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`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,
`Plaintiff,
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`v.
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`SONICWALL, INC.,
`Defendant.
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`Case No. 17-cv-04467-BLF
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`ORDER GRANTING IN PART AND
`DENYING IN PART DEFENDANT'S
`MOTION FOR PARTIAL SUMMARY
`JUDGMENT
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`Plaintiff Finjan, Inc. (“Finjan”) brings this patent infringement lawsuit against Defendant
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`SonicWall, Inc. (“SonicWall”), alleging infringement of eight1 of Finjan’s patents: 6,154,844 (the
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`“’844 Patent”), 6,804,780 (the “ʼ780 Patent”), 7,613,926 (the “’926 Patent”), 8,141,154 (the “’154
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`Patent”), 8,677,494 (the “’494 Patent”), 7,975,305 (the “’305 Patent”), 8,225,408 (the “’408
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`Patent”), and 6,965,968 (the “’968 Patent”) (collectively, the “Asserted Patents”). Complaint
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`(“Compl.”), ECF 1. Finjan alleges that it is entitled to enhanced damages pursuant to 35 U.S.C. §
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`284 because SonicWall has engaged in willful infringement of each of the Asserted Patents. Id. ¶¶
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`72, 90, 106, 123, 140, 158, 170, 189, 206, 224.
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`Before the Court is SonicWall’s Motion for Partial Summary Judgment. Motion (“Mot.”),
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`ECF 319-3; see also ECF 320 (redacted motion). On December 21, 2020, Finjan filed an
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`opposition brief to the motion. Opposition Brief (“Opp.”), ECF 327-4; see also ECF 326 (redacted
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`opposition brief). On December 31, 2020, SonicWall filed a reply brief. Reply Brief (“Reply”),
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`1 Finjan originally alleged infringement of ten patents. See Compl. The parties have since
`stipulated dismissal of Finjan’s claims of infringement of U.S. Patent Nos. 7,058,822 and
`7,647,633. ECF 324.
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`United States District Court
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`Mar 05 2021
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 2 of 45
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`
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`ECF 335-3; see also ECF 336 (redacted reply brief). The Court heard oral arguments on January
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`14, 2021. ECF 341; see also Transcript (“Tr.”), ECF 354. The Court GRANTS IN PART and
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`DENIES IN PART SonicWall’s Motion for Partial Summary Judgment.
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`I.
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`THE ACCUSED PRODUCTS
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`The infringement allegations subject to SonicWall’s motion for summary judgment relate
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`to SonicWall’s cybersecurity products, to include (1) Gateways; (2) Email Security products (“ES
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`products,” also referred to as “ESA”); (3) Capture Advanced Threat Protection (“Capture ATP”);
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`(4) Gateways and Capture ATP; (5) ES products and Capture ATP; (6) Capture Client and Capture
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`ATP; (7) Gateways and WAN Acceleration Appliance (WXA). Mot. at v.
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`SonicWall describes its products as follows: ES products receive emails that may contain
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`attachments and perform numerous security-related tasks. In certain situations, the ES products
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`may send email attachments to Capture ATP for analysis. SonicWall Senior Vice President and
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`Chief Technology Officer John Gmuender Declaration (“Gmuender Decl.”), ECF 319-5 ¶ 8.
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`Gateways operate similarly to ES products, but
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`at ¶ 5. When a Gateway sends packets to Capture ATP,
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` Id.
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`. Id. at ¶ 12.
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` Id. at ¶¶ 5, 8.
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`Capture Client runs on an endpoint device. Just like Gateways and ES products, Capture Client
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`can send files to Capture ATP for analysis. Id. at ¶ 10. Capture ATP analyzes files as they are
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`received. As part of its analysis, Capture ATP
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` Id. at ¶¶ 12-13.
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`II.
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` LEGAL STANDARD
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`Federal Rule of Civil Procedure 56 governs motions for summary judgment. Summary
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`judgment is appropriate if the evidence and all reasonable inferences in the light most favorable to
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`the nonmoving party “show that there is no genuine issue as to any material fact and that the
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`moving party is entitled to a judgment as a matter of law.” Celotex Corp. v. Catrett, 477 U.S. 317,
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`322 (1986). The current version of Rule 56 authorizes a court to grant “partial summary judgment”
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`to dispose of less than the entire case and even just portions of a claim or defense. See Fed. R. Civ.
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`P. advisory committee’s note, 2010 amendments; Ochoa v. McDonald’s Corp., 133 F. Supp. 3d
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`1228, 1232 (N.D. Cal. 2015). As such, a court can, “when warranted, selectively fillet a claim or
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`defense without dismissing it entirely.” Id.
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`The moving party bears the burden of showing there is no material factual dispute, by
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`“identifying for the court the portions of the materials on file that it believes demonstrate the
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`absence of any genuine issue of material fact.” T.W. Elec. Serv. Inc. v. Pac. Elec. Contractors
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`Ass’n, 809 F.2d 626, 630 (9th Cir. 1987). In judging evidence at the summary judgment stage, the
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`Court “does not assess credibility or weigh the evidence, but simply determines whether there is a
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`genuine factual issue for trial.” House v. Bell, 547 U.S. 518, 559–60 (2006). A fact is “material” if
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`it “might affect the outcome of the suit under the governing law,” and a dispute as to a material
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`fact is “genuine” if there is sufficient evidence for a reasonable trier of fact to decide in favor of
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`the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`In cases like this, where the nonmoving party will bear the burden of proof at trial on a
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`dispositive issue (e.g., patent infringement), the nonmoving party must “go beyond the pleadings
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`and by her own affidavits, or by the ‘depositions, answers to interrogatories, and admissions on
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`file,’ designate ‘specific facts showing that there is a genuine issue for trial.’” Celotex, 477 U.S. at
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`324. For a court to find that a genuine dispute of material fact exists, “there must be enough doubt
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`for a reasonable trier of fact to find for the [non-moving party].” Corales v. Bennett, 567 F.3d 554,
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`562 (9th Cir. 2009). In considering all motions for summary judgment, “[t]he evidence of the non-
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`movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson, 477
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`Northern District of California
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`United States District Court
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`U.S. at 255.
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`III. DISCUSSION
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 4 of 45
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`SonicWall asks the Court to issue an Order finding that:
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`• SonicWall does not infringe claim 1 of Patent ’154;
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`• The combination of SonicWall’s Email Security products and Capture ATP cannot infringe
`the asserted claims of Patent ’844, ’494 and ’926;
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`• SonicWall Gateways do not receive “Downloadables” and therefore cannot infringe the
`asserted claims 10 and 14 of Patent ’494, claims 41 and 43 of Patent ’844, and the asserted
`claim of Patent ’780 Patent;
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`• SonicWall does not infringe the asserted claims Patents ’305 and ’408 based on a
`combination of separate, remote computers;
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`• SonicWall does not infringe the asserted claims of Patents ’926 and ’305;
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`• Finjan is not entitled to a royalty on SonicWall’s Non-U.S. Sales; and
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`• Finjan is not entitled to damages prior to actual notice of infringement of Patents ’926,
`’968, ’844, and ’780.
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`Mot. at viii. The Court considers each request in turn.
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`A. Non-Infringement of the ’154 Patent
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`SonicWall first requests the Court find that the Accused Products do not infringe claim 1
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`of Patent ’154. The ’154 Patent is directed to a system and a method “for protecting a client
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`computer from dynamically generated malicious content[.]” ’154 Patent at Abstract. Conventional
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`reactive antivirus applications perform file scans looking for a virus’s signature against a list
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`known virus signatures kept on a signature file and thus, cannot protect against first time viruses
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`or if a user’s signature file is out of date. ’154 Patent at 1:25-31, id. at 2:32-37. Proactive anti-
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`virus application, on the other hand, use “a methodology known as ‘behavioral analysis’ to
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`analyze computer content for the presence of viruses.” Id. at 1:56-58.
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`Dynamic virus generation occurs at runtime where dynamically generated HTML contains
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`malicious JavaScript code. ’154 Patent at 3:53-64. For example the JavaScript function
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`document.write() is used to generate dynamic HTML at runtime. Id. at 3:53-57. Malicious code
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`inserted in a document.write() function would not be caught prior to runtime because the
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 5 of 45
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`malicious code is not present in the content prior to runtime. Id. at 3:65-4:4. To this point, the ’154
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`Patent concerns a “new behavioral analysis technology [that] affords protection against
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`dynamically generated malicious code, in addition to conventional computer viruses that are
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`statically generated.” Id. at 4:31-34.
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`The basic setup of the ’154 Patent involves three components: (1) gateway computer
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`including a content modifier, (2) client computer including a content processor, and (3) security
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`computer including an inspector, a database of client security policies, and an input modifier. ’154
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`Patent at 9:5-11. A preferred embodiment describes a gateway computer that receives content
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`including a call to an original function and an input. Id. at 5:6-9. The gateway computer then
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`substitutes the call to the original function with a corresponding call to a substitute function, which
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`operates to send the input to a security computer for inspection. Id. at 5:10-15. The gateway
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`computer transmits the “modified content from the gateway computer to the client computer,
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`processing the modified content at the client computer.” Id. at 5:13-15. The client computer then
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`transmits “the input to the security computer for inspection when the substitute function is
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`invoked.” Id. at 5:15-17. The security computer first determines “whether it is safe for the client
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`computer to invoke the original function with the input.” Id. at 5:17-19. The security computer
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`then transmits “an indicator of whether it is safe for the client computer to invoke the original
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`function with the input,” to the client computer. Id. at 5:19-22. The client computer invokes the
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`original function “only if the indicator received from the security computer indicates that such
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`invocation is safe.” Id. at 5:22-24.
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`Claim 1 of the ’154 Patent provides:
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`A system for protecting a computer from dynamically generated
`malicious content, comprising:
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` a
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` content processor (i) for processing content received over a network,
`the content including a call to a first function, and the call including
`an input, and (ii) for invoking a second function with the input, only
`if a security computer indicates that such invocation is safe;
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 6 of 45
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` a
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` transmitter for transmitting the input to the security computer for
`inspection, when the first function is invoked;
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`and a receiver for receiving an indicator from the security computer
`whether it is safe to invoke the second function with the input.
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`’154 patent, 17:32-44 (emphasis added).
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`The parties stipulated to the same constructions of “first function” and “second function”
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`as the Court determined in Finjan Inc. v. Cisco Systems, Inc., No. 17-cv-00072-BLF (“Cisco”).
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`ECF 214; see also Cisco, Order Construing Claims in U.S. Patent Nos. 6,154,844; 6,804,780;
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`7,647,633; 8,141,154; 8,677,494, ECF 134 at 35. Relevant here, the Court in Cisco construed
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`“first function / second function” as “substitute function / original function, which is different than
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`the first function.” Id.
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`Both parties reference this Court’s prior Order in Cisco where the Court granted in part and
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`denied in part Cisco’s motion for summary judgment on claim 1 of the ’154 Patent. Cisco, Order
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`Granting in Part and Denying in Part Cisco’s Motion for Partial Summary Judgment of
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`Noninfringement (“Cisco MSJ Order”), ECF 487 at 6-12. The Court granted summary judgment
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`with respect to noninfringement of the asserted claims of the ’154 Patent by Cisco AMP Products.
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`Id. at 11. In doing so, the Court agreed with Cisco that the accused AMP Products “[did] not
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`substitute calls to functions into any content that it receives.” Cisco MSJ Order at 6. It also
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`rejected Finjan’s remote creation infringement theory that a “hacker or some other process
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`modifies the original content by inserting a substitute function in place of the original function.”
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`Id. at 6-7. To the contrary, the Court found that the ’154 Patent’s own language required that the
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`invention itself “replaces the ‘original’ function with a ‘substitute’ function – not an external factor
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`such as a hacker.” Cisco MSJ Order at 7.
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`The Court denied summary judgment with respect to the infringement by the URL
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`rewriting feature of the Cisco ESA Outbreak Filters. Cisco MSJ Order at 11-12. There, “Cisco
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`acknowledge[d] that Finjan identifie[d] some sort of substitution as to the URL rewriting feature –
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`namely, the rewritten URL is a substitute for the original URL,” but nonetheless argued that “a
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`URL is simply an address and thus, is neither a function nor a call to a function.” Cisco MSJ Order
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`at 11 (internal quotation marks omitted). The Court rejected this argument, explaining that
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` the parties’ dispute concerning the manner in which Cisco’s URL
`rewriting feature utilizes URL functionality precludes summary
`judgment. Specifically, the parties dispute whether a URL (or a
`portion thereof) can be a “function,” or a “call to function” – with
`Cisco arguing that URLs are nothing more than addresses and Finjan
`responding that the processing of a URL can be a function.
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`Id. at 12 (emphasis added).
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`1. Literal Infringement
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`SonicWall argues that “none of the ’154 Accused Products2 receives content including a
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`call to a substitute function, as required by the claim and the agreed claim constructions.” Mot. at
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`2. It urges the Court to resolve as a matter of law two Finjan theories of literal infringement—
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`remote creation of a first function and a URL rewriting—each of which parallels the issues raised
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`and discussed in the Court’s Cisco summary judgment order. See Mot. at 3-5; see also Opp. at 1-2.
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`i. Remote Creation of a First Function
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`SonicWall argues that Finjan’s expert fails to “identify any call to a function that was
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`substituted into the received content as part of the Accused Systems” and instead opines that “both
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`the call to the ‘substitute function’ and the ‘original function’ can exist within the content as
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`originally created.” Mot. at 3 (emphasis added). SonicWall argues that this interpretation “renders
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`the word ‘substitute’ in the Court’s construction meaningless,” “ignores the Court’s construction[,]
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`and fails as a matter of law, as it did in the Cisco case.” Mot. at 3-4. SonicWall also contends that
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`2 The ’154 Accused Products are (1) Gateways, (2) Capture ATP, (3) Gateways with Capture
`ATP, (4) Capture Client with Capture ATP, (4) ES products, and (5) ES products with Capture
`ATP. See Mot. at v. Finjan’s ’154 infringement theories against the Gateways and Capture ATP
`alone are subject to SonicWall’s motion to strike. See ECF 299 at 7-9.
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 8 of 45
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`“nothing Finjan identifies as the ‘substitute function’ performs the security functionality of the
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`claim – i.e., sending the ‘input’ to a security computer for inspection when invoked.” Mot. at 4.
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`“Finjan does not dispute that if the Court applies the claims as it did in Cisco, then the
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`Court could grant summary judgment on that theory for the same reasons articulated in Cisco,
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`namely the first function was substituted remotely by an ‘external factor.’” Opp. at 4. With respect
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`to SonicWall’s second argument, Finjan asserts that “SonicWall’s argument is unclear, but the
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`premise seems to be that the substitute function in the accused products does not ‘perform[] the
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`security functionality of the claim.’” Id. According to Finjan, “that is not a requirement of the
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`claim or the Court’s construction of the ‘first function.’” Id.
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`Nothing within the record persuades the Court to apply the claim language to Finjan’s
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`remote creation theory differently than it did in Cisco. In Cisco, the Court explicitly rejected
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`Finjan’s remote creation theory as “inconsistent with the patent’s specification and the Court’s
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`Markman Order.” Cisco MSJ Order at 7. The Court explained that under this theory—where, as
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`here, the “substitute function” is supplied by an external source outside the control of any accused
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`product—was contrary to the plain language of the ’154 Patent:
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`“To enable the client computer to pass function inputs to the security
`computer and suspend processing of content pending replies from the
`security computer, the present invention operates by replacing
`original function calls with substitute function calls within the
`content, at a gateway computer, prior to the content being received
`at the client computer.”
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`Id. at 7 (quoting ’154 Patent at 4:55-60) (emphasis in original). Based on this claim language, the
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`Court again concludes that “it is the ‘[i]nvention’ that replaces the ‘original’ function with a
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`‘substitute’ function – not an external factor such as a hacker.” MSJ Order at 7; see also Finjan,
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`Inc. v. Juniper Nets., Inc., 387 F.Supp.3d 1004 at 1010-11 (N.D. Cal. 2019) (“The claimed ‘first
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`function’ then clearly involves the ‘substitute function,’ which sends the content’s input to the
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`security computer for inspection once invoked. . . . the substitute function exists only after the
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`original content is modified at the gateway computer.”); Finjan, Inc. v. Juniper Networks, Inc.,
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`No. C 17-05659 WHA, 2019 WL 3302717, at *2 (N.D. Cal. July 23, 2019) (explaining that a
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`“substitute function” supplied by an external system “ultimately amounts to the original content
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`initially received by the claimed system” and not a “substitute” function). Because Finjan’s
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`infringement theory fails to identify a substitute function consistent with the claim language, the
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`Court need not reach SonicWall’s second argument regarding whether the identified substitute
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`function preforms a security function.
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`ii. ES Products: URL Rewriting Theory
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`Finjan’s remaining theory of infringement against the ’154 Patent involves the URL
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`rewriting feature in SonicWall’s ES products. See Medvidovic Report (“Medvidovic Rep.”), ECF
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`319-6 ¶ 288 (outlining theory). SonicWall argues this theory is subject to summary judgment
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`because “it is undisputed that it is the accused ES products that insert the rewritten URL into the
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`received email.” Mot. at 5 (citing Medvidovic Rep. ¶ 293). In other words, according to
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`SonicWall, its ES products do not receive content that includes a call to a “first function” as the
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`claim requires because the rewritten URL does not exist until the ES product itself inserted it into
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`a received email. Mot. at 5-6.
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`Finjan responds that its expert “Dr. [Nenad] Medvidovic explained that the ESA ‘has a
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`content processor which processes-Internet-based content, e.g., with its email plugin chain,’ and
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`that based on that processing the ‘ESA rewrites the URLs where the first function is the rewritten
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`URLs,’ thus receiving substitute URL.” Opp. at 2 (internal citations omitted) (citing Medvidovic
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`Rep. ¶¶ 292-293); see also Tr. 20:13-15 (“ESA takes the content that was received, passes it off to
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`the plugin that does the rewrite, and receives the written URL back.”). Finjan further contends that
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`a SonicWall witness confirmed this process when the witness stated that “Yes, the e-mail has a
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`URL in it. When it gets rewritten, the original e-mail is removed, and the rewritten URL gets put
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`in its place within the email.” Id. (citing King Transcript (“King Tr.”), ECF 392-8 at 66:1-4).
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 10 of 45
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`In Cisco, as here, Finjan alleged a URL rewriting infringement theory of the ’154 Patent.
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`Cisco MSJ Order at 12. But in Cisco, the “content processor” was a client device that received an
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`email with a re-written URL (i.e., the first function). Id. The first function was substituted into the
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`email by Cisco’s Outbreak Filters—which were entirely distinct from the client device. Id. Here,
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`Finjan asserts that the “content processor” is the email plugin chain within the ES product.
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`Medvidovic Rep. ¶¶ 292-293 (the ESA “has a content processor which processes-Internet based
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`content, e.g., with its email plugin chain”); see also Tr. 21:16-24 (“the plugin is part of the ESA,
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`part of the content processor”).
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`Claim 1 of the ‘154 Patent requires “a content processor (i) for processing content received
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`over a network, the content including a call to a first function . . . ” Under this plain language, the
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`content “received over a network” must include the “call to a first function” when it is received.
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`Thus, the parties’ dispute can be distilled to whether the ES product receives content containing a
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`first function over a network from the email plugin—despite the fact that the email plugin is part
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`of the ES product.
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`There is no evidence before the Court that the ES products receive content over a network
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`from the email plugin. The Medvidovic Report explains only that “ESA has a content processor
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`which processes Internet-based content, e.g., with its email plugin chain,” “ESA processes emails
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`and determines whether there are suspicious scripts or URLs in the content it receives,” and “ESA
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`rewrites [] URLs.” Medvidovic Rep. ¶¶ 292-293. Nowhere does Finjan, let alone Dr. Medvidovic,
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`offer any evidence that content leaves the ESA, traverses over a network to the ESA’s email
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`plugin, and comes back to the ESA with a first function. See Tr. 21:1-8. Thus, as a matter of law
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`the Court concludes that ESA does not satisfy the claim requirement of “processing content
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`received over a network, the content including a call to a first function.”
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`2. DOE Theory
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 11 of 45
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`SonicWall argues that Finjan’s DOE theories of infringement against the ’154 Patent are
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`conclusory and that Dr. Medvidovic fails to provide a “purported equivalent for receiving content
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`including a call to a first function.’” Mot. at 6 (citing Medvidovic Rep. ¶¶ 260, 278, 298, 319).
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`Finjan responds that Dr. Medvidovic’s analysis is “sufficient” and that “this is not a summary
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`judgment issue, rather it is a cross examination issue for trial.” Opp. at 3 (citing Medvidovic Rep.
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`¶¶ 296-299).
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`Although infringement under the doctrine of equivalents is a question of fact, summary
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`judgment is proper “[w]here the evidence is such that no reasonable jury could determine two
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`elements to be equivalent.” Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.
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`8 (1997). “A patentee must establish ‘equivalency on a limitation-by-limitation basis’ by
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`‘particularized testimony and linking argument’ as to the insubstantiality of the differences
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`between the claimed invention and the accused device.” Akzo Nobel Coatings, Inc. v. Dow
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`Chemical Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016) (citation omitted).
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`Because Finjan has failed to establish “equivalency on a limitation-by-limitation basis”
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`summary judgment is proper here. Dr. Medvidovic’s discussion of DOE is broad and conclusory.
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`Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed.Cir.2001) (“Broad
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`conclusory statements offered by Telemac's expert are not evidence and are not sufficient to
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`establish a genuine issue of material fact.”). Dr. Medvidovic states that SonicWall’s ES products
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`“perform the same function the same way because they receive incoming content that include[s] a
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`call to a first function” and “achieve the same results because they modify content that they
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`receiving incoming content [sic] inspect the content using an engine, as antivirus, static analysis,
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`and dynamic analysis, for scanning, and proceed with the function call of the content is
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`determined safe [sic].” Even excusing that this general explanation is partially unintelligible,
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`nowhere does Dr. Medvidovic articulate an equivalent to the claim’s requirement of receiving
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 12 of 45
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`content that includes “a call to a first function.” This failure is particularly glaring given Finjan has
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`not successfully identified a “first function” in its literal infringement theories.
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`***
`Finjan has failed to establish a material dispute of facts as to any of Finjan’s theories of
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`infringement of the ’154 Patent. The Court GRANTS SonicWall’s Motion for Summary Judgment
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`and finds that the Accused Products do not infringe claim 1 of Patent ’154.
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`B. The Combination of SonicWall’s ES Products and Capture ATP Cannot Infringe
`The ’844, ’494, And ’926 Patents
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`SonicWall moves for a finding that the combination of SonicWall’s ES products and
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`Capture ATP cannot infringe the asserted claims of Patent ’844, ’494 and ’926. Mot. at 6-8. In
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`support of this request, SonicWall contends that “Capture ATP was not available for use with any
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`ES product until [after the relevant patents expired].” Id. at 7. It also argues that “the only sandbox
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`accused of infringement in this case is the sandbox that is part of Capture ATP.” Id. at 8. Finjan
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`responds that SonicWall’s argument errs because “[l]egally, commercial availability is not a
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`requirement for infringement” and “[f]actually, the record is overwhelming that the combination
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`of Capture ATP and SonicWall’s ESA products was at least made and used long before the ’844,
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`’494, and ’926 Patents expired in 2017.” Opp. at 4-5.
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`The Court credits Finjan’s legal argument that commercial availability is not the
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`appropriate standard to consider. See 35 U.S.C. § 271(a) (“[W]hoever without authority makes,
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`uses, offers to sell, or sells any patented invention, within the United States or imports into the
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`United States any patented invention during the term of the patent therefor, infringes the patent.”);
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`Netlist v. Smart Storage Sys, No. 13-5889, 2014 WL 1320325, at *3 (N.D. Cal. Apr. 1, 2014) (35
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`U.S.C. § 271 “does not require that the infringing product be ‘commercially available.’”). And it is
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`undisputed that each of the ’844, ’494, and ’926 Patents claims priority to U.S. Patent Application
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`No. 08/790,097 (now U.S. Patent No. 6,167,520), which was filed on January 29, 1997. See ECF
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`1-2 (’844 Patent) at 19; ECF 1-5 (’926 Patent) at 27; ECF 1-8 (’494 Patent) at 3); see also Opp. at
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 13 of 45
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`4-6. Thus, the relevant patents expired on January 29, 2017. 35 U.S.C. § 154; see McDuff Report
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`(“McDuff Rep.”), ECF 319-7 ¶ 95 (showing 1/29/2017 patent expiration date).
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`The outstanding question before the Court is whether there is a material dispute of fact as
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`to whether SonicWall made and used Capture ATP in combination with ES products before
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`January 29, 2017. SonicWall argues there is no dispute of fact that it did not make and use Capture
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`ATP in combination with ES until February 2017, see, e.g., Reply at 3, and points to the
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`Gmuender Declaration in support. According to Gmuender, while the release of Capture ATP with
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`select SonicWall firewalls occurred in August 2016, SonicWall’s ES products were unable to send
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`content (e.g., email attachments) to Capture ATP until February 2017, when SonicWall Email
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`Security 9.0 was released. Gmuender Decl. ¶ 7 (emphasis added). SonicWall also cites to two
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`documents to corroborate Gmuender’s account. See SonicWall Email Security 9.0 Release Notes,
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`February 2017, ECF 320-13 at 2-3 (describing Capture ATP as a new feature); SonicWall Email
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`Security 9.0.1 Release Notes, April 2017, ECF 320-14 at 3-4 (“Capture Advanced Threat
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`Protection (Capture ATP) is a cloud-based service that analyzes various types of content for
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`malicious behavior, and this function is being extended to Email Security beginning with version
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`9.0.” (emphasis added)); see also SonicWall SonicOS 6.2.6.0 Release Notes, August 2016
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`(explaining that Capture ATP is “an add-on security service to the firewall” (emphasis added)).
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`Finjan points the Court to two pieces of evidence it believes create a meaningful dispute of
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`fact. Opp. at 4-5. First, it identifies expert testimony from Dr. Eric Cole. Cole Transcript (“Cole
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`Tr.”), ECF 327-14. Dr. Cole testified that the first date of infringement for “SonicWall’s
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`Gateways, Capture ATP and Email Security combinations” was in 2012. Id. at 52:8-14. Finjan
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`also cites a SonicWall document that “corroborate[s] that the combined system was made and sold
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`long before 2017.” Opp. at 5. The document is titled “Capture ATP/Email Security Integration –
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`Extending Advance Threat Protection to Email” and dated September 2016. Capture ATP/Email
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`Security Integration Document, ECF 327-12. On a page titled “MRD: Integrate Capture ATP into
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`Case 5:17-cv-04467-BLF Document 420 Filed 03/17/21 Page 14 of 45
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`Email Security,” the document includes several bullet points including
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`” and
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` Id. at 00549277. Elsewhere, the
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`document describes “ES/Capture Integration Challenges” and “ES/Capture: Additional Work.” Id.
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`at 00549282, 00549290.
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`This evidence is neither “overwhelming” nor sufficient to raise a triable issue of fact. See
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`Opp. at 5. Dr. Cole’s statement that “the first date of infringement would be the 2012 date” was in
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`response to the question “So SonicWall's Gateways, Capture ATP and Email Security
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`combinations that you set forth above in paragraph 19 are not deemed to infringe [the ’844 patent]
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`prior to 2012; correct?” Cole Tr. at 52:8-14. This testimony does not meaningfully speak to the
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`alleged infringement of the specific combination of ES products and Capture ATP. See Reply at 4.
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`And, even ignoring this flaw, Finjan fails to provide any factual basis for Dr. Cole’s opinion.
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`Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1051 (Fed. Cir. 2001) (“If all expert
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`opinions on infringement … were accepted without inquiry into their factual basis, summary
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`judgmen