Case 5:17-cv-04467-BLF Document 409 Filed 03/11/21 Page 1 of 7
`
`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,
`
`v.
`
`SONICWALL INC., a Delaware Corporation,
`
`Defendant.
`
`Case No.: 5:17-cv-04467-BLF-VKD
`
`SONICWALL INC.’S RESPONSE TO
`FINJAN’S MOTION IN LIMINE NO. 5 TO
`PRECLUDE EVIDENCE OF OTHER
`PENDING PROCEEDINGS INVOLVING
`FINJAN
`March 18, 2021
`Date:
`1:30 PM
`Time:
`Courtroom: 3, 5th Floor
`Judge:
`Hon. Beth Labson Freeman
`
` REDACTED
`
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 5 TO PRECLUDE EVIDENCE OF OTHER PENDING
`PROCEEDINGS INVOLVING FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 409 Filed 03/11/21 Page 2 of 7
`
`TABLE OF REFERENCED EXHIBITS1
`
`July 20, 2020 Plaintiff Finjan, Inc.’s Objections and Responses to
`Defendant SonicWall, Inc.’s Third Set of Interrogatories (Nos. 11-25
`
`Ex. 45
`
`
`1 All exhibits are attached to the Declaration of Jarrad M. Gunther.
`
`i
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 5 TO PRECLUDE EVIDENCE OF OTHER PENDING
`PROCEEDINGS INVOLVING FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 409 Filed 03/11/21 Page 3 of 7
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`The Court should deny Finjan’s attempt to present the jury with an incomplete and inaccurate
`picture of its patents and licensing efforts.
`
`I.
`
`The Court Should Exclude Mention of All (Pending And Concluded) PTO Proceedings
`Finjan asks the Court to “exclude[e] all mention of pending IPRs,” but does not actually
`identify any pending USPTO proceedings it seeks to exclude, and SonicWall is not aware of any such
`pending proceedings. As set forth in SonicWall’s co-pending Motion in Limine No. 5 (Dkt. 364)
`(“SonicWall’s MIL No. 5”), SonicWall believes the Court should exclude all evidence and argument
`about post-grant proceedings—both pending and completed—because they are of little (if any)
`probative value and are highly prejudicial.
`To be clear, however, if the Court allows Finjan to reference IPRs in which Finjan has been
`successful (which will inevitably but improperly bolster the status of the patents in the jury’s eyes),
`then the jury should also hear about all of the IPRs that Finjan has lost, to understand just how close
`many of the asserted claims have already come to being invalidated.
`
`II.
`
`Finjan’s Pending Litigations Are Relevant to Finjan’s Damages and Willfulness Claims,
`as Well as Expert Bias
`A.
`Finjan’s Pending Litigation Is Relevant To Witness Bias
`In Finjan, Inc. v. Cisco Systems, Inc., Case No. 17-cv-0072-BLF (N.D. Ga.) (“Cisco”), the
`Court held that “the experts’ potential bias is highly probative of their credibility” and permitted Cisco
`the opportunity to “cross examin[e] … Finjan’s experts on their work and associated compensation
`for Finjan in other pending lawsuits.” Id. at Dkt. 660, at 3. Finjan has not credibly challenged the
`reasonableness of this conclusion. Accordingly, the Court should allow SonicWall to make similar
`challenges against Finjan’s experts, many of which are the exact same, including each of its
`infringement experts, Drs. Cole, Mitzenmacher, and Medvidovic.
`
`B.
`
`Finjan’s Pending Litigations Are Relevant to Finjan’s Damages and Willfulness
`Claims
`The Court should likewise deny Finjan’s request that SonicWall’s recitation of its ongoing
`litigations proceedings be limited. It appears that Finjan intends to disclose to the jury each of its
`licenses/settlement agreements in support of its damages claims, including its licenses with
`
`,
`
`
`
`1
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 5 TO PRECLUDE EVIDENCE OF OTHER PENDING
`PROCEEDINGS INVOLVING FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 409 Filed 03/11/21 Page 4 of 7
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`.
`, Sophos, and Symantec/Blue Coat
`SonicWall has challenged Finjan’s reliance on at least the
`licenses. SonicWall’s Mot. in Limine to Exclude Dr. McDuff’s Method No. 1 (Motion in Limine No.
`2) (redacted version at Dkt. 361). If the jury learns of these completed proceedings (many of which
`involved filed litigation)—and only these proceedings—it might come under the impression that
`every entity that Finjan has reached out to or sued has eventually taken a license to its patents.
`That is obviously not accurate, however. In fact, Finjan has admitted that it “has had licensing
`negotiations with
`
`
`.” Ex. 45 at 9:5-8. Of these, Finjan has pending proceedings against at
`least Cisco, ESET, Juniper, Palo Alto Networks, Qualys, and Rapid7, which are the subject to this
`motion.
`SonicWall should be permitted to inform the jury that, while Finjan has reached licenses and
`settlements with many entities, there are many other entities that do not believe they need to take a
`license and are willing to defend themselves in court to prove that point, just as SonicWall is doing
`here. Without this information, the jury would be led to believe that SonicWall is essentially the lone
`holdout within the industry refusing to license Finjan’s patent portfolio, which would improperly
`support Finjan’s willfulness claim. As this Court’s ruling on summary judgment confirmed with
`respect to just those limited number of patents that SonicWall was able to challenge in the allotted
`pages, however, SonicWall has no need to take a license to Finjan’s patents.
`The fact that many other companies continue to fight Finjan is also relevant (and responsive)
`to Finjan’s claim of secondary indicia of non-obviousness based on Finjan’s allegation of widespread
`industry recognition of the value of Finjan’s patents.
`To be sure, SonicWall will not use disparaging terms to describe Finjan, such as a patent
`“troll.” However, SonicWall should not be precluded from presenting the relevant facts that Finjan
`often must resort to litigation to secure licenses to its patents, and even then many parties are likewise
`denying that they need to take a license. Indeed, while this Court held in the 2015 Blue Coat case
`
`2
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 5 TO PRECLUDE EVIDENCE OF OTHER PENDING
`PROCEEDINGS INVOLVING FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

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`Case 5:17-cv-04467-BLF Document 409 Filed 03/11/21 Page 5 of 7
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`that “Blue Coat shall not introduce argument or evidence on co-pending lawsuits that have not reached
`a jury verdict,” it contemplated that such information could be relevant “in rebuttal to evidence
`submitted by Finjan because the lawsuits may be relevant under narrow circumstances.” Order
`Regarding Motions in Limine, Finjan, Inc. v. Blue Coat Sys., LLC, Case No. 15-cv-03295-BLF, Dkt.
`404, at 5 (N.D. Cal. Nov. 4, 2017). As set forth above, given that Finjan’s primary damages model
`is predicated on its prior licenses (many of which were the result of litigation), SonicWall respectfully
`suggests that the most appropriate manner to resolve the issue now is to deny Finjan’s motion and
`address at trial any specific objections regarding the relevancy of pending lawsuits involving Finjan’s
`patents.
`Similarly, Finjan’s willfulness claim is predicated, in part, on SonicWall’s alleged knowledge
`of its various patent lawsuits. SonicWall should be permitted to explain how those lawsuits do not
`demonstrate any knowledge regarding SonicWall’s own alleged infringement, or otherwise show that
`it would need to take a license to Finjan’s patents.
`
`
`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
`3
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 5 TO PRECLUDE EVIDENCE OF OTHER PENDING
`PROCEEDINGS INVOLVING FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
`
`

`

`Case 5:17-cv-04467-BLF Document 409 Filed 03/11/21 Page 6 of 7
`
`30 South 17th Street
`Philadelphia, PA 19103
`
`Attorneys for Defendant
`SONICWALL INC.
`
`
`
`
`
`4
`SONICWALL’S RESPONSE TO FINJAN’S MOTION IN LIMINE NO. 5 TO PRECLUDE EVIDENCE OF OTHER PENDING
`PROCEEDINGS INVOLVING FINJAN, CASE NO. 5:17-CV-04467-BLF-VKD
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`Case 5:17-cv-04467-BLF Document 409 Filed 03/11/21 Page 7 of 7
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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. 5 TO PRECLUDE EVIDENCE OF OTHER PENDING
`PROCEEDINGS INVOLVING FINJAN 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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