Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 1 of 12 PageID #: 8762
`
`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. 18-1519-MN
`
`FINJAN LLC’S REPLY BRIEF SUPPORTING ITS
`PARTIAL DAUBERT MOTION TO PRECLUDE TRIAL TESTIMONY BY
`RAPID7’S EXPERTS KEVIN ALMEROTH, PH.D.,
`PATRICK MCDANIEL, PH.D., AND SOMESH JHA, PH.D., CONCERNING
`SUFFICIENCY OF WRITTEN DESCRIPTION FOR THE PATENTS-IN-SUIT
`
`Proshanto Mukherji
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, MA 02210
`(617) 542-5070
`mukherji@fr.com
`
`Lawrence Jarvis
`Fish & Richardson P.C.
`1180 Peachtree Street NE, 21st Floor
`Atlanta, GA 30309
`(404) 892-5005
`jarvis@fr.com
`
`
`Dated: November 13, 2020
`
`
`
`FISH & RICHARDSON P.C.
`Susan E. Morrison (#4690)
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19801
`(302) 652-5070
`morrison@fr.com
`
`Juanita R. Brooks
`Roger Denning
`Jason W. Wolff
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`(858) 678-5070
`brooks@fr.com
`denning@fr.com
`wolff@fr.com
`
`
`ATTORNEYS FOR
`PLAINTIFF FINJAN LLC
`
`
`
`
`
`
`
`

`

`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 2 of 12 PageID #: 8763
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`
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`I.
`
`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ................................................................................................................... 1
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`II. ARGUMENT........................................................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Rapid7 Concedes Its Plan is to Try Claim Interpretation Disputes
`to the Jury, Which the Law Flatly Prohibits ........................................................... 2
`
`That Courts May Consider Differing Claim Constructions When
`Evaluating the Sufficiency of Written Description Does Not Mean
`Juries May ............................................................................................................... 3
`
`Contrary to Rapid7’s Statement, Verinata Health Does Not
`Empower Juries to Perform an “Inquiry into the Scope of the
`Invention” ............................................................................................................... 4
`
`The Visteon 2 Special Master Report Does Not Support Rapid7 ........................... 6
`
`That Rapid7’s Experts Did Not State Their Unadopted
`Constructions Verbatim is No Grounds to Make Claim
`Construction a Jury Issue ........................................................................................ 7
`
`III. CONCLUSION & RELIEF SOUGHT.................................................................................... 8
`
`
`
`
`
`
`i
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 3 of 12 PageID #: 8764
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`
`
`Page(s)
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ..................................................................................5
`
`Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc.,
`501 F.3d 1275 (Fed. Cir. 2007)..............................................................................................1, 4
`
`CytoLogix Corp. v. Ventana Medical Sys., Inc.,
`424 F.3d 1168 (Fed. Cir. 2005), Rapid7’s .............................................................................2, 3
`
`Every Penny Counts, Inc. v. American Express Co.,
`563 F.3d 1378 (Fed. Cir. 2009)..............................................................................................2, 3
`
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) ......................................................................................................... passim
`
`Rivera v. ITC,
`857 F.3d 1315 (Fed. Cir. 2017)..........................................................................................1, 3, 4
`
`Verinata Health, Inc. v. Ariosa Diagnostics, Inc.,
`No. C 12-5501, 2014 U.S. Dist. LEXIS 57519 (N.D. Cal. Apr. 23, 2014) .......................1, 4, 5
`
`Visteon Global Techs., Inc. v. Garmin Int’l, Inc.,
`No. 2:10-cv-10578, 2016 U.S. Dist. LEXIS 145316 (E.D. Mich. Oct. 20, 2016) .....................1
`
`Visteon Global Techs., Inc. v. Garmin Int’l, Inc.,
`No. 2:10-cv-10578, 2016 U.S. Dist. LEXIS 145816 (E.D. Mich. Aug. 10, 2016) ............1, 6, 7
`
`Ware v. Abercrombie & Fitch Stores Inc.,
`No. 4:07-cv-122, 2011 WL 13322747 (N.D. Ga. Oct. 17, 2011) ......................................1, 3, 4
`
`Other Authorities
`
`19 C.F.R. § 210.37 ...........................................................................................................................4
`
`Rule 403 .......................................................................................................................................5, 8
`
`
`
`
`
`ii
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 4 of 12 PageID #: 8765
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`I.
`
`INTRODUCTION
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`None of the authority Rapid7 cites is applicable here, because none of it relates to an
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`expert testifying before a jury about opinions based on claim constructions other than those
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`adopted by the trial court. Most of the cases Rapid7 cites involved no jury at all, and do not
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`speak to the admissibility before juries of opinions based on unadopted claim constructions.1
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`Those cases do not (and cannot) overcome the Federal Circuit’s repeated admonitions against
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`confusing juries with multiple constructions of the same terms.
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`The Federal Circuit’s admonitions are also not overcome by the Eastern District of
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`Michigan’s motion in limine orders from Visteon.2 The Visteon orders did no more than carry a
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`similar evidentiary dispute until the resolution of claim construction. They did not approve a
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`litigant presenting claim constructions to a jury when the litigant elected not to present them to
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`the trial court.
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`Rapid7’s brief does not dispute that the written description opinions of its experts are not
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`based on the Court’s constructions, but on infringement contentions. Rapid7’s brief also does
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`not argue that the Court’s claim constructions are incorrect or incomplete. And Rapid7’s brief
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`fails to identify any basis in law or fairness for presenting their untimely claim constructions to
`
`the jury. Abundant authority favors precluding Rapid7 from submitting such material at trial.
`
`
`1 See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1275 (Fed. Cir. 2007) (appeal
`from summary judgment); Rivera v. ITC, 857 F.3d 1315 (Fed. Cir. 2017) (appeal from
`administrative agency); Ware v. Abercrombie & Fitch Stores Inc., No. 4:07-cv-122, 2011 WL
`13322747 (N.D. Ga. Oct. 17, 2011) (special master’s report concerning summary judgment);
`Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. C 12-5501, 2014 U.S. Dist. LEXIS 57519
`(N.D. Cal. Apr. 23, 2014) (granting leave to amend invalidity contentions).
`
`2 Visteon Global Techs., Inc. v. Garmin Int’l, Inc., No. 2:10-cv-10578, 2016 U.S. Dist. LEXIS
`145816 (E.D. Mich. Aug. 10, 2016) (Visteon 2 Special Master Report); Visteon Global Techs.,
`Inc. v. Garmin Int’l, Inc., No. 2:10-cv-10578, 2016 U.S. Dist. LEXIS 145316 (E.D. Mich.
`Oct. 20, 2016) (Visteon 2).
`
`1
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 5 of 12 PageID #: 8766
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`
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`II.
`
`ARGUMENT
`A.
`
`Rapid7 Concedes Its Plan is to Try Claim Interpretation Disputes to the
`Jury, Which the Law Flatly Prohibits
`
`Rapid7 acknowledges that its experts’ reports “explicitly state that [the experts] do not
`
`agree with Finjan’s interpretation of the scope of the claim elements[.]” (D.I. 220 at 5.) But as
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`Finjan’s opening brief discussed, disputes over claim interpretation are issues for the Court
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`(preferably during Markman proceedings), not for the jury. (D.I. 204 at 8–10); see also Every
`
`Penny Counts, Inc. v. American Express Co., 563 F.3d 1378, 1383 (Fed. Cir. 2009) (“[T]he
`
`court’s obligation is to ensure that questions of the scope of the patent claims are not left to the
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`jury.”). If Rapid7 believes there is a claim construction dispute germane to written description, it
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`should have raised that issue during Markman proceedings. Rapid7 did not. Nor has it made
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`any attempt to raise the issue post-claim construction, notwithstanding that Rapid7 has been in
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`possession of Finjan’s infringement reports for months, and notwithstanding Rapid7’s numerous
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`pleas for the Court’s attention on other disputes of law.
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`In its own words, Rapid7’s proposal is to make the jury, rather than the Court, the arbiter
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`of whether Rapid7’s experts “misinterpreted Finjan’s infringement allegations and purported
`
`claim scope[.]” (D.I. 220 at 8); see also id. (proposing cross-examination on claim construction).
`
`Such a proposal improperly usurps the Court’s sole authority over claim interpretation, as
`
`established by the Supreme Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
`
`(1996). The Federal Circuit has expressly recognized that the submission of “conflicting expert
`
`views as to claim construction” may create “confusion” on the part of the jury, and may be
`
`reversible error on appeal. CytoLogix Corp. v. Ventana Medical Sys., Inc., 424 F.3d 1168, 1173
`
`2
`
`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 6 of 12 PageID #: 8767
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`
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`(Fed. Cir. 2005).3 The Court should reject Rapid7’s invitation to such error. Because there is no
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`dispute that the Rapid7 experts performed their own assessments of claim scope rather than
`
`relying on the Court’s (e.g., D.I. 220 at 1 (describing how experts purportedly “determine[d] the
`
`scope that a given claim element must necessarily have”)), the Court should preclude them from
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`testifying to the jury about the written description opinions based on those assessments.
`
`B.
`
`That Courts May Consider Differing Claim Constructions When Evaluating
`the Sufficiency of Written Description Does Not Mean Juries May
`
`Much of Rapid7’s brief is devoted to the observation that bench submissions on written
`
`description sometimes link the written description issue to claim construction. (D.I. 220 at 4–7.)
`
`As Finjan’s brief stated, sufficiency of written description is a fact issue dependent in part on a
`
`court’s claim construction. (D.I. 204 at 9 (“A patent may be invalidated on written description
`
`grounds only upon clear and convincing evidence that the full scope of the claims, using the
`
`construction assigned by the court, lacks support in the written description.” (citing Ariad
`
`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1341 (Fed. Cir. 2010) (en banc) (emphasis
`
`added))).)
`
`Rapid7’s citations to Automotive Technologies, Ware, and Rivera, to the extent they are
`
`on point, stand for little more than the general proposition that in the right circumstances, a court
`
`may resolve written description alongside claim construction. None of those cases presents the
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`issue in this motion, which is a party’s proposal to tender unadopted claim constructions directly
`
`to the jury rather than to the court. In Automotive Technologies, the Eastern District of Michigan
`
`granted summary judgment that a claim was not enabled, and the Federal Circuit reviewed on
`
`
`3 Rapid7’s brief does not discuss Markman, Every Penny Counts, or CytoLogix.
`
`3
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 7 of 12 PageID #: 8768
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`
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`appeal.4 501 F.3d at 1276. There was no jury trial, and no proposal to make claim construction
`
`a jury issue. Similarly, Ware was a summary judgment opinion on written description, with no
`
`discussion of whether a jury could be made the arbiter of claim construction. 2011 WL
`
`13322747, at *24 (rejecting contention that there was any genuine dispute of material fact).
`
`Rivera has limited applicability here because it was an appeal from an investigation by
`
`the International Trade Commission (“ITC”), an administrative tribunal in which issues of both
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`fact and law are resolved by the Commission based on findings from an Administrative Law
`
`Judge (“ALJ”). 857 F.3d at 1318–19. ITC investigations have no juries, and their evidentiary
`
`standards (which are established by regulation rather than by the Federal Rules of Evidence) are
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`substantially relaxed. 19 C.F.R. § 210.37. Because ITC ALJs and the Commission itself have
`
`responsibility for resolving both fact and legal issues, the present dispute over the propriety of
`
`Rapid7 presenting claim construction disputes to a jury is not contemplated in Rivera.
`
`Because none of Automotive Technologies, Ware, and Rivera contemplate sending claim
`
`construction disputes to a jury, none apply here, and none supports Rapid7. Certainly none of
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`them make Rapid7’s approach of having experts base opinions on claim constructions not
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`approved by (or submitted to) this Court’s order “permissible,” as Rapid7 contends. (D.I. 220 at
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`4.)
`
`C.
`
`Contrary to Rapid7’s Statement, Verinata Health Does Not Empower Juries
`to Perform an “Inquiry into the Scope of the Invention”
`
`Attempting to establish some foundation for its attempt to present the jury with claim
`
`constructions not adopted by Court, Rapid7’s brief errs when discussing Verinata Health, 2014
`
`U.S. Dist. LEXIS 57519. (See D.I. 220 at 9.) After correctly noting that the sufficiency of
`
`
`4 Enablement and written description are separate issues, though both arise under § 112. Both
`issues require judicial claim construction before summary judgment.
`
`4
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 8 of 12 PageID #: 8769
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`written description is a fact question “that a jury can determine,” id., Rapid7 cites Verinata
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`Health for the proposition that such jury resolution “requires an inquiry into the scope of the
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`invention.” Id. (quoting 2014 U.S. Dist. LEXIS 57519, at *7). Rapid7 goes on to reason, again
`
`per Verinata Health, that evidence bearing on “a jury’s inquiry into the scope of the claim” is
`
`therefore probative under Rule 403. (D.I. 220 at 9.)
`
`Rapid7 is misreading Verinata Health, and its statement of that opinion’s holding is
`
`incorrect. Verinata Health does not state, or even suggest, that juries may evaluate on their own
`
`the scope of patent claims. As already discussed, that is a legal question, exclusively for the
`
`court. Markman, 517 U.S. at 372. Nothing in Verinata Health is contrary.
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`Verinata Health addressed a motion for leave to amend invalidity contentions. 2014 U.S.
`
`Dist. LEXIS, at *1. It did not consider any aspect of jury practice. In deciding to grant the
`
`requested leave, the Northern District of California recited the uncontroversial proposition that
`
`resolving written description and enablement would ultimately require “an inquiry into the scope
`
`of the invention.” Id. at 7. Nowhere did Verinata suggest that a jury would perform that inquiry.
`
`To the contrary, Verinata cited Ariad Pharmaceuticals, which (as discussed above) expressly
`
`held claim construction is an issue for the court. See Ariad Pharms., 598 F.3d at 1341 (“A
`
`patent may be invalidated on written description grounds only upon clear and convincing
`
`evidence that the full scope of the claims, using the construction assigned by the court, lacks
`
`support in the written description.” (emphasis added)). Further, Ariad Pharmaceuticals
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`specifically stated that the written description test contemplates “an objective inquiry into the
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`four corners of the specification”—not infringement contentions. Id. at 1351 (emphasis added).
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`Verinata Health is not contrary.
`
`5
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 9 of 12 PageID #: 8770
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`The Northern District of California nowhere indicated an intent to deviate from the
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`Federal Circuit’s clear instruction that claim construction is an issue for the court not the jury,
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`and Rapid7’s contrary view is baseless. The Court should reject it.
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`D.
`
`The Visteon 2 Special Master Report Does Not Support Rapid7
`
`Rapid7 also errs by suggesting that the Visteon 2 Special Master Report supports its
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`proposal to confuse the jury with expert opinions applying multiple claim constructions. (D.I.
`
`220 at 8.) The Report dealt with a circumstance where, even though trial was approaching, the
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`plaintiff had not submitted its “final” claim construction proposals:
`
`[T]he Court rejected [Visteon’s prior] request for summary
`judgment because there was, as yet, no final construction of the
`terms of the claims of the ’060 patent. According to Garmin, the
`same is still true. . . . Visteon [ ] does not provide a specific
`statement of the claim construction it will be seeking at trial.
`Without such clarification, Garmin is correct—nothing has changed
`and Visteon’s motion in limine still does not contain Visteon’s final
`construction.
`
`Visteon 2 Special Master Report, 2016 U.S. Dist. LEXIS 145816, at *26–27. Based on that
`
`circumstance, the special master declined to exclude Garmin’s § 112 defenses, characterizing the
`
`issue as “premature.” Id. at *27. Visteon 2 Special Master Report does not suggest Garmin
`
`would actually be permitted to present claim construction disputes to the jury rather than the trial
`
`court. The special master’s stated reasoning for recommending denial of Visteon’s motion was
`
`an assumption that the court—not the jury—would resolve claim construction before or during
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`trial, at which point the “theoretical construction suggested by [Garmin’s expert] (based on
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`Visteon’s infringement contentions) [would] become real or vanish.” Id. If it vanished, written
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`description opinions based on the “vanished” construction would be excluded at that time.
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`Otherwise, relief was “premature.” Id.
`
`6
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 10 of 12 PageID #: 8771
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`The situation here is different from Visteon. This Court has construed the claims. The
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`parties served detailed expert reports, and no party—not even Rapid7 in its opposition brief—has
`
`suggested that there is any need for the Court to revisit any aspect of claim construction. Rapid7
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`does not attempt to position this issue as “premature.” Its stated goal is to present its experts’
`
`unendorsed claim constructions directly to the jury, regardless of how Finjan’s experts testify at
`
`trial. (See D.I. 220 at 5 (describing how Rapid7’s experts plan to “state that they do not agree
`
`with Finjan’s interpretation of the scope of the claim elements[.]”).) That approach is improper
`
`and will confuse the jury as to which claim construction the jury is to apply.
`
`E.
`
`That Rapid7’s Experts Did Not State Their Constructions Verbatim is No
`Grounds to Make Claim Construction a Jury Issue
`
`Finally, Rapid7 intermittently suggests that because its experts did not literally state their
`
`constructions, but only stated the reasoning by which they imputed claim interpretation positions
`
`to Finjan, there is no problem here. (D.I. 220 at 3–4.) Again, Rapid7 is incorrect. As Finjan’s
`
`opening brief established, each of Rapid7’s experts testified at deposition that their “principal
`
`framework” for the written description opinions was claim constructions they imputed to Finjan,
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`and not the Court’s constructions. (D.I. 204 at 5–6.) That the experts never actually put these
`
`imputed constructions into words only heightens the general unfairness of Rapid7’s approach,
`
`the prejudice to Finjan, and the unreliability of the experts’ methodology. The entire purpose of
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`pre-trial claim construction is to establish an express record of what the claims mean, so that the
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`parties and the jury can apply those interpretations at trial. The Court entered a claim
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`construction order for this very purpose. Rapid7 elected not to submit to the Court the
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`constructions its experts now apply for purposes of written description. It also elected not to
`
`pursue any modifications to the Markman order as part of pre-trial practice. It is now unfair and
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`improperly prejudicial for Rapid7 to attempt to present claim constructions never approved by
`
`7
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 11 of 12 PageID #: 8772
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`
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`the Court to the jury. Nothing in law or practice permits Rapid7 to ignore the established claim
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`construction process, or to confuse the jury with expert opinions that depart from the Court’s
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`claim constructions. There are, however, at least four reasons in law—Markman, Daubert, Rule
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`403, and § 112 itself—barring this approach by Rapid7.
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`III. CONCLUSION & RELIEF SOUGHT
`
`For the reasons discussed herein and in Finjan’s opening brief, Finjan respectfully asks
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`that the Court grant the present motion, and enter an order precluding Rapid7 from presenting
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`testimony from Drs. Almeroth, McDaniel, and Jha concerning any alleged insufficiency in
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`written description for the patents-in-suit.
`
`
`
`Dated: November 13, 2020
`
`Proshanto Mukherji
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, MA 02210
`(617) 542-5070
`mukherji@fr.com
`
`Lawrence Jarvis
`Fish & Richardson P.C.
`1180 Peachtree Street NE, 21st Floor
`Atlanta, GA 30309
`(404) 892-5005
`jarvis@fr.com
`
`
`
`
`
`
`FISH & RICHARDSON P.C.
`
`
`/s/ Susan E. Morrison
`By:
`Susan E. Morrison (#4690)
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19801
`(302) 652-5070
`morrison@fr.com
`
`Juanita R. Brooks
`Roger Denning
`
`Jason W. Wolff
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`(858) 678-5070
`brooks@fr.com
`denning@fr.com
`wolff@fr.com
`
`ATTORNEYS FOR
`PLAINTIFF FINJAN LLC
`
`8
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`

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`Case 1:18-cv-01519-MN Document 240 Filed 11/20/20 Page 12 of 12 PageID #: 8773
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 13, 2020, I electronically filed with the Clerk of the
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`Court, UNDER SEAL, the foregoing document using CM/ECF, and sent electronic copies of
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`such filing to the following counsel:
`
`Richard L. Renck
`Email: rlrenck@duanemorris.com
`
`L. Norwood Jameson
`Email: wjameson@duanemorris.com
`
`Matthew C. Gaudet
`Email: mcgaudet@duanemorris.com
`
`David C. Dotson
`Email: dcdotson@duanemorris.com
`
`
`
`
`
`
`
`
`
`
`John R. Gibson
`Email: jrgibson@duanemorris.com
`
`Robin McGrath
`Email: rlmgrath@duanemorris.com
`
`Jordan A. Garellek
`Email: jgarellek@duanemorris.com
`
`Jarrad M. Gunther
`Email: jmgunther@duanemorris.com
`
`Jennifer H. Forte
`Email: jhforte@duanemorris.com
`
`/s/ Susan E. Morrison
`Susan E. Morrison
`
`
`
`
`
`