Case 5:17-cv-04467-BLF Document 400-14 Filed 03/11/21 Page 1 of 5
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`Exhibit N
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`Case 5:17-cv-04467-BLF Document 400-14 Filed 03/11/21 Page 2 of 5
`Case 3:14-cv-01197-WHO Document 217 Filed 07/25/16 Page 1 of 32
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`TODD PATTERSON (pro hac vice)
`todd.patterson@dlapiper.com
`DLA PIPER LLP (US)
`401 Congress Avenue, Ste. 2500
`Austin, TX 78701-3799
`Tel: 512.457.7000
`Fax: 512.457.7001
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`ANDREW N. STEIN (pro hac vice)
`andrew.stein@dlapiper.com
`DLA PIPER LLP (US)
`500 Eighth Street NW
`Washington, D.C. 20001
`Tel: 202.799.4000
`Fax: 202.799.5000
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`SEAN CUNNINGHAM (Bar No. 174931)
`sean.cunningham@dlapiper.com
`KATHRYN RILEY GRASSO (Bar No. 211187)
`kathryn.riley@dlapiper.com
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Tel: (619) 699-2700
`Fax: (619) 699-2701
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`SUMMER K. TORREZ (Bar No.264858)
`summer.torrez@dlapiper.com
`KRISTA CELENTANO (Bar No. 279526)
`krista.celentano@dlapiper.com
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303-2215
`Tel: 650.833.2000
`Fax: 650.833.2001
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`Attorneys for Defendant
`SOPHOS INC.
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
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`FINJAN, INC.,
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`CASE NO. 3:14-cv-01197-WHO
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`Plaintiff,
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`Defendant.
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`v.
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`SOPHOS INC.,
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`DEFENDANT SOPHOS INC.’S DAUBERT
`MOTION TO EXCLUDE CERTAIN
`OPINIONS OF FINJAN’S EXPERT
`WITNESSES AND MOTIONS IN LIMINE
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`Date: August 8, 2016
`Time: 2 p.m.
`Dept.: Courtroom 12, 19th Floor
`Judge: William H. Orrick
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`DLA PIPER LLP (US)
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`EAST PALO ALTO
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`SOPHOS’S DAUBERT MOTION AND MOTIONS IN LIMINE
`14-CV-01197-WHO
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`Case 3:14-cv-01197-WHO Document 217 Filed 07/25/16 Page 25 of 32
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`For example, for his analysis of this limitation in claim 9, Dr. Mitzenmacher explains how
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`the accused products “perform a hashing function” as required, but says nothing about whether
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`and how the accused products “fetch[]” or even retrieve. Mitzenmacher Report at ¶¶ 220-225
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`(UTM products); ¶¶226-232 (“Sophos Live Cloud Service”). Dr. Mitzenmacher’s opinion for
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`claim 18 is similarly devoid of any analysis regarding this “fetching” requirement. Id. at ¶¶274-
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`277 (UTM products); ¶¶278-283 (“Sophos Live Cloud Service”).
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`Dr. Cole’s opinion for claim 1 of the ’580 patent is insufficient in the same way. To
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`infringe that claim, a “second security computer” must “generate[]” and “communicate[]” a
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`“reply message” that contains “attributes of a server computer’s signed certificate” to the “first
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`security computer.” Dkt. No. 128-10, ’580 patent, cl. 1. However, Dr. Cole never explains how
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`the component he calls the “second security computer” (UTM 2) generates or communicates a
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`reply message that has attributes of a server computer’s signed certificate within it to the
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`component he calls the “first security computer” (UTM 1).
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`While Dr. Cole opines that UTM 2 creates certificates, including the claimed “proxy
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`signed certificate from the received attributes,” he never explains how it generates and
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`communicates any reply message to UTM 1 that contains the required attributes “of a server
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`computer’s signed certificate.” Cole Report at ¶¶ 600, 624-27. Indeed, Dr. Cole’s view that
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`UTM 2 can “receive a reply from the destination web server” does not address this claim
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`requirement, as it is UTM 1 in Dr. Cole’s theory that must receive the reply message, not UTM 2.
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`Id. at ¶ 626. Likewise, Dr. Cole’s view that UTM 2 “add[s] the server certificate attributes to the
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`header reply message” assumes the generation of a reply message and is silent about its
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`communication to UTM 1. Id. at ¶ 637.
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`Because Dr. Mitzenmacher ignored the “fetching” limitation of the asserted claims of the
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`’780 patent, and Dr. Cole ignored the “reply message” limitation of the asserted claim of the ’580
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`patent, their infringement opinions are the product of a legally incorrect and insufficient analysis.
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`Finjan’s infringement experts were required to compare every limitation of an asserted claim to
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`the accused products, not just some limitations, and failing to do so renders their opinions on
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`DLA PIPER LLP (US)
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`SAN DIEGO
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`these patents inadmissible. Standing Civil Pretrial Order 8(c); see also Laitram, 939 F. 2d at
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`SOPHOS’S DAUBERT MOTION AND MOTIONS IN LIMINE
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`Case 3:14-cv-01197-WHO Document 217 Filed 07/25/16 Page 26 of 32
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`1535; see also Am. Med. Sys., Inc. v. Laser Peripherals, LLC, 712 F. Supp. 2d 885, 900-901 (D.
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`Minn. 2010) (granting motion to exclude technical expert’s invalidity opinion because “[d]espite
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`correctly stating [the] legal standards in his expert report, [he] failed to properly apply them to the
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`facts of this case.”).
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`II.
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`SOPHOS’S MOTIONS IN LIMINE
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`A.
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`Finjan Should Be Precluded From Presenting Evidence Or Argument About
`Post-Grant Proceedings Before The United States Patent & Trademark
`Office.
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`The asserted patents were the subject of several inter partes review (“IPR”) petitions that
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`were denied. In addition, the ’844 patent was the subject of an ex parte reexamination. Many of
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`the IPR petitions were filed by parties other than Sophos, two were denied on procedural grounds,
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`and importantly, none of the IPRs or the reexamination involved the SWEEP-InterCheck prior art
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`that Sophos will present at trial. Furthermore, the reexamination confirmed only two claims of
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`the ’844 patent, neither of which are asserted in this case. Therefore, the Court should preclude
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`Finjan from presenting evidence or argument about these irrelevant post-grant proceedings.
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`Furthermore, unlike a prior jury trial, these post-grant proceedings are based on different
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`standards and different evidence. The PTAB only authorizes institution of IPR if “there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314. A determination by the Patent Office to deny
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`review or rehearing is not “a decision on the merits,” nor is it based on a full presentation of
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`evidence or argument. InterDigital Commc’ns, Inc. v. Nokia Corp., No. 13-10, 2014 WL
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`8104167, at *1 (D. Del. Sept. 19, 2014). In denying a petition, the PTAB makes “no explicit, or
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`even implicit, decision on the validity of the patent … .” Wisconsin Alumni Research Found. v.
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`Apple, Inc., 135 F. Supp. 3d 865, 875 (W.D. Wis. 2015) (“WARF”). Moreover, IPR proceedings
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`are subject to “different standards, purposes and outcomes” than the proceedings in district court.
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`Id. at 874-75. Thus, on balance, the minimal probative value of the PTAB’s rulings is
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`“substantially outweighed by the risk of unfair prejudice, as well as the risk of jury confusion” if
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`DLA PIPER LLP (US)
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`SAN DIEGO
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`the plaintiff were permitted to tell the jury about the PTAB’s rulings. Id.
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`Case 5:17-cv-04467-BLF Document 400-14 Filed 03/11/21 Page 5 of 5
`Case 3:14-cv-01197-WHO Document 217 Filed 07/25/16 Page 27 of 32
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`Having a trial-within-a-trial about these post-grant proceedings would confuse the jury
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`and invite them to displace their own judgment for that of the Patent Office. The denied IPRs are
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`not relevant to this case and any probative value is outweighed by the risk of unfair prejudice to
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`Sophos. The unfair prejudice of the IPR denials is heightened for those proceedings to which
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`Sophos was not a party. InterDigital Commc’ns, Inc. v. Nokia Corp., No. 13-10-RGA, slip-op at
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`3 (D. Del. Aug. 28, 2014) (“A PTO non-merits decision not involving Defendants has little or no
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`probative value, and would require a lot of explanation for the jury to be able to understand.”).
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`Furthermore, the IPRs were based on different prior art references than the references Sophos will
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`present to the jury. The fact that the PTAB declined to institute IPRs on different prior art is not
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`relevant to this case. This is why courts often exclude evidence of non-institution of IPRs. See,
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`e.g., WARF, 135 F. Supp. at 874-75; InterDigital, 2014 WL 8104167at *1; Ziilabs Inc., Ltd. v.
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`Samsung Elecs. Co. Ltd., et al., No. 2:14-cv-203-JRG-RSP, slip-op at 6-7 (E.D. Tex. Oct. 28,
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`2015); Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., et al., No. 2:13-cv-213, 2015
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`WL 627430, at *5 (E.D. Tex. Jan. 30, 2015).
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`Likewise, the Patent Office’s decision in the reexamination to confirm two unasserted
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`claims of the ’844 patent is equally irrelevant. The reexamination involved a different claim
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`construction standard, a different standard of proof, different prior art, and was not subject to the
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`adversarial process. In Re Swanson, 540 F.3d 1368, 1377-78 (Fed. Cir. 2008). Furthermore, the
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`asserted claims of the ’844 patent were neither involved in nor depend from claims involved in
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`the reexamination. National Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1334
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`(Fed. Cir. 2004) (“A validity analysis must be conducted on a claim-by-claim basis.”). The Court
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`should therefore exclude evidence of the reexamination of the ’844 patent too. Belden Techs. Inc.
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`v. Superior Essex Commc’ns LP, 802 F. Supp. 2d 555, 569 (D. Del. 2011) (“Admitting evidence
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`about the ’503 patent’s reexamination, the outcome of which is not binding on the court, would
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`have only served to confuse the jury and was ultimately far more prejudicial than probative.”);
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`Masimo Corp. v. Philips Elec. N. Am. Corp., No. CV 09-80, 2014 WL 4246579, at *2 (D. Del.
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`Aug. 27, 2014).
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`SOPHOS’S DAUBERT MOTION AND MOTIONS IN LIMINE
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