Not Reported in F.Supp.2d, 2013 WL 5302560 (D.Del.)
`(Cite as: 2013 WL 5302560 (D.Del.))
`
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`Only the Westlaw citation is currently available.
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`
`United States District Court, D. Delaware
`Finjan, Inc., Plaintiff,
`v.
`Symantec Corp., Sophos, Inc., and Websense, Inc.,
`Defendants.
`
`
`
`C.A. No. 10–cv–593 (GMS)
`September 19, 2013
`
`
`Philip A. Rovner, Potter Anderson & Corroon, LLP,
`Wilmington, DE, Benu Mehra, Pro Hac Vice, Hannah
`Lee, Pro Hac Vice, Harold M. Storey, Pro Hac Vice,
`James R. Hannah, Pro Hac Vice, Jonathan S. Caplan,
`Pro Hac Vice, Kristopher B. Kastens, Pro Hac Vice,
`Lisa Kobialka, Pro Hac Vice, Michael H. Lee, Pro Hac
`Vice, Paul Andre, Pro Hac Vice, Yuridia Caire, Pro
`Hac Vice, for Plaintiff.
`
`Jack B. Blumenfeld, Maryellen Noreika, Thomas C.
`Grimm, Morris, Nichols, Arsht & Tunnell, Denise
`Seastone Kraft, Aleine Michelle Porterfield, Brian A.
`Biggs, DLA Piper LLP, Wilmington, DE, Jennifer A.
`Kash, Pro Hac Vice, Ann A. Parmley, Pro Hac Vice,
`Melissa W. Puckett, Pro Hac Vice, Ryan W. Cobb,
`Pro Hac Vice, Sean C. Cunningham, Pro Hac Vice, for
`Defendants.
`
`
`MEMORANDUM OPINION
`GREGORY M. SLEET, CHIEF, UNITED STATES
`DISTRICT JUDGE
`I. INTRODUCTION
`*1 In this patent infringement action, plaintiff
`Finjan, Inc. (“Finjan” or “the plaintiff”) alleges that
`the defendants, Symantec Corporation (“Symantec”),
`Sophos, Inc. (“Sophos”), and Websense, Inc. (“Web-
`
`
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`
`sense”) (collectively, “the defendants”) infringe the
`asserted claims of the patents-in-suit.FN1 (D.I. 1.) The
`court held a thirteen-day jury trial in this matter on
`December 3, 2012 through December 19, 2012. (D.I.
`826–839.) At trial, each of the defendants and Finjan
`moved for judgment as a matter of law (“JMOL”) on a
`number of grounds pursuant to Rule 50(a) of the
`Federal Rules of Civil Procedure and the court denied
`these motions.FN2
`
`
`
`
`FN1. The patents-in-suit are U.S. Patent Nos.
`6,480,962 (“the 'SYM>>962 Patent”) and
`6,092,194 (“the
`'194 Patent”). The pa-
`tents-in-suit are owned by Finjan. Finjan as-
`serted claims 1, 5, 6, 12, 15, 33, 37, 38, 45,
`52, and 55 of the '962 Patent and claims 1, 2,
`32, 35, 36, 37, 58, 65, and 66 of the '194
`Patent.
`
`FN2. Specifically, Sophos moved for Judg-
`ment as a Matter of Law (“JMOL”) on var-
`ious grounds on December 11, 2012 (D.I.
`706), accompanied by an Opening Brief in
`Support (D.I. 707). On December 12, 2012,
`Symantec and Websense also filed motions
`for JMOL (D.I. 709; D.I. 711), accompanied
`by Opening Briefs in Support (D.I. 710).
`Finjan responded with Answering Briefs to
`each of these motions on December 17, 2012.
`(D.I. 713; D.I. 714; D.I. 15.) In addition, each
`of the defendants filed motions for JMOL at
`the close of evidence on December 18, 2012.
`(D.I. 724; D.I. 726; D.I. 736.) Likewise,
`Finjan filed JMOL motions against each of
`the defendants on December 19, 2012, sup-
`porting its position on various grounds. (D.I.
`731; D.I. 732; D.I. 733.) Finjan also filed
`motions for JMOL against each of the de-
`fendants at the close of evidence on De-
`cember 20, 2012. (D.I. 740; D.I. 741; D.I.
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`742.) The parties subsequently filed briefs in
`support and opposition to these motions.
`(D.I. 727; D.I. 737; D.I. 738; D.I. 748; D.I.
`749; D.I. 750; D.I. 751; D.I. 760; D.I. 761;
`D.I. 765.) The court denied these motions by
`oral orders as they were raised throughout the
`trial.
`
`
`
`On December 20, 2012, the jury returned a
`unanimous verdict in favor of each of the defendants
`on the issues of infringement with respect to each
`asserted claim of the patents-in-suit. (D.I. 746.) The
`jury further found that the asserted claims of the pa-
`tents-in-suit were invalid due to obviousness and
`anticipation. (Id.) The court entered judgment on the
`verdict on December 21, 2012. (D.I. 747.) Presently
`before the court are Finjan's post-trial motions and
`Websense's Motion for Attorney Fees. Having con-
`sidered the entire record in this case, the substantial
`evidence in the record, the parties' post-trial submis-
`sions, and the applicable law, the court will deny each
`of Finjan's post-trial motions (D.I. 770; D.I. 771; D.I.
`772; D.I. 773) and Websense's attorney fees motion
`(D.I. 762). The court's reasoning follows.
`
`II. BACKGROUND OF THE TECHNOLOGY
`*2 This action
`involves U.S. Patent Nos.
`6,092,194 (“the '194 Patent”) and 6,480,962 (“the '962
`Patent”). Generally speaking, the patents-in-suit relate
`to systems and methods for protecting a computer and
`a network from hostile Downloadables. See generally
`'194 Patent; '962 Patent. The '194 Patent, entitled
`“System and Method for Protecting a Computer and
`Network From Hostile Downloadables,” discloses a
`system comprised of a security policy, an interface for
`receiving a Downloadable, and a comparator, coupled
`to the interface, for applying the security policy to the
`Downloadable to determine if the security policy has
`been violated. See '194 Patent at Abstract. The '962
`Patent, entitled, “System and Method for Protecting a
`Client During Runtime From Hostile Down-
`loadables,” discloses a system that protects clients
`from hostile Downloadables and describes the system
`
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`
`as including security rules defining suspicious actions
`and security policies defining the appropriate respon-
`sive actions to rule violators. The '962 Patent system
`includes an interface for receiving incoming Down-
`loadables and requests made by the Downloadable, as
`well as a comparator coupled to the interface for ex-
`amining the Downloadable, requests made by the
`Downloadable, and runtime events to determine
`whether a security police has been violated. See '962
`Patent at Abstract. The system also includes a re-
`sponse engine coupled to the comparator for per-
`forming a violation-based responsive action. Id.
`
`II. STANDARD OF REVIEW
`Finjan asserts that it is entitled to judgment as a
`matter of law pursuant to Rule 50 of the Federal Rules
`of Civil Procedure and that a new trial is warranted
`under Rule 59 of the Federal Rules of Civil Procedure.
`
`A. Renewed JMOL Motions
`To prevail on a renewed motion for judgment as a
`matter of law following a jury trial and verdict, the
`moving party “must show that the jury's findings,
`presumed or express, are not supported by substantial
`evidence or, if they were, that the legal conclusion(s)
`implied [by] the jury's verdict cannot in law be sup-
`ported by these findings.” Pannu v. Iolab Corp., 155
`F.3d 1344, 1348 (Fed. Cir. 1998) (quoting Per-
`kin–Elmer Corp. v. Computervision Corp., 732 F.2d
`888, 893 (Fed. Cir. 1984)). “Substantial evidence” is
`defined as “such relevant evidence from the record
`taken as a whole as might be accepted by a reasonable
`mind as adequate to support the finding under re-
`view.” Perkin–Elmer Corp., 732 F.2d at 893.
`
`
`The court should only grant the motion “if,
`viewing the evidence in the light most favorable to the
`nonmovant and giving it the advantage of every fair
`and reasonable inference, there is insufficient evi-
`dence from which a jury could reasonably find liabil-
`ity.” Lightnin Lube, Inc. v. Witco Corp., 4 F.3d 1153,
`1166 (3d Cir. 1993) (citing Wittekamp v. Gulf Western
`Inc., 991 F.2d 1137, 1141 (3d Cir. 1993)). “In deter-
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`mining whether the evidence is sufficient to sustain
`liability, the court may not weigh the evidence, de-
`termine the credibility of witnesses, or substitute its
`version of the facts for the jury's version.” Lightning
`Lube, 4 F.3d at 1166 (citing Fineman v. Armstrong
`World Indus., Inc., 980 F.2d 171, 190 (3d Cir. 1992)).
`Rather, the court must resolve all conflicts of evidence
`in favor of the non-movant. Williamson v. Consol.
`Rail Corp., 926 F.2d 1344, 1348 (3d Cir. 1991); Per-
`kin–Elmer Corp., 732 F.2d at 893.
`
`
`“The question is not whether there is literally no
`evidence supporting the party against whom the mo-
`tion is directed but whether there is evidence upon
`which the jury could properly find a verdict for that
`party.” Lightening Lube, 4 F.3d at 1166 (quoting
`Patzig v. O'Neil, 577 F.2d 841, 846 (3d Cir. 1978)).
`Thus, a court should only grant JMOL if “the record is
`critically deficient of the minimum quantum of evi-
`dence.” Gomez v. Allegheny Health Servs., Inc., 71
`F.3d 1079, 1083 (3d Cir. 1995). Importantly, in con-
`ducting the JMOL analysis, “the court may not de-
`termine the credibility of the witnesses nor ‘substitute
`its choice for that of the jury between conflicting el-
`ements of the evidence.’ ” Syngenta Seeds, Inc. v.
`Monsanto Co., 409 F.Supp.2d 536, 539 (D. Del. 2005)
`(quoting Perkin–Elmer Corp., 732 F.2d at 893).
`
`B. New Trial
`Pursuant to Federal Rule of Civil Procedure 59, a
`court may grant a new trial “for any of the reasons for
`which a new trial has heretofore been granted in an
`action at law in federal court.” Fed. R. Civ. P.
`59(a)(1)(A). The decision to grant or deny a new trial
`is within the sound discretion of the trial court. See
`Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36
`(1980). In making this determination, the trial judge
`should consider the overall setting of the trial, the
`character of the evidence, and the complexity or sim-
`plicity of the legal principles which the jury had to
`apply to the facts. Lind v. Schenley Indus., Inc., 278
`F.2d 79, 89 (3d Cir. 1960). Unlike the standard for
`determining judgment as a matter of law, the court
`
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`
`need not view the evidence in the light most favorable
`to the verdict winner. Allied Chem. Corp., 449 U.S. at
`36. A court should grant a new trial in a jury case,
`however, only if “the verdict was against the weight of
`the evidence ... [and] a miscarriage of justice would
`result if the verdict were to stand.” Williamson v.
`Conrail, 926 F.2d 1344, 1352 (3d Cir. 1991).
`
`C. Attorneys' Fees
`*3 In deciding whether to award attorneys' fees,
`the court must undertake a two-step inquiry. See In-
`terspiro USA, Inc. v. Figgie Intern. Inc., 18 F.3d 927,
`933 (Fed. Cir. 1994). First, the court “must determine
`whether there is clear and convincing evidence that the
`case is ‘exceptional.’ ” Id. (quotation omitted). Sec-
`ond, the court must determine whether “an award of
`attorney fees to the prevailing party is warranted.” Id.
`Exceptional cases include: “inequitable conduct be-
`fore the PTO; litigation misconduct; vexatious, un-
`justified, or otherwise bad faith litigation, frivolous
`suit or willful infringement.” Epcon Gas Sys., Inc. v.
`Bauer Compressors, Inc., 279 F.3d 1022, 1034 (Fed.
`Cir. 2002) (citation omitted).
`
`III. DISCUSSION
`
`A. Validity
`
`
`Finjan first moves for judgment as a matter of law
`or, alternatively, a new trial, on validity. The court will
`address Finjan's motions for JMOL against each of the
`defendants in this section.FN3 With regard to the de-
`fendants' obviousness arguments, under 35 U.S.C. §
`103, a patent may not be obtained on subject matter
`that “would have been obvious at the time the inven-
`tion was made to a person having ordinary skill in the
`art.” 35 U.S.C. § 103. “Obviousness is a question of
`law based on underlying findings of fact.” In re Kubin,
`561 F.3d 1351, 1355 (Fed. Cir. 2009). Specifically,
`the trier of fact must consider: (1) the scope and con-
`tent of the prior art; (2) the differences between the
`claimed subject matter and the prior art; (3) the level
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`of ordinary skill in the art; and (4) secondary consid-
`erations of non-obviousness such as commercial
`success, long felt but unsolved need, failure of others,
`and acquiescence of others in the industry that the
`patent is valid, and unexpected results. See Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`FN3. The court discusses Finjan's Motion for
`a New Trial infra. See Section III.D.
`
`
`
`To determine whether an invention is patentable
`over the prior art, “a court must ask whether the im-
`provement is more than the predictable use of prior
`elements according to their established functions.”
`KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417, 419
`(2007). In this assessment, “the invention must be
`considered as a whole without the benefit of hindsight,
`and the claims must be considered in their entirety.”
`Rockwell Int'l Corp. v. United States, 147 F.3d 1358,
`1364 (Fed. Cir. 1998) (citing W.L. Gore & Assocs. v.
`Garlock, Inc., 721 F.2d 1540, 1551 (Fed. Cir. 1983);
`Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d
`1563, 1567 (Fed. Cir. 1983)). Invalidity by “anticipa-
`tion requires that the four corners of a single[ ] prior
`art document describe every element of the claimed
`invention, either expressly or impliedly, such that a
`person of ordinary skill in the art could practice the
`invention without undue experimentation.” Advanced
`Display Sys., Inc. v. Kent State Univ., 212 F.3d 1271,
`1282 (Fed. Cir. 2000).
`
`
`When challenging the validity of a patent for ob-
`viousness based on a combination of prior art refer-
`ences, the challenger bears the burden of proving, by
`clear and convincing evidence, that one of ordinary
`skill in the art would have had reason to attempt to
`make the combination and would have had a reason-
`able expectation of success in doing so. PharmaStem
`Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342,
`1360 (Fed. Cir. 2007). A defendant must prove inva-
`lidity by clear and convincing evidence and the ulti-
`mate burden of persuasion never shifts to the plaintiff.
`See Pfizer, Inc. v. Teva Pharm. U.S.A., Inc., 882
`
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`F.Supp.2d 643, 700 (D. Del. 2012).
`
`1. Obviousness
`*4 As noted, Finjan has filed motions for JMOL
`against each defendant and has submitted separate
`briefs in support. Because there is overlap in the ob-
`viousness arguments advanced at trial and discussed
`in these briefs by each defendant and Finjan, the court
`combines its discussion here. Where a prior art ref-
`erence was argued by only one defendant, the court
`makes note of this distinction.
`
`
`At trial, the defendants presented prior art refer-
`ences and, in light of these references, the jury con-
`cluded that the '194 and '962 Patents are invalid. In its
`motions for JMOL as to obviousness, Finjan asserts
`that the jury verdict should be set aside because: (1)
`the ThunderByte reference is not prior art to the '194
`Patent and, even if it were, the asserted claims of the
`'194 Patent are valid over ThunderByte and all other
`references Symantec presented; and (2) Norton Anti-
`virus 95 (“NAV 95”) is not prior art to the '962 Patent
`and, even if it were, the asserted claims of the '962
`Patent are valid over NAV 95 and all other references
`Symantec presented. (D.I. 791 at 1 (citing D.I. 732 at
`2–5, 6–10; D.I. 742 at 2–4, 4–7).) The court addresses
`each argument separately below.
`
`a. The '194 Patent: Prior Art References Thunder-
`Byte 7.0 & MIMESweeper
`At trial, Symantec argued that the '194 Patent is
`invalid as obvious in light of prior art references
`ThunderByte 7.0 and MIMESweeper. Specifically,
`Symantec asserted that MIMESweeper is a gateway
`product that was designed for use with ThunderByte
`and, when combined as described in the MIME-
`Sweeper literature, the prior art technology would
`scan email attachments at the gateway. (D.I. 808 at 5
`(citing Tr. at 2141:22–2143:8, 2147:2–2148:23).)
`During the scanning process, according to the de-
`fendants, ThunderByte would extract a list of suspi-
`cious computer operations from a Downloadable and
`compare that list to a security policy. (Id. (citing Tr. at
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`2149:6–2152:15).) If the security policy was violated,
`ThunderByte could then delete the Downloadable,
`preventing execution at the client. (Id. at 5–6 (citing
`Tr. at 2152:16–2153:6).) Symantec asserts that the
`jury verdict of invalidity based on ThunderByte and
`MIMESweeper should not be overturned because: (1)
`there was substantial evidence that ThunderByte 7.0
`qualifies as prior art; (2) the defendants were not re-
`quired
`to demonstrate
`that ThunrderByte and
`MIMESweeper were enabled; (3) a person of ordinary
`skill in the art could have combined ThunderByte and
`MIMESweeper;
`and
`(4)
`the
`Thunder-
`Byte/MIMESweeper combination disclosed the dis-
`puted elements of the asserted claims of the '194 Pa-
`tent.
`
`
`Conversely, Finjan asserts that the ThunderByte
`reference is not prior art to the '194 Patent and, even if
`it were, the asserted claims of the '194 Patent are valid
`over ThunderByte and all other references presented
`by Symantec and Websense. (D.I. 791 at 1 (citing D.I.
`732 at 2–5; see also D.I. 742 at 2–4).) Specifically,
`Finjan asserts that Symantec and Websense's obvi-
`ousness argument are fundamentally flawed, necessi-
`tating JMOL, because the defendants failed to prove
`that: (1) ThunderByte 7.0 was available in the United
`States before the '194 Patent's November 8, 1996
`priority date; (2) the source code and manuals they
`relied upon were specifically for ThunderByte 7.0; (3)
`the ThunderByte and MIMESweeper manuals relied
`upon were enabled; (4) a person of ordinary skill in the
`art could have combined ThunderByte and MIME-
`Sweeper, let alone would have been motivated to do
`so; and (5) ThunderByte 7.0 and MIMESweeper dis-
`closed the limitations of the asserted claims. (Id. at 3.)
`
`
`i. ThunderBYTE 7.0's Availability in the United
`States
`*5 Finjan argues that Symantec has failed to sat-
`isfy its burden of proving by clear and convincing
`evidence that ThunderBYTE 7.0 was available in the
`United States before November 8, 1996. (D.I. 791 at
`3) Specifically, Finjan asserts that the testimony of Dr.
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`Spafford, Symantec's validity expert, was insufficient
`to demonstrate the prior art's availability and that,
`because Symantec's only witness who could establish
`availability was precluded from testifying as a sanc-
`tion for improper assertions of privilege during his
`depositions, Symantec could not make this show-
`ing.FN4(Id. at 3–4 (citing Tr. at 2054:5–8).) With re-
`gard to Dr. Spafford, Finjan notes that he testified that
`a British Virus Bulletin contained a review of Thun-
`derByte. Finjan maintains that this testimony is in-
`sufficient because the British article failed to: disclose
`when, if ever, ThunderByte, the product of a Nether-
`lands company, was commercially available in the
`United States; demonstrate that the review was of a
`commercial version of ThunderByte; prove that
`ThunderByte, if available at all, was available outside
`of the Netherlands or Britain; and demonstrate that the
`version reviewed can prove availability, particularly
`where the article noted that the review was limited to a
`“demonstration version” and that there was “no serial
`number visible.” (Id. at 4 (citing DX 4708–21; DX
`4708–23).)
`
`
`FN4. Finjan states that Symantec's counsel
`acknowledged to the court on the record that
`it could not prove the availability of Thun-
`derByte 7.0 as prior art without Dr. Slade's
`testimony. Specifically, Finjan notes that
`Symantec's counsel stated, in response to the
`court's question as to whether Symantec has
`“another way to prove what you are at-
`tempting to prove,” “No, Your Honor.” (D.I.
`791 at 4 (citing Tr. at 2051:10–14).)
`
`
`
`Finjan further notes that it objected to Dr. Spaf-
`ford's testimony on ThunderByte as lacking founda-
`tion, but that the court permitted him to testify so long
`as Symantec's counsel would not ask him to opine on
`the availability of ThunderByte in the United States.
`(Id. (citing Tr. at 2137:13–2140:10).) While Syman-
`tec's counsel did not question Dr. Spafford on this
`issue, he did testify during his direct examination and
`without provocation, that “[t]he ThunderByte program
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`is an antivirus program that was available in early
`1996.” (Id. at 4–5 (citing Tr. at 2140:19–20).) Finjan
`details that the court denied its objection without
`prejudice and that it raises the objection again here
`because that testimony was: (1) outside the scope of
`the agreement reached between the court and counsel;
`(2) entirely lacking in foundation due to the preclusion
`of Mr. Slade's testimony and Dr. Spafford's own lack
`of personal knowledge; and (3) outside the scope of
`Dr. Spafford's expert report.FN5 (Id. at 5 (citing Tr.
`2139:5–2140:7); Hilgraeve, Inc. v. Symantec Corp.,
`271 F.Supp.2d 964, 973–74 (E.D. Mich. 2003)).)
`Moreover, Finjan contends that Symantec cannot rely
`on the copyright notice in the ThunderByte manual to
`establish availability in the United States, because: it
`is inadmissible hearsay; shows only that ThunderByte
`was available in the Netherlands; and this notice fails
`as a matter of law to demonstrate clearly and con-
`vincingly that the product was known or used by oth-
`ers prior to the critical date. (Id. (citing Hilgraeve, 271
`F.Supp.2d at 975; DJX–371–2).)
`
`
`FN5. With regard to Finjan's request to strike
`Dr. Spafford's statement, the court agrees
`with Symantec that Finjan has suffered no
`prejudice. Specifically, following a sidebar in
`which the court decided that Symantec could
`not elicit testimony from Dr. Spafford re-
`garding whether he understood ThunderByte
`to be publicly available in the United States,
`Dr. Spafford testified, without provocation,
`that ThunderBYTE 7.0 was, in fact, publicly
`available. See Tr. at 2140:15–23. Dr. Spaf-
`ford was not privy to the court's instruction to
`counsel at sidebar. Moreover, Symantec
`counsel indicated at sidebar that, should Dr.
`Spafford make such a statement as to Thun-
`derByte 7.0's availability, he would interrupt
`the testimony. Indeed, immediately after Dr.
`Spafford's comment on availability, Syman-
`tec's counsel instructed him that “[w]e don't
`need to talk about availability issues.” See id.
`at 2140:16–24. Further, Symantec did not
`
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`
`rely on Dr. Spafford's statement during
`closing arguments as proof that ThunderByte
`7.0 was available. Instead, and as Symantec's
`counsel indicated he would do at sidebar, the
`questioning of Dr. Spafford was limited to
`eliciting certain facts, such as the Virus
`Bulletin, the copyright dates, and the dates
`modified of the software he examined. See
`id. at 2140:15–2141:2, 2144:9–2146:13,
`2205:3–6. In view of the foregoing, the court
`declines to grant Finjan's request and does
`not strike the testimony in question.
`
`
`
`*6 Finjan further argues that the “date modified”
`information contained in the source code and on which
`Dr. Spafford relied is irrelevant because this evidence
`demonstrates only that the source code “was being
`edited on that date, but does not establish when, if
`ever, it became available in the United States.” (Id. at
`6.) In fact, Finjan notes that other files on the Thun-
`derByte CD “had purported modified dates as late as
`October 16, 1996” and, even assuming that Thun-
`derByte files were still being modified on that date, “it
`is highly unlikely they were then made available in the
`United States less than a month later.” (Id.) Finally,
`Finjan contends that Symantec has failed to provide
`foundational evidence linking the source code and
`manuals on which it relied to the version of Thun-
`derByte asserted here—ThunderByte 7.0. Specifical-
`ly, Finjan asserts that the manual about which Dr.
`Spafford testified did not identify the version of
`ThunderByte it corresponds to and, without this evi-
`dence, cannot establish relevancy. (Id. at 6–7.)
`
`
`In light of the evidence presented at trial, how-
`ever, the court concludes that Symantec introduced
`substantial evidence sufficient to support a jury ver-
`dict of invalidity as to the '194 Patent. The court re-
`views each piece of evidence below. Dr. Spafford,
`Symantec's invalidity expert, testified at length about
`his review and analysis of the ThunderByte 7.0 soft-
`ware product, which was produced in native form as
`exhibit DJX–368.FN6
`(Id. at 2
`(citing Tr. at
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`Not Reported in F.Supp.2d, 2013 WL 5302560 (D.Del.)
`(Cite as: 2013 WL 5302560 (D.Del.))
`2140:16–2141:5, 2144:9–24; DJX–368).) The direc-
`tory containing this software product was titled
`“TBAV 7.00” and, as Dr. Spafford testified, the date
`modified for the files he used was February 8, 1996.
`(Id. at 3 (citing Tr. at 2144:9–24, 2089:9–12;
`SYMDX9–54).) Dr. Spafford also relied on a user
`manual contained in DJX–368, which bears a copy-
`right date of 1996. (Id. (citing DJX–371–2; Tr. at
`2146:20–22).)
`
`
`FN6. Dr. Spafford described DJX–368 in his
`direct examination testimony:
`
`Q: When you loaded those files, did the
`files have any information concerning
`when they were last modified?
`
`A: The information that I had in the di-
`rectory is as shown in this top window, and
`showed February 8, 1996.
`
`Q: So DJX–368, can you tell us what that
`is?
`
`A: That's a listing of the contents on the
`CD, the files that were on it—not the
`complete list, but the first few showing the
`date.
`
`Q: Now, if we looked at DJX–368 in its
`entirety, would we see the dates for the rest
`of the files?
`
`A: Yes.
`
`Q: And do you recall what those dates
`were?
`
`A: They were the same.
`
`Id. at 2144:9–24.
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`In addition, Symantec asserts and the court agrees
`that, in consideration of the following evidence, the
`jury could have reasonably found that ThunderByte
`7.0 is prior art under 35 U.S.C. § 102(a)-(b) because it
`was known, used, sold, and on sale in the United
`States before November 8, 1996. First, Symantec
`introduced a press release from February 9, 1996
`(DX–4348), which was released by ThunderBYTE
`and CompuServe and announced that ThunderBYTE
`7.0 “will be released on CompuServe immediately,”
`and that “users around-the-world can download a free,
`30–day, fully-functional trial version of TBAV from
`CompuServe on the Windows 95 Support Menu.” (Id.
`(citing DX–4348–1).) The press release also quotes an
`employee from CompuServe located in Columbus,
`Ohio, who discusses the benefits of ThunderByte 7.0,
`and the Director of Technical Support for Thunder-
`Byte in North America. (Id. (citing DX–4348–1–2).)
`Moreover, the date of the press release corresponds to
`the day after the date modified of the ThunderByte 7.0
`software that Dr. Spafford tested and relied upon in
`assessing invalidity. The press release was loaded into
`the Lexis–Nexis database on February 10, 1996. (Id.
`(citing Tr. at 2144:9–24; DX–4348–3).)
`
`
`Finjan states that it objected to the introduction of
`this evidence when Symantec presented it to Dr.
`Vigna during Finjan's rebuttal validity case. (D.I. 791
`at 4 n.4.) Finjan did object when Symantec asked Dr.
`Vigna about the document as being “[o]utside the
`scope” of the direct examination and the court over-
`ruled the objection. Tr. at 3132:9–13. Finjan renews
`the objection at this stage, and argues that the evidence
`should not be considered for JMOL purposes because
`it was introduced after the close of Symantec's case.
`The court disagrees. “In entertaining a motion for
`judgment as a matter of law, the court should review
`all of the evidence in the record[,]” which would in-
`clude DX–4348. See Reeves v. Sanderson Plumbing
`Prods., Inc., 530 U.S. 133, 150 (2000). The court also
`rejects Finjan's contention that Symantec did not au-
`thenticate this document because, as noted, the press
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`Not Reported in F.Supp.2d, 2013 WL 5302560 (D.Del.)
`(Cite as: 2013 WL 5302560 (D.Del.))
`release was included in the Lexis–Nexis database. See
`Fed. R. Evid. 902(6) (stating that documents such as
`press releases from sources whose accuracy cannot
`reasonably be questioned are self-authenticating); see
`also In re UnumProvident Corp. Sec. Litig., 396
`F.Supp.2d 858, 876–77 (E.D. Tenn. 2005). Symantec
`also asserts and the court agrees that Finjan waived
`this argument because it did not object to DX–4348 on
`hearsay or authentication grounds. (D.I. 810 at 4
`(citing Tr. at 3132:9–14).) Moreover, while Finjan
`asserts that the press release does not prove availabil-
`ity, the release notes that ThunderByte 7.0 “will be
`released on CompuServe immediately.” (Id. (citing
`DX–4348–1).)
`
`
`*7 Second, Symantec also presented a 1996 user
`manual for ThunderByte 7.0 (DJX–371), which notes
`that the product's developer (ESaSS) maintained
`“ThunderBYTE support Bulletin Board Systems”
`containing “updates” and “complete releases” for the
`product. (Id. (citing DJX–371–26, –27, –89).) Though
`Finjan asserts that this manual shows only that
`ThunderByte was available in the Netherlands, Sy-
`mantec argued that the manual contradicts this asser-
`tion because it describes: (1) online “ThunderB[yte]
`support Bulletin Board Systems” that contained “up-
`dates” and “complete releases” for the product; and (2)
`a ThunderByte “U.S. support site.” (Id. at 5 (citing
`DJX–371–26, –27, –89).) Thus, Symantec maintains,
`because of availability online, this version of Thun-
`derByte 7.0 was accessible to people in the United
`States who had modems and could access online bul-
`letin board systems, including users of online services
`such as CompuServe. In addition, the 1996 user
`manual expressly states that in order “to maintain the
`highest reliability' of these bulletin boards, “the Dutch
`and U.S. ThunderB[yte] support sites issue regular
`beta releases, also containing only the files that have
`changed.” (Id. at 3 (citing DJX–371–27).)
`
`
`In response to Finjan's contention that the 1996
`copyright date in the user manual is inadmissible
`hearsay, Symantec argues that here, unlike in the
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`Hilgraeve case on which Finjan relies, it introduced
`additional evidence regarding the availability of
`ThunderByte 7.0, including the February 1996 press
`release, the May 1996 Virus Bulletin, discussed be-
`low, and the availability of prior versions to persons
`within the United States. In addition, Dr. Spafford
`expressly linked the user manual to the ThunderByte
`7.0 software on which he relied. (Id. at 5 (citing Tr. at
`2140:25–2141:5, 2146:20–22)); see also Rackable
`Sys., Inc. v. Super Micro Computer, Inc., 2007 WL
`1223807, at *23 (N.D. Cal. 2007) (distinguishing the
`Hilgraeve case to cases where other evidence exists
`besides the copyright date for demonstrating public
`availability).
`
`
`Third, Symantec introduced a May 1996 Virus
`Bulletin (DX–4708), which contains a review for
`ThunderByte 7.0, the same version Dr. Spafford used
`in conducting his analysis. (Id. (citing Tr. at
`2144:25–2146:22; DX–4708–23).) In fact, Dr. Spaf-
`ford testified that he was on the editorial board for the
`Virus Bulletin at that time and received complimen-
`tary copies of the publication. (Id. (citing Tr. at
`2411:25–2145:25).) In response to Finjan's assertion
`that the Bulletin did not demonstrate that ThunderByte
`7.0 was available in the United States or even com-
`mercially available, Symantec notes that the jury was
`presented with evidence that the Bulletin review pro-
`vided pricing information for the product and that it
`was sent to individuals in the United States. (Id. at 6
`(citing DX–4708–24).)
`
`
`Fourth, Symantec engineer, Cary Nachenberg,
`also testified that he tested ThunderByte version 6.34
`in connection with his master's thesis at UCLA. (Id.
`(citing Tr. at 1832:16–1833:2; DX–4011).) Mr. Na-
`chenberg testified that “ThunderByte was a competing
`antivirus product with Symantec's products.” (Id.
`(citing Tr. at 1832:5–1832:8).) Mr. Nachenberg also
`explained that, during the prosecution of a patent that
`he obtained for work related to his thesis, the 1995
`user manual for ThunderByte was cited to the PTO,
`and the tests he performed on version 6.34 of Thun-
`
`© 2015 Thomson Reuters. No Claim to Orig. US