Case 1:18-cv-01519-MN Document 195 Filed 10/09/20 Page 1 of 4 PageID #: 6742
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`Fish & Richardson P.C.
`222 Delaware Avenue
`17th Floor
`P.O. Box 1114
`Wilmington, DE 19899-1114
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`302 652 5070 main
`302 652 0607 fax
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`October 2, 2020
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`VIA CM/ECF & HAND DELIVERY
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`The Honorable Maryellen Noreika
`United States District Court
`for the District of Delaware
`844 N. King Street
`Wilmington, DE 19801
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`Re: Finjan, LLC v. Rapid7, Inc. and Rapid7 LLC
`D. Del., C.A. No. 18-1519-MN
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`Dear Judge Noreika:
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`Plaintiff Finjan, LLC respectfully requests permission to file a motion for summary judgment of
`no invalidity for lack of written description under 35 U.S.C. § 112, for all seven of the Patents-in-
`Suit, Patent Nos. 7,613,918 (“the ’918 Patent”), 7,757,289 (“the ’289 Patent”), 7,975,305 (“the
`’305 Patent”), 8,079,086 (“the ’086 Patent”), 8,141,154 (“the ’154 Patent”), 8,225,408 (“the ’408
`Patent”), and 8,677,494 (“the ’494 Patent”). The motion is based law and expert testimony
`common to all asserted patents, so it presents a single legal issue applied to each asserted patent.
`In summary, Rapid7’s experts’ written description methodology is legally erroneous, and those
`experts have admitted that they have no opinions under the proper methodology. With no proper
`opinions, Rapid7 cannot carry its burden to prove invalidity under § 112.
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`“Compliance with the written description requirement is a question of fact but is amenable to
`summary judgment in cases where no reasonable fact finder could return a verdict for the
`nonmoving party.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).
`The written description “test requires an objective inquiry into the four corners of the specification
`from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification
`must describe an invention understandable to that skilled artisan and show that the inventor
`actually invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
`1351 (Fed. Cir. 2010) (emphasis added). Thus, the proper analysis is whether the specification
`“provides adequate written description to support the full scope of the claims as construed” by the
`court. Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1350 (Fed. Cir.
`2012) (finding the “specification supports the district court’s claim construction, and provides
`adequate written description to support the full scope of the claims as construed”) (emphasis
`added). But that is not the inquiry Rapid7’s experts have made. Instead, in their written description
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`Susan E. Morrison
`Principal
`morrison@fr.com
`302 778 8434 direct
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`1 Plaintiff Finjan files this document under seal out of an abundance of caution, because it quotes
`from deposition transcripts that have been marked under the Protective Order. Finjan will confer
`with Rapid7 regarding whether any redactions to the public version of this document are
`necessary.
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`Case 1:18-cv-01519-MN Document 195 Filed 10/09/20 Page 2 of 4 PageID #: 6743
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`The Honorable Maryellen Noreika
`October 2, 2020
`Page 2
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`analysis, Rapid7’s experts each compare the patent specification to the accused products, rather
`than looking to whether the specification supports the claims, as construed. That is legal error, and
`summary judgment is appropriate here.
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`Rapid7’s Improper Expert Opinions regarding the ’154, ’289, and ’918 Patents:
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`Dr. Kevin Almeroth’s written description analyses fails to consider the claims, as construed by the
`Court, and compare those claims to the four corners of the ’154, ’289, and ’918 Patents as required
`by law. By Dr. Almeroth’s admissions, he applied the wrong legal principles and did not opine on
`the patents’ written descriptions independent of considering Finjan’s infringement contentions.
`See Rough Tr. of Kevin Almeroth Dep. on Sept. 25, 2020, at page R-30 (“The principle framework
`that I’ve applied [to find certain claims invalid for lack of written description] is considering the
`infringement allegations from Finjan . . . to identify what Finjan believes is the scope of those
`claims and then using [the] scope of those claims [to determine there is no] written description
`support for certain limitations as identified in the [expert’s] report.”); see also id. at R-38 (Q: “Are
`any of those opinions you formed for 112 contingent on the claim construction order or are they
`just based on Finjan’s application of the claims to the accused products?”; A: “. . . I’m relying on
`the claimed scope as alleged by Finjan. . .”). Instead, Dr. Almeroth repeatedly confirmed that he
`improperly relies on the infringement contentions for the accused products, instead of the Court’s
`claim constructions, to set the scope of the claims for his invalidity analysis.
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`Dr. Almeroth’s conclusions that the patents are invalid because “the specification doesn’t describe
`any other way of implementing the [claimed] functionality” in a manner that matches the
`functionality of the accused products, is legally flawed and factually improper. Id. at R-43
`(emphasis added).
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`Rapid7’s Improper Expert Opinions Regarding the ’086 and ’494 Patents:
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`As with Dr. Almeroth, Dr. McDaniel’s analyses regarding written description for the ’086 and
`’494 Patents are not limited to the four corners of the specification—that is whether the
`embodiments in the patents support the claims as construed—but are improperly premised on the
`accused products. See, e.g., Dr. McDaniel’s Reply Report, ¶ 49 (“I understand that when claim
`language is construed to cover multiple embodiments of a claimed invention, the specification
`must provide written description support for the full scope of the invention. As set forth below and
`in my Opening Invalidity Report, the Asserted Patents do not provide written description for the
`scope of the claims that Finjan uses for its infringement analysis and therefore fail to satisfy the
`written description requirement.”). During his deposition, Dr. McDaniel confirmed he improperly
`went outside the four corners of the specification and did not provide an opinion based on a proper
`written description analysis:
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`Case 1:18-cv-01519-MN Document 195 Filed 10/09/20 Page 3 of 4 PageID #: 6744
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`The Honorable Maryellen Noreika
`October 2, 2020
`Page 3
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`Tr. of Dr. Patrick McDaniel Dep. on Sept. 11, 2020, 119:9-13.
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`By Dr. McDaniel’s own admission, he did not properly opine on the sufficiency of the ’086 and
`’494 Patents’ written descriptions and embodiments therein. And rather than staying within the
`four corners of the patents as required by law, Dr. McDaniel used the accused products to argue
`that the specification does not disclose embodiments that exactly match the accused products. See,
`e.g., Dr. McDaniel’s Reply Report, ¶¶ 52-53 (“With respect to AppSpider, Dr. Cole alleges
`AppSpider includes a Downloadable scanner because it includes a ‘scanner’ that scans a web
`application ‘to detect potential vulnerabilities’ and ‘can be used to validate potential vulnerabilities
`by attacking them’… There simply is no disclosure in the common specifications of the ’086 and
`’494 Patents in which a Downloadable scanner scans devices or web applications to identify
`vulnerabilities as Finjan alleges for purposes of infringement.”). Accordingly, Dr. McDaniel
`improperly concluded that the asserted claims of the ’086 Patent and’494 Patent are invalid for
`lack of written description, but only to the extent Finjan asserts that the claim elements are satisfied
`by the functionality of the accused products.” See, e.g., Dr. McDaniel’s Opening Report, ¶ 653.
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`Rapid7’s Improper Expert Opinions Regarding the ’305 and ’408 Patents:
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`Finally, Dr. Jha’s analyses regarding written description for the ’305 and ’408 Patents are similarly
`flawed. See, e.g., Dr. Jha’s Opening Report, ¶ 432 (“it is my opinion that claim 25 of the ’305
`Patent is invalid for lack of written description to the extent Finjan asserts that InsightVM,
`Nexpose, InsightAppSec, AppSpider, InsightIDR, or Metasploit fall within the scope of the claim
`elements identified above – i.e., “receiving incoming content from the Internet on its destination
`to an Internet application” – as the claims would cover subject matter beyond what a POSITA
`would understand the inventor was in possession of based on the written description of the ’305
`Patent.”); see also id ¶ 481 (“it is my opinion that claims 1, 3, 4, 22, and 29 of the ’408 Patent (i.e.,
`all asserted claims) are invalid for lack of written description to the extent Finjan asserts that
`InsightVM, Nexpose, InsightAppSec, or AppSpider fall within the scope of the claim element
`identified above – i.e., identifying “portions of program code that are malicious”– as the claims
`would cover subject matter beyond what a POSITA would understand the inventor was in
`possession of based on the written description of the ’408 Patent.”). Dr. Jha admitted his written
`description analysis of the claims is based on Finjan’s infringement contentions and expert reports
`as opposed to the embodiments in the patents themselves. See Rough Tr. of Somesh Jha Dep. on
`Sept. 29, 2020, at R-232.
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`Case 1:18-cv-01519-MN Document 195 Filed 10/09/20 Page 4 of 4 PageID #: 6745
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`The Honorable Maryellen Noreika
`October 2, 2020
`Page 4
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`For each of the patents, Rapid7’s approach of comparing the claims to the accused products is an
`error of law. Its experts’ opinions are not based on the claim construction order entered by the
`Court, much less a comparison of those claims to the embodiments within the four corners of the
`patents themselves.
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`What Rapid7’s experts have done is perhaps best exemplified in Iridex Corp. v. Synergetics, Inc.,
`where that court granted summary judgment of no invalidity under § 112. See Iridex, 478 F. Supp.
`2d 1146 (E.D. Mo. 2007). There, the court stated:
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`For its argument that the specification fails to provide notice to one skilled in the art that
`Iridex possessed the invention at the time of the ’492 patent, Synergetics does not point to
`any particular claim that is not adequately supported by the patent specification. Instead,
`Synergetics argues with the court’s claims construction and argues that if the claims are
`broad enough to cover the Synergetics products, they must be invalid. The vagueness of
`this argument shows the problem Synergetics has: it cannot point to any claim that is
`broader than the specification, and therefore this § 112 argument must fail.
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`Iridex, 478 F. Supp. 2d at 1148. Moreover, even if it were the case that the specification does not
`expressly describe embodiments similar to the accused products as Rapid7 argues, Rapid7’s
`analyses still fail because “[n]othing in § 112 requires the specifications to describe all possible
`embodiments’” LizardTech Inc. v. Earth Res. Mapping, 424 F.3d 1336, 1345 (Fed. Cir. 2005)).
`“A claim will not be invalidated on section 112 grounds simply because the embodiments of the
`specification do not contain examples explicitly covering the full scope of the claim language.” Id.
`Rather, a patentee “need only reasonably convey to one skilled in the art that [the inventors] had
`possession of at least one embodiment that meets the [controlling] construction[s].” Tobinick v.
`Olmarker, 753 F.3d 1220, 1227 (Fed. Cir. 2014) (reversing finding of no written description).
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`Here, Rapid7 has not analyzed its written description defense under the correct legal standard.
`Rapid7 has made no argument that the specifications’ many embodiments do not support the patent
`claims, as written and construed by the Court. Its defense therefore fails as a matter of law. For
`these reasons, Finjan respectfully request permission to file a summary judgment motion to dispose
`of Rapid7’s written description invalidity contentions for each of the Patents-in-Suit.
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`Respectfully Submitted,
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`/s/ Susan E. Morrison
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`Susan E. Morrison (#4690)
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`cc: All Counsel of Record – by CM/ECF
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