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`Case 1:20-cv-00393-LO-TCB Document 836-9 Filed 01/21/22 Page 1 of 21 PagelD# 22633
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`EXHIBIT 9
`EXHIBIT 9
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`FINJAN, INC.,
`Plaintiff,
`
`v.
`
`CISCO SYSTEMS INC.,
`Defendant.
`
`Case No. 17-cv-00072-BLF
`
`
`ORDER ON MOTIONS IN LIMINE
`
`[Re: ECF 527; 528; 539; 531; 534; 535;
`536; 537]
`
`
`
`Plaintiff Finjan, Inc. (“Finjan”) brings this patent infringement lawsuit against Defendant
`Cisco Systems, Inc. (“Cisco”), alleging infringement of five of Finjan’s patents directed to computer
`and network security: U.S. Patent Nos. 6,154,844 (the ’844 Patent); 6,804,780 (the ’780 Patent);
`7,647,633 (the ’633 Patent); 8,141,154 (the ’154 Patent); and 8,677,494 (the ’494 Patent)
`(collectively, “Asserted Patents”).
`In preparation for trial, the parties submitted eight motions in limine. The Court held a final
`pretrial conference on April 30, 2020 (the “Conference”). With respect to each side’s motions in
`limine (“MILs”), for the reasons set forth below and stated on the record at the Conference the Court
`rules as follows:
`
`I.
`
`FINJAN’S MOTIONS IN LIMINE
`A. Finjan’s Motion in Limine No. 1 to Preclude Reference to Pending and
`Unrelated Litigation and PTO Proceedings (ECF 527)
`In its Motion in Limine No. 1, Finjan seeks to exclude discussions of (1) all pending
`proceedings involving Finjan in other courts or before the United States Patent and Trademark
`Office (“PTO”) and (2) lawsuits involving Finjan and patents that are not asserted in this case.
`Finjan’s MIL No. 1, ECF 527.
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`1. Pending Proceedings Involving Finjan
`Finjan contends Cisco should be precluded from presenting any arguments or evidence
`regarding pending litigation or PTO proceedings because (1) there is no final decision on the merits
`and thus the mere existence of these proceedings has no bearing or relevance on the issues here and
`(2) introducing evidence of pending proceedings carries a substantial risk the jury will be confused
`as to the specifics of Finjan’s claims against Cisco and its accused products, or that the jury will
`perceive Finjan negatively because it is involved in other litigations. See Finjan’s MIL No. 1 at 1-
`3.
`
`Cisco agrees that pending proceedings before the PTO should be excluded. See Cisco’s
`Opp’n to Finjan’s MIL No. 1 at 4-5, ECF 566-4 (redacted version available at ECF 607), Transcript
`of the Conference (“Hr’g Tr.”) at 31:22-23, ECF 613. Regarding pending court proceedings,
`however, Cisco argues that it should be permitted to probe Finjan’s expert witnesses’ bias by cross
`examining the experts about the compensation they receive from Finjan for their work on Finjan’s
`lawsuits.
`Per the parties’ agreement, the Court GRANTS Finjan’s motion to exclude evidence of
`pending PTO proceedings. The Court agrees with Cisco, however, that the experts’ potential bias
`is highly probative of their credibility. Accordingly, The Court DENIES Finjan’s motion to exclude
`evidence of pending litigation, but Cisco is limited to cross examination of Finjan’s experts on their
`work and associated compensation for Finjan in other pending lawsuits. The Court also excludes
`any characterization of Finjan as litigious by discussing details of Finjan’s ongoing lawsuits because
`the limited probative value of such evidence is substantially outweighed by danger of prejudice to
`Finjan and “wasting time.” See Fed. R. Evid. 403.
`
`2. Concluded Proceedings Involving Finjan’s Patents Not Asserted in this Case
`Finjan argues that evidence regarding proceedings involving Finjan’s patents that are not
`asserted against Cisco in this case – which Finjan dubs as “Irrelevant Proceedings” – should be
`excluded because (1) invalidity of patents not asserted in this case and (2) infringement of products
`not accused in this case are irrelevant. See Finjan’s MIL No. 1 at 3-4. Further, Finjan argues that
`the introduction of these proceedings “will risk confusing the jury, requiring them to parse the
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`differences between patent claims that are at issue in this case and patent claims that are not.” Id.
`at 3. According to Finjan, “the jury may be tempted to improperly substitute decisions made in
`other cases for its own judgment.” Id. at 4. Finjan recognizes that “license agreements that resulted
`from prior litigations involving patents not at issue in this case may be relevant to damages,” but it
`nevertheless argues that “going into irrelevant details of the cases” would allow Cisco “to paint
`Finjan as particularly litigious.” Id. at 1 n. 1.
`Cisco responds that Finjan’s prior concluded lawsuits are relevant to issues of damages and
`willfulness. Cisco’s Opp’n to Finjan MIL No. 1 at 1-4. Specifically, Cisco argues that prior
`communications between the parties – even if in the context of other proceedings – are relevant to
`Cisco’s state of mind. Id. at 1. Cisco further argues that Finjan’s damages expert, Dr. Layne-Farrar,
`relies on licenses executed against the backdrop of litigation to support her opinions and therefore,
`the jury should be able to evaluate the circumstances of those lawsuits. Id. at 3.
`The Court finds that documents establishing the communications between Finjan and Cisco
`are relevant to the issue of willfulness in this case, even if those communications were exchanged
`in the context of – or mention – other proceedings that do not involve the Asserted Patents.
`Moreover, the context and circumstances of lawsuits which resulted in or precipitated settlement
`agreements that the parties’ damages experts rely on to support their opinions are highly probative.
`Accordingly, the Court DENIES Finjan’s motion as to evidence of concluded lawsuits involving
`non-asserted patents but this ruling is limited to (1) all otherwise admissible communication between
`Finjan and Cisco and (2) evidence of otherwise relevant circumstances of the lawsuits that led to the
`settlement agreements the damages experts (Finjan’s or Cisco’s) rely on to support their opinions.
`All other objections regarding the relevancy of concluded lawsuits involving Finjan’s non-asserted
`patents are DEFERRED to trial.
`
`B. Finjan’s Motion in Limine No. 2 to Preclude Derogatory and Misleading
`Characterization of Finjan’s Business (ECF 528)
`Finjan’s Motion in Limine No. 2 seeks to exclude Cisco from “making any false, derogatory,
`or misleading characterizations of Finjan or its business at trial.” Finjan’s MIL No. 2, ECF 530-4
`(redacted version available at ECF 528). Specifically, Finjan seeks to exclude testimony (1)
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`referring to Finjan using terms such as “patent troll,” “patent assertion entity,” “PAE,” “non-
`practicing entity,” or “NPE” and (2) relating to “things like how many employees Finjan has and
`whether it has used other corporate names, all in an attempt to paint Finjan as a sham company in
`the eyes of the jury.” Id. at 1. Finjan argues that “Cisco’s mischaracterization of Finjan as a patent
`shell company with no business or real operations” is irrelevant and not supported by the record.
`Id. at 2. And even if true, Finjan contends that these characterizations, would result in unfair
`prejudice and confuse the jury. Id. at 3. Further, Finjan argues that “Cisco’s references to FI
`Delaware [a corporate name Finjan used for a few years], Finjan’s employee count, and arguments
`regarding Finjan’s lack of revenue from security products also lack any relevance to the present
`infringement suit.” Id. at 2.
`Cisco agrees not to use the term “troll” outside the narrow context of an email – which Cisco
`claims is relevant to describing the relationship between Cisco and Finjan – using that term. Cisco’s
`Opp’n to Finjan’s MIL No. 2 at 1; 2-3, ECF 566-6 (redacted version available at ECF 608). Cisco
`also agrees not to use “patent assertion entity.” Id. Cisco describes the term “non-practicing entity,”
`however, as “a benign phrase specifically designed to substitute for more inflammatory language
`and passes muster under Rule 403.” Id. 1 With respect to Finjan’s name change and “lack of revenue
`from Finjan’s current security product,” Cisco argues that “Finjan cannot state, argue, or imply that
`the company in its current form is essentially the same company as the company that was formed in
`1996, without Cisco being allowed to correct this fallacy.” Id. at 3-4.
`The Court GRANTS Finjan’s motion as to the use of the terms “patent troll,” “patent
`assertion entity,” “PAE,” “non-practicing entity,” and “NPE.” The Court recognizes that it allowed
`the use of the term “non-practicing entity” to describe Finjan in a prior case. See Finjan, Inc. v.
`Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 WL 4129193, at *2 n. 1 (N.D. Cal. July 8, 2015).
`But the Court is now of the opinion that such projective labels are irrelevant, unhelpful to the jury,
`and in some instances carry negative connotations. That said, to the extent that any of these terms
`
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`1 Although not subject to Finjan’s Motion in Limine No. 2, Cisco notes that the primary term it
`intends to use for Finjan’s current business model is “IP Company.” Cisco’s Opp’n to Finjan’s MIL
`No. 2 at 1. At the Conference, Finjan noted that it does not object the use of the term “IP Company.”
`Hr’g Tr. at 43:1-3.
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`appear on the face of otherwise relevant and admissible documents, the Court rules that no redaction
`is necessary. But Cisco may not ask its witnesses to read the excluded term(s) out loud or otherwise
`draw attention to the term(s).
`The Court DENIES Finjan’s motion as to neutral, factual statements concerning Finjan’s
`business. Finjan has a right to introduce its company the jury – but if it does so in a manner
`portraying itself as the “same Finjan” from its inception, then Cisco will be allowed to cross-
`examine that portrayal.
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`C. Finjan’s Motion in Limine No. 3 Re: Invalidity Theories Not Disclosed in
`Invalidity Contentions (ECF 529)
`In its Motion in Limine No. 3, Finjan seeks to exclude “evidence, testimony, or argument”
`regarding invalidity theories that Finjan contends were not timely disclosed in Cisco’s invalidity
`contentions pursuant to Patent Local Rules 3-3 and 3-4 and this Court’s orders. Specifically, Finjan
`seeks to exclude Cisco’s experts’ use of (1) Feigenbaum-ThunderBYTE Antivirus Utilities
`combination; (2) three references that Cisco did not disclose in its invalidity contentions but its
`experts use as “background art”; and (3) theories under 35 U.S.C. §§ 101 and 112. See Finjan’s
`MIL No. 3, ECF 529. Invalidity theories not disclosed in accordance with Patent Local Rules are
`“barred … from presentation at trial (whether through expert opinion testimony or otherwise).”
`MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-CV-5341 YGR, 2014 WL 690161, at *1
`(N.D. Cal. Feb. 21, 2014). Accordingly, the Court must determine whether each of the theories
`Finjan seeks to exclude were properly disclosed in Cisco’s invalidity contentions. The Court
`examines each theory in turn:
`
`1. Feigenbaum-ThunderBYTE Combination
`The invalidity theories in this case went through a few rounds of narrowing before the expert
`reports were served. There is no dispute that while both Feigenbaum and ThunderBYTE references
`were charted separately in Cisco’s First and/or Second Elections of prior art, they were not identified
`as an obviousness combination in those elections. See Finjan’s MIL No. 3 at 2; Cisco’s Opp’n to
`Finjan’s MIL No. 3 at 1, ECF 569; see also ECF 333-3 (First Election served on August 7, 2017)
`and ECF 333-6 (Second Elections served on January 18, 2019). Per the parties’ agreements in this
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`case, the obviousness combinations were not due to be disclosed until 30 days prior to the service
`of expert reports. See Hr’g Tr. at 45:25-46:5; see also ECF 51 (6.8.2017 Hr’g Tr.) at 19:23-20:20.
`On September 13, 2018, the Court issued an order adopting the parties’ agreement on
`narrowing of asserted claims and prior art references. Narrowing Order, ECF 140. Per the
`Narrowing Order, Cisco was required to serve a Third Election of Asserted Prior Art thirty days
`before service of its invalidity opening expert report. Id. at 1. In that Third Election, Cisco was to
`“assert from the subset of prior art previously identified no more than 6 invalidity theories
`(anticipatory and/or obviousness combinations) per patent and no more than a total of 20 invalidity
`theories across all Patents-in-Suit.” Id. The Narrowing Order further explained that “a single
`obviousness ‘theory’ is a specific combination of references for a specific patent” that “shall not be
`changed or revised for subsequent election of asserted prior art.” Id. at 1-2. The Narrowing Order
`even provided an example:
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`For example, if the obviousness combination A, B, C and D is
`identified as a single obviousness theory in an election, it may not be
`changed or revised to the combination A, B and C in a subsequent
`election, as this would constitute a new obviousness theory.
`
`Id. at 2.
`On April 23, 2019, Cisco served its Third Election, narrowing its prior art selection per the
`Court’s Narrowing Order. ECF 319-8. In its Third Election, Cisco asserted an obviousness
`combination as to the ’844 Patent that included Feigenbaum, ThunderBYTE, and a third reference
`(Zwienenberg). Id. at 2. On June 25, 2019, Cisco served an Amended Third Election, in which it
`asserted a Feigenbaum-ThunderBYTE obviousness combination – this time without the third
`reference. ECF 319-11 at 2. By revising its Feigenbaum-ThunderBYTE-Zwienenberg combination
`to Feigenbaum-ThunderBYTE (and dropping Zwienenberg) in its tardy Amended Third Election,
`Cisco did exactly what the Court’s Narrowing Order prohibited: Cisco changed its invalidity theory.
`Accordingly, the Court GRANTS Finjan’s motion as to Cisco’s invalidly theory involving
`Feigenbaum-ThunderBYTE obviousness combination.
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`2. Cisco’s “Background” References: Necula, Karger, and December
`Next, Finjan seeks to preclude Cisco from using three references in its invalidity analysis:
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`Karger, December, and Necula. There is no dispute that these references were not charted in Cisco’s
`invalidity contentions – including its Third Election. See Cisco’s Opp’n to Finjan’s MIL No. 3 at
`2-3. The parties, however, characterize differently Cisco’s use of these references in Cisco’s expert
`reports. Cisco argues that Karger, December, and Necula are “background reference” used to
`“explain and evidence the level of skill in the art.” Id. at 2 (citing ECF 333-8 (McDaniel Report) ¶¶
`161, 163, 164, 167, 192, 177; ECF 333-9 (Almeroth Report) ¶¶ 131, 280-282, 353-355). Finjan, on
`the other hand, claims that these references are not “background” and instead, “are used by Cisco’s
`experts as part of their element-by-element invalidity analyses.” Finjan’s MIL No. 3 (citing ECF
`318-4 (Almeroth Report) ¶¶ 240, 280, 332, 352, 376, 410; ECF 318-6 (McDaniel Report) ¶ 234).
`Courts in this district permit the use of previously undisclosed prior art as “background
`reference” in invalidity expert reports – as long as they are not used as prior art to challenge the
`validity of a claim element. See e.g., Verinata Health, Inc. v. Sequenom, Inc., No. C 12-00865 SI,
`2014 WL 4100638, at *5 (N.D. Cal. Aug. 20, 2014) (allowing the expert to use a reference for
`“foundational or background material” but striking the same reference from the expert report “to the
`extent that [the expert] relies on it as prior art that allegedly renders the asserted claims …
`obvious.”); Largan Precision Co, Ltd. v. Genius Elec. Optical Co., No. 13-CV-02502-JD, 2014 WL
`6882275, at *6 (N.D. Cal. Dec. 5, 2014) (striking a reference used as an example that teaches a
`claim element and not as background).
`Accordingly, the Court DENIES Finjan’s motion to exclude Karger, December, and Necula
`to the extent that these references are used to demonstrate the background knowledge of a skilled
`artisan. If Cisco offers these references as “background” at trial, the Court will allow a limiting
`instruction to the jury to clarify the purpose for which these references are offered. The Court
`GRANTS Finjan’s motion to the extent that Cisco’s experts rely on Karger, December, and Necula
`as prior art to support the invalidity of an asserted claim element.
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`3. Cisco’s Invalidity Grounds under Sections 101 and 112
`Finally, Finjan seeks to preclude Cisco from relying on its subject matter (35 U.S.C. § 101)
`and written description (35 U.S.C. § 112) invalidity theories.
`According to Finjan, Cisco’s invalidity contentions provided “conclusory, “short,” and
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`“mostly boilerplate” disclosure as to its invalidity theories under § 101. Finjan’s MIL No. 3 at 4
`(citing ECF 319-3 at 85-87). Finjan thus argues that Cisco’s expert’s “twenty-one paragraphs of
`opinions that were never discussed or even summarized in Cisco’s invalidity contentions” are
`untimely and should be excluded. Id. at 4-5 (citing ECF 318-6 (McDaniel Report) ¶¶ 214, 222, 502-
`20). Cisco responds that its invalidity contentions “explained the basis of its Section 101 theories”
`and its expert, Dr. McDaniel, “simply expands on these disclosures and provides supporting
`evidence, including what was known and conventional to a person of ordinary skill in the art.”
`Cisco’s Opp’n to Finjan’s MIL No. 3 at 4.
`The Court has reviewed Cisco’s invalidity contentions and is satisfied that Cisco’s invalidly
`theories under 35 U.S.C. § 101 were sufficiently disclosed. For example, as to the ’494 Patent Cisco
`identifies the claim elements it contends are “abstract concept”:
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`The Asserted Claims of the ’494 Patent are directed to non-statutory
`subject matter, under 35 U.S.C. § 101, because the claims are directed
`to merely “receiving an incoming Downloadable”, “deriving security
`profile data for the Downloadable”, and “storing the Downloadable
`security profile data,” which is an abstract concept.
`ECF 319-3 at 87. Cisco then explains:
`
`[T]he Asserted Claims are merely directed to receiving incoming
`Downloadable and manipulating existing information, e.g., the
`incoming Downloadable, to derive the security profile data without
`any limitation on the use of the security profile data.
`Id. Cisco goes on to assert that “[t]he remainder of the Asserted Claims recite generic computer
`limitations, such that the claims do not amount to significantly more than the abstract idea itself.”
`Id.
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`Cisco’s disclosures are sufficiently detailed and provide a level of specificity that was
`lacking in the cases Finjan cites. For example, in Karl Storz, defendant’s disclosure in its invalidity
`contentions “consist[ed] of legal conclusions in violation of Local Rule 3-3(d)” because defendant
`merely stated “[a]ll asserted claims ... are invalid under 35 U.S.C. § 101 because they are not directed
`to patentable subject matter.” Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-CV-00876-
`RS(JSC), 2017 WL 5257001, at *4 (N.D. Cal. Nov. 13, 2017). And the court in Proofpoint, rejected
`defendant’s statement “generally reserve[ing] its right to assert claims as invalid under Section 101”
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`in invalidity contentions because “[s]uch a general disclaimer would be contrary to the local rule’s
`requirement that parties crystallize their theories early in the litigation.” Finjan, Inc. v. Proofpoint,
`Inc., No. 13-CV-05808-HSG, 2015 WL 9460295, at *3 (N.D. Cal. Dec. 23, 2015). Here, Cisco
`disclosed its specific theories in its invalidity contentions – and later provided evidence (in the form
`of expert reports) per the case schedule. Accordingly, the Court DENIES Finjan’s motion to
`preclude Cisco’s invalidity theories based on 35 U.S.C. § 101.
`Finjan makes similar arguments as to Cisco’s disclosures regarding its invalidity theories for
`lack of written description under 35 U.S.C. § 112. According to Finjan, “Cisco’s contentions recite
`a laundry list of potential claim terms that allegedly lack written description/enablement, without
`providing any explanation for any of those particular terms” and therefore Cisco has failed to
`provide notice of which specific claim terms are allegedly deficient and why. Finjan’s MIL No. 3
`at 5 (citing ECF 319-3 at 74-80). Finjan argues that “Cisco’s experts identify particular claim terms
`and offer new theories and explanations as to how the specifications are supposedly deficient under
`Section 112.” Id. (citing ECF 318-4 (Almeroth Rpt.) ¶¶ 619-83; ECF 318-6 (McDaniel Rpt.) ¶¶
`213, 221, 479-501; ECF 319-15 (Prakash Rpt.) ¶¶ 166, 475–489). Cisco disagrees and responds
`that its contentions “identified the aspects of the asserted claims that were not supported by the
`written description[.]” Cisco’s Opp’n to Finjan MIL No. 3 at 5.
` The Court finds that Cisco’s contentions sufficiently disclosed its theories based on its
`understanding of Finjan’s infringement theories at the time. For example, with respect to the ’844
`Patent, Cisco asserted: “Finjan’s apparent interpretation of the Asserted Claims of the ’844 Patent
`is that they are broad enough to encompass linking a Downloadable security profile to a
`Downloadable after a web client has requested the Downloadable from the web server.” ECF 319-
`3 at 75. Accordingly, Cisco explained, “[u]nder this overly broad interpretation of the Asserted
`Claims, each Asserted Claim of the ’844 Patent is invalid for lack of written description and is not
`enabled.” Id. at 75-76. Similarly, for the ’780 Patent, Cisco explained why it contends that the
`asserted claims lack written description and are not enabled:
`
`Finjan’s apparent interpretation of the asserted claims of the ’780
`Patent is that they are broad enough to encompass any computing
`device that receives any file over a network and performs a hashing
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`function on the received file.
`Id. at 76. Cisco then lists the claim terms it contends are invalid under 35 U.S.C. § 112. Id.
`Cisco’s disclosure can again be contrasted against the cases Finjan cites. For example, in
`MediaTek, defendant did “nothing more than state that a theory of ‘indefiniteness, written
`description/enablement’ is asserted” and failed to “explain in even the most basic terms” the written
`specification did not disclose the claim term. 2014 WL 690161, at *6. Because the Court finds that
`Cisco’s invalidity theories under 35 U.S.C. § 112 were disclosed in its invalidity contentions, the
`Court DENIES Finjan’s motion as to those theories.
`
`D. Finjan’s Motion in Limine No. 4 to Preclude Reliance on Undisclosed Non-
`Infringement Theories (ECF 531)
`In its Motion in Limine No. 4, Finjan seeks to exclude Cisco from relying on non-
`infringement theories in Cisco’s expert reports that Finjan contends were not disclosed during
`discovery – and specifically, in Cisco’s response to Finjan’s non-infringement interrogatory No. 6
`(“Rog. 6”). See Finjan’s MIL No. 4, ECF 540-22 (redacted version available at 531). Finjan’s
`motion is limited to the non-infringement theories related to the ’844 Patent. 2
`
`1. “rule set” Limitation (Claim 15)
`Claim 15 of the ’844 Patent requires using a “rule set” to “generate a first Downloadable
`security profile that identifies suspicious code in a Downloadable.” ’844 Patent, 11:64-66. Cisco’s
`technical expert, Dr. Almeroth opines that the accused products do not meet the “rule set” limitation
`because the rule sets identified by Finjan’s technical expert (Dr. Cole) “are not used to derive a
`[Downloadable security profile], but are just general rules concerning passing and blocking a file
`by an accused product.” ECF 540-6 at ¶ 413. Finjan argues that Cisco’s response to Rog. 6 failed
`to disclose the theory Dr. Almeroth presented in his report “or any other theory regarding ‘rule set.’”
`Finjan’s MIL No. 4 at 2.
`Cisco responds that it did, in fact, identify “rule set” in its response to Rog. 6 and Dr.
`Almeroth discussed the same limitation and identified “the factual errors in Dr. Cole’s infringement
`
`
`2 For the purposes of deciding Finjan’s Motion in Limine No. 4, Finjan withdrew its arguments as
`to the ’154 Patent and the ’780 Patent at the Conference. See Hr’g Tr. at 54:7-55:3.
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`report.” Cisco’s Opp’n to Finjan’s MIL No. 4 at 1-2, ECF 566-8. At the Conference, Cisco
`expanded its argument and explained that its response to Rog. 6 details Cisco’s contentions as to
`why the accused products do not “generate a first Downloadable security profile.” See Hr’g Tr. at
`56:17-18; see also ECF 540-10 at 7-9. And because the “rule set” is used to “generate a first
`Downloadable security profile” – if the accused products do not “generate a first Downloadable
`security profile,” it follows that the accused products do not use a “rule set.” See Hr’g Tr. at 56: 14-
`21.
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`The Court agrees with Cisco. First, the “rule set” limitation is identified in Cisco’s response
`to Rog. 6 in the context of the claim language. See ECF 540-10 at 7. Second, even though the claim
`term “rule set” is not used in Cisco’s explanation of its infringement theory – the theory itself is
`consistent across Cisco’s response to Rog. 6 and Dr. Almeroth’s report: the accused products do not
`generate a “Downloadable security profile” and thus do not use a “rule set” in the manner required
`by the language of claim 15. Accordingly, the Court DENIES Finjan’s motion as to the “rule set”
`limitation of claim 15 of the ’844 Patent.
`
`2. “generating” / “generate” Limitations (Claims 1, 15, and 43)
`Claims 1, 15 and 43 of the ’844 Patent require the generation of a “first Downloadable
`security profile” to identify suspicious code. See ’844 Patent at 11:15-18; 11:65-66; 14:36-38.
`Finjan seeks to exclude two non-infringement theories in Dr. Almeroth’s report.
`First, Finjan argues that Dr. Almeroth contends the accused products do not meet the
`“generating” / “generate” claim limitation because they do not include a “code scanner” – and this
`theory should be excluded because the claims do not require a “code scanner.” Finjan’s MIL No. 4
`at 2 (citing 540-6 (Almeroth Report) ¶ 195). In Finjan’s view, “[i]t is improper for Cisco’s experts
`to add [the code scanner] limitation and to make an argument Cisco did not disclose during
`discovery.” Finjan’s MIL No. 4 at 2. Cisco responds that the cited paragraph is “plucked out of
`context from Dr. Almeroth’s larger analysis of the ’844 Patent.” Cisco’s Opp’n to Finjan’s MIL
`No. 4 at 2.
`The Court is not persuaded that Dr. Almeroth has presented a non-infringement theory in
`the single paragraph (¶ 195) Finjan cites. Dr. Almeroth states: “[n]either the ’844 Patent nor the
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`’194 Patent disclose any other method or tool, aside from the code scanner, for deriving a
`[Downloadable security profile].” ECF 540-6 (Almeroth Report) ¶ 195. Dr. Almeroth then goes
`on to opine that “[n]one of the Accused Products infringe claims 1, 15, and 43 of the ’844 Patent
`because they do not meet the requirements of the [Downloadable security profile] Terms.” ECF
`540-6 ¶ 196. Dr. Almeroth’s opinion appears consistent with Cisco’s response to Rog. 6 that “[t]he
`accused versions of AMP, and ThreatGRID, do not generate a first Downloadable security profile
`that identifies suspicious code in a received Downloadable.” ECF 540-10 at 7. Without context,
`the Court declines to exclude Dr. Almeroth’s short statement mentioning “code scanner” as a new
`non-infringement theory.
`Second, Finjan seeks to exclude Dr. Almeroth’s opinion that “ThreatGrid must always
`perform dynamic analysis on a file … to reach the conclusion that the file is malicious” because,
`according to Finjan, Cisco did not disclose this “dynamic analysis” theory in its response to Rog. 6.
`Finjan’s MIL No. 4 at 2-3. Cisco responds that its response to Rog. 6 “explained why the accused
`products (i.e., AMP and ThreatGrid) do not meet the generating/generate limitations because they
`do not identify suspicious code in a Downloadable.” Cisco’s Opp’n to Finjan’s MIL No. 4 at 2
`(citing ECF 540-10 at 8-9).
`The Court is persuaded that Cisco’s theory was properly disclosed in Cisco’s response to
`Rog. 6. Although Cisco’s response does not use the term “dynamic analysis,” it does explain that
`ThreatGRID analyzes files for malicious content by first running the files and then observing their
`behavior – this explanation is consistent with “dynamic analysis.” Specifically, Cisco explained:
`
`in a secure
`includes executing a file
`ThreatGRID analysis
`environment and recording when certain behaviors are observed.
`ThreatGRID then analyzes the observed behaviors, calculates a threat
`score, and determines whether the file is malicious based on the threat
`score.
`ECF 540-10 at 8-9.
`Accordingly the Court DENIES Finjan’s motion as to the “generate” / “generating”
`limitation of claims 1, 15, and 43 of the ’844 Patent.
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`II. CISCO’S MOTIONS IN LIMINE
`A. Cisco’s Motion in Limine No. 1 to Exclude Phil Hartstein’s Testimony Regarding
`Finjan’s Corporate History as Hearsay (ECF 534, Corrected Brief at ECF 604)
`In its Motion in Limine No. 1, Cisco seeks to exclude testimony from Finjan’s current
`president and CEO, Phil