Finjan, Inc. v. Zscaler, Inc.

Filing 72

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
______________________________________
JON S. TIGAR
United States District Judge

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United States District Court
Northern District of California

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