Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 1 of 9
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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 SBN 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
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`(SAN JOSE DIVISION)
`FINJAN LLC, a Delaware Limited Liability
`Case No. 5:17-cv-04467-BLF (VKD)
`Company,
`
`Plaintiff,
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`v.
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`SONICWALL, INC., a Delaware Corporation,
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`Defendant.
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`PLAINTIFF FINJAN LLC’S OPPOSITION
`TO DEFENDANT SONICWALL INC.’S
`MOTION IN LIMINE TO EXCLUDE THE
`TESTIMONY OF DR. MCDUFF’S PRICE
`PER SCAN OPINIONS (METHOD NO. 3)
`(MOTION IN LIMINE NO. 4) [DKT. 363]
`
`Date: March 18, 2021
`Time: 1:30 PM
`Hon. Beth Labson Freeman
`Ctrm: 3, 5th Floor
`
`REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
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`Case No. 17-cv-04467-BLF (VKD)
` FINJAN’S OPPOSITION TO MOTION IN LIMINE NO. 4
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`Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 2 of 9
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`TABLE OF REFERENCED EXHIBITS1
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`Description
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`Exhibit
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`Expert Report of DeForeset McDuff, Ph.D. dated September 4, 2020
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`Deposition Transcript of DeForest McDuff, Ph.D. taken November 2, 2020
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`2018 SonicWall Cyber Threat Report (McDuff Depo Ex. 4) FINJAN-SW 433167-
`433191
`2019 SonicWall Cyber Threat Report, FINJAN-SW 433192-433226
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`A
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`E
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`H
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`I
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`1 All exhibits are attached to the Omnibus Declaration of Robert Courtney.
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`Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 3 of 9
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`I.
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`INTRODUCTION
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`SonicWall’s Motion in Limine No. 4 is an improper attempt to take the role of fact-finder
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`from the jury and place it upon the Court without any showing of prejudice. Though SonicWall
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`tries to frame its criticism of Dr. McDuff’s opinion as one of methodology, it asks the Court to
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`evaluate disputed facts and decide upon the correctness those opinions. SonicWall may test each
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`of its criticisms through cross-examination, not through exclusion. Accordingly, the Court should
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`deny SonicWall’s Motion in Limine No. 4.
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`II.
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`LEGAL STANDARD
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`The trial court’s inquiry into the admissibility of an expert’s opinion is “a flexible one,” in
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`which even “[s]haky but admissible evidence is to be attacked by cross examination, contrary
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`evidence, and attention to the burden of proof, not exclusion.” Primiano v. Cook, 598 F.3d 558,
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`564 (9th Cir. 2010) (citing Daubert v. Merrill Dow, 509 U.S. 579, 596 (1993)). “Under Daubert,
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`the district judge is a ‘gatekeeper, not a fact finder.’” Id. (quoting United States v. Sandoval-
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`Mendoza, 472 F.3d 645, 654 (9th Cir. 2006)).
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`III. ARGUMENT
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`A.
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`Dr. McDuff’s Per Scan Royalty Rate Properly Results from a Range of Inputs
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`Dr. McDuff’s opinion considers multiple factors to arrive at the
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` per scan royalty rate,
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`none of which requires that SonicWall and Finjan purchased
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`. These
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`factors include (1)
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`” (2) “
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`” (3) discussions with technical experts in this case who confirm the comparability of the
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`patents and technologies licensed to
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` and other entities, (4) evidence of pricing for scans in
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`the industry, and (5) the “
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`[.]” Exh.
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`Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 4 of 9
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`A (McDuff Rep) at ¶ 154 (emphasis added). SonicWall’s Motion implies that Dr. McDuff’s
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`per scan royalty rate is based only on Dr. Striegel’s analysis of
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`, and that
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`such analysis is relevant to damages only if Finjan and SonicWall purchased
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`. (Motion at 1.) That is wrong, and the correct venue for such an argument is trial.
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`SonicWall’s Motion in Limine No. 4 is an improper attempt to argue the correctness of
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`Dr. McDuff’s calculation of a per scan royalty rate to the Court, rather than to the jury. See, e.g.,
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`i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 854 (Fed. Cir. 2010) aff’d, 131 S.Ct. 2238
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`(2011) (“Daubert and Rule 702 are safeguards against unreliable or irrelevant opinions, not
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`guarantees of correctness.”). “The Federal Circuit has recognized that questions regarding which
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`facts are most relevant or reliable to calculating a reasonable royalty are for the jury.’” Emblaze
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`Ltd. v. Apple Inc., 52 F. Supp. 3d 949, 954 (N.D.Cal. 2014) (citation omitted); see also Micro
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`Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1392 (Fed. Cir. 2003) (“When, as here, the parties’
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`experts rely on conflicting sets of facts, it is not the role of the trial court to evaluate the
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`correctness of facts underlying one expert’s testimony.”). Dr. McDuff’s use of a range of prices
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`for comparable scans is sufficiently related to the per scan royalty for the accused products, and
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`therefore any dispute regarding the accuracy of that opinion goes to the weight of his testimony,
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`not its admissibility. See i4i, 598 F.3d at 852 (“When the methodology is sound, and the evidence
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`relied upon is sufficiently related to the case at hand, disputes about the degree of relevance or
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`accuracy (above this minimum threshold) may go to the testimony’s weight, but not its
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`admissibility.”).
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`Whether Finjan or SonicWall ever paid for
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` as opposed to
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` is a factual issue, and just one potential input within Dr. McDuff’s analysis. In
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`deposition, Dr. McDuff explained that his opinion uses “
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`.” Exh. E (McDuff Dep.) at 148:4-6.
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`Dr. McDuff’s per scan royalty methodology does not break down based on whether or not
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`Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 5 of 9
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`SonicWall or Finjan paid for
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`evidence in his report
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`. As Dr. McDuff further explained, the
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`.” Exh.
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`E (McDuff Dep.) at 149:14-19. The
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` rate is included in this range
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`.” Exh. E (McDuff Dep.) at 152:15-22; see also id.
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`at 154:17-155:6. Whether or not SonicWall or Finjan paid for
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`, the offer of
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` is an input to Dr. McDuff’s analysis because it demonstrates a market rate
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`for technology that, according to Finjan’s technical expert, is comparable to the technology at
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`issue. SonicWall questioned whether Dr. McDuff’s “
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`154:1-7. Dr. McDuff responded, “
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`.” Exh. E (McDuff Dep.) at
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`” Id. SonicWall may cross-examine Dr. McDuff on the relevance of the
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` rate as compared with other inputs into his analysis, but it has identified no error in
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`his methodology.
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`SonicWall’s Motion in Limine No. 4 also improperly asks the Court to set aside
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`Dr. McDuff’s other factual inputs for the
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` per scan royalty rate, stating “none could possibly
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`provide a methodologically sound basis for use of this royalty rate here.” Motion at 3. For
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`example, SonicWall misinterprets deposition testimony from Ms. Mar-Spinola that supports
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`Dr. McDuff’s analysis. Ms. Mar-Spinola’s testimony that Finjan does not have standard pricing
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`underscores the reason Dr. McDuff looked to a market-based approach for technology comparable
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`to SonicWall’s infringing product. See Exh. E (McDuff Dep.) at 170:20-171:12. SonicWall argues
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`that Dr. McDuff’s discussions with Mr. Hartstein and Ms. Mar-Spinola are “undocumented,” yet
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`SonicWall had a fair opportunity to probe into the conversations at deposition, and did so. See, e.g.
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`Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 6 of 9
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`Exh. E (McDuff Dep.) at 147:7-148:6
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`). In short, SonicWall’s disagreements with Dr. McDuff’s
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` per scan royalty rate may
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`properly be borne out at trial through “[v]igorous cross-examination, presentation of contrary
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`evidence, and careful instruction on the burden of proof,” if necessary. Micro Chem., 317 F.3d at
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`1392 (quoting Daubert, 509 U.S. at 595). SonicWall has not established that Dr. McDuff’s
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`methodology is unreliable, and has identified no prejudice in his presentation of the
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` per scan
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`royalty rate.
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`B.
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`Dr. McDuff’s Royalty Base Is Based Upon SonicWall’s Own Statements
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`SonicWall’s complaint regarding Dr. McDuff’s royalty base for Method 3 again goes to
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`the correctness of the facts underlying the opinion, not the methodology itself. See Micro Chem.,
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`317 F.3d at 1392 (“When, as here, the parties’ experts rely on conflicting sets of facts, it is not the
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`role of the trial court to evaluate the correctness of facts underlying one expert’s testimony.”). It is
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`illustrative that SonicWall’s only support for its argument that the number of “unique malware
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`samples” set forth in SonicWall’s Cyber Threat Report is not the number of “scans” performed by
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`any SonicWall product is an unsupported statement from SonicWall’s own damages expert
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`referencing a discussion with SonicWall’s representative. Motion at 4 (referencing D.I. 359-27
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`(Ex. 28) at ¶ 550).
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`Dr. McDuff, by contrast, uses SonicWall’s published Cyber Threat Reports as well as
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`discussions with Finjan’s technical experts to support his understanding that “
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`and to quantify the number of scans. Exh. A (McDuff Rep) at ¶¶ 151-152; Att. J-3 (“Notes and
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`Sources”); see also Exh. E (McDuff Dep.) at 115:8-20. Dr. McDuff further considered “
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`”
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`” in his royalty base. Exh. A (McDuff Rep) at Att. J-3 (citing
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` .
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`Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 7 of 9
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`SonicWall-FINJAN_00559952). As Dr. McDuff described in deposition, this
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`Exh. E (McDuff Dep.) at 116:7-21; id. at 106:18-107:17; see also Exh. A (McDuff Rep) at ¶ 151;
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`id. at Att. J-3). Together, these inputs informed Dr. McDuff’s royalty base for Method 3 and
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`demonstrate that the evidence relied upon by Dr. McDuff is sufficiently related to the case.
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`SonicWall’s arguments made in Motion in Limine No. 4 directly contradict its own
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`documents. SonicWall states, the number of “unique malware samples” in the SonicWall Cyber
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`Threat Report “represents the number of malware samples identified generally by the industry,
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`i.e., by SonicWall itself and third parties.” Motion at 4. Yet the SonicWall documents relied upon
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`by Dr. McDuff expressly state that the “unique malware samples” are those collected by
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`SonicWall, not by others. See, e.g., Exh. H (McDuff Dep. Ex. 4) at 433183 (“In 2017, SonicWall
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`collected 56 million unique malware samples in contrast to the 60 million samples discovered in
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`2016.”); see also Exh. I (FINJAN-SW 433192) at 433197 (“SonicWall logged 46 million unique
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`malware samples in 2018 compared to 56 million in 2017, an 11 percent dip.”). While SonicWall
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`may present what it believes to be contrary evidence and may cross-examine Dr. McDuff
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`regarding his opinion, it is improper to exclude the opinion prior to trial.
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`Additionally, Dr. McDuff’s presentation of the royalty base calculated through
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`SonicWall’s own statements presents no prejudice to SonicWall. Data in this case shows
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`SonicWall performed a
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` than those used in
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`Dr. McDuff’s royalty base calculation. Exh. A (McDuff Rep) at Att. J-3. Dr. McDuff’s opinion is
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`conservative in this respect.
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`IV. CONCLUSION
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`Finjan respectfully requests that SonicWall’s Motion in Limine No. 4 be denied, as
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`SonicWall fails to identify errors in methodology and instead attacks the degree of relevance or
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`accuracy of Dr. McDuff’s opinion. It is the role of the jury to make such determinations.
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`Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 8 of 9
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`Respectfully Submitted,
`
`By: /s/ K. Nicole Williams
`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 SBN 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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`Dated: March 11, 2021
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`Case 5:17-cv-04467-BLF Document 393 Filed 03/11/21 Page 9 of 9
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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 11, 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/K. Nicole Williams
`K. Nicole Williams
`nwilliams@fr.com
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