Finjan, Inc. v. Zscaler, Inc.
Filing
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ORDER GRANTING MOTION TO COMPEL by Judge Jon S. Tigar granting 61 Motion to Compel. (wsn, COURT STAFF) (Filed on 8/31/2018)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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FINJAN, INC.,
Plaintiff,
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ZSCALER, INC.,
Re: ECF No. 61
Defendant.
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United States District Court
Northern District of California
ORDER GRANTING MOTION TO
COMPEL
v.
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Case No. 17-cv-06946-JST
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Before the Court is Defendant Zscaler, Inc.’s motion to compel further infringement
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contentions. ECF No. 61. For the reasons stated below, the Court GRANTS the motion.
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I.
BACKGROUND
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Plaintiff Finjan, Inc. and Zscaler are competitors in the malware security field. ECF No. 1
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¶¶ 7, 26. Finjan alleges that Zscaler’s products infringe four patents owned by Finjan: U.S. Patent
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Nos. 6,804,780 (“the ’780 patent”); 7,647,633 (“the ’633 patent”); 8,677,494 (“the ’494 patent”);
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and 7,975,305 (“the ’305 patent”). Id. ¶ 21. Finjan served its infringement contentions on May 9,
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2018. ECF No. 46-3. Zscaler now moves the Court to order “Finjan to revise its infringement
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contentions to identify, for each item called for in each asserted claim, the specific component or
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data structure within Zscaler’s system that constitutes the claimed item, arranged in the manner
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called for in the claim.” Id.
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II.
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LEGAL STANDARD
To satisfy Patent Local Rule 3–1, a “plaintiff [must] compare an accused product to its
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patents on a claim by claim, element by element basis for at least one of each defendant’s
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products.” Tessenderlo Kerley, Inc. v. OR-Cal, Inc., No. C 11-04100 WHA, 2012 WL 1253178,
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at *2 (N.D. Cal. Apr. 13, 2012) (citations omitted). The rule forces parties to “crystallize their
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theories of the case early in the litigation and to adhere to those theories once they have been
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disclosed.” Alberta Telecommunications Research Ctr. v. Rambus Inc., No. C06-02595 RMWRS,
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2007 WL 4170564, at *1 (N.D. Cal. Nov. 19, 2007). Specifically, Patent Local Rule 3–1(c)
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requires the plaintiff to produce a “chart identifying specifically where and how each limitation of
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each asserted claim is found within each Accused Instrumentality.” Patent L.R. 3–1(c). “This
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burden cannot be met simply by parroting claim language or referencing screenshots and/or
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website content.” Finjan, Inc. v. Proofpoint, Inc., No. 13-CV-05808-HSG, 2015 WL 1517920, at
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*6 (N.D. Cal. Apr. 2, 2015). “[T]he degree of specificity under Local Rule 3–1 must be sufficient
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to provide reasonable notice to the defendant [as to] why the plaintiff believes it has a ‘reasonable
chance of proving infringement.’” Id. at *2 (citations omitted).
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III.
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DISCUSSION
Zscaler argues that Finjan’s infringement contentions are largely comprised of generic
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marketing literature, screenshots, and websites – presented at a high level – without explanations
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as to how Zscaler’s products specifically infringe particular claim elements. ECF No. 61 at 6.
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Finjan highlights a few of the many contentions it finds deficient. Id. The Court agrees the
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contentions as a whole are insufficient to put Zscaler on notice of how its products specifically
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infringe the patent claims at issue.
The ’633 Patent
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A.
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The ’633 patent claims a system for transmitting “mobile protection code” to a computer to
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which downloadable information is sent if that downloadable information is determined to contain
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executable code. Id. at 7. In order to satisfy Rule 3-1, Finjan’s contentions must describe the
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“structure, act or material,” of Zscaler’s products that allegedly infringe each claim element.
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Finjan, 2015 WL 1517920, at *2. Zscaler argues that Finjan fails to specify precisely what in
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Zscaler’s products transmits “mobile protection code.” ECF No. 61 at 7. Finjan’s contentions
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explain that mobile protection code is “code and information pertaining to the task and
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parameters.” Id. The contentions also specify that the code “is executable and includes
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information using API’s1 . . . , parameters to run the sample file or URL, a hash of the file, [and]
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information contained in a JSON file which includes information regarding the sample or URL.”
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ECF No. 65 at 7-8. These details explain what mobile protection code is, but do not explain how
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any Zscaler product transmits such code.
While the contentions purport to describe how Zscaler’s products send mobile protection
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code, a closer examination makes clear that the contentions lack any meaningful, clear, or specific
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description. The contentions describe that Zscaler’s Cloud Architecture Products send mobile
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protection code and downloadable information to sandbox servers “as shown below.” Id. at 8.
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But the text below sheds no light on any particular structure, act or material that sends mobile
protection code. ECF No. 61-2 at 61. The only reference to the sandbox in the text below
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provides: “With the exception of sandboxing, all inspection engines run within the ZEN.” Id.
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Finjan’s contentions leave Zscaler in the dark as to what part of its product transmits mobile
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protection code and infringes the claims. Finjan has not met its “obligation to map specific
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elements of Defendant[’]s[] alleged infringing products onto the Plaintiff’s claim
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construction.” Finjan, 2015 WL 1517920, at *7 (“At a minimum, Finjan was required to
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expressly discuss the particular claim elements identified in each Claim and map those elements
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onto the features of the allegedly infringing products. . . . Neither the Court nor the Defendant[]
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should be required to guess which aspects of the accused products allegedly infringe each claim
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element.”).
The ’780 Patent
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B.
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Claim 1 of the ’780 patent claims a system comprising of both (1) a communications
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engine, which obtains a downloadable that includes references to software components required to
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be executed by the downloadable; and (2) an ID generator, coupled to the communications engine,
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which fetches software components identified by those references and performs a hashing function
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to generate an ID for the downloadable. ECF No. 61 at 8-9. Finjan’s contentions provide that
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each, or a combination of each, of Zscaler’s accused products (the Cloud Sandbox, Cloud
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API stands for “application programming interface.”
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Architecture, and Zulu URL Risk Analyzer) act as the communications engine – and the very
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same set of products, individually or collectively, also act as the ID generator. Id. at 9-10. Zscaler
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argues that Finjan’s contentions fail to explain which particular parts of its products make up the
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separate communications engine and ID generator. Id.
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Finjan points to many pages of contentions which it believes explain how Zscaler’s
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products carry out the elements of the claims. ECF No. 65 at 10. But these pages consist of little
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more than the text of the patent, followed by text copied verbatim from Zscaler’s general
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marketing materials, without any explanation as to how the products featured in the marketing
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materials constitute a structure, act or material that carries out the claims. Finjan, 2015 WL
1517920, at *2; ECF No. 61-3 at 54; id. at 58-59. The same is true of Finjan’s contentions for the
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ID generator. ECF No. 61-3 at 68-69. For example, one contention describes that Zscaler’s Cloud
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Sandbox is an ID generator coupled to the communications engine which performs a hashing
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function on the downloadable and fetched software components. ECF No. 61-3 at 76 (copying the
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patent text). The contention goes on to describe that the sandbox report assigns a hash ID, but it
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does not describe that, or in what way, the ID generator is coupled with the communications
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engine. Id. at 76-77. Finjan’s claims chart merely “provide[s] generic allegations that do not
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identify specific . . . components [of the product or products] that reportedly correspond to the
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claims limitation . . . in a manner that gives defendant fair notice as to where the alleged infringing
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[products] are locat[ed]. Instead [Finjan] simply repeats the same generic descriptions and cuts-
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and-pastes them beside each element of every claim.” Bender v. Infineon Techs. N. Am. Corp.,
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No. C09-02112JW (HRL), 2010 WL 964197, at *2 (N.D. Cal. Mar. 16, 2010).
The ’494 Patent
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C.
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Claim 10 of the ’494 patent claims a downloadable scanner coupled with a receiver which
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receives an incoming downloadable and derives security profile data for that downloadable,
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including a list of suspicious computer operations the downloadable may attempt. ECF No. 61 at
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10. Zscaler argues that Finjan’s contentions fail to explain what elements of its products list
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suspicious computer operations. Id. at 11. While Finjan points to a contention which lists
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suspicious operations that Zscaler’s sandbox product can recognize, the contention fails to connect
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that list to any downloadable scanner coupled with a receiver. ECF No. 61-4 at 26. The
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contention does not constitute a “narrative explanation of how the product group infringes” and is
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accordingly insufficient. Implicit Networks Inc. v. Hewlett-Packard Co., No. C 10-03746 SI, 2011
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WL 3954809, at *2 (N.D. Cal. Sept. 7, 2011).
The ’305 Patent
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D.
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Finally, claim 1 of the ’305 patent claims a network interface housed within a computer,
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which receives incoming content from an internet application running on the computer, and a
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database of parser and analyzer rules also stored on that computer. ECF No. 61 at 12-13. The
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patent therefore claims a computer which contains all three of: a network interface, an internet
application, and a dataset of parser and analyzer rules. Zscaler’s contentions fail to describe any
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product that is, or contains, a computer which does all three. For example, one contention
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explains that Zscaler’s ZEN product is a computer, and simultaneously an internet application –
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but fails to describe how the product contains a network interface and dataset of parser and
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analyzer rules. ECF No. 61-5 at 8. Finjan points to another contention which explains that
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Zscaler’s Cloud Sandbox contains a threat database that includes parsing rules to sort conditions
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as token patterns capable of being parsed by the product. Id. at 13. While this contention details
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the parser element, it does not explain how the product also contains a network interference and
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internet application. See also id. at 18 (explaining similarly that a product parses but failing to
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describe a network interface and internet application). Because the contentions fail to specifically
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identify what portion of Zscaler’s specific product or products disclose a computer containing all
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three of a network interface, internet application, and dataset, the contentions are inadequate. See
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Tessenderlo, 2012 WL 1253178, at *2 (“Broad inferences cannot stand in place of factual
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information.”).
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CONCLUSION
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Zscaler’s motion to compel more specific infringement contentions is GRANTED.
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Pursuant to the paries’ agreement, Finjan must file amended contentions within 45 days of the
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issuance of this order. Zscaler’s unopposed request to amend its invalidity contentions and claim
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construction positions 30 days later is also GRANTED.
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IT IS SO ORDERED.
Dated: August 31, 2018
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JON S. TIGAR
United States District Judge
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United States District Court
Northern District of California
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