Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38415 Page 1 of 219
`
` 1
`
` UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`THE HONORABLE CATHY ANN BENCIVENGO
`
`
`FINJAN, INC., )
` )
` Plaintiff, ) CASE NO. 17CV183-CAB-BGS
` )
` vs. ) SAN DIEGO, CALIFORNIA
` )
`ESET, LLC and ESET SPOL, S.R.O.,) TUESDAY, MARCH 10, 2020
` )
` Defendants. )
`
`
`
`
`
`
`
`
`Reporter's Transcript of Jury Trial, Day 1, Volume 1
`Pages 1-219
`
`
`
`
`
`
`
`
`
`Proceedings reported by stenography, transcript produced by
`computer assisted software ___
`
`Mauralee Ramirez, RPR, CSR No. 11674
` Federal Official Court Reporter
`ordertranscript@gmail.com
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
` 1
`
` UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`THE HONORABLE CATHY ANN BENCIVENGO
`
`
`FINJAN, INC., )
` )
` Plaintiff, ) CASE NO. 17CV183-CAB-BGS
` )
` vs. ) SAN DIEGO, CALIFORNIA
` )
`ESET, LLC and ESET SPOL, S.R.O.,) TUESDAY, MARCH 10, 2020
` )
` Defendants. )
`
`
`
`
`
`
`
`
`Reporter's Transcript of Jury Trial, Day 1, Volume 1
`Pages 1-219
`
`
`
`
`
`
`
`
`
`Proceedings reported by stenography, transcript produced by
`computer assisted software ___
`
`Mauralee Ramirez, RPR, CSR No. 11674
` Federal Official Court Reporter
`ordertranscript@gmail.com
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38416 Page 2 of 219
`
` 2
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`APPEARANCES:
`For The Plaintiff: Kramer Levin Naftalis & Frankel, LLP
` Paul Andre
` James Hannah
` Lisa Kobialka
` Kristopher Kaskins
` 990 Marsh Road
` Menlo Park, California 94025
`
` Cristina Lynn Martinez
` 1177 Avenue of the Americas
` New York, New York 10036
`
`
`
`For the Defendants: Eversheds Sutherland (US) LLP
` Justin E. Gray
` Nicola A. Pisano
` Scott A. Penner
` Jose Patino
` Regis Worley
` 12255 El Camino Real, Suite 100
` San Diego, California 92130
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38417 Page 3 of 219
`
` 3
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`San Diego, California; Tuesday, March 10, 2020; 8:45 a.m.
`(Case called)
`(Appearances stated)
`THE COURT: All right. I've received your briefs
`about the opening statement demonstratives and exhibits that
`Mr. Hartstein is going to use. I'm going to wait on the depo
`designations. I have to look at them in context, and I don't
`think I need to do that before we start this morning.
`MR. ANDRE: It's probably unlikely we get to those
`today, but we can get to it in the afternoon to see how things
`progress.
`THE COURT: Regarding Finjan's PowerPoint, first of
`all, I expect all of these are demonstrative, correct? None of
`these are going to be admitted?
`MR. ANDRE: That's correct.
`THE COURT: I don't have any issue really with the
`timeline and the explanation. I understand that Finjan has
`some concerns that it shows a company that -- and we've had
`this conversation before -- that evolved over time, and so
`we're going back to when it was something else and then
`ultimately became Finjan, Inc. But it's a timeline that shows
`when the patents issued. I'm okay with that.
`I'm a little more concerned about the product and the
`awards because I'm not quite sure in terms of relevance in the
`case, which is what ESET raised is this -- I mean, when was
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38418 Page 4 of 219
`
` 4
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`this product sold? Does it actually practice the patents?
`What is its relevance? Why pick that one out of however many?
`Do the awards have anything to do with these patents?
`MR. ANDRE: Your Honor, I'd like to have Ms. Cristina
`Martinez argue this, if you don't mind.
`THE COURT: That's fine.
`Good morning.
`MS. MARTINEZ: Good morning, your Honor. So these
`slides are really just a demonstrative of what the product
`looked like at the time. We're not planning on introducing any
`evidence attempting to map the product to any of the patents in
`this case. It's really to provide a background about the
`company and say Finjan did, in fact, have products as of a
`certain time frame.
`And then with respect to the awards, just to say that
`Finjan was recognized in the industry and did receive awards as
`a company. We attached some of ESET's opening slides to show
`that they are really planning on attacking Finjan as not a real
`company, not a successful company, and so this is really
`important for us to be able to say yes, we did, in fact, have a
`product, and to kind of rebut those attacks on Finjan as an
`operating entity.
`So just demonstrating -- this really is a
`demonstrative to just show what the product looked like and,
`again, to just mention some industry recognition. It will not
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38419 Page 5 of 219
`
` 5
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`be going into detail in terms of either the exhibits or the
`demonstrative. It's really to just sort of say what the
`industry was saying about Finjan at the time.
`THE COURT: Thank you.
`MR. PENNER: Good morning. As we discussed earlier in
`the motions in limine conference, the use of the -- the use of
`the appliances or Finjan's products are basically to provide
`the jury with an understanding that they practice these patents
`as well as won awards for them. And, as Your Honor noted,
`during that time, there is simply no evidence in the record, or
`witnesses, that can tie any of the products or the awards to
`any of the patents at issue. And so, it's going to be leaving
`the jury with the impression that these products practiced the
`five patents that they're going to wind up discussing this
`entire time. Otherwise, there's really no reason to introduce
`them at this point.
`Also, Your Honor, this image of the actual appliance,
`they have used this image in other slides as well. And so, for
`example, there's a slide deck that we'll probably be discussing
`this tomorrow that uses the same image, and they actually put
`it on a slide that shows the patent numbers. And so, they're
`trying to create the impression by showing this to the jury
`today, and then later on, showing the same images with the
`patent numbers that these products are practicing those
`patents. And that's the impression that we discussed at the
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38420 Page 6 of 219
`
` 6
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`motion in limine.
`THE COURT: All right. I'm not going to strike the
`slides for opening or Mr. Hartstein's testimony. With the
`understanding, as counsel has just represented, that there
`isn't going to be an inference made that these awards somehow
`were made for these particular patents or what they claim, and
`the testimony will be subject to a motion to strike and an
`instruction to the jury to disregard any testimony in that
`regard because I don't believe there has been -- if you lay
`foundation for it during his testimony, but they've said that
`no one has ever testified to that. And certainly,
`Mr. Hartstein has never testified to the fact that he believes
`this particular product, which -- the vital security product,
`is a commercial embodiment of the patents at issue in the case.
`So, again, in the context of explaining the nature of
`the company, where it came from, how it evolved, it's fine,
`that the company has been recognized and received industry
`awards generally is fine, but be careful on the line, that we
`don't cross it to leave an inference with the jury that these
`awards are specific to the patents at issue in the case.
`You'll have lots of opportunity to cross-examine Mr. Hartstein.
`All right. I think that was the bulk of the arguments
`for your opening slides.
`MR. ANDRE: As for Mr. Hartstein, yeah, that was, Your
`
`Honor.
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38421 Page 7 of 219
`
` 7
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`THE COURT: Okay. And then?
`MR. ANDRE: Our objections to their opening slides,
`Your Honor, is legal in nature regarding claim instruction, and
`I don't think you have a copy of their opening slides. I can
`hand it up if you like. Can I hand this up, Your Honor?
`THE COURT: Sure.
`MR. ANDRE: This was not part of the letter briefing,
`Your Honor. The opening slides give a different timeline for
`disclosures. The purple flags are the ones we have the primary
`problem with slides. And it's slides 13, 14, 16 -- 12, 13, 14,
`and 16. The problem I have with the slides is they take Your
`Honor's claim construction and put emphasis on certain words.
`Your Honor, when you gave a claim construction, you
`didn't emphasize those aspects of your claim instruction, so I
`asked my colleague to take this -- play it straight and just
`put it in text. We don't have a problem with the claim
`instruction, but emphasizing certain aspects of the
`construction is not appropriate. That's not the law of the
`case. They put an asterisk on there and put emphasis added,
`but I don't think that solves the problem. That's the issue
`with slide 12 and 14.
`Slide 13 is a little more problematic. They put the
`word "fetched" in there and gave definition to the word
`"fetched," which Your Honor did not construe. That's on slide
`13. They never asked to have the word "fetch" construed by
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38422 Page 8 of 219
`
` 8
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`this Court.
`THE COURT: Yes.
`MR. ANDRE: They put their own construction on it
`saying that's required. We don't think that's appropriate.
`THE COURT: In the context, the way it is presented, I
`am a little concerned it's not a construction the Court gave.
`MR. PISANO: Your Honor, let me first deal with the
`"emphasis added." This was simply so we could save time in
`having the Trial Director guy outcize (sic) the words.
`Clearly, we've added "emphasis added" on pages 12 and 14 so
`that -- to focus the jury's attention on those words. I can
`state to the jury that those were not emphasized in the Court's
`constructions. But they are, in fact, italicized because those
`are things that we're going to be bringing to their attention.
`Now with respect to the "fetched" on slide 13, for
`example, we don't say that's the Court's construction. In that
`middle box, we say what the claims require. Now, for the first
`element, "Performing hashing function of the Downloadable
`together with express software components," that's Your Honor's
`construction.
`There was no construction for the word "fetch," but
`this is what we believe the evidence will show, and we believe
`this is what our experts will testify that the evidence
`requires. So, you know, we're not saying that it doesn't say
`that's your construction. That's the way we're interpreting
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38423 Page 9 of 219
`
` 9
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`it. That's the way we believe the jury should interpret it for
`the purposes of this trial. And, obviously, Finjan has a
`different view, and their interpretation of fetched is in the
`next column. So we're not at all saying that's what you said.
`THE COURT: Okay.
`MR. ANDRE: Your Honor.
`MR. PISANO: We're making that distinction. We think
`the jury will be able to understand that distinction.
`MR. ANDRE: But it's put with your construction, Your
`Honor. It says what the claims require and with your
`construction right above it. And that is what the claims
`require, your construction. Then they put "fetch" right below
`it so that gives the impression that that is required. And we
`would just disagree, that is not what the claims require. What
`is required is what Your Honor construed.
`THE COURT: Well, it may end up that we're ultimately
`going to have to construe what that term means during the
`course of the trial since there seems to be no clear and plain
`and ordinary meaning since the experts have different points of
`view. But we'll have to wait to see how their testimony comes
`in.
`
`With the understanding that you're going to make this
`clear and that this is opening statement, it's not evidence,
`it's sort of argument, and you make it clear when you turn to
`this slide that you're talking about your party's position as
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38424 Page 10 of 219
`
` 10
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`to how the patent should be applied, I don't have a problem
`with either of the slides or with the emphasis you've added,
`again, because this is argument -- well, opening.
`MR. ANDRE: On the last one, slide 16, Your Honor, and
`there's an issue there about the changing claim construction.
`Our experts are applying the Court's claim construction and
`they put in there "the construction may change over time,"
`which is not our understanding.
`THE COURT: I'm sorry. On 16?
`MR. PISANO: On 16, Your Honor.
`MR. ANDRE: Slide 16. You'll see they have the "small
`executable."
`THE COURT: Yes.
`MR. ANDRE: And on the right, they put in the -- some
`megabit size, et cetera, and at the bottom, they say "they
`change over time."
`MR. PISANO: Well, Your Honor --
`MR. ANDRE: And it's something, that, once again,
`depending on how they argue it, it's a -- claim construction
`doesn't change over time.
`THE COURT: My recollection of this when I did the
`claim construction and put in "small" and raised the issue at
`the time that I might be creating a problem by using the word
`"small," that that was the definition that was used in the
`patents and the family tree. And then I looked at the
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38425 Page 11 of 219
`
` 11
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`testimony and did not give them summary judgment on this
`because there was an argument that the meaning of "small" would
`evolve over time depending on the size of files that a computer
`could handle. And I think that's what you're reflecting.
`MR. PISANO: That's right, Your Honor.
`THE COURT: So it really isn't that they're saying
`that claim construction works. It's what the plain and
`ordinary meaning of what "small" would be as these patents roll
`out. So that's fine. You can keep that.
`All right. This blue tab in the front here?
`MR. ANDRE: Your Honor, that's a trivial argument.
`The law changed. They're going to try to argue that we have
`submarine patents. I don't know if Your Honor was -- and back
`in the day, this was over 20 years ago, there is such things
`as-- I think Mr. Lemelson --
`THE COURT: Yes.
`MR. ANDRE: -- created submarine patents. And they're
`going to bring up this issue of submarine patents. And, you
`know, the law changed back then. I think it was '94, 95 that
`submarine patents were done. They got rid of those and they,
`you know --
`THE COURT: Pull this slide out. I don't want this
`
`slide.
`
`MR. PISANO: Your Honor.
`THE COURT: I'm not going to define submarine patents
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38426 Page 12 of 219
`
` 12
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`to the jury. You can talk about this being continuations, but
`that whole --
`MR. PISANO: I understand, Your Honor. That's fine.
`I'll pull it, but just if I might, you can still have a
`submarine patent. If you look it up on Wikipedia, the
`definition --
`THE COURT: Oh, yes, there's a good source.
`MR. PISANO: Okay. But the definition of a submarine
`patent, Your Honor, is something in which the prosecution has
`been delayed a very long time. As to two of the patents in the
`case, that seemed to be inappropriate. I'm not aware of any
`case law --
`THE COURT: I understand you have an equitable defense
`of prosecution laches. That's for the Court.
`MR. PISANO: Thank you for mentioning that, Your
`Honor, because that is actually an issue. So on prosecution
`laches, we agree that is an issue for your determination, but
`whether there is prejudice or not due to the delay, we believe
`that is it something that the jury gets to decide. That is
`something I do plan to talk about in the opening, the amount of
`time it took them to prosecute the patents.
`THE COURT: That's fine. I looked at the verdict
`form, and I think for that purpose, we might have to get an
`advisory opinion on the ultimate issue but allow the jury to
`make a factual finding on whether or not there's been
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38427 Page 13 of 219
`
` 13
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`prejudice.
`MR. PISANO: Thank you, Your Honor.
`THE COURT: Okay. Anything else?
`MR. PISANO: Your Honor, there was one more issue on
`Mr. Hartstein's exhibits. One of those things, in the chart
`that deals with Finjan negotiating with ESET, it's our
`understanding that plaintiff intends to introduce
`communications between Finjan and ESET and Finjan and ESET's
`counsel, which is me. So they're going to be -- they want to
`put in letters that went back and forth between me and
`Mr. Chaperon, who is no longer with Finjan, about what we were
`doing. I think that is totally inappropriate because your
`Honor has already set the start date from infringements.
`And all of the discussions under NDA -- or all the
`negotiations were under NDA. So I think for them to bring in
`any of those letters talking about what the parties' positions
`were or what we were saying back and forth to one another under
`the NDA, totally inappropriate.
`MS. MARTINEZ: So, first of all, the communications
`that we were seeking to mark with Mr. Hartstein were not under
`the NDA. They all predated the NDA.
`And, second, just again, this is really just going to
`the context of setting up how we got here, what the
`communications had been between ESET and Finjan that predated
`this lawsuit. Again, there's going to be arguments -- it
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38428 Page 14 of 219
`
` 14
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`appears anyway, that there's going to be arguments sort of
`saying Finjan is an entity that just wants to litigate. Again,
`in their opening slide, you can see that they were trying to
`identify how many licenses arose out of the litigation. So
`this is kind of giving the history to say this is when the
`parties were in communication with each other prior to any
`litigation.
`And with regard to notice, yes, there is. Your Honor
`did issue a summary judgment issue regarding the notice date,
`but it's not a stipulated fact, so it's important that Finjan,
`who bears the burden of proof, has the foundation that its
`damages expert can then say, you know, this was the date that
`Finjan first provided notice to ESET and kind of discuss that
`set of communications. So we're not seeking to introduce any
`of the letters that were post NDA or really to go into detail
`about the letters themselves, but it's really, you know, the
`date that Finjan first sent that letter out, to lay the
`foundation and also to establish sort of the course of the
`communication between the parties.
`THE COURT: I don't know how you're going to establish
`the course of communications without getting into the NDA,
`because my recollection was that almost immediately following
`the initial notification on the -- the first patent, they
`launched into the NDA and the negotiation, none of which is
`admissible.
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38429 Page 15 of 219
`
` 15
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`So the fact that a letter was sent in January to ESET
`is fine, that you can use that to mark the date of the first
`notification to them, actual notice to them regarding that
`patent. And there were two I think that were covered in that
`patent. But I don't want to see any communications from
`counsel because I don't want it to make it look like counsel is
`a witness and he's not going to be able to take the stand to
`talk about it and have people interpreting what he wrote or
`what he said. So the timeline that just shows you sent them a
`letter for opening is fine, but communication back and forth is
`not acceptable.
`MS. MARTINEZ: Your Honor, just to ask a question, so
`that January 22nd, 2015 letter which was from Finjan to ESET
`and not to counsel, is that okay to use and mark with
`Mr. Hartstein?
`THE COURT: That's fine, yes.
`MR. PISANO: Your Honor, in their slide, they have a
`period that says -- after that letter, they say Finjan
`negotiates with ESET. And during that period --
`THE COURT: Well, that's a fact, Counsel. They sent
`you a letter, they were having communications with you. If
`you're going to argue some sort of laches, it needs to be fair
`that they didn't send you a letter and then never talked to you
`for four years.
`MR. PISANO: Your Honor, we're not going to argue that
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38430 Page 16 of 219
`
` 16
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`for the period after the letter. But during that NDA period,
`they tried out a lot of patents before we ended up with the
`patents here. So the problem is that, negotiations, there is a
`lot of back and forth. There were things that came in, there
`were things that went out. We went back and forth. And,
`again, if they want to put the first letter in, 2015, Your
`Honor, I have no objection to that. We're not going to object
`to 2015 and filing the suit. But a year later there was
`laches. Besides, laches went away anyway, so, you know, we're
`just concerned, as you say, that they're going to open the
`door.
`
`THE COURT: All right. Again, understanding the
`initial letter that kicked off your notification to them so
`that you have a start point for your experts to talk about when
`they were on notice is fine and when the suit was filed,
`obviously, is a matter of public record. The negotiations that
`went on in between, we're not going to discuss with the jury,
`and if anybody starts to go down that road, I'll cut it off and
`tell them they're not to be concerned about prior to the suit
`being filed, other than the letter was sent. All right?
`MR. PISANO: Thank you, Your Honor.
`THE COURT: Is that it now?
`MR. PISANO: Your Honor, I have a couple housekeeping
`issues. We're just going to deal with them very quickly.
`MR. PENNER: One issue, Your Honor, is at the motion
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38431 Page 17 of 219
`
` 17
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`in limine conference, the pretrial conference, the parties had
`discussed about adding the Court's claim constructions to the
`jury binder. The parties could not agree on what the claim
`constructions should look like. We believe that the claim
`construction should include all of the terms that Your Honor
`construed that are relevant to the patents-in-suit, and Finjan
`argued that we should not include the term "appended
`Downloadable" because they have dropped that from their
`infringement contentions. But, of course, we still have it as
`our invalidity contentions, and we still plan to invalidate
`that claim. And, therefore, it seems appropriate art. We
`believe it's appropriate for the jury to have that in their
`binder. If it never comes up, it doesn't matter if the jury
`saw it or not. So we do have two sets of instructions, one
`with the word "appended," which we believe should be there, and
`one without, but right now, the jury binder does not have any
`of the claim constructions.
`THE COURT: All right.
`MR. HANNAH: Your Honor, as counsel said, we've
`narrowed the case based on the number of hours that you've
`allowed us. We have dropped a number of claims. They've
`indicated that they want to keep in some -- to challenge some
`of the claims that we're not asserting for infringement, which
`is, I think, another issue for this Court.
`But one issue that we have is, is we have dropped
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38432 Page 18 of 219
`
` 18
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`claims from the '086 patent. And in your claim construction
`order, there's a definition of the word "Destination Computer."
`And I have a copy of your order if you would like me to hand it
`up to you.
`THE COURT: Sure.
`MR. HANNAH: May I approach, Your Honor?
`THE COURT: Yes.
`MR. HANNAH: I'm also handing you ESET's claim
`construction brief. The issue that we have here is that in
`your order for "Destination Computer," it's "a separate
`computer receiving the appended Downloadable." And the parties
`agreed that that construction only applies to claim 1, the
`earlier claims, and not claim 24, which does not require the
`appended Downloadable.
`It's actually not in the claim at all. It's evident
`from the fact that Your Honor put in "a separate computer
`receiving the appended Downloadable," which is antecedent
`basis. And if you look at ESET's opening claim construction
`brief on page 7 at line 11, ESET flatly admitted -- said:
`Claim 24 further confirms this construction, because
`it recites transmission of a Downloadable and a representation
`of the Downloadable Security Profile data as multiple pieces of
`informations, while claims 1 and 9 each teach transmitting a
`singular appended Downloadable.
`So I think what they're trying to do is import this
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38433 Page 19 of 219
`
` 19
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`definition of "a destination computer requiring an appended
`Downloadable" into claim 24. So if they want to keep in claim
`1 from the '086 and challenge it, even though it's not being
`asserted for infringement, we think there should be some type
`of notation that this claim construction only applies to claim
`1.
`
`MR. PENNER: First of all, we are not arguing that the
`appended Downloadable is required for claims 24 or 42, and it
`would apply to both claim 1 and claim 9 since both claims 1 and
`9 use the "appended Downloadable" term. We simply copied
`directly out of Your Honor's claim construction order the sets
`of claim constructions for the jury binder.
`THE COURT: All right. I'm going to leave it in the
`jury binder. I think that at the end of the day if it's in
`there and it never gets discussed, it's not going to be
`prejudicial. No one is going look at it and say oh, wait, we
`didn't talk about this. I can guarantee you.
`But if you're still planning on pursuing an invalidity
`challenge to a claim they're no longer asserting for
`infringement and they're not willing to dismiss it with
`prejudice, the claim, then I will allow you to continue to
`assert your dec relief claim for validity on that claim.
`MR. HANNAH: Your Honor, we are willing to dismiss
`with prejudice, by the way.
`THE COURT: All right. Let's talk about that in
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38434 Page 20 of 219
`
` 20
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`the -- at another time. Okay.
`MR. PENNER: Thank you, Your Honor.
`THE COURT: That would help, I think. Then they don't
`have to go there.
`MR. ANDRE: The last thing, Your Honor, just for
`opening statements, are we anchored to the podium there?
`THE COURT: No. We have a lapel mic, so you can move
`around. And during jury, you can step into... obviously,
`because you're going to need to -- oh, my God, where are we
`going to put everybody? How many do we have coming?
`THE CLERK: Thirty.
`THE COURT: I'm going to need -- everybody on that
`side is going to need to move to that side of the courtroom so
`that when the jury pool comes in.
`(Discussion between Court and courtroom deputy off the
`record)
`
`THE COURT: Never mind.
`MR. PENNER: Your Honor, there's one more thing that
`has come up for tomorrow. One of the witnesses, Mr. Kroll, you
`had mentioned in the pretrial conferences that witnesses could
`be taken out of order. Mr. Kroll is going to be here live for
`Finjan, and we intend to call Mr. Kroll in our case as well.
`They've indicated he will not be available when we want to call
`him and so that so we can simply play his deposition
`transcripts. Given that he is here, we would like the
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38435 Page 21 of 219
`
` 21
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`opportunity to question him live. It seems strange for the
`jury to see him once live and then we're relegated to
`videotape. So we would like to call him out of order and take
`him at the same time we do our cross-examination.
`THE COURT: Do you really have an objection to that?
`MR. ANDRE: Well, only to the extent that they
`designated the deposition. They said they were going to play
`the deposition. Now they want to take him out of order. The
`only objection I have with it, Your Honor, to be honest with
`you, is it blows the flow of our case.
`THE COURT: I'm sorry. It does what?
`MR. ANDRE: It blows the flow of our case.
`THE COURT: Well, that's not a reason. Okay. You may
`take him tomorrow to facilitate for the witness and not have to
`bring him back. All right. I think we'll get the jury in
`then.
`
`By the way, so normally, I read the list of all the
`witnesses, but you might notice because there are so many and
`they have some complicated names, I have provided the
`prospective jurors each with a copy of the prospective witness
`list, so I'll just have them look through. All right. Bring
`them on in.
`(Pause in the proceedings)
`(Prospective jurors entering at 9:35 a.m.)
`(Prospective jurors given an oath)
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38436 Page 22 of 219
`
` 22
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`(Case recalled)
`(Appearances restated)
`THE COURT: Good morning, ladies and gentlemen.
`Welcome to courtroom 4C of the United States District Court,
`Southern District of California. I'm District Judge Cathy Ann
`Bencivengo. We'll be together until we take a break as a group
`so if you have not already made sure your cellphone is
`silenced, please do so at this time.
`If anyone needs any hearing assistance, don't hesitate
`to let us know. We can give you a headset.
`The Court and the parties appreciate the effort you
`have all made to be here this morning. Our system of justice
`would not work without the willing and dedicated participation
`of citizens like yourselves giving up your personal time to
`come to court and assist in the resolution of disputes, so
`thank you for your time and effort.
`We are about to begin a civil trial between plaintiff,
`Finjan, Inc. and defendant, ESET, LLC, a California corporation
`and ESET S.R.O., a Slovakian corporation, jointly referred to
`as ESET.
`
`The first step in our trial process this morning will
`be to select nine jurors to hear this case. Each side in this
`case is entitled to have a neutral and impartial jury to hear
`and decide the case based solely on the evidence presented in
`court and the law as you will be instructed. The purpose of
`
`
`
`Case 3:17-cv-00183-CAB-BGS Document 792 Filed 06/08/20 PageID.38437 Page 23 of 219
`
` 23
`
` 1
` 2
` 3
` 4
` 5
` 6
` 7
` 8
` 9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`jury selection is to allow the Court and the parties to inquire
`as to whether a prospective juror can fulfill that role. Your
`participation in this step is very important. You'll each have
`an opportunity to tell us about yourself, so please give this
`process your full attention.
`If you are selected, you will be expected to be here
`each trial morning by 8:30, and we will adjourn each day at
`approximately 2:30 with two 20-to-30-minute breaks during the
`day. Given the length of the trial, it's my hope that the
`schedule will provide some time during the trial days for
`jurors to handle work and other family matters.
`The presentations of evidence is expected to conclude
`on or before Thursday, March 26th. We will be in
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
