Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 1 of 9
`
`DUANE MORRIS LLP
`D. Stuart Bartow (SBN 233107)
`Email: DSBartow@duanemorris.com
`Nicole E. Grigg (SBN 307733)
`Email: NEGrigg@duanemorris.com
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`Tel.: 650.847.4150
`Fax: 650.847.4151
`
`DUANE MORRIS LLP
`Joseph A. Powers
`Admitted Pro Hac Vice
`japowers@duanemorris.com
`Jarrad M. Gunther
`Admitted Pro Hac Vice
`jmgunther@duanemorris.com
`30 South 17th Street
`Philadelphia, PA 19103
`Telephone: 215.979.1000
`Facsimile: 215.979.1020
`
`Attorneys for Defendant
`SONICWALL INC.
`
`DUANE MORRIS LLP
`Matthew C. Gaudet
`Admitted Pro Hac Vice
`mcgaudet@duanemorris.com
`Robin L. McGrath
`Admitted Pro Hac Vice
`rlmcgrath@duanemorris.com
`David C. Dotson
`Admitted Pro Hac Vice
`dcdotson@duanemorris.com
`Jennifer H. Forte
`Admitted Pro Hac Vice
`jhforte@duanemorris.com
`1075 Peachtree Street, Ste. 2000
`Atlanta, GA 30309
`Telephone: 404.253.6900
`Facsimile: 404.253.6901
`
`(Complete list of counsel for Defendant
`on signature page)
`
`
`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,
`
`DEFENDANT SONICWALL INC.’S
`
`RESPONSE TO FINJAN’S MOTION IN
`LIMINE NO. 1 TO PRELUDE TESTIMONY
`ON WRITTEN DESCRIPTION FROM
`SONICWALL’S TECHNICAL EXPERTS
`
`Date:
`March 18, 2021
`Time:
`1:30 PM
`Courtroom: 3, 5th Floor
`Judge:
`Hon. Beth Labson Freeman
`
`vs.
`
`SONICWALL, INC., a Delaware
`Corporation
`
`Defendant.
`
`
`Plaintiff,
`
`
`
`i
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
`
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`Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 2 of 9
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`TABLE OF REFERENCED EXHIBITS1
`
`September 4, 2020 Expert Report of Dr. Avi Rubin Regarding Invalidity
`of U.S. Patent No. 8,225,408, U.S. Patent No. 7,975,305, U.S. Patent
`No. 7,613,926, and U.S. Patent No. 6,965,968
`September 4, 2020 Expert Report of Dr. Kevin Almeroth on Invalidity
`of U.S. Patent Nos. 6,154,844 and 8,141,154
`September 4, 2020 Expert Report of Patrick McDaniel Regarding the
`Invalidity of the ’494 and ’780 Patents
`
`Ex. 42
`
`Ex. 43
`
`Ex. 44
`
`
`1 All exhibits are attached to the Declaration of Jarrad M. Gunther.
`1
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 3 of 9
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`I.
`
`INTRODUCTION
`The Federal Circuit and district courts have confirmed that, in conducting a written
`description analysis, it is appropriate to use the scope of the claims necessary for the plaintiff’s
`infringement case. Finjan ignores this law and mischaracterizes the written description analyses of
`SonicWall’s experts. In reality, Finjan is attempting a late summary judgment motion because Finjan
`disagrees with the opinions of SonicWall’s experts. That challenge would have failed even if timely,
`but the question here is simply whether SonicWall’s experts used a legally improper methodology.
`They did not.
`II.
`ARGUMENT
`A.
`Legal Standard
`1.
`Standard for Written Description
`Compliance with the written description requirement is a question of fact. Ariad Pharm., Inc.
`v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010). “[T]he purpose of the written description
`requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not
`overreach the scope of the inventor’s contribution to the field of art as described in the patent
`specification.’” Id. at 1353-54 (citations omitted). In determining whether the written description
`requirement is met, courts analyze “whether the disclosure of the application relied upon reasonably
`conveys to those skilled in the art that the inventor had possession of the claimed subject matter as
`of the filing date.” Id. at 1351. “[T]he purpose of the written description requirement is to ‘ensure
`that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the
`inventor’s contribution to the field of art as described in the patent specification.’” Univ. of Rochester
`v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (citation omitted). Even a claim term that
`has been construed by the Court can render a claim invalid under 35 U.S.C. § 112. See, e.g., Auto.
`Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007) (“ATI sought [during
`claim construction] to have the scope of the claims . . . include both mechanical and electronic side
`impact sensors. It succeeded, but then was unable to demonstrate that the claim was fully enabled.”).
`
`2.
`
`Plaintiff’s Infringement Theory Is Highly Relevant To The Written
`Description Inquiry
`
`
`
`1
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 4 of 9
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`As a threshold issue, the written description requirement is dependent on the scope of the
`claims. The written description analysis thus requires both “an inquiry into the specification,” and
`“an inquiry into the scope of the invention.” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., C.A.
`No. C 12-05501 SI, 2014 U.S. Dist. LEXIS 57519, at *7 (N.D. Cal. Apr. 23, 2014); see also
`LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005) (“Although
`the specification would meet the requirements of section 112 with respect to a claim directed to that
`particular engine, it would not necessarily support a broad claim to every possible type of fuel-
`efficient engine, no matter how different in structure or operation from the inventor’s engine.”).
`In view of this required framework, it is permissible for an expert to consider the plaintiff’s
`infringement allegations regarding a given claim element to determine the scope of the claim
`necessarily encompassed by those allegations. This is because infringement contentions describe
`“the scope of what [a plaintiff] asserts is claimed by the patents” and therefore impact a defendant’s
`written description defenses. Verinata Health, 2014 U.S. Dist. LEXIS 57519, at *7 (allowing
`defendant to amend its written description defenses in invalidity contentions after plaintiff amended
`its infringement contentions to expand the asserted scope of its claims).
`It is well established that if a patentee seeks a broad claim scope for infringement, there must
`be adequate disclosure in the specification for that claim scope to be valid. Cf. Liebel-Flarsheim Co.
`v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007) (“The irony of this situation is that Liebel
`successfully pressed to have its claims include a jacketless system, but, having won that battle, it
`then had to show that such a claim was fully enabled, a challenge it could not meet. The motto,
`‘beware of what one asks for,’ might be applicable here.”). A defendant (and its experts) need not
`agree with the plaintiff’s interpretation of the scope of the claim, but can opine that if plaintiff’s
`assertions are correct for purposes of infringement, it must also be correct for purposes of invalidity.
`Amgen Inc. v. Hoechst Marion Rousse, 314 F.3d 1313, 1330 (Fed. Cir. 2003) (“[C]laims are
`construed the same way for both invalidity and infringement.”).
`The Federal Circuit has recognized the propriety of this type of analysis. For example, in
`Rivera v. ITC, 857 F.3d 1315, 1319 (Fed. Cir. 2017), the Federal Circuit noted “[b]oth parties
`analyze[d] the written description issue under the assumption that the asserted claims read on
`2
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

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`Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 5 of 9
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`Solofill's K2 and K3 cup-shaped containers.” 857 F.3d at 1319. It found “written description support
`for broad claims covering a receptacle with integrated filter such as Solofill's accused products and
`Rivera's Eco-Fill products is lacking.” Id. at 1321; see also Auto. Techs., 501 F.3d 1274 at 1285.
`Similarly, as stated in Ware, “[t]he issue here is whether or not the '592 specification supports
`claim 1 as now asserted by plaintiffs in order to sustain their charge of infringement. It is these
`assertions by plaintiffs that give rise to Section 112(1) issues.” Ware v. Abercrombie & Fitch Stores
`Inc., C.A. No. 4:07-CV-00122 RLV, 2011 WL 13322747, at *20 (N.D. Ga. Oct. 17, 2011), report
`and recommendation adopted, C.A. No. 4:07-CV-00122-RLV, 2012 U.S. Dist. LEXIS 206575, 2012
`WL 13134065 (N.D. Ga. Mar. 1, 2012). “If claim 1 is read broadly to capture defendants' systems,
`the '592 patent is invalid under Section 112(1). If claim 1 is construed to cover that which is disclosed
`in the '592 specification, defendants have not infringed.” Id. at *28.
`Further, in Visteon 1, the court denied Visteon’s motion for summary judgment on Garmin's
`§ 112 defenses, stating that Garmin’s expert “ties his opinions both to the full scope of the claims, as
`interpreted by him based upon Visteon's infringement contentions, and to the time of filing.” Visteon
`Glob. Techs., Inc. v. Garmin Int'l, LLC, C.A. No. 10-cv-10578, 2015 U.S. Dist. LEXIS 33306, at
`*31 (E.D. Mich. Mar. 18, 2015) (“Visteon 1”). Visteon then brought a motion in limine to exclude
`Garmin’s § 112 defenses that were allegedly directed to the accused products, and the court agreed
`with the Special Master’s Report and Recommendation denying that motion as well. Visteon Glob.
`Techs., Inc. v. Garmin Int'l, Inc., C.A. No. 10-cv-10578, 2016 U.S. Dist. LEXIS 145316, at *12 (E.D.
`Mich. Oct. 20, 2016) (“Visteon 2”). The Special Master stated “only at trial will the theoretical
`construction suggested by Dr. Michalson (based on Visteon's infringement contentions) become real
`or vanish. At trial, Visteon will have to take a stand, but it has not done so in the motion in limine,
`and thus its effort to block Garmin's §112 defense is still premature.” Visteon Glob. Techs., Inc. v.
`Garmin Int'l, Inc., C.A. No. 2:10-cv-10578-PDB-DRG, 2016 U.S. Dist. LEXIS 145816, at *27 (E.D.
`Mich. Aug. 10, 2016) (“Visteon 2 Special Master Report”). The Special Master also noted:
`[W]ere Visteon to present an understanding of the '060 Patent claims that actually align with
`the patent disclosure, Garmin would have no need for its § 112 defenses. But if Visteon
`
`3
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

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`Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 6 of 9
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`proceeds at trial with its overbroad interpretation that far exceeds any reasonable "plain and
`ordinary" meaning of the claim language, Garmin must be able to present its § 112 defenses—
`the critical fetters that keep patent owner's honest to the invention they actually disclosed.
`Id. at *24-25. Like SonicWall’s experts’ written description analysis, Garmin’s expert’s “opinions
`flow from what he perceives to be Visteon’s interpretation of the claims.” Id. at *29.
`B.
`SonicWall’s Experts’ Written Description Analyses are Proper
`1.
`SonicWall’s Experts Used The Correct Methodology
`SonicWall’s experts followed this case law in every respect. For purposes of analyzing the
`written description support of a given claim element, SonicWall’s experts determined and then
`applied the scope of that claim element based on Finjan’s infringement assertions. There is no
`methodological problem with this approach, and Finjan cites no case law holding otherwise.
`Likewise, SonicWall’s experts do not engage in “claim construction” or provide any claim
`construction positions beyond those adopted by the Court. SonicWall’s experts simply follow the
`written description case law by identifying the claim scope necessarily asserted by Finjan based on
`its infringement analysis. To do so, SonicWall’s experts identify specific claim elements in the
`asserted claims that are the focus of each written description analysis undertaken by the experts. See,
`e.g., Exs. 42 at ¶682; 43 at ¶611, 44 at ¶351. The experts then focus on Finjan’s infringement
`allegations to understand the necessary scope (i.e., breadth) given to those claim elements under
`Finjan’s own allegations, before analyzing that claim scope for written description support. See, e.g.,
`Exs. 42 at ¶¶683-685; 43 at ¶¶612-613, 44 at ¶¶352-353. Ultimately, for the elements identified by
`SonicWall’s experts, they conclude that the written description does not convey to one of ordinary
`skill in the art an invention of the scope that has necessarily been applied by Finjan for infringement.
`SonicWall’s experts do not opine – as Finjan argues – that every infringing embodiment must be
`disclosed in the specification, nor do they assign new claim constructions. Rather, they explain what
`the written description teaches to a person of ordinary skill in the art, and explain why those teachings
`do not support a claim scope sufficient to cover Finjan’s allegation of infringement.
`2.
`Finjan’s “4-Step” Characterization Is Incorrect
`Finjan alleges that “[t]he SonicWall Technical Experts’ methodology has four steps:
`4
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

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`Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 7 of 9
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`1.
`
`2.
`
`3.
`4.
`
`Identifying an infringement contention by Finjan against a SonicWall product or
`functionality;
`Based on Finjan’s contention, forming an alternative construction of a claim
`limitation(s);
`Reasoning that Finjan would have adopted this alternative construction; then
`Stating an opinion as to whether the written description teaches or suggests an
`embodiment conforming to the alternative claim construction.”
`Finjan Br. at 1. Beyond what Finjan calls “Step 1,” Finjan mischaracterizes the experts’ analysis.
`Finjan’s so-called “Step 2” and “Step 3” do not exist in SonicWall’s experts’ analysis, as
`SonicWall’s experts do not offer “alternative constructions,” nor do SonicWall’s experts offer any
`reasons that Finjan would have adopted any (non-existent) alternative constructions. Instead,
`SonicWall’s experts did exactly what the case law says they should do: determine the necessary
`breadth of a given claim element based on Finjan’s infringement assertions, and then determine
`whether the specification supports a claim element with that breadth.
`Finjan’s so-called “Step 4” is likewise incorrect both because it is wrongly predicated on non-
`existent “alternative constructions,” and because it suggests that the written description inquiry by
`SonicWall’s experts was simply based on searching for “an embodiment.” Finjan’s experts did not
`opine that there must be a specific or exact embodiment in the specification mirroring Finjan’s
`infringement allegations. Instead, they analyzed whether the written description conveys to one of
`ordinary skill in the art that the inventors possessed an invention broad enough to encompass the
`types of things Finjan alleges satisfy the claim element in question. In other words, whether the
`written description supports the full scope of the claim (as applied by Finjan). See Ariad, 598 F.3d
`at 1351.
`
`3.
`Finjan Provides No Support For its Attack on SonicWall’s Experts
`Finjan provides no support for its attack on SonicWall’s experts’ methodology, and no case
`law finding that experts cannot consider the scope of claims informed by a plaintiff’s infringement
`allegations. Instead, Finjan focuses on its strawman argument that SonicWall’s experts are re-
`construing the claims, citing case law primarily relating to claim construction standards. But Finjan
`does not identify a single “alternative claim construction” adopted by SonicWall’s experts.
`5
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 8 of 9
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`Dated: March 11, 2021
`
`
`
`Respectfully Submitted,
`
`
`/s/ Nicole E. Grigg
`
`Nicole E. Grigg (formerly Johnson)
`Email: NEGrigg@duanemorris.com
`DUANE MORRIS LLP
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`
`Matthew C. Gaudet (Pro Hac Vice)
`Email: mcgaudet@duanemorris.com
`John R. Gibson (Pro Hac Vice)
`Email: jrgibson@duanemorris.com
`Robin L. McGrath (Pro Hac Vice)
`Email: rlmcgrath@duanemorris.com
`David C. Dotson (Pro Hac Vice)
`Email: dcdotson@duanemorris.com
`Jennifer H. Forte (Pro Hac Vice)
`Email: jhforte@duanemorris.com
`1075 Peachtree Street, Ste. 2000
`Atlanta, GA 30309
`
`Joseph A. Powers (Pro Hac Vice)
`Email: japowers@duanemorris.com
`Jarrad M. Gunther (Pro Hac Vice)
`Email: jmgunther@duanemorris.com
`30 South 17th Street
`Philadelphia, PA 19103
`
`Attorneys for Defendant
`SONICWALL INC.
`
`6
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 405 Filed 03/11/21 Page 9 of 9
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`CERTIFICATE OF SERVICE
`This is to certify that a true and correct copy of DEFENDANT SONICWALL INC.’S
`RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRELUDE TESTIMONY ON
`WRITTEN DESCRIPTION FROM SONICWALL’S TECHNICAL EXPERTS was served by
`ECF on all counsel of record on March 11, 2021.
`
`
`
`
`
`
`
`
`/s/ Nicole E. Grigg
`Nicole E. Grigg
`
`
`1
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 1 TO PRECLUDE TESTIMONY ON WRITTEN DESCRIPTION
`FROM SONICWALL’S TECHNICAL EXPERTS, CASE NO. 5:17-CV-04467-BLF-VKD
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