Finjan, Inc. v. Sonicwall, Inc.

Filing 210

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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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 FINJAN, INC., 8 Plaintiff, 9 v. 10 SONICWALL, INC., 11 United States District Court Northern District of California Case No. 17-cv-04467-BLF (VKD) Defendant. 12 ORDER GRANTING IN PART MOTION TO STRIKE SECOND SUPPLEMENTAL INFRINGEMENT CONTENTIONS Re: Dkt. No. 164 13 In this patent infringement action, defendant SonicWall, Inc. (“SonicWall”) moves to 14 15 strike plaintiff Finjan, Inc.’s (“Finjan”) second supplemental infringement contentions. Dkt. No. 16 164. The motion was referred to the undersigned judge. Dkt. No. 75. The Court heard oral 17 argument on the matter on October 29, 2019 and gave the parties an opportunity to file 18 supplemental material on October 30, 2019. Dkt. Nos. 177, 179. Having considered the parties’ 19 submissions and arguments made at the hearing, the Court grants in part and denies in part 20 SonicWall’s motion to strike. The Court also orders Finjan to revise its infringement contentions 21 as described below. 22 I. BACKGROUND 23 On April 10, 2018, Finjan served its original disclosure of asserted claims, infringement 24 contentions, and document production pursuant to Patent Local Rules 3-1 and 3-2. The original 25 disclosure asserted infringement of 39 claims across the following ten patents: U.S. Patent Nos. 26 6,154,844 (“the ’844 patent”); 7,058,822 (“the ’822 patent”); 6,804,780 (“the ’780 patent”); 27 7,613,926 (“the ’926 patent”); 7,647,633 (“the ’633 patent”); 8,141,154 (“the ’154 patent”); 28 8,677,494 (“the ’494 patent”); 7,975,305 (“the ’305 patent”); 8,225,408 (“the ’408 patent”); and 1 6,965,968 (“the ’968 patent”). See Dkt. No. 112-2 at 2. After SonicWall objected to this original 2 disclosure, Finjan served supplemental infringement contentions on November 9, 2018. Dkt. No. 3 118 at 2. These did not satisfy SonicWall, which moved to compel further supplemental 4 infringement contentions. Dkt. No. 112. On May 1, 2019, the Court granted SonicWall’s motion and ordered Finjan to amend its 5 6 infringement contentions. Dkt. No. 146. As relevant here, the Court ordered Finjan to eliminate 7 open-ended language and references to unidentified components by, among other things, removing 8 placeholder reference to unspecified products, services, or components, and specifying whether a 9 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 11 United States District Court Northern District of California 10 certain limitations of claim 6 of the ’305 patent, claim 22 of the ’926 patent, claim 9 of the ’408 12 patent, claims 1 and 15 of the ’844 patent, claim 9 of the ’780 patent, claims 1, 10, and 3 of the 13 ’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. 14 15 No. 170 at 2. SonicWall now moves to strike Finjan’s second supplemental infringement 16 contentions on the ground that they fail to comply with the Court’s May 2019 order requiring 17 amendment. 18 II. LEGAL STANDARD 19 “Striking a patentee’s infringement contentions is a severe sanction that should be used 20 sparingly and only for good cause.” Avago Techs., Inc. v. IPtronics Inc., No. 5:10-CV-02863- 21 EJD, 2015 WL 4647923, at *2 (N.D. Cal. 2015) (citation omitted). As a result, “motions to strike 22 initial infringement [contentions] are frequently treated as motions to compel amendment of the 23 infringement contentions.” Geovector Corp. v. Samsung Elecs. Co., No. 16-CV-02463-WHO, 24 2017 WL 76950, at *7 (N.D. Cal. Jan. 9, 2017). However, courts may strike, with prejudice, 25 supplemental or amended infringement contentions where patentees repeatedly fail to comply with 26 Patent Local Rule 3-1 and earlier orders concerning amendment. Compare, e.g., id. (declining to 27 strike plaintiff’s infringement contentions with prejudice on defendant’s first motion to strike) 28 with Shared Memory Graphics LLC v. Apple Inc., No. C-10-02475-MMC (JSC), 2011 WL 2 1 3878388, at *11–12 (N.D. Cal. Nov. 2, 2011) (denying leave to serve third amended infringement 2 contentions where plaintiff had amended its contentions twice already but still failed to comply 3 with Patent Local Rule 3-1(c)) and Huang v. Nephos Inc., No. C 18-06654 WHA, 2019 WL 4 5892988, at *4 (N.D. Cal. Nov. 12, 2019) (granting second motion to strike fourth amended 5 infringement contentions and dismissing case with prejudice “[a]fter multiple wasted chances” and 6 “despite repeated guidance from the Court”). Patent Local Rule 3-6 provides that a patentee may only amend its infringement 7 8 contentions “by order of the Court upon a timely showing of good cause.” 9 III. 10 DISCUSSION SonicWall moves to strike Finjan’s second supplemental infringement contentions on four United States District Court Northern District of California 11 grounds. First, SonicWall says that Finjan’s contentions do not clarify its infringement theories by 12 providing separate charts for accused products alone and for accused products in combination with 13 the Capture Advanced Threat Protection (“Capture ATP”) product but instead continue to assert 14 allegedly infringing combinations of standalone products and cloud-based resources. Second, 15 SonicWall says that Finjan’s contentions continue to use open-ended language that does not 16 provide SonicWall fair notice of what is accused. Third, SonicWall says that Finjan’s contentions 17 for the ’154 patent fail to comply with the Court’s order to specify the instrumentality that meets 18 the limitation of claim 1 that requires “transmitting the input to the security computer for 19 inspection, when the first function is invoked.” Fourth, SonicWall argues that for all asserted 20 patents except for the ‘408 patent Finjan asserts new infringement theories that go beyond the 21 scope of the amendments the Court previously permitted. Finjan’s Contentions for Products that Infringe “Alone” 22 A. 23 In its May 2019 order, the Court ordered that “Finjan must specify whether a product or 24 service infringes alone or in combination. For example, if Finjan contends that the Capture ATP 25 product infringes an asserted claim, both alone and in combination with some other product or 26 service, its infringement contentions should make that clear.” Dkt. No. 146 at 5. Finjan’s second 27 supplemental contentions include separate charts that purport to describe its infringement theories 28 for the accused Gateway and Email Security Appliance (“ESA”) instrumentalities alone and 3 1 separately for those instrumentalities in combination with Capture ATP, which Finjan has 2 previously described as “SonicWall’s cloud-based sandbox network.” Dkt. No. 118 at 6 n.6. 3 SonicWall argues that these second supplemental contentions do not comply with the 4 Court’s May 2019 order because the “alone” charts do not actually chart the accused Gateway or 5 ESA instrumentalities alone; instead, Finjan’s amended contentions require the combination of 6 Gateway and ESA with additional components. Dkt. No. 164 at 6–7. Specifically, SonicWall 7 says that Finjan has simply replaced references to “Capture ATP” with references to other external 8 sandboxes—namely the “CloudAV sandbox” and the “GRID sandbox”—in its “alone” 9 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 11 United States District Court Northern District of California 10 infringement by the Gateway or ESA instrumentalities alone.1 Finjan responds that its contentions comply with the Court’s order to separately chart 12 13 infringement by the Gateway and ESA instrumentalities alone and in combination with Capture 14 ATP. Finjan asserts that the CloudAV and GRID sandboxes are not separate products, but rather 15 are components of the Gateway and ESA instrumentalities themselves, and therefore Finjan 16 simply complied with the Court’s directive to be more specific about its “alone” contentions. Dkt. 17 No. 170 at 7–8. Finjan explains that its citations to the same documents and source code across 18 the “alone” and “with CaptureATP” charts stem from the fact that the CloudAV, GRID, and 19 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 20 21 contentions disclose new “combination” theories of infringement, or whether they instead disclose 22 with greater particularity Finjan’s prior “alone” theories of infringement for Gateway and ESA. In 23 answering this question, the Court finds significant Finjan’s representations made in response to 24 SonicWall’s earlier motion to compel further supplemental infringement contentions. At that 25 time, Finjan asserted that the accused Gateway and ESA instrumentalities were capable of 26 infringing alone (i.e., “on the box”) without connection to any cloud-based component, as well as 27 28 SonicWall does not move to strike Finjan’s second supplemental infringement contentions for the Capture ATP product alone on this basis. 4 1 1 in combination with Capture ATP. See, e.g., Dkt. No. 118 at 6 (“For example, certain products are 2 appliances that are capable of infringing malware analysis ‘on the box’ (without connecting to the 3 cloud) and infringe through the use of this analysis engine. However, these products can also 4 connect to Capture ATP in the ‘cloud’ for further malware analysis that also infringes.”) 5 (emphasis added). At the March 12, 2019 hearing on SonicWall’s earlier motion to compel, 6 Finjan represented to the Court that its existing contentions embodied these two distinct theories 7 of infringement and that it could amend its contentions to make the distinction clear. Dkt. No. 129 8 at 12:09–14:57. The Court ultimately ordered Finjan to make precisely these amendments to 9 clearly distinguish its Gateway-only and ESA-only theories from its Gateway-combined with 10 United States District Court Northern District of California 11 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 12 second supplemental contentions for the Gateway-only and ESA-only instrumentalities that the 13 parties submitted with their briefing. The second supplemental contentions contain some 14 infringement contentions that do appear to be limited to functionality “on the box” that requires no 15 connection to a cloud-based resource or some other external component. For example, Contention 16 1 for limitation 10b of claim 10 of the ’494 patent discloses that the “Firewall [of the SonicWall 17 Gateways] has a receiver for receiving an incoming Downloadable,” because the Gateway 18 instrumentalities include “hardware (network interface card) and software components (proxy 19 software) that are receivers configured to received Downloadables from a source computer (i.e., 20 Internet) for inspection to detect malware.” Dkt. No. 184-8 at 2. Contention 1 thus does not rely 21 on any cloud-based components as the basis for infringement. 22 However, Finjan’s second supplemental contentions also include sets of contentions that 23 are not so limited and, more importantly, do not appear to have been disclosed previously. 24 Contention 2 discloses CloudAV as possessing a receiver for receiving an incoming 25 Downloadable, which then “receives executable files from the Firewall for further analysis on 26 servers located in the cloud (aka CloudAV Sandbox).” Id. at 4 (emphasis added). Contention 3 27 discloses GRID as having a receiver, which “receives incoming files through its honeypots and 28 webcrawlers for further processing by the GRID Sandbox.” Id. at 7. And Contention 4 discloses 5 1 GRID’s receiver as receiving “incoming files through SonicWall Capture cloud service for further 2 processing by the GRID Sandbox.” Id. at 8 (emphasis added). The Court will hold Finjan to its earlier representations that the Gateway and ESA 3 instrumentalities infringe “alone” and “on the box,” without connection to cloud-based 5 components. To the extent Finjan’s second supplemental infringement contentions purport to 6 disclose infringement theories for Gateway and ESA “alone” that rely on claim limitations met by 7 cloud-based components, such as the CloudAV and GRID sandboxes, such contentions are outside 8 the scope of the amendments permitted in the Court’s May 2019 order, and the Court grants 9 SonicWall’s motion to strike these contentions.2 Finjan shall re-serve its Gateway-only and ESA- 10 only disclosures to eliminate contentions that certain limitations are met by cloud-based resources 11 United States District Court Northern District of California 4 or components. Finjan’s Use of Combinations of Contentions 12 B. 13 In its May 2019 order, the Court found that Finjan’s use of open-ended language and 14 references to unidentified components rendered Finjan’s contentions unacceptably vague. Dkt. 15 No. 146 at 4. The Court ordered Finjan to amend its contentions to eliminate the use of “and/or” 16 language and “examples” of infringement and to specifically identify the products, services, and 17 components at issue. Id. at 5, 9, 10, 22. SonicWall argues that Finjan’s second supplemental contentions do not comply with this 18 19 directive. Dkt. No. 164 at 12. SonicWall points to Finjan’s use of numbered “contentions” for the 20 limitations of certain asserted patents and its reliance on the “catch-all” statement: “Any 21 contentions below can be used in any combination with the other contentions unless explicitly 22 stated.” See, e.g., Dkt. No. 169-6 at 1. According to SonicWall, this formulation produces an 23 “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” 24 25 26 27 28 2 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. 6 1 of permitted combinations for those contentions that have numbers. See Dkt. No. 189 at 44:5– 2 45:8, 47:16–48:4, 49:8–50:16. For example, Finjan says, “contention 1” for limitation 15a of 3 claim 15 of the ’844 patent may only be combined with “contention 1” for limitations 15b, 15c, 4 and 15d of claim 15, and not with “contention 2” or “contention 3” for those limitations.3 Id. at 5 44:5–45:8, 47:16–48:4. Finjan agreed to clarify which, if any, numbered contentions may be 6 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 7 8 parties easily could have resolved without the Court’s assistance, the Court denies SonicWall’s 9 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 11 United States District Court Northern District of California 10 correspondence with counsel for SonicWall. Finjan’s Contentions for the ’154 Patent 12 C. 13 In its May 2019 order, the Court ordered Finjan to revise its contentions as to certain 14 limitations of claims 1, 3, and 10. Dkt. No. 146 at 20–24. Among other things, the Court required 15 Finjan to amend its contentions to specifically identify the basis for its view that the accused 16 instrumentalities meet the requirements of claim 1 of “transmitting the input to the security 17 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 18 19 disclose whether or how the accused instrumentalities meet limitation 1c of claim 1 of the ’154 20 patent, which requires “a transmitter for transmitting the input to the security computer for 21 inspection, when the first function is invoked.” Dkt. No. 164 at 13. Specifically, SonicWall says 22 that Finjan does not disclose that the accused instrumentality transmits the input “when the first 23 function is invoked.” Id. 24 Finjan responds that its contentions do indeed disclose this limitation, but that the 25 disclosure appears in the contentions for the “content processor” in limitation 1b of claim 1. Dkt. 26 27 28 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. 7 3 1 No. 70 at 10; Dkt. No. 189 at 52:16–57:2. At the hearing, Finjan agreed to revise its contentions 2 for the ’154 patent to specify its contentions for the “transmitting . . . when” portion of limitation 3 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 4 5 Court denies SonicWall’s motion to strike on this ground. However, Finjan must revise its 6 infringement contentions for the ’154 patent to make explicit whether and how the accused 7 instrumentalities meet the “transmitting . . . when” portion of limitation 1c of claim 1. Finjan’s Allegedly New Infringement Theories D. 9 SonicWall contends that Finjan’s second supplemental contentions include new 10 infringement theories outside the scope of the amendment permitted and required in the Court’s 11 United States District Court Northern District of California 8 May 2019 order with respect to the ’926, ’968, ’305, ’844, ’633, ’154, ’780, ’822, and ’494 12 patents. SonicWall argues that these unauthorized amendments cannot be made absent leave of 13 Court and require a showing of good cause and diligence by Finjan. The Court considers each 14 allegedly new theory. 15 First, with respect to the ’926, ’305, ’844, ’633, ’154, ’780, ’822, and ’494 patents, 16 SonicWall challenges Finjan’s inclusion of references to the CloudAV and GRID sandboxes and 17 to components identified as “honeypots” and “webcrawlers,”4 which SonicWall says were not 18 identified as infringing components in Finjan’s earlier contentions. Dkt. No. 164 at 14–15, 16–21. 19 Finjan repeats its argument that the CloudAV and GRID sandboxes are components of the accused 20 Gateway and ESA instrumentalities and further asserts that honeypots and webcrawlers are merely 21 cloud-based components of the “GRID” component, and therefore also part of the Gateway and 22 ESA instrumentalities. Dkt. No. 170 at 12, 17–18, 19, 20. As discussed above, Finjan’s 23 references to the CloudAV and GRID sandboxes, including the honeypots and webcrawlers, were 24 not previously disclosed, and Finjan was not authorized to include those infringement theories in 25 its Gateway-only and ESA-only contentions. See supra Section III.A. 26 27 28 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. 8 4 1 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 3 instrumentalities “alone,” Finjan now also identifies the “Stats server” as the “security computer.” 4 Similarly, in addition to identifying the GRID sandbox as the “security computer” for the ESA 5 instrumentalities “alone,” Finjan now also identifies the “URL Thumbprint Database” as the 6 “security computer.” Dkt. No. 164 at 18–19. Finjan responds that the Stats server is a component 7 of the Gateway instrumentalities and the URL Thumbprint Database is a component of the ESA 8 instrumentalities, and that its amendments naming those components provide greater specificity. 9 Dkt. No. 170 at 18–19. An examination of Finjan’s contentions, however, suggests that the Stats 10 server and URL Thumbprint Database are separate from the Gateway and ESA instrumentalities, 11 United States District Court Northern District of California 2 respectively. Finjan’s Gateway-only contentions state that “[t]he main components of SonicWall 12 Gateways is the Firewall, CloudAV, and GRID”; the Stats server is not included. Elsewhere, 13 Finjan’s contentions describes the Stats server as separate from the Firewall, CloudAV, and 14 GRID. See, e.g., Dkt. No. 169-28 at 1, 12, 14 (“The Stats Server acts a security computer and will 15 use the information sent to it by the contents processor of the Firewall, GRID Sandbox, and Cloud 16 AV Sandbox . . . . The Firewall includes a transmitter to send the input to the Cloud AV and 17 GRID Sandbox and to the Stats Server.”). Finjan’s ESA-only contentions likewise suggest that 18 the URL Thumbprint Database is not a part of the ESA instrumentalities. See, e.g., Dkt. No. 169- 19 30 at 9 (“Upon determining . . . suspicious obfuscated scripts are present, the Email Security 20 Appliance sends the URL (input) to a security computer (the URL Thumbprint Database). The 21 security computer will use the information sent to it by the Email Security Appliance to determine 22 whether the URL is malicious . . . .”). Accordingly, the Court finds that Finjan’s reliance on the 23 Stats server and the URL Thumbprint Database constitutes new theories of infringement not 24 previously disclosed and not within the scope of the Court’s May 2019 order. 25 Third, with respect to the ’968 patent, SonicWall says that Finjan previously identified 26 “WXA appliances” as meeting aspects of limitations 1a and 1b of claim 1, but Finjan now 27 identifies WXA appliances as meeting aspects of limitation 1c and 1d and a different aspect of 28 limitation 1b. Dkt. No. 164 at 15–16. Finjan responds that it previously identified WXA 9 appliances in combination with the Gateway instrumentalities as infringing and that its second 2 supplemental contentions merely provide more detail about that previously disclosed theory. Dkt. 3 No. 170 at 14–15. A review of Finjan’s earlier contentions shows that Finjan identified the 4 Gateway instrumentalities in combination with WXA appliances as the “policy-based cache 5 manager” of limitation 1a and as the “cache of digital content” of limitation 1b. Dkt. No. 111-30 6 at 1, 4–5, 7, 14, 21. However, Finjan now contends that the Gateway instrumentalities combined 7 with WXA appliances meets the “plurality of policies” and “policy index” of limitation 1b, as well 8 as aspects of limitations 1c and 1d. Dkt. No. 169-32. These contentions were not previously 9 disclosed. Accordingly, the Court finds that Finjan’s current contentions concerning the WXA 10 appliances disclose a new infringement theory beyond the scope of the Court’s May 2019 order, 11 United States District Court Northern District of California 1 and grants SonicWall’s motion to strike on this ground. Finjan must revise its infringement contentions to eliminate these new theories of 12 13 infringement. 14 E. 15 A plaintiff may amend its infringement contentions “only by order of the Court upon a Leave to Amend 16 timely showing of good cause,” such as the “[r]ecent discovery of nonpublic information about the 17 Accused Instrumentality.” Patent L.R. 3-6. When determining whether to grant leave to amend, 18 the Court first considers whether the party seeking leave acted diligently. Apple Inc. v. Samsung 19 Elecs. Co., No. CF 12-00630 LHK, 2012 WL 5632618, at *2 (N.D. Cal. Nov. 15, 2012) (citation 20 omitted). The Court then considers whether the proposed amendment would unduly prejudice the 21 non-moving party. Id. (citation omitted). The parties have not adequately briefed whether Finjan 22 has good cause for amending its contentions to add new infringement theories and whether those 23 amendments would prejudice SonicWall. If Finjan wishes to amend its infringement contentions 24 to add the theories the Court has stricken, or any other new theories of infringement, it may file a 25 motion for leave to amend that comports with the requirements of Patent Local Rule 3-6, after first 26 conferring with counsel for SonicWall about the proposed amendments. 27 IV. 28 CONCLUSION For the foregoing reasons, the Court grants in part and denies in part SonicWall’s motion 10 1 to strike Finjan’s second supplemental infringement contentions. Finjan shall serve revised 2 contentions consistent with this order by December 11, 2019. 3 4 IT IS SO ORDERED. Dated: November 20, 2019 5 6 VIRGINIA K. DEMARCHI United States Magistrate Judge 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 11

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