Case 5:17-cv-04467-BLF Document 395 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 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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`Case No. 5:17-cv-04467-BLF (VKD)
`
` Plaintiff,
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`v.
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`SONICWALL, INC., a Delaware Corporation,
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` Defendant.
`
`PLAINTIFF FINJAN LLC’S OPPOSITION
`TO DEFENDANT SONICWALL INC.’S
`MOTION IN LIMINE NO. 5: RE
`EVIDENCE OR ARGUMENTS ABOUT
`POST-GRANT PROCEEDINGS[DKT. 364]
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`Date: March 18, 2021
`Time: 1:30 PM
`Hon. Beth Labson Freeman
`Ctrm: 3, 5th Floor
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`Case No. 17-cv-04467-BLF (VKD)
` FINJAN’S OPPOSITION TO MOTION IN LIMINE NO. 5
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`Case 5:17-cv-04467-BLF Document 395 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 from Dr. Kevin Almeroth on Invalidity of U.S. Patent Nos.
`6,154,844 and 8,141,154 dated September 4, 2020
`Expert Report of Dr. Patrick McDaniel regarding the Invalidity of the ‘494 and
`‘780 Patents dated September 4, 2020
`Expert Report of Dr. Patrick McDaniel regarding the Non-Infringement of U.S.
`Patent Nos. 6,804,780 and 8,677,494 dated October 9, 2020
`Decision Denying Institution of Inter Partes Review in Case No. IPR2017-02155
`dated April 3, 2018
`Defendant Sophos Inc.’s Daubert Motion to Exclude Certain Opinions of Finjan’s
`Expert Witnesses and Motions in Limine in Finjan, Inc. vs. Sophos Inc., Case No.
`3:14-cv-01197-WHO, D.I. 217 dated July 25, 2016
`Expert Report of Stephen L. Becker, Ph.D. on Behalf of Defendant dated
`October 9, 2020
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`J
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`K
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`M
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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 395 Filed 03/11/21 Page 3 of 9
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`I.
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`INTRODUCTION
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`While both parties seek to exclude pending post grant proceedings for both the asserted and
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`unasserted patents, see, Finjan’s Motion in Limine No. 5, SonicWall also seeks to exclude evidence
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`of final post grant proceedings of the asserted patents, including those filed by SonicWall.
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`SonicWall has failed to carry its burden to demonstrate that the probative value of this evidence is
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`outweighed by undue prejudice.
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`First, despite filing this motion, SonicWall relies on post grant activity to support its non-
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`infringement and invalidity defenses. Second, findings by the Patent Trial and Appeals Board
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`(“PTAB”) are probative of the strength and value of Finjan’s patents, as well as the prior art
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`advanced as part of SonicWall’s invalidity and willfulness defenses—particularly where SonicWall
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`is relying on the same prior art that has already been considered by the PTAB—and to assess the
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`strength of the patents for damages purposes. Finally, Finjan should be permitted to use evidence
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`of IPR proceedings for impeachment and rebuttal purposes. This Court, in the Finjan v. Cisco
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`litigation, has already found that such materials may be used for damages and willfulness, but the
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`validity issues were not directly raised there. Finjan, Inc. v. Cisco Sys., Inc., No. 517CV00072-
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`BLF, at *15-16 (N.D. Cal. Jun. 5, 2020).
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`II.
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`FINAL
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`POST GRANT ACTIVITY
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`IS RELEVANT GIVEN THE
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`CIRCUMSTANCES OF THIS CASE
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`SonicWall’s trial exhibit list includes documents referring to post grant activity, including
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`filed by third parties (see, e.g., D.I. 372-5 (SonicWall’s Trial Exh. List) at 302 and 305) SonicWall’s
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`experts liberally rely upon post grant activity for the asserted patents in their reports. See Exh. J
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`(Almeroth Op. Rep.) at ¶¶ 84-85 (SonicWall’s expert Dr. Kevin Almeroth referencing the PTAB’s
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`analysis in IPR2019-00026 filed by Juniper Networks in his opinion about the priority date of the
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`’844 Patent); Exh. K (McDaniel Op. Rep.) at ¶¶ 347-348 (SonicWall’s expert Dr. McDaniel relying
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`on third-party IPRs for the ’780 and ’494 Patents in his invalidity analysis); Exh. L (McDaniel Reb.
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`Rep.) at ¶¶ 393-395 (Dr. McDaniel relying on third-party IPRs for the ’780 and ’494 Patent in his
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`noninfringement analysis); ¶ 480 (same). At the same time, SonicWall is seeking to prevent Finjan
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`from introducing evidence and argument from post grant activity for the asserted patents where the
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`PTAB has issued Final Written Decisions upholding asserted claims of the asserted patents.
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`SonicWall cannot have it both ways. Because it has relied on post grant activity filed by
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`third parties as part of its case, SonicWall cannot credibly ask the Court to prevent Finjan from
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`doing the same, particularly where it involves the same patents and same prior art being reapplied
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`by SonicWall—and in some cases the same experts.
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`III.
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`FINAL POST GRANT ACTIVITY FOR THE ASSERTED PATENTS
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`SHOULD NOT BE EXCLUDED BECAUSE SONICWALL RELIES ON EVIDENCE
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`CONSIDERED BY THE PTAB
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`Evidence used during a reexamination proceeding is admissible where the same prior art is
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`to be used at trial. See e.g., PersonalWeb Techs. LLC v. IBM, No. 16-cv-01266-EJD, 2017 U.S.
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`Dist. LEXIS 116422, at *17 (N.D. Cal. July 25, 2017) (holding that the probative value is not
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`substantially outweighed by the danger of unfair prejudice because the reexamination proceedings,
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`“pertain to the ’420 patent and involve at least one prior art reference that is also at issue in this
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`case”); see also Volterra Semiconductor Corp. v. Primarion, Inc., No. C-08-05129 JCS, 2011 U.S.
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`Dist. LEXIS 102295, at *18 (N.D. Cal. Sep. 12, 2011) (explaining that “final determinations by the
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`PTO must be considered, particularly when the challenge in the reexamination proceeding was
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`based on the same prior art as is at issue in the litigation.”). Notably, the authority SonicWall relies
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`upon, Fairchild Semiconductor Corp. v. Power Integrations, Inc., No. 12-540-LPS, 2015 U.S. Dist.
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`LEXIS 53324 (D. Del. Apr. 23, 2015) (hereinafter “Fairchild”), does not support SonicWall’s
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`contention that all post grant evidence should be excluded. Rather, the Court in Fairchild
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`recognized that “evidence (including prior art) used during a reexamination is not inadmissible.”
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`Id. at *2-3. The Court held that as long as the evidence is referred to as part of the “prosecution
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`history” it may be “permitted to prove and argue that certain evidence was (or was not) reviewed by
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`the PTO.” Id. Thus, respectfully, the Court should allow such evidence where the same prior art
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`will be used at trial by SonicWall.
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`For example, SonicWall raises the same prior art here for the ’494 Patent that the PTAB
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`rejected in at least one of the IPRs. In the IPR, the PTAB considered whether claims 10 and 14 of
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`the ’494 Patent were invalid as obvious over Crawford2 and the knowledge of a person of ordinary
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`skill in the art. Exh. M (IPR2017-02155, Decision Denying Institution) at 5, 38. Yet SonicWall
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`relies on that same prior art here. See D.I. 372 (Pre-Trial Statement) at 5:1-2; Exh. K (McDaniel
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`Rep.) at ¶ 213 and fn. 13. The PTAB considered the invalidity arguments based on Crawford and
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`denied the petition, concluding it failed to show a reasonable likelihood it would prevail in showing
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`unpatentability of any of the claims on the asserted grounds. See Exh. M (IPR2017-02155, Decision
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`Denying Institution) at 38. That decision is “final and nonappealable.” 35 U.S.C. § 314(d).
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`The institution denials demonstrate a rejection, by a panel of three skilled patent examiners,
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`of the same prior art and arguments SonicWall relies upon here. These facts are undeniably relevant
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`to SonicWall’s invalidity defense, for example whether the Patent Office has already considered
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`this evidence, as well as SonicWall defenses against willful infringement and whether those
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`defenses are reasonable. Fed. R. Evid. 401. SonicWall cites Finjan, Inc. v. Sophos, Inc., No. 3:14-
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`cv-1197-WHO, 2016 WL 4560071, *14 (N.D. Cal. Aug. 22, 2016) (hereinafter “Sophos”), in
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`support of its position, but there the defendant was presenting different prior art at trial than was
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`presented in the IPRs at issue. See Exh. N (Def.’s Daubert Mot., D.I. 217) at 19 (“[I]mportantly,
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`none of the IPRs or the reexamination involved the SWEEP-InterCheck prior art that Sophos will
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`2 R. Crawford et al., A Testbed for Malicious Code Detection: A Synthesis of Static and Dynamic
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`Analysis Techniques, Proc. 14th Ann. Conf. Dep’t Energy Computer Security Group (1991)
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`(“Crawford” or “Testbed”).
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`present at trial.”) (emphasis added). While the court in Sophos ultimately found the probative value
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`was outweighed by likely confusion to the jury because there was not overlap in prior art (see
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`Sophos, 2016 WL 4560071, *14), here SonicWall is relying on some of the same grounds that were
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`presented to the PTAB.
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`Finally, while denial to institute IPR has different legal standards, “any potential confusion
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`can be addressed by appropriate jury instructions on the standard of proof applicable to patent
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`invalidity defenses and counterclaims.” Dexcowin Glob., Inc. v. Aribex, Inc., No. 16-cv-143-GW-
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`AGRX, 2017 WL 3478492, at *3 (C.D. Cal. Jun. 29, 2017) (denying motion to exclude PTO’s
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`decision denying institution of accused infringer’s petition for IPR) (quoting Universal Elecs., 2014
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`WL 8096334, at *7 (denying motion to exclude evidence of PTO’s rejection of IPR petition)); see
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`also Chamberlain Grp., Inc. v. Techtronic Indus. Co., No. 16-cv-6097, 2018 WL 2332461, *18-*19
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`(N.D. Ill. May 23, 2018), aff’d in relevant part, 935 F.3d 1341, 1351-52 (Fed. Cir. 2019) (denying
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`motion for a new trial and rejecting contention that court’s prior denial of the accused infringer’s
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`motion to exclude evidence that the PTO denied the accused infringer’s IPR petition was improper);
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`StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc., No. 8:13-cv-2240, 2015 WL 3824208, *8-*9
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`(M.D. Fla. Jun. 19, 2015) (denying accused infringer’s motion to preclude evidence that PTO denied
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`its IPR and CBM petitions).
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`IV.
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`EVIDENCE OF IPR PROCEEDINGS SHOULD BE PERMITTED FOR
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`IMPEACHMENT AND REBUTTAL PURPOSES
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`SonicWall’s motion is overly broad in that it seeks to exclude IPR evidence without
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`limitation. At a minimum, the Court should allow Finjan to use evidence of IPR proceedings for
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`impeachment and rebuttal where SonicWall opens the door. Even where courts have granted an
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`accused infringer’s motion to exclude evidence of IPR proceedings, many still allow use of such
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`evidence for these purposes. See, e.g., Pac. Biosciences of California, Inc. v. Oxford Nanopore
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`Techs., Inc., No. 17-cv-1353, 2020 WL 954938, at *2 (D. Del. Feb. 27, 2020) (allowing IPR petition
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`and declaration to be used to impeach defendant’s witnesses); Nox Med. Ehf v. Natus Neurology
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`Inc., No. 15-cv-709, 2018 WL 6629704, at *1 (D. Del. Apr. 12, 2018) (“Of course, if a witness made
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`an inconsistent statement in connection with an IPR, the witness may be impeached with it ….”);
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`Morley v. Square, Inc., No. 4:14-cv-172, 2016 WL 2733114, at *3 (E.D. Mo. May 11, 2016)
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`(excluding findings from PTO proceedings “still in progress,” yet allowing “the parties to make use
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`of the testimony and other evidence used in the PTO proceedings”); Rembrandt Wireless Techs., LP
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`v. Samsung Elecs. Co., No. 2:13-cv-213, 2015 WL 627430, at *5 (E.D. Tex. Jan. 31, 2015) (“If
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`[Defendant], either expressly or implicitly, leads the jury to believe that this is the first time the
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`relevant references have been evaluated, the Court will permit Plaintiff to rebut this line of argument
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`by producing evidence of the PTAB’s action on [Defendant]’s non-instituted IPR petitions.”). For
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`example, SonicWall’s damages expert acknowledges that Georgia-Pacific factors 9 and 10 consider
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`nature and benefits of the Finjan’s patents in view of the prior art to help determine patent value.
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`Exh. O (Becker Rep.) at ¶ 371. The Finjan patents’ advancement over the prior art undermines
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`SonicWall’s experts’ opinions that Finjan’s patents offer “narrow” inventions or “incremental value
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`. . . over the prior art.” See Exh. O (Becker Rep.) at ¶ 365, ¶ 431. Contrary to SonicWall’s assertion
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`that this evidence is not relevant—this Court has held that the strength of asserted patents is
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`necessary for damages and willfulness purposes. See Finjan, Inc. v. Cisco Sys., Inc., No.
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`517CV00072BLF, at *15-16 (N.D. Cal. Jun. 5, 2020). Accordingly, it should be allowed here too.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Finjan respectfully requests that the Court deny SonicWall’s
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`Motion in Limine No. 5 to exclude evidence or arguments about post grant proceedings.
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`Dated: March 11, 2021
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`Respectfully Submitted,
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`By: /s/ Jason W. Wolff
`Juanita R. Brooks (CA SBN 75934)
`brooks@fr.com
`Roger A. Denning (CA SBN 228998)
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`Case 5:17-cv-04467-BLF Document 395 Filed 03/11/21 Page 8 of 9
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`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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`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 Jason W. Wolff /
`Jason W. Wolff
`wolff@fr.com
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