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`PAUL ANDRE (SBN 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (SBN 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (SBN 237978)
`jhannah@kramerlevin.com
`KRAMER LEVIN NAFTALIS
`& FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`SAN DIEGO DIVISION
`Case No. 3:17-cv-00183-CAB-BGS
`FINJAN, INC., a Delaware Corporation,
`
`
`PLAINTIFF FINJAN, INC.’S
`OPPOSITION TO DEFENDANTS’
`MOTIONS IN LIMINE NOS. 1-7
`
`Date: February 21, 2020
`Judge: Hon. Cathy Ann Bencivengo
`
`PER CHAMBERS RULES, NO ORAL
`ARGUMENT UNLESS ORDERED BY
`THE COURT
`
`
`
`
`
`Plaintiff,
`
`v.
`
`
`
`
`ESET, LLC, a California Limited
`Liability Corporation, and ESET SPOL.
`S.R.O., a Slovak Republic Corporation,
`
`
`Defendants.
`ESET, LLC, a California Limited
`Liability Corporation, and ESET SPOL.
`S.R.O., a Slovak Republic Corporation,
`
`
`Counterclaim-Plaintiffs,
`
`v.
`
`
`
`FINJAN, INC., a Delaware Corporation,
`
`
`
`Counterclaim-Defendant.
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
`
`
`
`CASE NO. 3:17-cv-00183-CAB-BGS
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`

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`TABLE OF CONTENTS
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`Page
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`FINJAN’S OPPOSITION TO ESET’S MIL NO. 1 ......................................................... 1
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`FINJAN’S OPPOSITION TO ESET’S MIL NO. 2 ......................................................... 4
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`FINJAN’S OPPOSITION TO ESET’S MIL NO. 3 ......................................................... 6
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`FINJAN’S OPPOSITION TO ESET’S MIL NO. 4 ......................................................... 7
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`FINJAN’S OPPOSITION TO ESET’S MIL NO. 5 ......................................................... 8
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`FINJAN’S OPPOSITION TO ESET’S MIL NO. 6 ....................................................... 10
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`FINJAN’S OPPOSITION TO ESET’S MIL NO. 7 ....................................................... 12
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`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Adobe Sys. Inc. v. Wowza Media Sys.,
`No. 11-cv-02243-JST, 2014 WL 709865 (N.D. Cal. Feb. 23, 2014) ................. 10
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) ............................................................................ 9
`Apple, Inc. v. Samsung Elecs. Co.,
`No. 11-cv-01846, 2014 WL 549324 (N.D. Cal. Feb. 7, 2014) ............................. 5
`Black & Decker Corp. v. Positec USA Inc.,
`No. 11-cv-5426, 2015 WL 5612340 (N.D. Ill. Sept. 22, 2015) ........................... 5
`Digital Reg of Texas, LLC v. Adobe Sys. Inc.,
`No. CV 12-01971-CW (KAW), 2014 WL 1653131 (N.D. Cal. Apr. 24,
`2014) ................................................................................................................... 10
`Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc.,
`No. C 03-1431 SBA, 2006 WL 1330003 (N.D. Cal. May 15, 2006) ................... 3
`Georgia-Pacific Corp. v. U.S. Plywood Corp.,
`318 F. Supp. 1116 (S.D.N.Y. 1970), mod. and aff’d, 446 F.2d 295 (2d
`Cir. 1971), cert. denied, 404 U.S. 870 (1971) .................................................... 13
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`No. 2:07-cv-00331-PMP, 2013 WL 4458754 (D. Nev. Aug. 16, 2013),
`aff'd, 769 F.3d 1371 (Fed. Cir. 2014) ................................................................... 3
`Ivera Med. Corp. v. Hospira, Inc.,
`No. 14-cv-1345-H-RBB, 2015 U.S. Dist. LEXIS 180560 (S.D. Cal.
`July 21, 2015)........................................................................................................ 3
`Kirksey v. Schindler Elevator Corp.,
`No. CV 15-0115-WS-N, 2016 WL 7116223 (S.D. Ala. Dec. 6, 2016) ............... 5
`L.C. Eldridge Sales Co. v. Azen Mfg. Pte., Ltd.,
`No. 6:11cv599, 2013 WL 7964028 (E.D. Tex. Nov. 14, 2013), aff'd in
`part sub nom. L.C. Eldridge Sales Co. v. Jurong Shipyard Pte., Ltd.,
`610 F.Appx. 1015 (Fed. Cir. 2015) ...................................................................... 2
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`Logan v. Cooper Tire & Rubber Co.,
`No. 10-3-KSF, 2011 WL 3267891 (E.D. Ky. July 29, 2011) .............................. 7
`Mendenhall v. Cedarapids, Inc.,
`5 F.3d 1557 (Fed. Cir. 1993) ................................................................................ 3
`Microsoft Corp. v. i4i Ltd. P’ship,
`564 U.S. 91 (2011) ................................................................................................ 2
`Network Caching Tech., LLC v. Novell, Inc.,
`No. C-01-2079-VRW, 2003 WL 21699799 (N.D. Cal. Mar. 21, 2003) ............ 11
`Oracle Am., Inc. v. Google, Inc.,
`No. C 10-03561 WHA, 2012 WL 1189898 (N.D. Cal. Jan. 4, 2012) .................. 3
`Oracle Am., Inc. v. Google, Inc.,
`No. 10-3561, 2011 WL 4479305 (N.D. Cal. Sept. 26, 2011) ............................. 10
`
`Polaroid Corp. v. Eastman Kodak Co.,
`789 F.2d 1556 (Fed. Cir. 1986) ............................................................................ 1
`PowerOasis v. T–Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ............................................................................ 1
`Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
`75 F.3d 1568 (Fed. Cir. 1996) .............................................................................. 9
`Renesas Tech. Corp. v. Nanya Tech. Corp.,
`No. C03-05709JFHRL, 2004 WL 2600466 (N.D. Cal. Nov. 10, 2004) ............ 11
`Sofillas v. Carnvial Corp.,
`No. 14-23920-Civ-Scola, 2016 WL 5407889 (S.D. Fla. July 8, 2016) ................ 7
`StoneEagle Servs., Inc. v. Pay-Plus Sols., Inc.,
`No. 8:13-cv-2240-T-33MAP, 2015 WL 3824208
`(M.D. Fla. June 19, 2015) ..................................................................................... 3
`Universal Elecs., Inc. v. Universal Remote Control, Inc.,
`No. 12-cv-00329 AG, 2014 WL 8096334 (C.D. Cal. Apr. 21, 2014) .......... 1, 2, 3
`ViaSat, Inc. v. Space Sys./Loral, Inc.,
`No. 3:12-CV-00260-H, 2013 WL 12061803 (S.D. Cal. Dec. 6, 2013) .............. 10
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`iii
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`Volterra Semiconductor Corp. v. Primarion, Inc.,
`No. C-08-05129 JCS, 2011 WL 4079223 (N.D. Cal. Sept. 12, 2011) ............. 1, 2
`Wi-LAN Inc. v. LG Elecs., Inc.,
`No. 18-cv-01577-H-BGS, 2019 WL 5790999 (S.D. Cal. Sept. 18, 2019) ......... 10
`Statutes
`35 U.S.C. § 307 .......................................................................................................... 2
`Rules
`Federal Rules of Civil Procedure 26(a)(2) ............................................................... 10
`Federal Rule of Evidence 602 .................................................................................. 13
`Federal Rule of Evidence 901 .................................................................................... 2
`Patent Local Rule 3.1 ......................................................................................... 10, 11
`Patent Local Rule 3.2 ............................................................................................... 10
`Patent Local Rule 3.6 ............................................................................................... 10
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`FINJAN’S OPPOSITION TO ESET’S MIL NO. 1
`Finjan should be allowed to introduce evidence of final decisions from the PTO
`on the asserted patents, because this is part of the intrinsic record of these patents and is
`highly relevant. As one Court observed: “[t]he Federal Circuit has held that final
`determinations by the PTO must be considered, particularly when the challenge in the
`reexamination proceeding was based on the same prior art as is at issue in the
`litigation.” Volterra Semiconductor Corp. v. Primarion, Inc., No. C-08-05129 JCS,
`2011 WL 4079223, at *6 (N.D. Cal. Sept. 12, 2011) (emphasis added) (citing, inter alia,
`PowerOasis v. T–Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) and Polaroid
`Corp. v. Eastman Kodak Co., 789 F.2d 1556, 1560 (Fed. Cir. 1986)).
`The PTO’s final decisions are particularly relevant to the asserted patents because
`they were based on the same prior art that Eset asserts against the same patents in this
`case, and also because Eset filed some of these PTO challenges itself. In fact, there
`have been twelve inter partes review proceedings (“IPRs”) filed against the asserted
`patents that reached a final decision from the PTO. Eset filed two of those IPRs, one of
`which upheld all claims as patentable on the merits over Eset’s challenge. See Ex. 1,1
`Final Written Decision at 2. A defendant’s IPR challenging the same patents asserted in
`a district court litigation is routinely permitted into evidence. See, e.g., Universal
`Elecs., Inc. v. Universal Remote Control, Inc., No. 12-cv-00329 AG (JPRx), 2014 WL
`8096334, at *7 (C.D. Cal. Apr. 21, 2014).
`Further, these twelve IPRs are instructive because they used the same prior art to
`challenge the asserted patents as Eset’s experts plan to use at this trial. See Expert
`Report of Dr. Spafford at 35-41 (asserting, e.g., the (1) Ji, (2) Necula, (3) Abadi, (4)
`Swimmer, (5) ThunderBYTE, (6) Shear, and (7) Waldo references, multiple times over,
`
`                                                            
`1 Unless otherwise noted, all exhibits are attached to the Declaration of Kristopher
`Kastens in Support of Finjan’s Opposition to Defendants’ Motions in Limine (“Kastens
`Decl.”).
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`against the accused patents – all of which were previously asserted against those
`patents, multiple times over, in IPRs that reached a final decision). Thus, these final
`PTO decisions are relevant to the validity of the claims. Volterra, 2011 WL 4079223, at
`*6 (holding plaintiff was “entitled to introduce evidence that the PTO upheld the claims
`of the [asserted] patents over the same prior art”).
`Further, final decisions by the PTO are added as a certificate to the patents and
`become an official portion of the patent. 35 U.S.C. § 307 (describing adding a
`certificate for patents that went through IPR). Seeking to exclude them would
`necessitate removing portions of the of the patents themselves, thereby also violating
`Federal Rule of Evidence 901, which requires that a complete authenticated copy of a
`public record be entered into evidence.
`That the IPR decisions are based on a “different standard” favors admitting final
`PTO decisions because it shows that no invalidity was found under the lower standard
`applied by the PTO. Here, Eset must prove invalidity by clear and convincing evidence,
`a more stringent standard than the preponderance of the evidence applied by the PTO.
`Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011) (burden of proving invalidity
`at trial is by clear and convincing evidence). The fact that petitioners, including Eset,
`could not establish invalidity of the asserted patents under this lower standard using the
`same references for the same claims is highly relevant information for the jury, as they
`will be applying a higher evidentiary standard. See L.C. Eldridge Sales Co. v. Azen
`Mfg. Pte., Ltd., No. 6:11cv599, 2013 WL 7964028, at *3 (E.D. Tex. Nov. 14, 2013),
`aff'd in part sub nom. L.C. Eldridge Sales Co. v. Jurong Shipyard Pte., Ltd., 610
`F.Appx. 1015 (Fed. Cir. 2015) (“the risk of confusion is minimal because a lower
`threshold of proof is required to show invalidity before the USPTO than is required by
`Defendants in this Court.”).
`There is also no risk of prejudice or jury confusion because the Federal Circuit
`holds any such risk is mitigated by appropriate jury instructions. Universal Elecs., 2014
`2
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`WL 8096334, at *7 (denying MIL because “[a]ny potential confusion [regarding the
`PTO’s rejection of Defendant’s IPR petition] can be addressed by appropriate jury
`instructions”); see also Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 2:07-cv-00331-PMP,
`2013 WL 4458754, at *15 (D. Nev. Aug. 16, 2013), aff'd, 769 F.3d 1371 (Fed. Cir.
`2014) (“[t]he Court’s instructions [regarding final PTO decisions on reexam] during
`trial and at the close of evidence cured the potential prejudice”); Fresenius Med. Care
`Holdings, Inc. v. Baxter Int’l, Inc., No. C 03-1431 SBA, 2006 WL 1330003, at *4 (N.D.
`Cal. May 15, 2006) (permitting reexamination decisions because “any prejudicial effect
`on the jury could be alleviated by the appropriate jury instructions”); Mendenhall v.
`Cedarapids, Inc., 5 F.3d 1557, 1563-64 (Fed. Cir. 1993) (upholding the district court’s
`jury instruction on “what weight to give the Patent Office’s determination” and “the
`evidence presented to the Patent Office.”).
`The overwhelming weight of authority on this issue, including from the Federal
`Circuit, supports allowing evidence of final PTO decisions into trial because they are
`relevant to the validity of the patent. See, e.g., Universal Elecs., 2014 WL 8096334, at
`*7 (C.D. Cal. Apr. 21, 2014) (denying Defendant’s MIL to exclude inter partes review
`decision); Oracle Am., Inc. v. Google, Inc., No. C 10-03561 WHA, 2012 WL 1189898,
`at *3 (N.D. Cal. Jan. 4, 2012) (holding that “it would be wrong to conceal this
`[reexamination decision] from the jury.”); StoneEagle Servs., Inc. v. Pay-Plus Sols.,
`Inc., No. 8:13-cv-2240-T-33MAP, 2015 WL 3824208, at *8-9 (M.D. Fla. June 19,
`2015) (declining to exclude from the jury a Patent Office decision denying institution of
`an inter partes review petition.). The only case Eset cites from this District does not
`support its position because it relates to an IPR that did not reach a final decision but
`was dismissed because of a settlement. See Motion at 2 (citing Ivera Med. Corp. v.
`Hospira, Inc., No. 14-cv-1345-H-RBB, 2015 U.S. Dist. LEXIS 180560, at *4 (S.D. Cal.
`July 21, 2015) (“The parties never fully briefed the issues and the PTAB never rendered
`a decision.”). Here, Finjan only argues that concluded IPRs should be admitted (i.e., a
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`final determination was reached), and not those that were dismissed before a final
`determination. See Doc. No. 748-1, Finjan’s MIL No. 3 at 1 (Finjan seeking to exclude
`proceedings where no final decision has been reached). Finally, none of the other cases
`that Eset cites are from this district, none are binding, and all go against the vast weight
`of authority on the subject. This Court should follow the majority’s reasoning and allow
`such relevant evidence at trial.
`FINJAN’S OPPOSITION TO ESET’S MIL NO. 2
`Eset offers no statute or authority, and hardly any reason, to preclude Finjan from
`referring to its parent or subsidiary companies at trial. Finjan’s uses a very common
`corporate structure where an umbrella corporate entity holds Finjan subsidiaries that are
`setup for specific purposes, and which is primarily done for public reporting purposes.
`Ex. 2, https://www.qualitylogoproducts.com/blog/who-owns-what-major-
`conglomerates-subsidiaries/; Ex. 3, https://smallbusiness.chron.com/reasons-companies-
`subsidiaries-81965.html. However, all the Finjan entities operate as a single company,
`with common employees and office space. Ex. 4 at FINJAN-ESET 662856-57
`(describing how Finjan’s employees are utilized across Finjan’s subsidiaries, including
`Finjan Mobile and Finjan Blue). As such, excluding discussions of separate entities
`beyond the Finjan entity that actually holds the asserted patents would provide an
`incomplete and inaccurate view on Finjan. Eset’s purpose in this is easy to discern, it
`wants to incorrectly paint Finjan as a company that only sues people, while ignoring its
`portions that develop products and provide venture capital funding.
`Eset offers only a halfhearted argument that Finjan’s related companies are
`irrelevant and mentioning them would confuse the jury. Neither of these is true.
`Countless Courts have allowed evidence of a party’s related companies without fear that
`the jury will be confused, because such evidence is relevant:
`Defendants’ alternative Rule 403 objection to such evidence is
`overruled. Contrary to defendants' contention, the Court perceives no
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`reasonable likelihood that the jury may be confused or misled, or that
`defendants will be unfairly prejudiced, if evidence about what a
`different Schindler entity knew is presented at trial. Defendants’
`position that such confusion will arise “because many affiliated
`corporations share similar names” (doc. 128, at 11) is not well taken.
`The Court is confident that the parties are capable of presenting their
`evidence and arguing their case in a manner that does not jumble
`“Schindler Elevator Corporation” into “Schindler Group” and that
`enables the jury to remain cognizant of the distinctions between and
`among particular Schindler entities.”
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`Kirksey v. Schindler Elevator Corp., No. CV 15-0115-WS-N, 2016 WL 7116223, at *7,
`n.11 (S.D. Ala. Dec. 6, 2016) (emphasis added); see also Black & Decker Corp. v.
`Positec USA Inc., No. 11-cv-5426, 2015 WL 5612340, at *2 (N.D. Ill. Sept. 22, 2015)
`(denying motion in limine seeking to prevent the jury from hearing, under FRE 403, that
`a party was owned by a Chinese parent company because it was relevant to corporate
`structure); Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-01846, 2014 WL 549324, at
`*14 (N.D. Cal. Feb. 7, 2014) (accord).
`Here, Finjan’s related companies are a part of Finjan, and are integral to Finjan’s
`backstory and relevant to its corporate structure and history. Finjan must be able to tell
`its story to the jury, including how it was formed, how its inventors (including its former
`CEO) recognized a problem that needed to be solved and invented the patents to solve
`those problems, how it has assigned and responsibly asserted the patents at issue over
`the years, and how it has contributed to the computer security eco-system as a whole.
`The real reason Eset wants to preclude mention of Finjan’s related companies is because
`it wants to hide this history from the jury and instead try to portray the current Finjan as
`a mere “patent assertion entity” and thereby conjure the prejudice. As such Finjan
`should be able to present the full scope of its operations, as to do otherwise would
`grossly mischaracterize Finjan and its related companies.
`Finally, Eset is wrong to assert that Finjan never provided discovery on its related
`companies. Motion at 2. Finjan produced documents concerning its related companies,
`5
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`including several years of Securities and Exchange Commission (“SEC”) filings, which
`describe its corporate structure and the operations of these entities. Kastens Decl., ¶ 5;
`see e.g., Ex. 4 (FINJAN-ESET 662845). Eset had ample opportunity to explore
`Finjan’s relationship with its related companies, but chose not to.
`FINJAN’S OPPOSITION TO ESET’S MIL NO. 3
`Finjan’s expert witnesses should be permitted to discuss testing they performed
`on the accused products because the infringing technologies in the accused products
`pre-date the expiration of the asserted patents. Specifically, they confirmed that the
`functionality they tested was present in the accused products prior to the expiration of
`the asserted patents. See e.g., Doc. No. 511-12 (Mitzenmacher Report) at ¶ 26 (citing to
`witness testimony that the accused functionality pre-dates the expiration of the asserted
`patents); Doc. No. 511-13 (Medvidovic Report) at ¶ 23 (same). Finjan’s experts were
`able to confirm this based on their review of the source code, documents, and testimony
`in the case.
`In fact, Eset’s motion in limine does not allege that the accused technologies that
`Finjan’s expert’s tested were not present in the accused products before expiration of the
`asserted patents. Eset also does not rely upon any case law that provides this Court a
`precedent to preclude Finjan from relying on the testing its experts performed on the
`accused products. Indeed, to extend Eset is now asserting that technology Finjan is
`accusing of infringement was not present in the accused products during the damages
`period, that is an issue for cross-examination and not appropriate for exclusion in a
`motion in limine. Eset has put forth no basis that the exclusion Finjan’s testing
`information is warranted.
`Additionally, Eset’s request for the Court to exclude Finjan and its expert’s from
`discussing any evidence at trial of the “ESET Threat Intelligence (“ETI”) and “ESET
`Dynamic Threat Defense” (“EDTD”) must be denied because Finjan accuses these
`technologies of infringing the asserted patents and alleges that these technologies were
`6
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`CASE NO.: 3:17-cv-00183-CAB-BGS
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`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`used by Eset prior to the expiration of the asserted patents. See, e.g., Doc. No. 511-6
`(Cole Report) at ¶¶ 130-132, 154-155, 175-177, 183, 811 (describing the ETI Accused
`Product); Doc. No. 511-12 (Mitzenmacher Report) at ¶¶ 20, 132-135, 261, 544, 659,
`907, 928 (describing the ETI Accused Product), 20, 928, 1394, 1864 (describing the
`Eset Dynamic Threat Defense Accused Product); Doc. No. 511-13 (Medvidovic Report)
`at ¶¶ 26, 33, 88-89 (describing the ETI Accused Product). Eset does not argue nor
`identify anything that would support such a broad exclusion of all evidence related to
`the ETI and EDTD.
`FINJAN’S OPPOSITION TO ESET’S MIL NO. 4
`Finjan’s expert witnesses should be permitted to reference each other at trial
`because it allows Finjan to build a foundation of information on the technology without
`requiring its experts to restate previous testimony. The law has consistently maintained
`that reliance between experts is appropriate. Logan v. Cooper Tire & Rubber Co., No.
`10-3-KSF, 2011 WL 3267891, at *4 (E.D. Ky. July 29, 2011) (“Under Rule 703, an
`expert is entitled to rely on the reports and opinions of other experts where those reports
`are of a type reasonably relied upon by experts in the particular field.”); see also Sofillas
`v. Carnvial Corp., No. 14-23920-Civ-Scola, 2016 WL 5407889, at *4 (S.D. Fla. July 8,
`2016) (experts can review and interpret another expert’s opinions in forming his own
`conclusions so long as that is the normal practice in his field). Eset’s request should be
`denied because it has not provided this Court any legal precedent for precluding an
`expert witness from “referencing” another expert witness at trial.
` The complex technology that is at issue in this case will require both parties’
`expert witnesses to develop and build upon a foundation for their opinions. First, Dr.
`Harry Bims will provide a tutorial on the background of the relevant technology,
`consistent with his expert report. Next, Finjan’s other expert witnesses intend to
`reference that foundation as they explain their infringement or invalidity analysis’ for
`their respective patents. Furthermore, as the experts discuss many of the same products,
`7
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`
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`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`to the extent more than one of Finjan’s expert witnesses opines on the same accused
`product, they may reference statements about the functionally of an accused product
`made by an earlier expert witness to build upon the jury’s understanding. There is
`nothing prejudicial or improper about presenting the evidence to the jury in this way.
`In fact, it would be highly prejudicial to Finjan if the Court were to preclude
`Finjan’s expert witnesses from referencing other expert witnesses. First, this would
`plainly advantage Eset over Finjan, as Eset has opted to have just one expert witness,
`Dr. Spafford, for both its non-infringement and invalidity cases with respect to all five
`asserted patents. Therefore, Dr. Spafford would be able to develop a foundation of
`information with the Jury between different portions of his analysis and then build on
`that foundation as he moves from one patent to the next, and from non-infringement to
`invalidity. Yet, Eset is asking the Court to preclude Finjan’s experts from doing the
`same and building a foundation of information in its case-in-chief. Second, it would be
`prejudicial to require Finjan to present duplicative testimony about the relevant
`technology of the accused products. Third, Finjan would be prejudiced because Eset’s
`motion does not preclude Eset’s expert witness from referencing the background of the
`relevant technology provided by Dr. Bims or statements made by Finjan’s other expert
`witnesses. Finally, there would be no prejudice to Eset, as Finjan’s experts are still
`bound by what was disclosed in their expert reports, and, as such, Eset already knows
`the scope of the testimony of each expert.
`FINJAN’S OPPOSITION TO ESET’S MIL NO. 5
`Eset’s Motion in Limine No. 5 should be denied because it misstates both the law
`
`regarding evidence of commercial success and the evidence about the “Vital Security
`appliance.” Finjan describes the commercial success of its products in the expert report
`of Dr. Orso, who uses it as objective indicia of non-obviousness to show that the claims
`of Finjan’s asserted patents are not obvious. Doc. No. 469-4 (Orso Report) at ¶¶ 69,
`160-163. Under the law, commercial success can be shown if there is a nexus between
`8
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`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`the success of the product sold and the patent at issue. Pro-Mold & Tool Co. v. Great
`Lakes Plastics, Inc., 75 F.3d 1568, 1573-74 (Fed. Cir. 1996) (remanding for further
`consideration a finding of summary judgment of obviousness and holding that it was
`within the realm of the fact-finder to determine if there was a nexus between
`commercial success and the patented features); Apple Inc. v. Samsung Elecs. Co., 839
`F.3d 1034, 1055 (Fed. Cir. 2016) (affirming the District Court’s finding of commercial
`success of the patents-at-issue by identifying a nexus between the success of iPhone and
`the patents-at-issue). Finjan provided such a nexus in the Orso Report, where Dr. Orso
`opined that there was a nexus between the commercial success of the Vital Security
`appliance and its patented features. Doc. No. 469-4 (Orso Report) at ¶¶ 160-163 (Dr.
`Orso stating that a nexus was required for commercial success and stating that given his
`review of the patents and products “I found evidence of commercial success of the
`claimed invention through Finjan’s Vital Security products.”).
`Dr. Orso supported this with analysis of the Vital Security appliances and its
`patented features in numerous locations in his report. Id. at ¶¶ 63-68, 128-143, and 160-
`163. In particular, in reaching his conclusion, Dr. Orso reviewed and cited numerous
`document related to the operation of the Vital Security appliance in establishing his
`opinion. Id. Dr. Orso also explicitly relied on Finjan’s discovery responses, including a
`chart showing that the asserted patents are practiced by Vital Security appliance. Id. at
`¶¶ 65, 162 (describing Dr. Orso’s reliance on Finjan’s Supplemental Responses to
`Eset’s Interrogatories Nos. 1, 3). Furthermore, Dr. Orso relied on the testimony of Mr.
`Ben-Itzhak, who Eset admits was identified as knowledgeable about Finjan’s products
`and who was deposed by Eset in connection with this case. Doc. No. 469-4 (Orso
`Report) at ¶¶ 63, 65, 79; id., Orso Appendix B (list of materials) at Page 102.
`Eset again cites no law supporting the exclusion of this evidence. See Motion at
`5. Furthermore, Eset cites nothing showing that Finjan was required to do more to
`establish a nexus between the Vital Security appliances and the asserted patents. See id.
`9
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`
`
`CASE NO.: 3:17-cv-00183-CAB-BGS
`
`FINJAN’S OPPOSITION TO DEFS.’
`MOTION IN LIMINE NOS. 1-7
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`Additionally, Eset cites nothing for its proposition that Vital Security appliances could
`not have practiced claims that were not issued yet at the time. Id. In particular, the
`‘086, ‘621, and ‘755 Patents all stem from and claim priority to parent appliances that
`were filed in 1996, showing that the technology predates the Vital Security appliances,
`even the final patent did not issue until later.
`FINJAN’S OPPOSITION TO ESET’S MIL NO. 6
`Eset’s sixth motion in limine should be denied because Finjan’s experts properly
`cited and disclosed the Include Security document in their expert reports as their expert
`opinion according to the Court’s schedule and the Federal Rules. See Fed. R. Civ. P.
`26(a)(2) (setting the timing for disclosure of an expert’s opinions and supporting
`documents, usually after the close of fact discovery).
` First, Finjan did not identify the Include Security document with its
`“Infringement Contentions pursuant to Patent L.R. 3.1, 3.2, and 3.6.” Motion at 7.
`However, the law is clear that a plaintiff does not have to identify every piece of
`evidence that it will rely on at trial in its infringement contentions. See, e.g., Wi-LAN
`Inc. v. LG Elecs., Inc., No. 18-cv-01577-H-BGS, 2019 WL 5790999, at *3 (S.D. Cal.
`Sept. 18, 2019) (refusing to strike references in expert report because expert reports are
`not required to be coextensive with infringement contentions) (citing Digital Reg of
`Texas, LLC v. Adobe Sys. Inc., No. CV 12-01971-CW (KAW), 2014 WL 1653131, at *5
`(N.D. Cal. Apr. 24, 2014) (finding that “expert reports are expected to provide more
`information than is contained in infringement contentions”)); ViaSat, Inc. v. Space
`Sys./Loral, Inc., No. 3:12-CV-00260-H, 2013 WL 12061803, at *2 (S.D. Cal. Dec. 6,
`2013) (refusing to