`Alden KW Lee (SBN 257973)
`Jeffrey D. Chen (SBN 267837)
`Joseph J. Fraresso (SBN 289228)
`BARTKO, ZANKEL, BUNZEL, & MILLER
`One Embarcadero Center
`San Francisco, CA 94111
`T: 415-956-1900
`Email: bsmith@bzbm.com
`Email: alee@bzbm.com
`Email: jchen@bzbm.com
`Email: jfraresso@bzbm.com
`
`Jonathan T. Suder (Pro Hac Vice)
`Corby R. Vowell (Pro Hac Vice)
`Dave R. Gunter (Pro Hac Vice)
`FRIEDMAN, SUDER & COOKE
`604 East 4th Street, Suite 200
`Fort Worth, TX 76102
`T: 817-334-0400
`F: 817-334-0401
`jts@fsclaw.com
`vowell@fsclaw.com
`gunter@fsclaw.com
`
`Michael F. Heim (Pro Hac Vice)
`R. Allan Bullwinkel (Pro Hac Vice)
`Christopher M. First (Pro Hac Vice)
`HEIM, PAYNE & CHORUSH, LLP
`1111 Bagby Street, Suite 2100
`Houston, Texas 77002
`T: 713-221-2000
`F: 713-221-2021
`mheim@hpcllp.com
`abullwinkel@hpcllp.com
`cfirst@hpcllp.com
`
`Counsel for Defendant and Counterclaimant,
`Packet Intelligence LLC
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA, SAN FRANCISCO DIVISION
`
`PALO ALTO NETWORKS, INC.,
`
`Case No. 3:19-cv-02471-WHO
`
`Plaintiff,
`
`v.
`
`PACKET INTELLIGENCE LLC,
`
`Defendant.
`
`FIRST AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS TO
`PALO ALTO NETWORKS, INC.
`
`Case No. 3:19-cv-02471-WHO
`2697.000/1432433 1
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`Juniper Exhibit 1086
`Juniper Networks, Inc. v. Packet Intelligence LLC
`Page 00001
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`
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`PACKET INTELLIGENCE LLC (“Packet Intelligence”) hereby provides its first amended
`
`disclosure of asserted claims and infringement contentions. Packet Intelligence expressly reserves
`
`the right to supplement its contentions based on additional information obtained in discovery and/or
`
`the Court’s claim construction.
`
`1.
`
`3-1 Disclosure of Asserted Claims and Infringement Contentions
`
`(a)
`
`Each claim of each patent in suit that is allegedly infringed by each opposing
`party, including for each claim the applicable statutory subsections of 35 U.S.C.
`§271 asserted;
`
`
`
`Based on presently available information, Packet Intelligence contends that PAN directly
`
`infringes under 35 U.S.C. §271(a) at least the following claims:
`
`• Claims 1 and 2 of U.S. Patent No. 6,651,099;
`
`• Claims 10, 12, 16, and 17 of U.S. Patent No. 6,665,725;
`
`• Claims 1, 2, 3, 7, 16, and 18 of U.S. Patent No. 6,771,646;
`
`• Claims 1, 2, 5, 10, 14, and 15 of U.S. Patent No. 6,839,751;
`
`• Claims 1, 2, 13, 14, 15, 16, 17, 19, 20, 33, 34, 42, 44, 48, and 49 of U.S. Patent No.
`
`6,954,789;
`
`Based on presently available information, Packet Intelligence contends that PAN induces
`
`and/or has induced its customers to directly infringe 35 U.S.C. §271(b) at least the following claims:
`
`• Claims 1 and 2 of U.S. Patent No. 6,651,099;
`
`• Claims 10, 12, 16, and 17 of U.S. Patent No. 6,665,725;
`
`• Claims 1, 2, 3, 7, 16, and 18 of U.S. Patent No. 6,771,646;
`
`• Claims 1, 2, 5, 10, 14, and 15 of U.S. Patent No. 6,839,751;
`
`• Claims 1, 2, 13, 14, 15, 16, 17, 19, 20, 33, 34, 42, 44, 48, and 49 of U.S. Patent No.
`
`6,954,789;
`
`2697.000/1432433 1
`
`Case No. 3:19-cv-02471-WHO
`2
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`
`
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`Page 00002
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`(b)
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`Separately for each asserted claim, each accused apparatus, product, device,
`process, method, act, or other instrumentality (“Accused Instrumentality”) of
`each opposing party of which the party is aware. This identification shall be as
`specific as possible. Each product, device, and apparatus shall be identified by
`name or model number, if known. Each method or process shall be identified
`by name, if known, or by any product, device, or apparatus which, when used,
`allegedly results in the practice of the claimed method or process;
`
`Based on presently available information, Packet Intelligence accuses the following products
`
`6
`
`of infringing the Asserted Claims listed in section 3-1(a) above:
`
`7
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`8
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`9
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`The “Accused Products” include all PAN products, such as firewall products, that include
`
`the App-ID feature, as well as any other PAN products with the same or similar functionality.
`
`These products include, but are not limited to: PA-Series Firewall products (PA-200, PA-220, PA-
`
`10
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`220R, PA-500, PA-820, PA-850, PA-2020, PA-2050, PA-3020, PA-3050, PA-3060, PA-3220,
`
`11
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`PA-3250, PA-3260, PA-4020, PA-4050, PA-4060, PA-5020, PA-5050, PA-5060, PA-5220, PA-
`
`12
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`5250, PA-5260, PA-5280, PA-7050, and PA-7080); VM-Series Firewall products (VM-50, VM-
`
`13
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`100, VM-200, VM-300, VM-500, VM-700, VM-1000-HV, and VM-1000-NSX) and K2-Series
`
`14
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`Firewall Products, and any other PAN products with similar packet-based traffic classification and
`
`15
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`processing technology or other products classifying and relating packet-based traffic flows with
`
`16
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`each other, including using information from one or more of layers 5-7 (session, presentation,
`
`17
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`and/or application layers) of the OSI model to do so.
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`19
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`20
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`21
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`(c)
`
`A chart identifying specifically where and how each limitation of each asserted
`claim is found within each Accused Instrumentality, including for each
`limitation that such party contends is governed by 35 U.S.C. § 112(6), the
`identity of the structure(s), act(s), or material(s) in the Accused Instrumentality
`that performs the claimed function.
`
`The Accused Products practice the Asserted Claims as shown in the claim charts attached
`
`22
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`hereto as Exhibits A-O. Any citations to publicly available documentation in the attached claim
`
`23
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`charts are exemplary and not exhaustive, as are the examples provided of the ways in which the
`
`24
`
`Accused Products satisfy the elements of each of the Asserted Claims. Moreover, any and all
`
`25
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`citations or references to publicly available documentation should be understood to encompass any
`
`26
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`and all prior versions that incorporate the same or similar functionality, as well as any similar or
`
`27
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`derivative products which Packet Intelligence has been unable to discover from publicly available
`
`28
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`information to this point.
`
`
`
`2697.000/1432433 1
`
`Case No. 3:19-cv-02471-WHO
`3
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`
`
`
`Page 00003
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`(d)
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`For each claim which is alleged to have been indirectly infringed, an
`identification of any direct infringement and a description of the acts of the
`alleged indirect infringer that contribute to or are inducing that direct
`infringement. Insofar as alleged direct infringement is based on joint acts of
`multiple parties, the role of each such party in the direct infringement must be
`described.
`
`Packet Intelligence contends that PAN has induced infringement of each of the Asserted
`
`Claims by instructing, causing, urging, and/or encouraging its customers to make, use, sell, offer for
`
`sale and/or import the Accused Products. For example, PAN’s customers of the Accused Products
`
`in the United States include at least:
`
`Ada County, Idaho.
`
`See: https://www.paloaltonetworks.com/customers/ada-county
`
`Fisher-Titus Medical Center.
`
`See: https://www.paloaltonetworks.com/customers/fisher-titus-medical-center
`
`See also:
`
`https://www.paloaltonetworks.com/customers
`
`https://www.paloaltonetworks.com/customers/customer-successes
`
`PAN has induced infringement by acts including but not limited to (1) selling such products
`
`including features that—when used or resold—infringe, either literally or under the doctrine of
`
`equivalents, the Patents-in-Suit; (2) marketing the infringing capabilities of such products; and (3)
`
`providing instructions, technical support, and other support and encouragement for the use of such
`
`products.
`
`PAN provides documentation to its customers describing how to install, implement, and use
`
`the PAN-OS operating system and App-ID feature in an infringing manner on the Accused products
`
`which is specific evidence of PAN’s intent to encourage infringement of the Patents-in-Suit. For
`
`example, PAN provides the following documents: PAN-OS New Features Guide, PAN-OS
`
`Administrator’s Guide, PAN-OS Release Notes, PAN-OS Web Interface Reference, and the PAN-
`
`OS CLI Quick Start.
`
`See: https://docs.paloaltonetworks.com/pan-os.html
`
`See also the following documents PAN provides to its customers describing the
`
`2697.000/1432433 1
`
`Case No. 3:19-cv-02471-WHO
`4
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`
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`Page 00004
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`1
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`implementation of its App-ID feature and how it is to be used in a manner that would infringe the
`
`2
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`Patents-in-Suit: PAN-OS Administrator’s Guide, version 8.0, at pgs. 533-554; and App-ID
`
`3
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`Technology Brief. See:
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`4
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`5
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`6
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`7
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`https://docs.paloaltonetworks.com/pan-os/8-0/pan-os-admin
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`and
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`https://media.paloaltonetworks.com/documents/techbrief-app-id.pdf
`
`In addition, PAN provides technical support for the Accused Products that further instructs
`
`8
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`customers to use the Accused Products and the App-ID feature in an infringing manner. See PAN
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`9
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`support documentation at:
`
`10
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`https://support.paloaltonetworks.com/search#q=app-
`
`11
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`id&firstQueryCause=omniboxFromLink&firstQueryMeta={%22partialQueries%22:%22a%3Bap
`
`12
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`%3Bapp%22%20,%20%22suggestionRanking%22:4%20,%20%22suggestions%22:%22globalpro
`
`13
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`tect%20app%20for%20linux%3Bapplication%20incomplete%3Bapplication%20override%3Bapp
`
`14
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`lication%20dependency%20warning%3Bapp-
`
`15
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`id%22%20,%20%22partialQuery%22:%22app%22%20,%20%22JSUIVersion%22:%222.3679.4
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`16
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`%3B2.3679.4%22}
`
`17
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`PAN has had knowledge of the Patents-in-Suit and Packet Intelligence’s infringement
`
`18
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`allegations related to the accused products since at least as early as January 18, 2019. As of the time
`
`19
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`PAN first had notice of the Packet Intelligence’s infringement allegations, PAN has continued with
`
`20
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`its infringement despite an objectively high likelihood that its actions constitute infringement and
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`21
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`PAN’s subjective knowledge and willful blindness of this obvious risk.
`
`22
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`23
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`24
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`(e) Whether each limitation of each asserted claim is alleged to be literally present
`or present under the doctrine of equivalents in the Accused Instrumentality;
`
`At this time, and except as otherwise expressly noted in the claim chart, Packet Intelligence
`
`25
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`contends and reasonably believes that all limitations of the Asserted Claims are present literally. To
`
`26
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`the extent that any specific limitation of the Asserted Claims is found to not be present literally, then
`
`27
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`Packet Intelligence contends that, if there are any differences between the claim elements and the
`
`28
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`Accused Products, the charts attached as Exhibits A-O identify illustrative support for where the
`
`
`
`2697.000/1432433 1
`
`Case No. 3:19-cv-02471-WHO
`5
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`
`
`
`Page 00005
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`
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`1
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`equivalent feature is found under the doctrine of equivalents pursuant to the function-way-result
`
`2
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`and/or insubstantial differences tests.
`
`3
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`4
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`5
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`(f)
`
`For any patent that claims priority to an earlier application, the priority date to
`which each asserted claim allegedly is entitled; and
`
`Each of the Asserted Claims is entitled to a filing date of June 30, 1999 because each is
`
`6
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`entitled to the benefit of the filing date of U.S. Provisional Patent Application No. 60/141,903.
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`7
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`(g)
`
`If a party claiming patent infringement wishes to preserve the right to rely, for
`any purpose, on the assertion that its own or its licensee’s apparatus, product,
`device, process, method, act, or other instrumentality practices the claimed
`invention, the party shall identify, separately for each asserted claim, each such
`apparatus, product, device, process, method, act, or other instrumentality that
`incorporates or reflects that particular claim.
`
`Packet Intelligence is not currently relying on any such apparatus, product, or device.
`
`(h)
`
`Identify the timing of the point of first infringement, the start of claimed
`damages, and the end of claimed damages; and
`
`The time of first infringement is the date that PAN first made, used, sold, offered for sale,
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`15
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`or imported any of the Accused Products in the United States since May 7, 2013. Packet
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`16
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`Intelligence is not currently aware of the specific date of first infringement but expects to receive
`
`17
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`this information from PAN in discovery. The date of first infringement is also the start of the
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`18
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`claimed damages period which will end at the last to expire of the asserted patents (the ‘751
`
`19
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`patent) on June 28, 2022.
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`20
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`21
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`22
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`(i)
`
`If a party claiming patent infringement alleges willful infringement, the basis
`for such allegation.
`
`On January 18, 2019, Packet Intelligence sent a letter to PAN notifying it of Packet
`
`23
`
`Intelligence’s allegation that PAN’s Accused Products infringe the Patents-in-Suit. Accordingly,
`
`24
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`PAN has had knowledge of the Patents-in-Suit and Packet Intelligence’s infringement allegations
`
`25
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`since at least January 18, 2019. Despite such knowledge, PAN has proceeded to infringe the
`
`26
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`Patents-in-Suit with full and complete knowledge of its applicability to its products without taking
`
`27
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`a license to the Patents-in-Suit and without a good faith belief that the Asserted Claims are invalid
`
`28
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`and not infringed. Thus, PAN’s infringement of the Patents-in-Suit is willful and deliberate,
`
`
`
`2697.000/1432433 1
`
`Case No. 3:19-cv-02471-WHO
`6
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`
`
`
`Page 00006
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`
`
`
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`1
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`entitling Packet Intelligence to increased damages under 35 U.S.C. § 284.
`
`2
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`1.
`
`3-2 Document Production Accompanying Disclosure
`
`3
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`4
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`5
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`6
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`7
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`8
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`(a)
`
`invoices, advertisements,
`Documents (e.g., contracts, purchase orders,
`marketing materials, offer letters, beta site testing agreements, and third party
`or joint development agreements) sufficient to evidence each discussion with,
`disclosure to, or other manner of providing to a third party, or sale of or offer
`to sell, or any public use of, the claimed invention prior to the date of application
`for the patent in suit. A party’s production of a document as required herein
`shall not constitute an admission that such document evidences or is prior art
`under 35 U.S.C. § 102;
`
`Packet Intelligence identifies the following documents related to this category: PI-
`
`9
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`TORG_000734-91 and PI_015048-76.
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`10
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`11
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`12
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`13
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`(b)
`
`All documents evidencing the conception, reduction to practice, design, and
`development of each claimed invention, which were created on or before the
`date of application for the patent in suit or the priority date identified pursuant
`to Patent L.R. 3-1(f), whichever is earlier;
`
`Packet Intelligence identifies the following documents related to this category: PI
`
`14
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`TORG_0000001-733; PI_000002-9, PI_000011-256; PI_000272-601; PI_000712-985; PI_005058-
`
`15
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`59; PI_005061-86; PI_005090-97; PI_005099-106; PI_005111-17; PI_005119-84; PI_005186-94;
`
`16
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`PI_005198-204; PI_005207-15; PI_005217, PI_005223-35; PI_005237-48; PI_005251-54;
`
`17
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`PI_005256-59; PI_005265-505; PI_005510; PI_005512; PI_005514; PI_005517; PI_005519;
`
`18
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`PI_005521; PI_005795-99; PI_005802-04; PI_005807-09; PI_005811-13; PI_006229-31;
`
`19
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`PI_006237-40; PI_006243-76; PI_006757-931; PI_007272-446; PI_007448-70; PI_007614-46;
`
`20
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`PI_007651-56; PI_007922-26; PI_007928-29; PI_007931-35; PI_007937-52; PI_007954-83;
`
`21
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`PI_007985-8015; PI_008018-22; PI_008031-37; PI_008039-55; PI_008058-120; PI_008122-35;
`
`22
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`PI_008171-89; PI_008194-200; PI_008205-11; PI_008216-18; PI_008223-26; PI_008242-11472;
`
`23
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`PI_011479-642; PI_011673-12128; PI_013000-319; and PI_014652-894.
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`24
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`25
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`(c)
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`A copy of the file history for each patent in suit;
`
`Packet Intelligence identifies the following documents related to this category: PI_012129-
`
`26
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`30; PI_012132; and PI_013320-15047.
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`27
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`28
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`
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`(d)
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`All documents evidencing ownership of the patent rights by the party asserting
`patent infringement;
`
`2697.000/1432433 1
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`Case No. 3:19-cv-02471-WHO
`7
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`Page 00007
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`1
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`2
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`Packet Intelligence identifies the following documents related to this category:
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`PCKTINT-00033739-33745, PCKTINT-0003356-33838, PCKTINT-00033839-33844,
`
`3
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`PCKTINT-00040006-40027.
`
`4
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`5
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`6
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`7
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`(e)
`
`If a party identifies instrumentalities pursuant to Patent L.R. 3-1(g), documents
`sufficient to show the operation of any aspects or elements of such
`instrumentalities the patent claimant relies upon as embodying any asserted
`claims;
`
`Packet Intelligence has not identified any instrumentalities pursuant to 3-1(g), and
`
`8
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`therefore has no documents related to this category.
`
`9
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`10
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`(f)
`
`All agreements, including licenses, transferring an interest in any patent-in-suit;
`
`Packet Intelligence identifies the following documents related to this category: PCKTINT-
`
`11
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`00033739-33745, PCKTINT-0003356-33838, PCKTINT-00033839-33844, PCKTINT-00040006-
`
`12
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`40027.
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`Packet Intelligence is seeking approval from third parties for the production of additional
`
`14
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`documents related to this category.
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`15
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`16
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`17
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`(g)
`
`All agreements that the party asserting infringement contends are comparable
`to a license that would result from a hypothetical reasonable royalty
`negotiation;
`
`Packet Intelligence is seeking approval from third parties for the production of additional
`
`18
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`documents related to this category.
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`19
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`20
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`21
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`(h)
`
`All agreements that otherwise may be used to support the party asserting
`infringement’s damages case;
`
`Packet Intelligence identifies the following documents related to this category: PCKTINT-
`
`22
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`00033739-33745, PCKTINT-0003356-33838, PCKTINT-00033839-33844, PCKTINT-00040006-
`
`23
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`40027.
`
`24
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`Packet Intelligence is seeking approval from third parties for the production of additional
`
`25
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`documents related to this category.
`
`26
`
`27
`
`28
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`
`
`(i)
`
`If a party identifies instrumentalities pursuant to Patent L.R. 3-1(g), documents
`sufficient to show marking of such embodying accused instrumentalities and if
`it wants to preserve the right to recover lost profits based on such products,
`sales, revenues, costs and profits of such embodying accused instrumentalities;
`and
`
`2697.000/1432433 1
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`Case No. 3:19-cv-02471-WHO
`8
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`
`
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`Page 00008
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`
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`1
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`Packet Intelligence has not identified any instrumentalities pursuant to 3-1(g), and
`
`2
`
`therefore has no documents related to this category.
`
`(j)
`
`All documents comprising or reflecting a F/RAND commitment or agreement
`with respect to the asserted patent(s).
`
`Packet Intelligence has no documents related to this category.
`
`3
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`4
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`5
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`6
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`DATED: September 24, 2019
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`By:
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`/s/ R. Allan Bullwinkel
`R. Allan Bullwinkel
`Counsel for Defendant and Counterclaimaint
`PACKET INTELLIGENCE LLC
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`2697.000/1432433 1
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`Case No. 3:19-cv-02471-WHO
`9
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`Page 00009
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 24th day of September, 2019, a true and correct copy of the above
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`and foregoing document has been provided, via electronic mail, to all counsel of record as follows:
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`James R. Batchelder – james.batchelder@ropesgray.com
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`Mark D. Rowland – mark.rowland@ropesgray.com
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`Andrew T. Radsch – andrew.radsch@ropesgray.com
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`2697.000/1432433 1
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`Case No. 3:19-cv-02471-WHO
`10
`FIRST AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`Page 00010
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