United States District Court, N.D. California, San Jose Division
ORDER ON MOTIONS RE EXPERT REPORTS [RE: ECF 312; 319;
326; 365; 368]
LABSON FREEMAN UNITED STATES DISTRICT JUDGE
Finjan, Inc. ("Finjan") brings this patent
infringement lawsuit against Defendant Cisco Systems, Inc.
("Cisco"), alleging infringement of five of
Finjan's patents directed to computer and network
security. Before the Court are the following five motions
regarding various disputes related to expert reports:
(1) Cisco's Motion to Strike Finjan's Expert Reports
on Infringement in View of the Orders Dated June 11, 2019 and
July 17, 2019. ECF 312.
(2) Finjan's Motion to Strike invalidity Theories from
Expert Reports of Drs. Almeroth, Prakash, and McDaniel. ECF
(3) Cisco's Motion to Strike Previously Undisclosed
Damages Theories in Expert Reports of Dr. Anne Layne-Farrar
and Dr. Ricardo Valerdi. ECF 326.
(4) Finjan's Motion to Strike Cisco's Supplemental
Expert Report of Dr. Sylvia Hall-Ellis. ECF 365.
(5) Finjan's Administrative Motion for Leave to File
Supplemental Material in Support of Finjan's Opposition
to Cisco's Motion to Strike Previously Undisclosed
Damages Theories in Expert Reports of Dr. Anne Layne-Farrar
and Dr. Ricardo Valerdi and Response to New material and
Argument in Cisco's Reply. ECF 368.
Court held a hearing on September 18, 2019 in connection with
Finjan's Motion to Strike Invalidity Theories (ECF 319).
Having reviewed the parties' briefing, the Court
concludes that all motions are appropriate for disposition
without oral argument. See Civ. L.R. 7-1(b).
Accordingly, the hearings set for November 21, 2019 and
January 23, 2020 are VACATED. The Court addresses each motion
CISCO'S MOTION TO STRIKE FINJAN'S EXPERT REPORTS ON
INFRINGEMENT (ECF 312)
moves to strike portions of Finjan's expert reports on
infringement. Mot. ECF 312. Specifically, Cisco seeks an
order from this Court "striking from Finjan's expert
reports any reliance on the services, technologies, and
modules for which it was denied leave to amend [infringement
contentions]." Id. at 2.
April 18, 2019, Finjan moved to supplement (or amend) its
infringement contentions pursuant to Local Patent Rule 3-6.
ECF 231. On June 11, 2019, Magistrate Judge van Keulen denied
Finjan's motion and rejected its assertion that it was
simply adding the names of particular components to its
previous contentions regarding the associated functionality.
ECF 274 ("SVK Order") at 6-7. Judge van Keulen
explained that "Finjan's proposed amendments to
identify components are significantly more complex and
prejudicial than Finjan has portrayed them"- evidenced
by the fact that "Finjan did not present its proposed
amendments in the form of a redlined version of its existing
Infringement Contentions, but instead as an entirely new,
separate document." Id. at 7.
sought relief from the SVK Order (again, without attaching a
redlined version of its contentions), which this Court denied
on July 17, 2019. ECF 304 ("BLF
Order") at 3-4. The Court noted that it "would have
expected Finjan to present a list of newly identified
internal code names to be swapped out for less precise
designations in the infringement contentions" and
concluded that "Finjan has done nothing to persuade this
Court that the true effect of its request is as benign as
suggested in the moving papers." Id. at 3.
has since served "three infringement reports totaling 6,
629 pages" on infringement. Mot. at 1. Cisco filed the
present motion arguing that Finjan's expert reports
"are replete with material that Finjan was not permitted
to add into the case" pursuant to the SVK and BLF
Orders. Id. at 3.
Internal Code Names of Software Components
argues that that Finjan's 6, 629 expert reports on
infringement read as though the SVK and BLF Orders never
issued and contain thousands of instances of internal names
of software components, which Finjan sought (but failed) to
add to its infringement contentions. Mot. at 3. Finjan does
not dispute that its expert reports include the terms subject
to the SVK and BLF Orders, but instead argues that
"Cisco's reliance on the SVK and BLF Orders is
misplaced" because neither Order "made reference to
experts or expert reports, and they did not forbid Finjan
from using information learned in discovery to support its
existing infringement allegations." Opp'n at 4, ECF
argument is meritless. It is well settled that "[e]xpert
reports may not introduce theories not set forth in
contentions." Huawei Techs., Co, Ltd v. Samsung
Elecs. Co, Ltd., 340 F.Supp.3d 934, 946 (N.D. Cal. 2018)
(citing Golden Bridge Tech. Inc. v. Apple, Inc., No.
12-cv-04882-PSG, 2014 WL 1928977, at *3
(N.D. Cal. May 14, 2014)). "Given the purpose behind the
patent local rales' disclosure requirements, a party may
not use an expert report to introduce new infringement
theories [or] new infringing instrumentalities... not
disclosed in the parties' infringement contentions
...." Verinata Health, Inc. v. Sequenom, Inc.,
No. C 12-00865 SI, 2014 WL 4100638, at *3 (N.D. Cal. Aug. 20,
2014) (citation omitted). Finjan was, of course, prohibited
from including in its expert reports the theories it sought
but failed to add to its infringement contentions by the SVK
and BLF Orders.
main argument is that its expert reports identify
"Cisco's confidential, internal terms used to
describe the accused functionality at issue in its
products" and therefore, Finjan could not have
identified them when it served its last set of infringeinent
contentions. Opp'n at 4. This issue is certainly common
in patent infringement cases and is anticipated by Patent
Local Rules, setting out the procedures for amending
infringement contentions. See. Patent L.R. 3-6
("Amendment of the Infringement Contentions ... may be
made only by order of the Court upon a timely showing of good
cause" such as "[r]ecent discovery of
material[.]"). Thus, as Finjan recognized, its argument
was more properly raised in a motion for leave to amend
infringement contentions-not after expert reports are served.
The problem for Finjan is that it has tried and failed
twice to amend its infringement contentions to add
these component names. See SVK Order at 7; BLF Older
at 2-3. Finjan failed to carry its burden of showing
diligence and lack of prejudice. See Apple Inc. v.
Samsung Elecs. Co., No. CF 12-00630 LFTK, 2012 WL
5632618, at *2 (N.D. Cal. Nov. 15, 2012) ("The good
cause inquiry" considers (1) whether the party seeking
leave to amend acted with diligence and (2) whether there
would be undue prejudice to the non-moving party). The Court
declines to give Finjan a thud bite at this apple.
Finjan argues that Cisco's motion lacks "any
analysis" and "is premised on a superficial word
comparison, which has no bearing on whether there are
actually new claims in the expert reports." Opp'n at
4. For its part, and "[f]or the Court's
reference," Finjan attaches a 133-page document
"mapp[ing] each of the 'terms' Cisco complains
about from Finjan's infringement reports to Finjan's
infringement contentions." Id.; ECF 322-4
("Exhibit 1"). Cisco responds that Finjan
"tries to re-litigate that issue by attaching a 100-page
exhibit to its brief and declines to "take the bait to
now dive into that 100-page exhibit as part of its 5-page
reply[.]" Reply at 1, ECF 332. The Court sympathizes
with Cisco's position and similarly declines to analyze
Finjan's lengthy exhibit term by term. If nothing else,
the length of Finjan's Exhibit 1 further confirms Judge
van Keulen's assessment that "Finjan's proposed
amendments to identify components are significantly more
complex and prejudicial than Finjan has portrayed them."
SVK Order at 7.
Finjan's burden to demonstrate (in its motion
for leave to amend infringement contentions) that "each
of these internal and confidential component names were used
to identify with greater specificity components and
functionalities already accused of infringement in
Finjan's Infringement Contentions[.]" See
Opp'n at 4. Finjan failed to do so twice and
does not get to try its hand for the third time by
referencing its lengthy Exhibit 1-to which Cisco has no
meaningful way of responding.
Finjan asserts that "[i]t would be unfair and contrary
to precedent to require that all internal component names and
all evidence and proof of infringement be included in
Infringement Contentions." Opp'n at 7. Be that as it
may, Finjarr "may not use an expert report to introduce
new infringement theories [or] new infringing
instrumentalities" and therefore is required to persuade
the Court that the additional internal code names and
components are "the identification of additional
evidentiary proof and not "new theories" of
infringement. See Finjan, Inc. v. Symantec Corp.,
No. 14CV02998HSGJSC, 2018 WL 620169, at *2 (N.D. Cal. Jan.
30, 2018). Finjan had two opportunities to do so but missed
those opportunities because it failed to provide a redline
(or a list) identifying the code names and the corresponding
accused products. As Judge van Keulen explained,
"[s]imply put, without a redline, the Comt is imable to
determine that Finjan's proposed amendments are limited
to clarifying the existing contentions rather than expanding
them." SVK Order at 7; see also BLF Order at 3.
The Com1 has no choice but to assume that Finjan is unable to
provide the now twice-requested redline or list because even
Finjan's Exhibit l is not a redlined version of its
infringement contentions. See Exhibit 1.
claims that its "mapping demonstrates that Finjan
provided Cisco with notice of the specific contentions and
Finjan's expert reports merely expound on those
contentions with further evidence." Opp'n at 1. The
Court disagrees. As an example, the Court has reproduced
below, Finjan's "mapping" of Aegis, one of the
69 terms at issue:
I (Image Omitted)
322-4 at 1. Even if the Court was inclined to parse through
Finjan's lengthy Exhibit 1-which the Court declines to
do-the above example demonstrates that contrary to
Finjan's assertions, it is not self-evident from Exhibit
1 whether Aegis is a component of an ...