Case 5:17-cv-04467-BLF Document 407 Filed 03/11/21 Page 1 of 9
`
`DUANE MORRIS LLP
`D. Stuart Bartow (CA SBN 233107)
`dsbartow@duanemorris.com
`Nicole E. Grigg (CA SBN 307733)
`negrigg@duanemorris.com
`2475 Hanover Street
`Palo Alto, CA 94304-1194
`Telephone: 650.847.4150
`Facsimile: 650.847.4151
`DUANE MORRIS LLP
`Joseph A. Powers (PA SBN 84590)
`Admitted Pro Hac Vice
`japowers@duanemorris.com
`Jarrad M. Gunther (PA SBN 207038)
`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 (GA SBN 287789)
`Admitted Pro Hac Vice
`mcgaudet@duanemorris.com
`John R. Gibson (GA SBN 454507)
`Admitted Pro Hac Vice
`jrgibson@duanemorris.com
`Robin L. McGrath (GA SBN 493115)
`Admitted Pro Hac Vice
`rlmcgrath@duanemorris.com
`David C. Dotson (GA SBN 138040)
`Admitted Pro Hac Vice
`dcdotson@duanemorris.com
`Jennifer H. Forte (GA SBN 940650)
`Admitted Pro Hac Vice
`jhforte@duanemorris.com
`1075 Peachtree NE, Suite 2000
`Atlanta, GA 30309
`Telephone: 404.253.6900
`Facsimile: 404.253.6901
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`FINJAN, LLC, a Delaware Limited Liability
`Company,
`
`
`Plaintiff,
`
` Case No.: 5:17-cv-04467-BLF-VKD
`
`SONICWALL INC.’S RESPONSE TO
`FINJAN’S MOTION IN LIMINE NO. 3 TO
`PRECLUDE ARGUMENT THAT
`SONICWALL IS NOT SUCCESSOR-IN-
`INTEREST TO DELL
`Date:
`March 18, 2021
`Time:
`1:30 PM
`Courtroom: 3, 5th Floor
`Judge:
`Hon. Beth Labson Freeman
`
`
`SONICWALL INC., a Delaware Corporation,
`
`
`Defendant.
`
`v.
`
`
`
`
`
`
`
`
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 3 TO PRECLUDE ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL, CASE NO. 5:17-CV-04467-BLF-VKD
`
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`

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`Case 5:17-cv-04467-BLF Document 407 Filed 03/11/21 Page 2 of 9
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`TABLE OF REFERENCED EXHIBITS1
`
`August 18, 2020 Transcript of Proceedings by Zoom Webinar
`August 15, 2018 Defendant SonicWall Inc.’s Responsive Damages
`Contentions Pursuant to Patent L.R. 3-9
`
`Ex. 35
`
`Ex. 36
`
`
`1 All exhibits are attached to the Declaration of Jarrad M. Gunther.
`
`i
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 3 TO PRECLUDE ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 407 Filed 03/11/21 Page 3 of 9
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`Finjan’s Motion in Limine (“MIL”) No. 3 seeks to preclude SonicWall from responding to
`Finjan’s claim of pre-suit notice by contending that pre-suit notice communications with Dell cannot
`be imputed to SonicWall. Dkt. 368 (redacted version) at 1 (relying on Federal Rules of Evidence
`401, 402, 403, and 611). Specifically, Finjan argues that SonicWall “attempted to unveil a new
`defense, never before presented—or preserved—in any part of the case to date.” Id.
`The Court should deny Finjan’s motion. Finjan – not SonicWall – bears the burden of proof
`as to its compliance with the marking statute. To the extent the identification of this defense was
`sought during discovery, SonicWall identified it. Indeed, the parties argued a discovery dispute
`before Judge DeMarchi on this exact issue, on which SonicWall prevailed. Far from “forfeit[ing]”
`the argument, SonicWall successfully defended itself against Finjan’s meritless claim for discovery
`sanctions, and the record reflects that Finjan’s counsel was fully aware of SonicWall’s position.
`Finjan’s effort to go further and have the Court adjudicate the merits of SonicWall’s
`contention is an untimely request for summary judgment that is not a proper subject for a motion in
`limine.
`
`I.
`
`Finjan Bears the Burden of Proving Notice of Infringement to SonicWall
`Finjan argues that SonicWall’s Answer, written discovery, and damages contentions
`“forfeited” an argument that Finjan’s alleged pre-suit notice of infringement to non-party Dell does
`not apply to SonicWall Inc., the present defendant. Finjan has it backwards. The marking statute is
`“not a statutory defense to an action for infringement; it [is] a limitation on damages.” Bradford Co.
`v. Jefferson Smurfit Corp., 2001 WL 35738792, *9 (Fed. Cir. 2001)). Finjan thus bears the burden
`of proof on the issue. Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1366
`(Fed. Cir. 2017) (“There is no dispute that the patentee bears the burden of pleading and proving he
`complied with § 287(a)’s marking requirement.”); 35 U.S.C. § 287(a) (“In the event of failure so to
`mark, no damages shall be recovered by the patentee in any action for infringement, except on proof
`that the infringer was notified of the infringement and continued to infringe thereafter.”). Part and
`parcel of this burden is the burden to show that the alleged notice can be imputed to the defendant.
`Cf. Fed. Mach. & Welder Co. v. Mesta Mach. Co., 27 F. Supp. 747, 751 (W.D. Pa. 1939), decree
`rev'd on other grounds, 110 F.2d 479 (3d Cir. 1940) (“The oral notice given by McBerty to Bedell,
`
`1
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 3 TO PRECLUDE ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 407 Filed 03/11/21 Page 4 of 9
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`an employee of defendant, was not notice to the defendant. The burden rested upon the plaintiff to
`prove that the receipt of such a notice and the communication thereof to the defendant was within the
`authority of the employee. Plaintiff failed to meet this burden.”). Absent such proof, Finjan’s
`damages claim is limited to that period after it provided SonicWall actual notice of infringement.
`
`II.
`
`SonicWall’s Responsive Arguments Are Neither New Nor a Surprise
`Perhaps cognizant of its own evidentiary holes, Finjan argues here that SonicWall’s position
`should be deemed “forfeit.” But the record confirms that Finjan cannot credibly contend that it lacked
`notice of SonicWall’s position nor that it was “unveiled” for the first time in pre-trial correspondence.
`
`A.
`Finjan Conceded Notice of SonicWall’s Defense Via the RFA Motion Practice
`This issue of the imputation of knowledge from Dell to SonicWall was front-and-center in
`SonicWall’s discovery responses and in the resulting motion practice – which Finjan lost.
`Remarkably, Finjan now argues that the “only hint … of SonicWall disputing inherited notice was
`when SonicWall unaccountably refused Requests for Admission on the subject.” MIL No. 3 at 3
`More than a mere “hint,” SonicWall’s contention that Finjan’s discussions with Dell could not be
`imputed to SonicWall was at the forefront of a vigorously fought dispute regarding SonicWall’s
`responses to Finjan’s Request for Admissions (“RFA”).
`By way of background, those RFAs acknowledged that Finjan’s pre-suit communications
`were with Dell, not SonicWall. See Dkt. 276-1 at, e.g., RFA Nos. 13 (seeking an admission related
`to an email “to Dell”), 14 (“Admit that Finjan and Dell had a meeting … .”), 15 (“Admit that on
`October 12, 2016, Finjan delivered a presentation to Dell … .”). Then, in RFAs 17-22, Finjan sought
`admissions regarding SonicWall’s knowledge of Finjan’s patents, litigations, and licenses prior to the
`filing of the Complaint, and as far back as 2014. Id. SonicWall objected to and denied these RFAs
`on various bases, including that it “did not exist in 2014,” but where possible, responded as to its
`knowledge “post-divestiture from Dell in 2016.” Dkt. 276-1 at pp. 8-9.
`Motion practice then ensued on the issue of imputation of corporate knowledge (the very
`subject of this MIL). Finjan asserted that these objections and denials were inappropriate attempts
`by SonicWall to “bury its head in the sand,” and Finjan even sought sanctions. Dkt. 276 at 2. In
`response, SonicWall argued, “[w]hile Finjan and SonicWall disagree regarding the legal consequence
`
`2
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 3 TO PRECLUDE ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL, CASE NO. 5:17-CV-04467-BLF-VKD
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`

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`Case 5:17-cv-04467-BLF Document 407 Filed 03/11/21 Page 5 of 9
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`of SonicWall’s corporate form with respect to imputation of knowledge, that dispute is not properly
`resolved on a discovery motion regarding the adequacy of RFA responses.” Dkt. 276 at 3.
`Then, at the hearing before Magistrate Judge DeMarchi, Finjan’s counsel fully appreciated
`the issue, asking rhetorically: “So if Finjan goes and puts a party on notice about other patents and
`other lawsuits and they change their corporate entity, is that a basis for denials?” Ex. 35 at 29:12-15.
`Judge DeMarchi denied Finjan’s motion, finding that SonicWall’s responses were appropriate. Dkt.
`281. In denying Finjan’s motion, Judge DeMarchi further previewed that this would be an issue that
`would need to be resolved at trial:
`I think SonicWall has responded to the substance of the matter in the sense that it has said
`“We're a corporate entity as of 2016. We were not a corporate entity before 2016. We were
`a business unit of some other organization,” and they’ve answered on that basis. Now, the
`parties could have a fight about that and could also have a fight about whether information
`known to Dell and its business unit SonicWall and the employees of that organization is
`relevant to SonicWall’s willfulness if it’s known to infringe or relevant to the hypothetical
`negotiation. But going back to my earlier comment, I think what you’re really after there is
`an admission about what individual people knew as opposed to the corporate entity. That’s
`maybe the question you should have asked.
`Ex. 35 at 30:16-31:4. In response, Finjan’s counsel complained that SonicWall was “hiding behind
`a corporate shell game of changing the corporate structure,” but conceded that he understood why
`Judge DeMarchi disagreed. Id. at 32:22-33:2.
`Notably, Judge DeMarchi also gave Finjan the opportunity to present its argument—as it does
`here again—that SonicWall’s response to Interrogatory No. 1 somehow contradicted its later RFA
`responses. But, upon hearing SonicWall’s response to Interrogatory No. 1, Judge DeMarchi
`disagreed with Finjan’s characterization that there was some sort of inconsistency:
`THE COURT: Okay. But so your point is, it looked like -- or it sounds like in the answer [to
`Interrogatory No. 1] SonicWall distinguished between itself and its predecessor entity so it
`didn’t answer based on sort of a unified theory of the predecessor entity and SonicWall, Inc.,
`are one and the same but did provide that information.
`3
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 3 TO PRECLUDE ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 407 Filed 03/11/21 Page 6 of 9
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`MR. ANDRE: Yeah. It basically said SonicWall and its predecessor in interest Dell engaged
`-- both of them engaged in discussions.
`THE COURT: Okay. But they describe Dell as a predecessor in interest, not as the same
`company now in a different name.
`Ex. 35 at 34-35. Lest there was any doubt about SonicWall’s position, SonicWall’s counsel
`confirmed that “[SonicWall] was essentially a brand and it was not until October of ’16 that it became
`a separate entity, and we’ve consistently drawn that line in responding to Finjan’s definitions of
`SonicWall as a defendant in the case.” Id. at 38:7-17; see also Dkt. 276 at 3-4.
`In light of this history, Finjan cannot credibly maintain that this defense was “unveiled” for
`the first time in pre-trial correspondence, and thus its lone citation to GPNE Corp. v. Apple, Inc., No.
`12-CV-02885-LHK, 2014 WL 3870256, at *5 (N.D. Cal. Aug. 6, 2014)—which held that “by waiting
`to move to exclude this testimony until after two rounds of Daubert motions, the pretrial conference,
`and rulings on all but one motion in limine, Apple has waived its argument”—is inapposite.
`
`B.
`Finjan’s Remaining Arguments Regarding Forfeiture Fail
`Finjan also points to SonicWall’s Amended Answer and responsive damages contentions as
`failing to demarcate between notice to Dell and notice to SonicWall. Finjan’s arguments fail again.
`With respect to SonicWall’s Amended Answer, Finjan does not – and cannot – assert that
`SonicWall’s contention is an affirmative defense that SonicWall had to affirmatively plead in its
`Answer. Instead, Finjan, as the patentee, “bears the burden of pleading and proving he complied with
`§ 287(a)’s marking requirement.” Arctic Cat, 876 F.3d at 1366; see also Dunlap v. Schofield, 152
`U.S. 244, 248 (1894). In any event, SonicWall’s Amended Answer responded to Finjan’s notice
`allegations by (i) characterizing them as “alleged notice” (meaning it did not concede notice) and (ii)
`admitting only that Finjan and Dell had certain correspondence before the existence of SonicWall,
`but otherwise denying Finjan’s notice allegations set forth in its Complaint. Dkt. 74 at 5:16-6:10.
`No reasonable person could conclude from the Amended Answer that SonicWall was acquiescing to
`the notion that notice to Dell could properly be imputed to SonicWall.
`As to SonicWall’s responsive damages contentions, Finjan argues that they “did not mention,
`in any way whatsoever, any theory that notice of infringement to Dell might not be imputed to
`
`4
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 3 TO PRECLUDE ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL, CASE NO. 5:17-CV-04467-BLF-VKD
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`

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`Case 5:17-cv-04467-BLF Document 407 Filed 03/11/21 Page 7 of 9
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`SonicWall.” MIL No. 3 at 2. Not so. SonicWall’s Responsive Damages Contentions include an
`entire section titled “Finjan Is Not Entitled to Pre-Suit Damages” in which it expressly “dispute[d]
`that Finjan is entitled to pre-suit damages because Finjan cannot satisfy its burden of proving
`compliance with the marking statute” and, indeed, pointed out that “Finjan’s Damages Contentions
`make no mention of compliance with 35 U.S.C. § 287(a).” Ex. 36 at 5-8. In other words, SonicWall’s
`burden was to respond to Finjan’s specific contentions, but Finjan failed to set forth any contention
`on notice (despite bearing the burden of proof). SonicWall could not have responded to an issue that
`Finjan itself did not raise.
`SonicWall did not dispute during summary judgment that notice to Dell would be imputed to
`SonicWall. The second sentence of SonicWall’s brief on the issue of notice begins: “Even assuming,
`arguendo, that Finjan’s discussions with SonicWall’s predecessor (Dell) can be imputed to SonicWall
`… .” Dkt. 320 (redacted version), at 22; see also ARGUENDO, Black’s Law Dictionary (11th ed.
`2019) (“For the sake of argument <assuming arguendo that discovery procedures were correctly
`followed, the court still cannot grant the defendant's motion to dismiss>.”). Indeed, as the Court
`recognized, SonicWall presented its summary judgement motion directed to notice of infringement
`only to the extent that “Finjan’s discussions with Dell, SonicWall’s predecessor, could be imputed to
`[SonicWall].” Dkt. 381 at 41.
`
`III.
`
`SonicWall’s Position Is Not Meritless
`Finjan argues that if not waived, SonicWall’s defense is “meritless.” MIL No. 3 at 4. This
`request for a summary adjudication on the merits is not a proper subject for a MIL. Even then,
`Finjan’s motion does not cite to a single case supporting its view that SonicWall should be imputed
`with whatever notice was provided during Finjan’s discussions with Dell, despite it being its burden
`to do so. Cf. Maxwell v. J. Baker, Inc., 805 F. Supp. 728, 734 (D. Minn. 1992) (“If notice is given to
`an agent of the accused infringer, the patent owner must establish that the recipient had authority to
`accept such notice on behalf of the infringer.”); In re Elonex Phase II Power Mgmt. Litig., C.A. Nos.:
`01-082 GMS, 2002 U.S. Dist. LEXIS 4706, at *14 (D. Del. Mar. 20, 2002) (“[T]he plaintiff bears the
`burden of proving the agent’s authority to accept such notice on behalf of the alleged infringer.”).
`
`
`
`5
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 3 TO PRECLUDE ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL, CASE NO. 5:17-CV-04467-BLF-VKD
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`

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`Case 5:17-cv-04467-BLF Document 407 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. 3 TO PRECLUDE ARGUMENT THAT SONICWALL IS NOT
`SUCCESSOR-IN-INTEREST TO DELL, CASE NO. 5:17-CV-04467-BLF-VKD
`
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`Case 5:17-cv-04467-BLF Document 407 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 SONICWALL INC.’S RESPONSE TO
`FINJAN’S MOTION IN LIMINE NO. 3 TO PRECLUDE ARGUMENT THAT SONICWALL
`IS NOT SUCCESSOR-IN-INTEREST TO DELL was served by ECF on all counsel of record on
`March 11, 2021.
`
`
`
`
`
`
`
`/s/ Nicole E. Grigg
`Nicole E. Grigg
`
`
`
`
`1
`DEFENDANT SONICWALL INC.’S CERTIFICATE OF SERVICE, CASE NO. 5:17-CV-04467-BLF-VKD
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