Finjan, Inc. v. Symantec Corp.

Filing 279

ORDER by Magistrate Judge Jacqueline Scott Corley denying 225 Symantec's Motion to Strike Finjan's Doctrine of Equivalents; granting 226 Administrative Motion to File Under Seal; granting 230 Administrative Motion to File Under Seal; granting 241 Administrative Motion to File Under Seal (ahm, COURT STAFF) (Filed on 9/13/2017)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 FINJAN, INC., Plaintiff, 8 9 10 United States District Court Northern District of California 11 Case No.14-cv-02998-HSG (JSC) v. SYMANTEC CORP., Defendant. ORDER RE SYMANTEC’S MOTION TO STRIKE FINJAN’S DOCTRINE OF EQUIVALENTS CONTENTIONS Re: Dkt. Nos. 225, 226, 230, 241 12 13 Plaintiff Finjan Inc. alleges Defendant Symantec Corporation infringes several of Finjan’s 14 patents. Now pending before the court is Symantec’s motion to strike Finjan’s recent doctrine of 15 equivalents (“DOE”) contentions. (Dkt. No. 225.) Having carefully reviewed the parties’ briefing 16 and having had the benefit of oral argument on September 12, 2017, the Court concludes Finjan 17 has demonstrated good cause to supplement its infringement contentions to include DOE analysis 18 and denies Symantec’s motion to strike. 19 20 BACKGROUND Finjan served its infringement contentions on December 4, 2014, and supplemented them 21 on April 23, 2015 pursuant to a stipulation entered by the parties. (Dkt. No. 71.) In its 22 contentions, Finjan reserved the right to supplement its contentions pursuant to Patent Local Rule 23 3-6, “including . . . applying the [DOE] to additional claim elements, as it obtains additional 24 information . . . .” (Dkt. No. 80-4 at 22:24-21:3.) On April 30, 2015, Finjan served Interrogatory 25 No. 10, which asked Symantec to “identify all legal and factual bases for your contention that 26 [each asserted] claim is not infringed and in a chart form, provide a substantive, particularized 27 description of how Symantec does not infringe each element.” (Dkt. No. 79-27 at 10:5-10). 28 Symantec initially responded on June 4, 2015 with several objections and the following paragraph: 1 2 3 4 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 None of the “accused instrumentalities” infringe any asserted claim of any asserted patent either directly or indirectly, or literally or under the doctrine of equivalents, because, as set forth in Symantec’s Motion to Strike, Dkt No. 79, Finjan has, in its Infringement Contentions and Amended Infringement Contentions, (1) failed to adequately identify any accused instrumentalities that infringe all elements of any asserted claim of any asserted patent, as Finjan’s claim charts simply omit certain claim limitations; (2) failed to adequately provide any justification for its use of representative claim charts for multiple accused instrumentalities, as Finjan only summarily states in its charts that multiple instrumentalities include the functionality charted for a single instrumentality; (3) failed to adequately identify the accused instrumentalities, as Finjan’s claim charts and other documents do not even consistently refer to the same accused instrumentalities for given asserted patents or claims; (4) improperly lumped together information regarding multiple Symantec products and technologies into single claim charts without adequate explanation and then duplicated those charts, merely changing the name of the single accused instrumentality that each chart purportedly represents; and (5) failed to adequately disclose the factual basis for its infringement theories by expressly mapping claim limitations to accused instrumentalities and instead provided charts consisting of vague and conclusory statements. Therefore, Finjan has failed to adequately prove that any accused instrumentalities infringe any asserted claim of any asserted patent either directly or indirectly, or literally or under the doctrine of equivalents. Symantec incorporates its Motion to Strike, Dkt No. 79, herein by reference. Symantec reserves the right to supplement this response. 14 (Dkt. No. 230-6 at 4:7-26.; Finjan’s Ex. 1 at 46; Dkt. No. 231-3 at 3.) Two years later, one hour 15 before the close of fact discovery, Symantec supplemented its response to Interrogatory No. 10 16 with 72 pages of confidential Symantec product information and detailed assertions of its non- 17 infringement positions, identifying for the first time technical product descriptions for specific 18 claim elements and how it claims that its accused products do not satisfy the claim elements. 19 (Dkt. No. 230-6; Finjan Ex. 1.) Finjan reviewed Symantec’s response and notified Symantec on 20 the next business day that based on Symantec’s identification of new information, Finjan intended 21 to supplement its infringement contentions by June 30, 2017 to include DOE analysis. (Dkt. No. 22 231-3 at 3-4; Finjan Ex. 2 at 2-3.) On Tuesday, June 27, 2017, Symantec responded that it would 23 consider a stipulation. (Id.) The next day Finjan prepared and provided Symantec its proposed 24 DOE supplement. (Id.) 25 Symantec later withdrew its offer to stipulate and the parties filed a joint discovery letter 26 brief in which Finjan requested permission to supplement its infringement contentions to address 27 the supplemental information provided by Symantec. (Dkt. No. 206.) At the discovery letter 28 2 1 hearing the Court gave Symantec the opportunity to withdraw its supplemental interrogatory 2 response if the supplementation did not provide any new information. (Dkt. No. 231-5 at 3: 6-24.) 3 Symantec did not withdraw and instead argued that Finjan included new, undisclosed theories in 4 its proposed DOE supplement. (Id. at 3:25-4:13.) The Court concluded that it could not 5 determine the issue on a letter brief and granted Symantec leave to file a motion to strike Finjan’s 6 DOE supplement from its infringement contentions. (Id. at 5:22-6:9.) Symantec subsequently 7 filed the pending motion. LEGAL STANDARD 8 The local rules of the Northern District of California require parties to define their theories 9 of patent infringement and invalidity early in the course of litigation. O2 Micro Int'l Ltd. v. 11 United States District Court Northern District of California 10 Monolithic Power S17-29ys., Inc., 467 F.3d 1355, 1359 (Fed. Cir. 2006). “In contrast to the more 12 liberal policy for amending pleadings, the philosophy behind amending claim charts is decidedly 13 conservative, and designed to prevent the shifting sands approach to claim construction.” Positive 14 Techs., Inc. v. Sony Elecs., Inc., No. C. 11-2226-SI, 2013 WL 322556, at *2 (N.D. Cal. Jan. 28, 15 2013). Thus, this district’s Patent Local Rules permit parties to amend their infringement 16 contentions “only by order of the Court upon a timely showing of good cause.” See Patent L.R. 3- 17 6. Further, Federal Rule of Civil Procedure 26(e) provides that a party who has responded to an 18 interrogatory must supplement its response “in a timely manner if the party learns that in some 19 material respect the . . . response is incomplete or incorrect, and if the additional or corrective 20 information has not otherwise been made known to the other parties during the discovery process 21 or in writing.” Fed. R. Civ. P. 26(e)(1)(A). DISCUSSION 22 23 I. Amending Infringement Contentions 24 A. Good Cause 25 To make a satisfactory showing of good cause, a party seeking to amend its infringement 26 contentions must show that it “acted with diligence in promptly moving to amend when new 27 evidence is revealed in discovery.” O2 Micro, 467 F.3d at 1363. “The party seeking to amend its 28 contentions bears the burden of establishing diligence.” CBS Interactive, Inc. v. Etilize, Inc., 257 3 1 2 F.R.D. 195, 201 (N.D. Cal. 2009) (citing O2 Micro, 467 F.3d at 1366–67). Non-exhaustive examples of circumstances that may, absent undue prejudice to the non- 3 moving party, support a finding of good cause include: “(a) claim construction by the Court 4 different from that proposed by the party seeking amendment; (b) recent discovery of material, 5 prior art despite earlier diligent search; and (c) recent discovery of nonpublic information about 6 the Accused Instrumentality which was not discovered, despite diligent efforts, before the service 7 of the Infringement Contentions.” Patent L.R. 3-6. By requiring a showing of good cause, “Local 8 Rule 3-6 serves to balance the parties’ rights to develop new information in discovery along with 9 the need for certainty in legal theories at the start of the case.” Open DNS, Inc. v. Select Notifications Media, LLC, No. C-11-5101 EJD (HRL), 2013 WL 2422623, at *2 (N.D. Cal. June 11 United States District Court Northern District of California 10 3, 2013) (citing O2 Micro, 467 F.3d at 1366). 12 Finjan has shown good cause. Symantec provided 72 pages of information in response to 13 Interrogatory No. 10 one hour before the close of discovery. Finjan contends it was not aware of 14 the technical information before this last minute disclosure. This detailed information was not 15 produced in Symantec’s initial response two years ago; nor was it included in Symantec’s motion 16 to strike Finjan’s infringement contentions which Symantec incorporated into its response. 17 Indeed, Rule 26(e)(1)(A) only requires supplementation of an interrogatory response “if the 18 additional or corrective information has not otherwise been made known to the other parties 19 during the discovery process or in writing.” Each page of the newly supplemented disclosures is 20 marked “HIGHLY CONFIDENTIAL-ATTORNEYS’ EYES ONLY” making them nonpublic. 21 This recent discovery of Symantec’s nonpublic information constitutes good cause for Finjan to 22 amend its infringement contentions. See Patent L.R. 3-6. 23 Symantec’s reliance on Apple Inc. v. Samsung Electronics Co. Ltd, 2013 WL 3246094 24 (N.D. Cal. June 26, 2013), is unpersuasive. In Apple, the court held that “deficiencies in Apple’s 25 noninfringement theories do not justify Samsung’s delay in asserting all of the infringement 26 theories it reasonably believed it could assert.” Apple Inc., 2013 WL 3246094, at *4. The Court 27 explained: 28 Samsung argues that because Apple may later seek narrowly-defined structures for 4 each of the terms—as it did for the ‘757 Patent and the ‘239 Patent—and Judge Koh may adopt those narrow structures, Samsung now has good cause to add DOE and Section 112(f) equivalents theories. But again, what has changed? Was the likelihood of Apple arguing for narrow structures for the means-plus-functions claim terms unforeseeable to Samsung earlier in this case? Or does Samsung now appreciate that it may not obtain the constructions it desires? Concern over the possibility of a loss at claim construction does not amount to good cause.... the Patent Local Rules recognize that because patentees must provide their theories early in the case, situations may arise that require adjustment of those contentions. But absent a change in circumstances (and the diligence of the party who needs to amend), a change in theory after the case has progressed is unjustified.” 1 2 3 4 5 6 7 8 9 10 United States District Court Northern District of California 11 12 Id. Unlike Apple, here there was a significant change. Interrogatory 10 required Symantec to identify all legal and factual bases for its contention that each asserted claim is not infringed. Symantec’s initial response did not provide any factual basis regarding its products, or why they did not infringe upon Finjan’s claims. The change in circumstance occurred two years later, when Symantec substantively answered Finjan’s discovery request by submitting 72 pages of descriptions regarding its technologies and why they do not infringe any claims. 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Moreover, at oral argument, in response to a question from the Court as to how its 11th hour supplementation was “timely made,” Symantec argued that there were many depositions at the end of discovery and that it was from Finjan’s questioning of Symantec’s witnesses that Finjan’s infringement contentions crystalized. That Symantec’s supplemental response relies on the deposition testimony of its own witnesses is further evidence that Finjan did not possess the new technical information in Symantec’s response, at least until those depositions, which occurred within a few months of Symantec’s request for leave. This change in circumstance establishes good cause. See Patent L.R. 3-6 (recent discovery of nonpublic information constitutes good cause). Symantec also relies on Verinata Health Inc. v. Ariosa Diagnostics, Inc., 2017 WL 589191 (N.D. Cal. Feb. 14, 2017), to argue Finjan has not shown good cause because Finjan has not identified what new information led to its proposed amendments. In Verinata Health, the plaintiff alluded to previously nonpublic information contained in the defendant’s noninfringement contentions, but neither identified specific nonpublic information nor explained how the disclosure led to its new DOE theories. Id. at *3. The court concluded that the plaintiff’s argument was more 28 5 1 along the lines that it was surprised by defendant’s noninfringement theories and that this was 2 insufficient to meet the good cause burden. Id. Here, in contrast, Finjan has identified specific 3 non-public information concerning over two dozen Symantec technologies that appears for the first 4 time in Symantec’s opposition. (Dkt. No. 230-4 at 8-10.) 5 Symantec also relies on Fujifilm Corp. v. Motorola Mobility LLC, 2015 WL 757575 (N.D. Cal. Feb. 20, 2015) to argue that Finjan improperly waited to disclose its DOE contentions because 7 it already understood how the Symantec technologies work and had the information it needed to 8 prosecute its contentions. In Fujifilm, the defendant served a supplement to its interrogatory 9 response describing its noninfringement positions in slightly more detail two weeks before the 10 deadline for opening expert reports. Id. at 7. The plaintiff stated that this was the first time it 11 United States District Court Northern District of California 6 realized the defendant’s noninfringement positions would potentially require the plaintiff to rely on 12 the doctrine of equivalents. Id. Here, unlike Fujifilm, Symantec’s supplemental disclosures 13 contained entirely new information regarding Symantec’s products. This is not a case where 14 Symantec provided only “slightly more detail” regarding its noninfringement position - 15 Symantec’s first disclosure provided no details whatsoever. Finjan has met its burden to show 16 good cause. 17 Finally, Symantec laments that Finjan relies on technology that was not identified in its 18 original literal infringement contentions. As explained at oral argument, the Court understands 19 that Finjan has not moved for leave to amend its literal infringement contentions and thus no such 20 leave will be granted. 21 B. Diligence 22 Finjan has also demonstrated diligence. Finjan received Symantec’s supplemental 23 response at 11pm on Friday June 23, 2017. One business day later Finjan informed Symantec that 24 it intended to supplement its infringement contentions by June 30, 2017. Symantec does not 25 dispute Finjan’s diligence. Finjan has made a satisfactory showing of good cause by promptly 26 moving to amend when Symantec revealed new information. See O2 Micro, 467 F.3d at 1363. 27 C. Prejudice 28 If the moving party is able to establish diligence, the Court should then consider prejudice 6 1 to the non-moving party in determining whether to grant leave to amend. See O2 Micro, 467 F.3d 2 at 1368; CBS Interactive, 257 F.R.D. at 201. Symantec argues it will suffer prejudice if the Court 3 allows Finjan’s DOE contentions because: (1) the contentions are related to new infringement 4 theories not at issue in the case which will lead to additional discovery, depositions regarding the 5 technologies, and supplemental productions; and (2) the district court will have to reopen claim 6 construction proceedings which will lead to significant delays to the case management schedule, 7 interrupt expert prep, and delay summary judgment and trial. 8 9 On this record there is no prejudice. Finjan represents that it is not seeking discovery into Symantec’s products. (Dkt. No. 230-4 at 13:16-17.) And at oral argument the Court confirmed that Finjan will not be allowed further discovery in support of its DOE contentions. Further, 11 United States District Court Northern District of California 10 Symantec has not specified what depositions or written discovery it needs or why a further claims 12 construction would be necessary. The parties may need to stipulate to amend expert discovery 13 deadlines, but that extension is required by Symantec’s last minute supplementation of 14 “additional or corrective information [that] has not otherwise been made known to the other 15 parties during the discovery process or in writing.” Fed. R. Civ. P. 26(e)(1)(A). 16 Moreover, the trial date is April 9, 2118. Other courts in this district have held that seven 17 months is sufficient time to review a plaintiff’s amended infringement contentions. See Linex 18 Technologies, Inc. v. Hewlett-Packard Company, 2013 WL 5955546, at * (N.D. Cal. Nov. 6, 19 2013) (plaintiff’s motion to amend its infringement contentions was granted in November where 20 trial was set for the following July). Furthermore, as Finjan notes, its proposed amendments do 21 not add new patent claims or new products. See Apple, 2012 WL 5632618, at *3 (noting that 22 proposed amendment did not add new claims or theories of infringement). Finjan has met its 23 burden to show good cause. Accordingly, the Court grants Finjan leave to serve its DOE 24 contentions and denies Symantec’s motion to strike. 25 D. Rule 3-1(b) and (c) 26 Patent Local Rule 3–1(b) requires, in pertinent part, that each accused product is identified 27 as specifically as possible by name or model number for each asserted claim, if known. Patent 28 Local Rule 3-1(c) requires, in relevant part, a chart identifying specifically where each limitation 7 1 of each asserted claim is found within each accused instrumentality. Symantec argues Finjan’s contentions are not specific but summarily refer to “Symantec 2 3 Products” without specifically identifying which Symantec products the new contentions relate to, 4 in violation of Rule 3-1(b). Symantec also argues Finjan violates Rule 3-1(c) because Finjan has 5 not described how the products are substantially the same. Finjan counters that the DOE analysis 6 was “clearly intended to be inserted into each chart at individual elements, and where it would 7 apply to those specific products.” (Dkt. No.230-4 at 17:2-4.) However the DOE analysis is not 8 presently inserted into Finjan’s chart in a manner which identifies the specific products. (See Dkt. 9 No. 226-5.) As such, the Court instructs Finjan to amend its DOE analysis as Finjan suggests, such that the DOE analysis specifically identifies the Symantec products it refers to, as required by 11 United States District Court Northern District of California 10 Patent Local Rule 3-1. Such amendment shall be produced on or before September 20, 2017. 12 II. 13 Motions to File Under Seal Symantec moves to file Exhibits A-G and part of Exhibit M under seal. (Dkt. Nos. 225, 14 241.) Exhibits A-G includes Finjan’s infringement and DOE contentions as well as transcript 15 excerpts of two of Symantec employees. Exhibit M is Symantec’s response to Finjan’s 16 interrogatory 20, which describes Symantec’s source code and source code directors. Finjan 17 moves to file part of its opposition as well as Exhibits 1, 5, 6, and 10-14 under seal. These 18 exhibits include technical documents produced in discovery concerning Symantec’s products and 19 deposition excerpts of employees. (Dkt. No. 230.) The documents submitted by both Symantec 20 and Finjan clearly concern confidential business information whose disclosure would impact 21 Symantec’s competitive posture. Accordingly, the Court grants all three motions to seal. 22 23 CONCLUSION The Patent Local Rules are designed to crystalize the parties’ theories early in the case. 24 For whatever reason, that does not appear to have happened here. For the reasons described 25 above, the most fair approach at this stage in the proceedings is to allow Symantec’s 26 supplementation of its response to Interrogatory No. 10, allow Finjan to assert its DOE 27 contentions, and deny Symantec’s motion to strike. Finjan is ordered to update its DOE 28 contentions as set forth in this Order on or before September 20, 2017. 8 1 This Order disposes of Dkt. No. 225, 226, 230, and 241. 2 IT IS SO ORDERED. 3 Dated: September 13, 2017 4 5 JACQUELINE SCOTT CORLEY United States Magistrate Judge 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9

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