R. Kroll, and Shlomo Touboul
`
`are listed as inventors on the face of the ’494 Patent.
`
`The ’494 Patent issued on March 18, 2014.
`
`The ’494 Patent expired on January 29, 2017.
`
`The patent application for the ’305 Patent was filed on December 9, 2004.
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`15.
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`16.
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`17.
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`18.
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`19.
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`20.
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`21.
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`22.
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`23.
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`24.
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`25.
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`26. Moshe Rubin, Moshe Matitya, Artem Melnick, Shlomo Touboul, Alexander
`
`Yermakov, and Amit Shaked are listed as inventors on the ’305 Patent.
`
`27.
`
`28.
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`29.
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`The ’305 Patent issued on July 5, 2011.
`
`The ’305 Patent expired on August 18, 2020.
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`The patent application for the ’408 Patent was filed on August 30, 2004.
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`30. Moshe Rubin, Moshe Matitya, Artem Melnick, Shlomo Touboul, Alexander
`
`Yermakov, and Amit Shaked are listed as inventors on the ’408 Patent.
`
`31.
`
`32.
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`33.
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`The ’408 Patent issued on July 17, 2012.
`
`The ’408 Patent expires on May 27, 2021.
`
`The patent application for the ’968 Patent was filed on February 27, 2003.
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`35.
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`36.
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`Shlomo Touboul is listed as the inventor of the ’968 Patent.
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`The ’968 Patent issued on November 15, 2005.
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`The ’968 Patent expires on September 5, 2023.
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`3.
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`Damages
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`37.
`
`The dates of the hypothetical negotiation for the asserted patents are as follows:
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`a. ’844 Patent: 2012
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`b. ’780 Patent: 2010
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`c. ’494 Patent: Mar. 18, 2014
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`d. ’926 Patent: 2013–2014
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`e. ’968 Patent: 2011–2012
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`f. ’305 Patent: 2013–2014
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`g. ’408 Patent: 2013–2014
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`h. ’154 Patent: 2013–2014
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`38.
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`Finjan will not rely on patent marking pursuant to 35 U.S.C. § 287 to prove notice
`
`and, therefore, the starting date for any damages owed by SonicWall to Finjan
`
`begins with actual notice of infringement by Finjan pursuant to 35 U.S.C. § 287.
`
`Dkt. No. 318.
`
`B.
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`Disputed Facts
`
`1.
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`Finjan’s Disputed Facts
`
`Finjan identifies the below listed issues of fact for trial. Finjan reserves the right to amend
`
`this statement in light of SonicWall’s statements of fact or law that remain to be litigated or any
`
`revisions thereto. Finjan reserves the right to address additional issues not set forth herein to the
`
`extent they are raised by SonicWall at trial. These issues of fact may change based on the Court’s
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`decisions on various motions, including motions in limine.
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`JOINT PRETRIAL STATEMENT
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 13 of 29
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`1.
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`Whether Finjan has proven by a preponderance of the evidence that SonicWall
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`directly or indirectly infringed, literally or under the doctrine of equivalents, each of
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`the Asserted Patents:
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`a. the ’305 Patent
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`b. the ’408 Patent
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`c. the ’968 Patent
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`d. the ’494 Patent
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`e. the ’154 Patent
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`f.
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`the ’926 Patent
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`g. the ’844 Patent
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`h. the ’780 Patent
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Whether Finjan has proven by a preponderance of the evidence that SonicWall’s
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`infringement of any of the Asserted Patents was willful, and if so, which ones.
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`Whether SonicWall knew or should have known that its conduct involved an
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`unreasonable risk of infringement of Finjan’s Asserted Patents, and recklessly
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`disregarded Finjan’s patent rights.
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`The amount adequate to compensate Finjan for SonicWall’s infringement.
`
`Whether Finjan has established that it is entitled to enhanced damages under 35
`
`U.S.C. § 284 for SonicWall’s willful infringement of the Patents-in-Suit and, if so,
`
`what the degree of enhancement should be.
`
`Whether Finjan has established that this is an exceptional case and that it is entitled
`
`to an award of attorneys’ fees and costs under 35 U.S.C. § 285 and, if so, the amount.
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`Whether SonicWall can prove by clear and convincing evidence that any of the
`
`Asserted Claims are invalid.
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`JOINT PRETRIAL STATEMENT
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 14 of 29
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`8.
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`Whether objective indicia of non-obviousness support a finding that the Asserted
`
`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`claims are not invalid.
`
`2.
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`SonicWall’s Disputed Facts
`
`The priority date of the ʼ844 Patent.
`
`The priority date of the ʼ780 Patent.
`
`The priority date of the ʼ305 Patent.
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`The priority date of the ʼ926 Patent.
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`Whether SonicWall directly infringes or induces infringement any of the Asserted
`
`Claims of the Asserted Patents, either literally or through the doctrine of equivalents;
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`Whether there is a lack of a written description in the Asserted Patents that renders
`
`the Asserted Claims invalid under 35 U.S.C. § 112;
`
`Whether there is a lack of patentable subject matter claimed in the ʼ780 and ʼ494
`
`Patents that renders them invalid under § 101;
`
`Whether the Asserted Claims are invalid pursuant to 35 U.S.C. § 102 and/or 103;
`
`Should SonicWall be found to infringe any of the Asserted Claims of a valid
`
`Asserted Patent, the date that Finjan provided SonicWall with actual notice of
`
`infringement.
`
`10.
`
`Should SonicWall be found to infringe any of the Asserted Claims of a valid
`
`Asserted Patent, the amount adequate to compensate Finjan for SonicWall’s
`
`infringement;
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`11. Whether SonicWall knew or should have known that its conduct involved an
`
`unreasonable risk of infringement of Finjan’s Asserted Patents and recklessly
`
`disregarded Finjan’s patent rights.
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 15 of 29
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`C.
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`Disputed Legal Issues
`
`1.
`
`Finjan’s Disputed Legal Issues
`
`Finjan identifies the below listed issues of law. Finjan’s identification of issues of law that
`
`remain to be litigated is based, in part, on Finjan’s understanding of Defendant’s arguments
`
`regarding infringement and validity, which are based on Defendant’s interrogatory responses and
`
`expert reports. Finjan reserves the right to amend this statement in light of Defendant’s statements
`
`of fact or law that remain to be litigated or any revisions thereto. Finjan reserves the right to address
`
`additional issues not set forth herein to the extent they are raised by Defendant at trial. These issues
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`of law may change based on the Court’s decision on various motions, including motions in limine.
`
`1.
`
`Whether Finjan has established that it is entitled to enhanced damages under 35
`
`U.S.C. § 284 for Defendants’ willful infringement of the Asserted Patents and, if so,
`
`2.
`
`3.
`
`4.
`
`5.
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`6.
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`what the degree of enhancement should be.
`
`Whether Finjan has established that this is an exceptional case and that it is entitled
`
`to an award of attorneys’ fees and costs under 35 U.S.C. § 285 and, if so, the amount.
`
`Whether Finjan is entitled to prejudgment and post-judgment interest pursuant to
`
`U.S.C. § 284.
`
`Whether Finjan should be awarded its costs pursuant to Federal Rule of Civil
`
`Procedure 54(d).
`
`Whether Finjan is entitled to a permanent injunction pursuant to 35 U.S.C. § 283.
`
`Whether U.S. Patent No. 8,839,417 to Jordan (“the Jordan reference”) relied upon
`
`by SonicWall qualifies as prior art to the ’305 Patent under 35 U.S.C. §§ 102 and/or
`
`103.
`
`7.
`
`Whether U.S. Patent No. 5,892,904 to Atkinson et al. (“the Atkinson reference”)
`
`and “Management of the National HPCC Software Exchange -- A Virtual
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`Distributed Digital Library” by Dongarra et al. (“the Dongarra reference”) relied
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`upon by SonicWall qualify as prior art to the ’780 Patent under 35 U.S.C. §§ 102
`
`and/or 103.
`
`8.
`
`Whether “Heuristic Scanners: Artificial Intelligence?” by Zwienenberg (“the
`
`Zwienenberg reference”) and “A Testbed for Malicious Code Detection: A
`
`Synthesis of Static and Dynamic Analysis Techniques” by Crawford et al. (the
`
`Testbed reference”) relied upon by SonicWall qualify as prior art to the ’494 Patent
`
`under 35 U.S.C. §§ 102 and/or 103.
`
`9.
`
`Whether “A Flexible Security Model for Using Internet Content” by Islam et al.
`
`(“the Islam reference”), Zwienenberg, and Testbed references relied upon by
`
`SonicWall qualify as prior art to the ’844 Patent under 35 U.S.C. §§ 102 and/or 103.
`
`10. Whether U.S. Patent No. 6,088,801 to Grecsek (“the Grecsek reference”),
`
`Zwienenberg, Dongarra, and Islam references relied upon by SonicWall qualify as
`
`prior art to the ’926 Patent under 35 U.S.C. §§ 102 and/or 103.
`
`11. Whether SonicWall can prove by clear and convincing evidence that any of the
`
`Asserted Claims are invalid.
`
`12. Whether SonicWall has waived its argument (raised for the first time in this
`
`Proposed Joint Pretrial Statement) that Dell’s knowledge of Finjan’s claims of
`
`infringement of each Accused Product as to the relevant Asserted Patents cannot be
`
`imputed to SonicWall.17
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`17 SonicWall disagrees that it has waived this argument.
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`JOINT PRETRIAL STATEMENT
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 17 of 29
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`2.
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`SonicWall’s Disputed Legal Issues
`
`SonicWall has identified and briefed legal issues in connection with its summary judgment
`
`motion, and incorporates those issues herein by reference. SonicWall identifies the following
`
`additional legal issues:
`
`1.
`
`Whether Finjan can present legally sufficient evidence that SonicWall directly
`
`infringes or induces infringement of, literally or under the doctrine of equivalents,
`
`the Asserted Claims of the Asserted Patents under 35 U.S.C. § 271(a).
`
`2.
`
`Whether Finjan is precluded from arguing that SonicWall infringes the ’844, ʼ494,
`
`’968, and ʼ780 Patents under the doctrine of equivalents as a result of prosecution
`
`history estoppel.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Whether Finjan’s theories of infringement under the doctrine of equivalents for the
`
`Asserted Patents are barred under the doctrine of claim vitiation;
`
`Whether Finjan’s theories of infringement under the doctrine of equivalents for the
`
`Asserted Patents are barred under the doctrine of ensnarement;
`
`Whether Finjan’s damages claims, including worldwide damages arising from
`
`foreign sales, are legally viable.
`
`Whether Dell’s knowledge of Finjan’s claims of infringement of each accused
`
`Product as to the relevant Asserted Patent can be imputed to SonicWall.
`
`Whether and when Finjan gave SonicWall actual notice of infringement of each
`
`accused product as to the relevant Asserted Patent prior to the filing of the
`
`complaint.
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`8.
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`Whether Finjan is entitled to a finding that SonicWall’s alleged infringement is
`
`willful, wanton, and deliberate and that Finjan is entitled to trebled damages on this
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 18 of 29
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`basis if SonicWall is found to infringe any Asserted Claim of any valid Asserted
`
`Patent.
`
`9.
`
`Whether SonicWall is entitled to a judgment and order that this is an exceptional
`
`case within the meaning of 35 U.S.C. § 285 and awarding SonicWall its costs,
`
`enhanced damages, and reasonable attorneys’ fees.
`
`10. Whether Finjan is entitled to a permanent injunction pursuant to 35 U.S.C. § 283 if
`
`SonicWall is found to literally infringe any valid Asserted Claim the ’154, ʼ408, and
`
`ʼ968 Patents.
`
`11. Whether SonicWall may designate the deposition testimony of Michael Noonan
`
`taken in the Finjan v. Cisco case.
`
`The Parties also incorporate the disputed facts listed in Section II.B above to the extent that
`
`they involve disputed legal issues and/or mixed questions of law and fact.
`
`III. ESTIMATE OF TRIAL TIME
`
`The Parties anticipate that each party will have 20 hours of trial time, excluding jury
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`selection, opening statements, and closing statements, starting on May 3, 2021. The Parties agree
`
`that there will be no more than one hour per side for opening statements and no more than ninety
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`minutes per side for closing statements.
`
`IV.
`
`TRIAL ALTERNATIVES AND OPTIONS
`
`A.
`
`Settlement Discussion
`
`The Parties have engaged in early settlement discussions, which have been unsuccessful.
`
`Further negotiations may occur but are not likely to be productive at this time.
`
`B.
`
`Amendments or Dismissals
`
`SonicWall is withdrawing its defense that the ’494 Patent is unenforceable due to
`
`inequitable conduct occurring during the prosecution thereof, solely in the interests of streamlining
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`Case 5:17-cv-04467-BLF Document 372 Filed 03/04/21 Page 19 of 29
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`
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`issues in preparation for trial. Otherwise, neither party intends to make any amendments to the
`
`pleadings and neither party intends to voluntarily dismiss any claim or defense.
`
`C.
`
`Bifurcation or Separate Trial of Issues
`
`Neither party desires bifurcation or separate trial of specific issues.
`
`V.
`
`APPENDICES
`
`The following Appendices are attached hereto:
`
`Appendix A
`
`Finjan’s Witness List
`
`Appendix B
`
`SonicWall’s Witness List
`
`Appendix C-1 Placeholder for Joint Exhibit List
`
`Appendix C-2 Finjan’s Exhibit List and Objections Thereto
`
`Appendix C-3 SonicWall’s Exhibit List and Objections Thereto
`
`Appendix D
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`Appendix E
`
`Finjan’s Discovery Responses (excluding Deposition Designations) and
`Objections Thereto
`SonicWall’s Discovery Responses (excluding Deposition Designations) and
`Objections Thereto
`
`
`Pursuant to Part III.B.1 of the Court’s Standing Order re Civil Jury Trials, the Parties are
`
`continuing to discuss streamlining exhibits, including a joint exhibit list.
`
`Part III.A.1 of the Court’s Standing Order re Civil Jury Trials provides for the filing of
`
`certain materials as appendices to this Joint Pretrial S