Case 1:18-cv-01519-MN Document 200 Filed 10/16/20 Page 1 of 6 PageID #: 6900
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`FINJAN LLC, a Delaware Limited Liability
`Company,
`
`Plaintiff,
`
`v.
`
`RAPID7, INC., a Delaware Corporation
`and RAPID7 LLC, a Delaware Limited
`Liability Company,
`
`Defendants.
`
`C.A. No. 1:18-cv-01519-MN
`Jury Trial Demanded
`
`REDACTED VERSION
`(Filed on October 16, 2020)
`
`ANSWERING LETTER BRIEF REGARDING PERMISSION TO FILE
`MOTION FOR PARTIAL SUMMARY JUDGMENT
`
`Richard L. Renck (No. 3893)
`DUANE MORRIS LLP
`222 Delaware Avenue, Suite 1600
`Wilmington, DE 19801-1659
`Tel.: (302) 657-4900
`Fax: (302) 657-4901
`RLRenck@duanemorris.com
`
`Counsel for Defendants
`Rapid7, Inc. and Rapid7 LLC
`
`Sealed Version
`Dated: October 9, 2020
`
`*OF COUNSEL:
`L. Norwood Jameson
`Matthew C. Gaudet
`David C. Dotson
`John R. Gibson
`Robin McGrath
`Jennifer H. Forte
`DUANE MORRIS LLP
`1075 Peachtree Street NE, Suite 2000
`Atlanta, GA 30309
`Tel.: (404) 253-6900
`wjameson@duanemorris.com
`mcgaudet@duanemorris.com
`dcdotson@duanemorris.com
`
`Jarrad M. Gunther
`Joseph A. Powers
`DUANE MORRIS LLP
`30 South 17th St.
`Philadelphia, PA 19103-4196
`Tel.: (215) 979-1837
`jmgunther@duanemorris.com
`japowers@duanemorris.com
`
`

`

`Case 1:18-cv-01519-MN Document 200 Filed 10/16/20 Page 2 of 6 PageID #: 6901
`
`Jordana Garellek
`DUANE MORRIS LLP
`1540 Broadway
`New York, NY 10036-4086
`Tel.: (212) 471-1829
`jgarellek@duanemorris.com
`
`*admitted pro hac vice
`
`2
`
`

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`Case 1:18-cv-01519-MN Document 200 Filed 10/16/20 Page 3 of 6 PageID #: 6902
`
`RICHARD L. RENCK
`E-MAIL: RLRenck@duanemorris.com
`
`October 9, 2020
`
`VIA ECF
`
`
`
`The Honorable Judge Maryellen Noreika
`844 N. King Street, Unit 19, Room 4324
`Wilmington, DE 19801-3555
`Re: Finjan LLC v. Rapid7, Inc. and Rapid7 LLC, Case No. 18-1519-MN (D. Del.)
`
`Dear Judge Noreika:
`
`Defendants Rapid7, Inc. and Rapid7 LLC (collectively, “Rapid7”) respectfully oppose
`Plaintiff Finjan, LLC’s (“Finjan”) letter (D.I. 192) seeking permission to file a motion for summary
`judgment of no invalidity for lack of written description under 35 U.S.C. § 112, regarding 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”) (collectively, the “Patents-in-Suit”).
`Finjan’s Letter mischaracterizes Rapid7’s experts’ methodology for determining whether
`the Patents-in-Suit comply with the written description requirement. Rapid7’s experts do not
`“compare the patent specification to the accused products,” as Finjan alleges. D.I. 192 at 2.
`Instead, Rapid7’s experts explicitly identify various claim elements in the asserted claims that lack
`written description support. They then explain that these claim elements lack written description
`support because – under the scope of the claim that would be necessary under Finjan’s allegation
`regarding how the clam element is satisfied – the scope of the specific claim elements exceeds
`what is supported by written description.1 The written description requirement, of course, hinges
`on the scope of the claims, a legal principle that Finjan sidesteps in its letter. Finjan’s infringement
`allegations likewise require a particular scope of the claims, and thus are relevant to the written
`description analysis. Rapid7’s experts do not agree with Finjan’s interpretation of the scope of the
`claim elements, but if Finjan’s interpretation is correct for purposes of infringement, it must also
`be correct for purposes of invalidity. Finjan’s proposed summary judgment motion is an attempt
`to insulate its ability to apply an overbroad claim scope for purposes of infringement, without
`regard to the impact such an interpretation has on the validity of the asserted claims. Pandrol USA,
`LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005) (the written description
`requirement prevents “an applicant from later asserting that he invented that which he did not.”).
`Whether the claim elements in question – if they have the scope necessarily advanced by
`Finjan – are supported by written description is a question of fact for the jury. As Finjan
`acknowledges in its letter, compliance with the written description requirement is a question of
`fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he purpose
`of the written description requirement is to ‘ensure that the scope of the right to exclude, as set
`forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art
`
`1 Attached hereto as Exhibits 1, 2, and 3 are exemplary portions of the written description
`analyses performed by Dr.’s McDaniel, Jha, and Almeroth, respectively, in their opening reports.
`
`DUANE MORRIS LLP
`222 DELAWARE AVENUE, SUITE 1600 WILMINGTON, DE 19801-1659
`
`PHONE: +1 302 657 4900 FAX: +1 302 657 4901
`
`

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`Case 1:18-cv-01519-MN Document 200 Filed 10/16/20 Page 4 of 6 PageID #: 6903
`
`
`The Honorable Judge Maryellen Noreika
`October 9, 2020
`Page 2
`as described in the patent specification.’” Id. at 1353-54 (internal citations omitted). In order to
`determine whether the written description requirement is met, courts analyze “whether the
`disclosure of the application relied upon reasonably conveys to those skilled in the art that the
`inventor had possession of the claimed subject matter as of the filing date.” Id. at 1351. While this
`analysis does “require an inquiry into the specification,” it also “require[s] an inquiry into the scope
`of the invention.” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. C 12-05501 SI, 2014 U.S.
`Dist. LEXIS 57519, at *7 (N.D. Cal. Apr. 23, 2014); see also LizardTech, Inc. v. Earth Resource
`Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005) (“Although the specification would meet the
`requirements of section 112 with respect to a claim directed to that particular engine, it would not
`necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how
`different in structure or operation from the inventor’s engine.”). This latter part of the inquiry –
`i.e., determining the scope of the claims – is what Finjan sidesteps. Infringement contentions
`describe “the scope of what [a plaintiff] asserts is claimed by the patents” and therefore impact a
`defendant’s written description defenses.” Verinata Health, 2014 U.S. Dist. LEXIS 57519, at *7.
`(allowing a defendant to amend its written description defenses in its invalidity contentions
`because plaintiff amended its infringement contentions to expand the asserted scope of its claims).
`Finjan alleges that Rapid7’s experts improperly “compare the patent specification to the
`accused products,” but that is not true. Rapid7’s experts do not assert that the patent specifications
`must disclose the accused products or that every possible embodiment of the claims must be
`disclosed in the specification. See, e.g., Ex. 4, Reply Expert Report of Kevin Almeroth at ¶144
`(“[T]he written description requirement does not require that the patent specification disclose
`every possible application or implementation of the claimed invention.”); Ex. 5, Reply Expert
`Report of Somesh Jha at ¶124 (“‘[T]he specification has to disclose the scope of the claims, as
`they are written, but not [] every potential application[] of the claimed inventions.’”). Instead,
`Rapid7’s experts used Finjan’s infringement allegations in their written description analysis only
`“insofar as those allegations demonstrate the asserted scope of the claims.” Ex. 4, Reply Expert
`Report of Kevin Almeroth dated August 31, 2020 at ¶128. Even the sections Finjan quotes from
`Rapid7’s expert reports in support of its letter demonstrate that analysis. See, e.g., D.I. 192 at 2
`quoting the Reply Expert Report of Patrick McDaniel at ¶49 (attached hereto as Ex. 6) (“[T]he
`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.”
`(emphasis added)).
`The Federal Circuit has acknowledged this methodology of applying the asserted scope of
`the claims based on a plaintiff’s infringement allegations purporting to cover the accused products,
`to determine whether claims are invalid for lack of written description. In Rivera v. ITC, the
`Federal Circuit noted that “[b]oth parties analyze[d] the written description issue under the
`assumption that the asserted claims read on Solofill's K2 and K3 cup-shaped containers.” 857 F.3d
`1315, 1319 (Fed. Cir. 2017). The Court found that “written description support for broad claims
`covering a receptacle with integrated filter such as Solofill's accused products and Rivera's Eco-
`Fill products is lacking.” Id. at 1321. See also Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501
`F.3d 1274, 1285 (Fed. Cir. 2007) (“ATI sought to have the scope of the claims of the ‘253 patent
`include both mechanical and electronic side impact sensors. It succeeded, but then was unable to
`demonstrate that the claim was fully enabled.”).
`Similarly, the district court in Ware v. Abercrombie & Fitch Stores Inc. adopted the report
`and recommendations of the Special Master granting the defendants’ motion for summary
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`

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`Case 1:18-cv-01519-MN Document 200 Filed 10/16/20 Page 5 of 6 PageID #: 6904
`
`
`The Honorable Judge Maryellen Noreika
`October 9, 2020
`Page 3
`judgment under 35 U.S.C. 112, ¶ 1 for lack of written description. No. 4:07-CV-00122-RLV, 2012
`U.S. Dist. LEXIS 206575, at *8-9, 2012 WL 13134065 (N.D. Ga. Mar. 1, 2012). The Special
`Master explained, “[t]he issue here is whether or not the '592 specification supports claim 1 as now
`asserted by plaintiffs in order to sustain their charge of infringement. It is these assertions by
`plaintiffs that give rise to Section 112(1) issues.” Ware v. Abercrombie & Fitch Stores Inc., 4:07-
`CV-00122 RLV, 2011 WL 13322747, at *20 (N.D. Ga. Oct. 17, 2011), report and recommendation
`adopted, 4:07-CV-00122-RLV, 2012 U.S. Dist. LEXIS 206575, 2012 WL 13134065 (N.D. Ga.
`Mar. 1, 2012). The Special Master stated “[i]f claim 1 is read broadly to capture defendants'
`systems, the '592 patent is invalid under Section 112(1). If claim 1 is construed to cover that which
`is disclosed in the '592 specification, defendants have not infringed.” Id. at *28.
`The district court’s decisions in Visteon Glob. Techs., Inc. v. Garmin Int'l, LLC is
`particularly instructive, and worthy of a full discussion here. The district court denied Visteon's
`motion for summary judgment regarding Garmin's § 112 defenses and stated that it was “premature
`to conclude at this point that Visteon has carried its burden to establish that no genuine issue of
`material fact exists as to the validity of Garmin’s § 112 defenses.” No. 10-cv-10578, 2015 U.S.
`Dist. LEXIS 33306, at *35 (E.D. Mich. Mar. 18, 2015) (“Visteon 1”). Like Finjan, Visteon argued
`“Garmin’s expert[] improperly focused his opinions exclusively on the accused products.” Id. at
`*27. However, like Rapid7’s experts, Garmin’s expert was not “worried about any particular
`commercial manifestation of a product” and instead was “looking at the claim interpretation that
`Visteon appears to be putting forth, and that claim interpretation appears to be completely and
`utterly antithetical to the teachings of the specification.” Id. (internal quotations omitted). Like
`Rapid7’s experts, the court stated that Garmin’s expert “ties his opinions both to the full scope of
`the claims, as interpreted by him based upon Visteon's infringement contentions, and to the time
`of filing.” Id. at *31.
`Visteon later brought a motion in limine to exclude Garmin’s § 112 defenses that were
`allegedly directed to the accused products and the court denied the motion “for the reasons stated
`by the Special Master in his Report and Recommendation.” Visteon Glob. Techs., Inc. v. Garmin
`Int'l, Inc., No. 10-cv-10578, 2016 U.S. Dist. LEXIS 145316, at *12 (E.D. Mich. Oct. 20, 2016)
`(“Visteon 2”). The Special Master explained “only at trial will the theoretical construction
`suggested by Dr. Michalson (based on Visteon's infringement contentions) become real or vanish.
`At trial Visteon will have to take a stand, but it has not done so in the motion in limine, and thus
`its effort to block Garmin's §112 defense is still premature.” Visteon Glob. Techs., Inc. v. Garmin
`Int'l, Inc., Civil Action No. 2:10-cv-10578--PDB-DRG, 2016 U.S. Dist. LEXIS 145816, at *27
`(E.D. Mich. Aug. 10, 2016) (“Visteon 2 Special Master Report”). The Special Master in noted:
`To be sure, were Visteon to present an understanding of the '060 Patent claims that
`actually align with the patent disclosure, Garmin would have no need for its § 112
`defenses. But if Visteon proceeds at trial with its overbroad interpretation that far
`exceeds any reasonable "plain and ordinary" meaning of the claim language,
`Garmin must be able to present its § 112 defenses—the critical fetters that keep
`patent owner's honest to the invention they actually disclosed.
`
`Id. at *24-25.
`Like Finjan does here, Visteon “incorrectly focuses on Dr. Michalson's references to the
`accused products to try to bring the case in line with” cases where the expert “failed to make any
`
`

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`Case 1:18-cv-01519-MN Document 200 Filed 10/16/20 Page 6 of 6 PageID #: 6905
`
`
`The Honorable Judge Maryellen Noreika
`October 9, 2020
`Page 4
`reference to the language of the claims or any court construction of the language of the claims of
`the patent in suit, but, instead, compares the teaching of the specification to the accused product.”
`Id. at *28. However, like Rapid7’s experts, Garmin’s expert’s “opinions flow from what he
`perceives to be Visteon’s interpretation of the claims, whereas [the other case’s expert’s] opinion
`ignored the claims all together.” Id. at *29. As discussed above, Rapid7’s experts’ analysis is
`explicitly tied to specific claim elements and utilized Finjan’s infringement allegations only
`“insofar as those allegations demonstrate the asserted scope of the claims.” Ex. 4, Reply Expert
`Report of Kevin Almeroth at ¶128. See also Ex. 1, Expert Report of Patrick McDaniel; Ex. 2,
`Expert Report of Somesh Jha; Ex. 3, Expert Report of Kevin Almeroth.
`Finjan cites the Iridex Corp v. Synergetics, Inc. case in support of its position. D.I. 192 at
`4. However, Iridex is distinguishable because the defendant there “d[id] not point to any particular
`claim that is not adequately supported by the patent specification.” Iridex, 478 F.Supp.2d 1146 at
`1148 (E.D. Mo. 2007). The court noted that the defendant “cannot point to any claim that is
`broader than the specification, and therefore this § 112 argument must fail.” Id. Further, the court
`noted that the defendant “also argue[d] that § 112 requires the claims to be limited to the one
`embodiment shown in the specification, but this again is not the law.” Id. Unlike the defendant
`in Iridex, Rapid7’s experts identify and analyze specific claim elements that are not supported by
`the written description, and do not take the position that the claims are limited to embodiments
`shown in the specification.
`For the reasons discussed above, Finjan’s letter incorrectly describes Rapid7’s experts’
`methodology, which is legally proper. Therefore, Rapid7 respectfully requests that the Court deny
`Finjan’s request for permission to file a motion for summary judgment of no invalidity for lack of
`written description under 35 U.S.C. § 112.
`
`Very truly yours,
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`/s/ Richard L. Renck
`Richard L. Renck (#3893)
`
`Counsel for Rapid7, Inc. and Rapid7 LLC
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`RLR/chp
`Attachments
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