Case 5:17-cv-04467-BLF Document 396 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
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`NORTHERN DISTRICT OF CALIFORNIA
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`(SAN JOSE DIVISION)
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`FINJAN LLC., a Delaware Limited Liability
`Company,
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` Plaintiff,
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`v.
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`SONICWALL, INC., a Delaware Corporation,
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` Defendant.
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`Case No. 5:17-cv-04467-BLF (VKD)
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`PLAINTIFF FINJAN LLC’S OPPOSITION
`TO DEFENDANT SONICWALL INC.’S
`MOTION TO EXCLUDE DR.
`STRIEGEL’S TECHNICAL
`APPORTIONMENT OPINIONS AND DR.
`MCDUFF’S RELIANCE THEREON
`(MOTION IN LIMINE NO. 3) [DKT. 362]
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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. 3
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`Case 5:17-cv-04467-BLF Document 396 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 DeForest McDuff, Ph.D. dated September 4, 2020
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`Expert Report of Dr. Aaron Striegel dated September 3, 2020
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`Deposition Transcript of Aaron Striegel, Ph.D. taken November 3, 2020
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`1 All exhibits are attached to the Declaration of Robert Courtney.
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`Case 5:17-cv-04467-BLF Document 396 Filed 03/11/21 Page 3 of 9
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`I.
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`INTRODUCTION2
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`SonicWall’s apportionment attack suffers legal errors and as a result its justifications for its
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`overbroad remedy fall apart. Neither SonicWall’s first attack (seeking “further apportionment”)
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`nor its second (conflating apportionment with separate issues of infringement and validity) has
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`merit. The law does not require a patentee to present the accused infringer’s preferred technical
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`apportionment. It requires presentation of a reasonable, evidence-based technical apportionment
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`that the jury can evaluate. An accused infringer may present a competing technical apportionment
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`(though SonicWall has not), and may cross-examine at trial. Where the patentee’s model is
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`reasonable and evidence-based (as Finjan’s is), and not otherwise prejudicial (which SonicWall
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`does not contend) preclusion is unwarranted.
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`II.
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`BACKGROUND
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`When a patentee seeks a royalty for infringement, it must submit evidence sufficient to
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`support a finding that the royalty doeswill not payover-compensate the patentee by paying on
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`features unrelated to the patent.patentee’s rights. E.g., Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d
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`1201, 1226–27 (Fed. Cir. 2014). This is “apportionment.” Specifically, it is the requirement that
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`the patentee’s damages case contain sufficient evidence for the jury to calibrate its royalty so that
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`the value the royalty returns reflects “only the value of the infringing features of an accused
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`product.” Id. at 1226 (emphasis added). The goal is to ensure that the damages award reflects
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`“the claimed invention’s footprint in the market place.” ResQNet.com, Inc. v. Lansa, Inc., 594
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`F.3d 860, 869 (Fed. Cir. 2010).
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`Guided by Ericsson and ResQNet, Finjan will present trial testimony from Aaron Striegel,
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`Ph.D., a Notre Dame scientist, containing opinions about the “value of the infringing features”
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`2 The parties have agreed to dismissal of claims under the ’968 patent, with each party bearing its
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`own fees and costs. Because any ’968 disputes are moot, no such issues are discussed herein.
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`Case 5:17-cv-04467-BLF Document 396 Filed 03/11/21 Page 4 of 9
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`within the marketplace for each SonicWall product accused of infringement. See generally Exh. F
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`at ¶¶ 86–123 & App’x D. Dr. Striegel’s methodology had three steps. First, he familiarized
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`himself with Finjan’s asserted patents and with the SonicWall accused products. Id. ¶¶ 22–85.
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`However, Dr. Striegel did not form infringement opinions. E.g., Exh. G at 20:22–21:11. He
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`assumed infringement by each accused product for each claim asserted against it. Id.; see also
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`Exh. F at ¶ 18. Second, Dr. Striegel developed lists, for each accused product, of each feature
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`relevant to the “market place” (per ResQNet) for that product. Exh. F at ¶¶ 86–110. In developing
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`that list, he relied in part on marketplace data sheets that SonicWall had prepared and published
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`for the benefit of potential customers. Id. ¶ 87–88. Dr. Striegel described how these data sheets
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`represented SonicWall’s own articulation of the technical features important to the marketplace
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`(i.e., potential customers). Id. Dr. Striegel analyzed data sheets and other material to assess the
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`right weightings of features. Patented features were the highest value, and could receive greater
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`weight, but Dr. Striegel adopted more conservative equal weighting. Third, for each product, Dr.
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`Striegel identified which of the previously identified features extended from Finjan’s patented
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`technology. Id. ¶¶ 89–123 and App’x D. His analysis complete, Dr. Striegel shared his opinions
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`regarding Finjan-patented features in the SonicWall products with damages expert DeForest
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`McDuff, Ph.D., who used them to reduce (i.e., “apportion”) his royalty base so as to ensure that
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`his royalty would not encompass features unrelated to Finjan’s patents. Exh. A at ¶¶ 108–13.
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`III. ARGUMENT
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`SonicWall’s arguments confuse the Court’s gatekeeping role for trial—i.e., its
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`responsibility to ensure opinions are evidence-based and pass Daubert reliability review—with
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`juries’ evaluation of competing opinions, promoted by direct and cross-examination. Pre-trial, the
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`Court’s obligation is to ensure that experts’ methodologies meet jury standards. After that the jury
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`—not SonicWall—will determine which expert’s opinions best fit the evidence.
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`A.
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`Neither Law Nor Evidence Requires “Further Apportionment” by Dr. Striegel
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`SonicWall cites virtually no authority for its contention that the law requires “further
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`apportionment” than Dr. Striegel’s. That is because Dr. Streigel’s methodology of apportioning
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`according to categories from an accused infringer’s own feature lists was specifically affirmed by
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`the Federal Circuit in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1312–13 (Fed. Cir.
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`2018). There, the infringer presented the same objection SonicWall submits here, urging that the
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`apportionment categories could have “many, many things [e.g., subcategories] behind [them]” that
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`the expert allegedly failed to address. The Federal Circuit rejected that attack. Scrutiny of the
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`categories might go to credibility, or the weight accorded testimony, but the core methodology
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`more than met legal standards for admissibility. The correct approach is for the accused infringer
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`to rebut the categorization, if it can, with counter-evidence, not motion practice. “[T]he existence
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`of conflicting testimony does not mean the damages award is unsupported by substantial evidence.
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`The jury was entitled to believe the patentee’s expert.” Id. at 1313.
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`SonicWall’s complaint that some features Dr. Striegel identifies as patented might partially
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`derive value from non-patented technology (Mot. 3) is similarly misdirected. Apportionment does
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`not require demonstrating that a patented feature employs no unpatented technology. AstraZeneca
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`AB v. Apotex Corp., 782 F.3d 1324, 1339 (Fed. Cir. 2015) (“It is not the case that the value of all
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`conventional elements must be subtracted from the value of the patented invention as a whole
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`when assessing damages.”). Apportionment identifies patented features, then assess “the
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`incremental value of [each] patented feature from the overall product.” Ericsson, 773 F.3d at
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`1228. The process of identifying “patented features” is not always exact—but the Federal Circuit
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`has “never required absolute precision in applying the principles of apportionment; on the contrary
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`it is well-understood that this process may involve some degree of approximation and
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`uncertainty.” Bio-Rad Labs., Inc. v. 10X Genomics, Inc., 967 F.3d 1353, 1377 (Fed. Cir. 2020)
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`(internal quote marks omitted). What is necessary is that the process be based on evidence that is
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`Case 5:17-cv-04467-BLF Document 396 Filed 03/11/21 Page 6 of 9
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`“reliable and tangible, and not conjectural or speculative.” Garretson v. Clark, 111 U.S. 120, 121
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`(1884). Dr. Striegel’s approach was held to exceed that standard in Blue Coat, and the same
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`should apply here. Additionally, Dr. Striegel described how, by using feature lists originally
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`authored by SonicWall for the purpose of stimulating demand, his approach reflected SonicWall’s
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`real-world customer interactions, and so reliably estimated value. Exh. F at ¶¶ 86–89.
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`As to SonicWall’s complaints about Dr. Striegel’s process for identifying “patented
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`features,” Finjan’s patents are foundational to cyber-security, and the benefits of SonicWall’s
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`infringement arise across its products’ operation. These features drive the value of SonicWall’s
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`products; without modern security technology, SonicWall could not compete. Dr. Striegel
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`properly identified, based on cited evidence and his testimonial opinions, those features whose
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`value stems from infringement—i.e., features that “receive[d] a reasonable benefit” from the
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`patented inventions. Exh. G at 140:4–10; see also Exh. F at ¶ 114 (identifying functions “that
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`overlap with the benefits of the Asserted Patents”). SonicWall’s proposal that Dr. Striegel said
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`“reasonable” merely meant “not miniscule” (Mot. 2–3) is highly incomplete. As experts must,
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`Dr. Striegel applied his experience and expertise to ascertain, with infringement assumed, those
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`features of an infringing product that benefited from infringement. See Exh. G at 225:17–228:4.
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`Finjan is unaware of any principle of law or economics requiring more. SonicWall cites none. If
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`SonicWall believes Dr. Striegel’s methodology had gaps, it can cross at trial.
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`B.
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`Apportionment Experts Need Not Be Prior Art or Infringement Experts
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`SonicWall’s second attack, like its first, asserts without authority new requirements for
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`apportionment: that the witness (1) have detailed knowledge of infringement contentions, and
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`(2) that the witness compare accused products to prior art. Mot. 4. Neither is correct.
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`As to knowledge of infringement contentions, SonicWall’s proposal that a witness must
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`be able to opine on contentions before opining on apportionment is contravened by law, and does
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`not make policy sense. Though having technical roots, apportionment is an economic evaluation.
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`Case 5:17-cv-04467-BLF Document 396 Filed 03/11/21 Page 7 of 9
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`Both this Court and the Federal Circuit have approved apportionments by economists and other
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`damages experts having no technical training at all. E.g., Blue Coat, 879 F.3d at 1312–13
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`(approving apportionments by economist Anne Layne-Farrar, Ph.D.). Inquiry into the quantity of
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`value a patent contributes to an infringing product is distinct from inquiry into how a product
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`infringes. The first is a matter for apportionment, the second for infringement. Finally, SonicWall
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`errs when it proposes that Dr. Striegel’s sole source of information about the scope of the
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`infringement allegations was Finjan’s counsel. Dr. Striegel’s report and deposition state that he
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`discussed the infringement case for each product, and the bases therefor, with Finjan’s technical
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`experts. Exh. F at ¶ 18. If SonicWall find any part of Dr. Striegel’s apportionment inconsistent
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`with other evidence, it can cross-examine. Cf. Core Wireless Licensing S.a.r.l. v. LG Elecs., Inc.,
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`No. 2:14-cv-911-JRG-RSP, 2016 WL 1090351, at *1 (E.D. Tex. Mar. 19, 2016) (“It is not proper
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`to use Rule 702 to usurp the fact-finding role of the jury[.]”).
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`As to knowledge of prior art, SonicWall again conflates the details of a patent’s validity
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`with its quantitative value to an infringing product. Apportionment addresses the latter; it assumes
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`validity, like other damages analyses. Finjan is aware of no court holding prior art review a sine
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`qua non of apportionment testimony; SonicWall cites none. Yet myriad cases affirm
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`apportionments that did not specifically analyze prior art. E.g., Chrimar Holding Co. v. ALE USA,
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`Inc., 732 F. App’x 876, 887–88 (Fed. Cir. 2018) (affirming apportionment by comparing
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`competing products); Blue Coat; 879 F.3d at 1311 (affirming apportionment based on evaluation
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`of accused infringer’s feature lists); Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853
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`F.3d 1370, 1380–82 (Fed. Cir. 2017) (similar); Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d
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`1283, 1296–99 (Fed. Cir. 2015) (affirming apportionment based on production costs and consumer
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`use). Again, if SonicWall wants to press Dr. Striegel on prior art issues at trial (notwithstanding
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`that he is not a validity expert), it can do so via cross-examination. But nothing in the law
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`suggests this is an admissibility issue, and it is not.
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`Case 5:17-cv-04467-BLF Document 396 Filed 03/11/21 Page 8 of 9
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`Respectfully Submitted,
`
`By: /s/ Robert Courtney
`Juanita R. Brooks (CA SBN 75934)
`brooks@fr.com
`Roger A. Denning (CA SBN 228998)
`denning@fr.com
`Jason W. Wolff (CA SBN 215819)
`wolff@fr.com
`John-Paul Fryckman (CA 317591)
`fryckman@fr.com
`K. Nicole Williams (CA 291900)
`nwilliams@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Ste. 400
`San Diego, CA 92130
`Phone: (858) 678-5070 / Fax: (858) 678-5099
`
`Proshanto Mukherji (Pro Hac Vice)
`mukherji@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Phone: (617) 542-5070/ Fax: (617) 542-5906
`
`Robert Courtney (CA 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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`
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`Dated: March 11, 2021
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`Case 5:17-cv-04467-BLF Document 396 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/ Robert Courtney
`Robert Courtney
`courtney@fr.com
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