Finjan, Inc. v. Sonicwall, Inc.
Filing
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Order by Magistrate Judge Virginia K. DeMarchi granting in part and denying in part 164 Motion to Strike Second Supplemental Infringement Contentions. Finjan's revised infringement contentions due by 12/11/2019. (vkdlc1S, COURT STAFF) (Filed on 12/3/2019)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN JOSE DIVISION
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FINJAN, INC.,
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Plaintiff,
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v.
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SONICWALL, INC.,
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United States District Court
Northern District of California
Case No. 17-cv-04467-BLF (VKD)
Defendant.
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ORDER GRANTING IN PART
MOTION TO STRIKE SECOND
SUPPLEMENTAL INFRINGEMENT
CONTENTIONS
Re: Dkt. No. 164
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In this patent infringement action, defendant SonicWall, Inc. (“SonicWall”) moves to
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strike plaintiff Finjan, Inc.’s (“Finjan”) second supplemental infringement contentions. Dkt. No.
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164. The motion was referred to the undersigned judge. Dkt. No. 75. The Court heard oral
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argument on the matter on October 29, 2019 and gave the parties an opportunity to file
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supplemental material on October 30, 2019. Dkt. Nos. 177, 179. Having considered the parties’
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submissions and arguments made at the hearing, the Court grants in part and denies in part
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SonicWall’s motion to strike. The Court also orders Finjan to revise its infringement contentions
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as described below.
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I.
BACKGROUND
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On April 10, 2018, Finjan served its original disclosure of asserted claims, infringement
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contentions, and document production pursuant to Patent Local Rules 3-1 and 3-2. The original
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disclosure asserted infringement of 39 claims across the following ten patents: U.S. Patent Nos.
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6,154,844 (“the ’844 patent”); 7,058,822 (“the ’822 patent”); 6,804,780 (“the ’780 patent”);
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7,613,926 (“the ’926 patent”); 7,647,633 (“the ’633 patent”); 8,141,154 (“the ’154 patent”);
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8,677,494 (“the ’494 patent”); 7,975,305 (“the ’305 patent”); 8,225,408 (“the ’408 patent”); and
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6,965,968 (“the ’968 patent”). See Dkt. No. 112-2 at 2. After SonicWall objected to this original
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disclosure, Finjan served supplemental infringement contentions on November 9, 2018. Dkt. No.
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118 at 2. These did not satisfy SonicWall, which moved to compel further supplemental
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infringement contentions. Dkt. No. 112.
On May 1, 2019, the Court granted SonicWall’s motion and ordered Finjan to amend its
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infringement contentions. Dkt. No. 146. As relevant here, the Court ordered Finjan to eliminate
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open-ended language and references to unidentified components by, among other things, removing
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placeholder reference to unspecified products, services, or components, and specifying whether a
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product or service infringes alone or in combination. Id. The Court also ordered Finjan to revise
its contentions to specifically identify the elements of the accused instrumentalities that satisfy
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United States District Court
Northern District of California
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certain limitations of claim 6 of the ’305 patent, claim 22 of the ’926 patent, claim 9 of the ’408
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patent, claims 1 and 15 of the ’844 patent, claim 9 of the ’780 patent, claims 1, 10, and 3 of the
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’154 patent, and claims 1, 7, and 11 of the ’968 patent. Id.
Finjan served its second supplemental infringement contentions on May 31, 2019. Dkt.
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No. 170 at 2. SonicWall now moves to strike Finjan’s second supplemental infringement
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contentions on the ground that they fail to comply with the Court’s May 2019 order requiring
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amendment.
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II.
LEGAL STANDARD
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“Striking a patentee’s infringement contentions is a severe sanction that should be used
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sparingly and only for good cause.” Avago Techs., Inc. v. IPtronics Inc., No. 5:10-CV-02863-
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EJD, 2015 WL 4647923, at *2 (N.D. Cal. 2015) (citation omitted). As a result, “motions to strike
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initial infringement [contentions] are frequently treated as motions to compel amendment of the
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infringement contentions.” Geovector Corp. v. Samsung Elecs. Co., No. 16-CV-02463-WHO,
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2017 WL 76950, at *7 (N.D. Cal. Jan. 9, 2017). However, courts may strike, with prejudice,
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supplemental or amended infringement contentions where patentees repeatedly fail to comply with
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Patent Local Rule 3-1 and earlier orders concerning amendment. Compare, e.g., id. (declining to
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strike plaintiff’s infringement contentions with prejudice on defendant’s first motion to strike)
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with Shared Memory Graphics LLC v. Apple Inc., No. C-10-02475-MMC (JSC), 2011 WL
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3878388, at *11–12 (N.D. Cal. Nov. 2, 2011) (denying leave to serve third amended infringement
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contentions where plaintiff had amended its contentions twice already but still failed to comply
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with Patent Local Rule 3-1(c)) and Huang v. Nephos Inc., No. C 18-06654 WHA, 2019 WL
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5892988, at *4 (N.D. Cal. Nov. 12, 2019) (granting second motion to strike fourth amended
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infringement contentions and dismissing case with prejudice “[a]fter multiple wasted chances” and
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“despite repeated guidance from the Court”).
Patent Local Rule 3-6 provides that a patentee may only amend its infringement
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contentions “by order of the Court upon a timely showing of good cause.”
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III.
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DISCUSSION
SonicWall moves to strike Finjan’s second supplemental infringement contentions on four
United States District Court
Northern District of California
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grounds. First, SonicWall says that Finjan’s contentions do not clarify its infringement theories by
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providing separate charts for accused products alone and for accused products in combination with
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the Capture Advanced Threat Protection (“Capture ATP”) product but instead continue to assert
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allegedly infringing combinations of standalone products and cloud-based resources. Second,
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SonicWall says that Finjan’s contentions continue to use open-ended language that does not
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provide SonicWall fair notice of what is accused. Third, SonicWall says that Finjan’s contentions
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for the ’154 patent fail to comply with the Court’s order to specify the instrumentality that meets
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the limitation of claim 1 that requires “transmitting the input to the security computer for
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inspection, when the first function is invoked.” Fourth, SonicWall argues that for all asserted
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patents except for the ‘408 patent Finjan asserts new infringement theories that go beyond the
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scope of the amendments the Court previously permitted.
Finjan’s Contentions for Products that Infringe “Alone”
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A.
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In its May 2019 order, the Court ordered that “Finjan must specify whether a product or
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service infringes alone or in combination. For example, if Finjan contends that the Capture ATP
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product infringes an asserted claim, both alone and in combination with some other product or
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service, its infringement contentions should make that clear.” Dkt. No. 146 at 5. Finjan’s second
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supplemental contentions include separate charts that purport to describe its infringement theories
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for the accused Gateway and Email Security Appliance (“ESA”) instrumentalities alone and
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separately for those instrumentalities in combination with Capture ATP, which Finjan has
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previously described as “SonicWall’s cloud-based sandbox network.” Dkt. No. 118 at 6 n.6.
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SonicWall argues that these second supplemental contentions do not comply with the
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Court’s May 2019 order because the “alone” charts do not actually chart the accused Gateway or
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ESA instrumentalities alone; instead, Finjan’s amended contentions require the combination of
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Gateway and ESA with additional components. Dkt. No. 164 at 6–7. Specifically, SonicWall
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says that Finjan has simply replaced references to “Capture ATP” with references to other external
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sandboxes—namely the “CloudAV sandbox” and the “GRID sandbox”—in its “alone”
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contentions. Id. at 9–12. According to SonicWall, the Gateway- or ESA-plus-sandbox
infringement contentions do not comply with the Court’s order because they do not actually chart
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United States District Court
Northern District of California
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infringement by the Gateway or ESA instrumentalities alone.1
Finjan responds that its contentions comply with the Court’s order to separately chart
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infringement by the Gateway and ESA instrumentalities alone and in combination with Capture
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ATP. Finjan asserts that the CloudAV and GRID sandboxes are not separate products, but rather
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are components of the Gateway and ESA instrumentalities themselves, and therefore Finjan
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simply complied with the Court’s directive to be more specific about its “alone” contentions. Dkt.
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No. 170 at 7–8. Finjan explains that its citations to the same documents and source code across
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the “alone” and “with CaptureATP” charts stem from the fact that the CloudAV, GRID, and
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Capture ATP sandboxes share mostly the same source code. Id. at 4–6, 7–9.
The question before the Court is whether Finjan’s Gateway-only and ESA-only
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contentions disclose new “combination” theories of infringement, or whether they instead disclose
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with greater particularity Finjan’s prior “alone” theories of infringement for Gateway and ESA. In
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answering this question, the Court finds significant Finjan’s representations made in response to
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SonicWall’s earlier motion to compel further supplemental infringement contentions. At that
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time, Finjan asserted that the accused Gateway and ESA instrumentalities were capable of
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infringing alone (i.e., “on the box”) without connection to any cloud-based component, as well as
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SonicWall does not move to strike Finjan’s second supplemental infringement contentions for
the Capture ATP product alone on this basis.
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in combination with Capture ATP. See, e.g., Dkt. No. 118 at 6 (“For example, certain products are
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appliances that are capable of infringing malware analysis ‘on the box’ (without connecting to the
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cloud) and infringe through the use of this analysis engine. However, these products can also
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connect to Capture ATP in the ‘cloud’ for further malware analysis that also infringes.”)
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(emphasis added). At the March 12, 2019 hearing on SonicWall’s earlier motion to compel,
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Finjan represented to the Court that its existing contentions embodied these two distinct theories
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of infringement and that it could amend its contentions to make the distinction clear. Dkt. No. 129
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at 12:09–14:57. The Court ultimately ordered Finjan to make precisely these amendments to
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clearly distinguish its Gateway-only and ESA-only theories from its Gateway-combined with
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United States District Court
Northern District of California
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Capture ATP and ESA-combined with Capture ATP theories. Dkt. No. 146 at 5.
The Court has compared the portions of Finjan’ first supplemental contentions and its
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second supplemental contentions for the Gateway-only and ESA-only instrumentalities that the
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parties submitted with their briefing. The second supplemental contentions contain some
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infringement contentions that do appear to be limited to functionality “on the box” that requires no
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connection to a cloud-based resource or some other external component. For example, Contention
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1 for limitation 10b of claim 10 of the ’494 patent discloses that the “Firewall [of the SonicWall
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Gateways] has a receiver for receiving an incoming Downloadable,” because the Gateway
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instrumentalities include “hardware (network interface card) and software components (proxy
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software) that are receivers configured to received Downloadables from a source computer (i.e.,
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Internet) for inspection to detect malware.” Dkt. No. 184-8 at 2. Contention 1 thus does not rely
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on any cloud-based components as the basis for infringement.
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However, Finjan’s second supplemental contentions also include sets of contentions that
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are not so limited and, more importantly, do not appear to have been disclosed previously.
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Contention 2 discloses CloudAV as possessing a receiver for receiving an incoming
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Downloadable, which then “receives executable files from the Firewall for further analysis on
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servers located in the cloud (aka CloudAV Sandbox).” Id. at 4 (emphasis added). Contention 3
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discloses GRID as having a receiver, which “receives incoming files through its honeypots and
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webcrawlers for further processing by the GRID Sandbox.” Id. at 7. And Contention 4 discloses
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GRID’s receiver as receiving “incoming files through SonicWall Capture cloud service for further
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processing by the GRID Sandbox.” Id. at 8 (emphasis added).
The Court will hold Finjan to its earlier representations that the Gateway and ESA
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instrumentalities infringe “alone” and “on the box,” without connection to cloud-based
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components. To the extent Finjan’s second supplemental infringement contentions purport to
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disclose infringement theories for Gateway and ESA “alone” that rely on claim limitations met by
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cloud-based components, such as the CloudAV and GRID sandboxes, such contentions are outside
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the scope of the amendments permitted in the Court’s May 2019 order, and the Court grants
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SonicWall’s motion to strike these contentions.2 Finjan shall re-serve its Gateway-only and ESA-
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only disclosures to eliminate contentions that certain limitations are met by cloud-based resources
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United States District Court
Northern District of California
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or components.
Finjan’s Use of Combinations of Contentions
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B.
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In its May 2019 order, the Court found that Finjan’s use of open-ended language and
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references to unidentified components rendered Finjan’s contentions unacceptably vague. Dkt.
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No. 146 at 4. The Court ordered Finjan to amend its contentions to eliminate the use of “and/or”
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language and “examples” of infringement and to specifically identify the products, services, and
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components at issue. Id. at 5, 9, 10, 22.
SonicWall argues that Finjan’s second supplemental contentions do not comply with this
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directive. Dkt. No. 164 at 12. SonicWall points to Finjan’s use of numbered “contentions” for the
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limitations of certain asserted patents and its reliance on the “catch-all” statement: “Any
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contentions below can be used in any combination with the other contentions unless explicitly
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stated.” See, e.g., Dkt. No. 169-6 at 1. According to SonicWall, this formulation produces an
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“astronomical number of potential infringement permutations.” Dkt. No. 714 at 3–4.
At the hearing, Finjan explained that the numbered contentions are the “explicit statement”
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Contrary to its prior representations, at the October 31, 2019 hearing on the present motion to
strike, Finjan insisted that the Gateway and ESA instrumentalities would be essentially useless
without a connection to the CloudAV and GRID sandboxes. Dkt. No. 189 at 26:24–27:19. If that
is the case, Finjan may wish to withdraw its Gateway-only and ESA-only contentions in their
entirety.
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of permitted combinations for those contentions that have numbers. See Dkt. No. 189 at 44:5–
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45:8, 47:16–48:4, 49:8–50:16. For example, Finjan says, “contention 1” for limitation 15a of
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claim 15 of the ’844 patent may only be combined with “contention 1” for limitations 15b, 15c,
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and 15d of claim 15, and not with “contention 2” or “contention 3” for those limitations.3 Id. at
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44:5–45:8, 47:16–48:4. Finjan agreed to clarify which, if any, numbered contentions may be
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combined with others. Dkt. No. 189 at 38:21–51:17.
As this dispute arises from an ambiguity in Finjan’s supplemental contentions that the
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parties easily could have resolved without the Court’s assistance, the Court denies SonicWall’s
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motion to strike on this ground. However, Finjan must revise its infringement contentions to
eliminate ambiguity and to clarify which combinations of contentions it asserts. It may not rely on
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United States District Court
Northern District of California
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correspondence with counsel for SonicWall.
Finjan’s Contentions for the ’154 Patent
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C.
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In its May 2019 order, the Court ordered Finjan to revise its contentions as to certain
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limitations of claims 1, 3, and 10. Dkt. No. 146 at 20–24. Among other things, the Court required
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Finjan to amend its contentions to specifically identify the basis for its view that the accused
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instrumentalities meet the requirements of claim 1 of “transmitting the input to the security
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computer for inspection, when the first function is invoked.” Id. at 20–23.
SonicWall argues that Finjan’s second supplemental contentions for the ’154 patent do not
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disclose whether or how the accused instrumentalities meet limitation 1c of claim 1 of the ’154
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patent, which requires “a transmitter for transmitting the input to the security computer for
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inspection, when the first function is invoked.” Dkt. No. 164 at 13. Specifically, SonicWall says
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that Finjan does not disclose that the accused instrumentality transmits the input “when the first
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function is invoked.” Id.
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Finjan responds that its contentions do indeed disclose this limitation, but that the
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disclosure appears in the contentions for the “content processor” in limitation 1b of claim 1. Dkt.
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The Court observes, however, that Finjan’s contentions for limitation 15a of claim 15 of the ’844
patent only discloses one contention: contention 1. Dkt. No. 169-8 at 1. Either contention 1 for
limitation 15a must be combined with contentions 2, 3, and 4 for the remaining limitations of
claim 15, or Finjan has not fully disclosed its infringement theories as to contentions 2, 3, and 4.
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No. 70 at 10; Dkt. No. 189 at 52:16–57:2. At the hearing, Finjan agreed to revise its contentions
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for the ’154 patent to specify its contentions for the “transmitting . . . when” portion of limitation
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1c of claim 1. Dkt. No. 189 at 54:23–58:11.
As the parties also could have resolved this dispute without the Court’s assistance, the
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Court denies SonicWall’s motion to strike on this ground. However, Finjan must revise its
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infringement contentions for the ’154 patent to make explicit whether and how the accused
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instrumentalities meet the “transmitting . . . when” portion of limitation 1c of claim 1.
Finjan’s Allegedly New Infringement Theories
D.
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SonicWall contends that Finjan’s second supplemental contentions include new
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infringement theories outside the scope of the amendment permitted and required in the Court’s
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United States District Court
Northern District of California
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May 2019 order with respect to the ’926, ’968, ’305, ’844, ’633, ’154, ’780, ’822, and ’494
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patents. SonicWall argues that these unauthorized amendments cannot be made absent leave of
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Court and require a showing of good cause and diligence by Finjan. The Court considers each
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allegedly new theory.
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First, with respect to the ’926, ’305, ’844, ’633, ’154, ’780, ’822, and ’494 patents,
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SonicWall challenges Finjan’s inclusion of references to the CloudAV and GRID sandboxes and
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to components identified as “honeypots” and “webcrawlers,”4 which SonicWall says were not
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identified as infringing components in Finjan’s earlier contentions. Dkt. No. 164 at 14–15, 16–21.
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Finjan repeats its argument that the CloudAV and GRID sandboxes are components of the accused
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Gateway and ESA instrumentalities and further asserts that honeypots and webcrawlers are merely
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cloud-based components of the “GRID” component, and therefore also part of the Gateway and
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ESA instrumentalities. Dkt. No. 170 at 12, 17–18, 19, 20. As discussed above, Finjan’s
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references to the CloudAV and GRID sandboxes, including the honeypots and webcrawlers, were
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not previously disclosed, and Finjan was not authorized to include those infringement theories in
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its Gateway-only and ESA-only contentions. See supra Section III.A.
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The Court understands that, in the context of this case, a “honeypot” is a security mechanism that
traps or otherwise diverts and isolates malware, and a “webcrawler” is a software program that
systematically browses the Internet for malware content.
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Second, with respect to the ’154 patent, SonicWall says that in addition to identifying the
CloudAV and GRID sandboxes as the “security computer” of claim 1 for the Gateway
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instrumentalities “alone,” Finjan now also identifies the “Stats server” as the “security computer.”
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Similarly, in addition to identifying the GRID sandbox as the “security computer” for the ESA
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instrumentalities “alone,” Finjan now also identifies the “URL Thumbprint Database” as the
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“security computer.” Dkt. No. 164 at 18–19. Finjan responds that the Stats server is a component
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of the Gateway instrumentalities and the URL Thumbprint Database is a component of the ESA
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instrumentalities, and that its amendments naming those components provide greater specificity.
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Dkt. No. 170 at 18–19. An examination of Finjan’s contentions, however, suggests that the Stats
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server and URL Thumbprint Database are separate from the Gateway and ESA instrumentalities,
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Northern District of California
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respectively. Finjan’s Gateway-only contentions state that “[t]he main components of SonicWall
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Gateways is the Firewall, CloudAV, and GRID”; the Stats server is not included. Elsewhere,
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Finjan’s contentions describes the Stats server as separate from the Firewall, CloudAV, and
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GRID. See, e.g., Dkt. No. 169-28 at 1, 12, 14 (“The Stats Server acts a security computer and will
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use the information sent to it by the contents processor of the Firewall, GRID Sandbox, and Cloud
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AV Sandbox . . . . The Firewall includes a transmitter to send the input to the Cloud AV and
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GRID Sandbox and to the Stats Server.”). Finjan’s ESA-only contentions likewise suggest that
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the URL Thumbprint Database is not a part of the ESA instrumentalities. See, e.g., Dkt. No. 169-
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30 at 9 (“Upon determining . . . suspicious obfuscated scripts are present, the Email Security
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Appliance sends the URL (input) to a security computer (the URL Thumbprint Database). The
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security computer will use the information sent to it by the Email Security Appliance to determine
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whether the URL is malicious . . . .”). Accordingly, the Court finds that Finjan’s reliance on the
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Stats server and the URL Thumbprint Database constitutes new theories of infringement not
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previously disclosed and not within the scope of the Court’s May 2019 order.
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Third, with respect to the ’968 patent, SonicWall says that Finjan previously identified
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“WXA appliances” as meeting aspects of limitations 1a and 1b of claim 1, but Finjan now
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identifies WXA appliances as meeting aspects of limitation 1c and 1d and a different aspect of
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limitation 1b. Dkt. No. 164 at 15–16. Finjan responds that it previously identified WXA
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appliances in combination with the Gateway instrumentalities as infringing and that its second
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supplemental contentions merely provide more detail about that previously disclosed theory. Dkt.
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No. 170 at 14–15. A review of Finjan’s earlier contentions shows that Finjan identified the
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Gateway instrumentalities in combination with WXA appliances as the “policy-based cache
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manager” of limitation 1a and as the “cache of digital content” of limitation 1b. Dkt. No. 111-30
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at 1, 4–5, 7, 14, 21. However, Finjan now contends that the Gateway instrumentalities combined
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with WXA appliances meets the “plurality of policies” and “policy index” of limitation 1b, as well
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as aspects of limitations 1c and 1d. Dkt. No. 169-32. These contentions were not previously
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disclosed. Accordingly, the Court finds that Finjan’s current contentions concerning the WXA
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appliances disclose a new infringement theory beyond the scope of the Court’s May 2019 order,
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United States District Court
Northern District of California
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and grants SonicWall’s motion to strike on this ground.
Finjan must revise its infringement contentions to eliminate these new theories of
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infringement.
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E.
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A plaintiff may amend its infringement contentions “only by order of the Court upon a
Leave to Amend
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timely showing of good cause,” such as the “[r]ecent discovery of nonpublic information about the
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Accused Instrumentality.” Patent L.R. 3-6. When determining whether to grant leave to amend,
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the Court first considers whether the party seeking leave acted diligently. Apple Inc. v. Samsung
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Elecs. Co., No. CF 12-00630 LHK, 2012 WL 5632618, at *2 (N.D. Cal. Nov. 15, 2012) (citation
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omitted). The Court then considers whether the proposed amendment would unduly prejudice the
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non-moving party. Id. (citation omitted). The parties have not adequately briefed whether Finjan
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has good cause for amending its contentions to add new infringement theories and whether those
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amendments would prejudice SonicWall. If Finjan wishes to amend its infringement contentions
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to add the theories the Court has stricken, or any other new theories of infringement, it may file a
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motion for leave to amend that comports with the requirements of Patent Local Rule 3-6, after first
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conferring with counsel for SonicWall about the proposed amendments.
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IV.
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CONCLUSION
For the foregoing reasons, the Court grants in part and denies in part SonicWall’s motion
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to strike Finjan’s second supplemental infringement contentions. Finjan shall serve revised
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contentions consistent with this order by December 11, 2019.
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IT IS SO ORDERED.
Dated: November 20, 2019
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VIRGINIA K. DEMARCHI
United States Magistrate Judge
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United States District Court
Northern District of California
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