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Finjan, Inc. v. SonicWall, Inc.

United States District Court, N.D. California, San Jose Division

November 20, 2019

FINJAN, INC., Plaintiff,
v.
SONICWALL, INC., Defendant.

          ORDER GRANTING IN PART MOTION TO STRIKE SECOND SUPPLEMENTAL INFRINGEMENT CONTENTIONS RE: DKT. NO. 164

          VIRGINIA K. DEMARCHI United States Magistrate Judge

         In this patent infringement action, defendant SonicWall, Inc. (“SonicWall”) moves to strike plaintiff Finjan, Inc.'s (“Finjan”) second supplemental infringement contentions. Dkt. No. 164. The motion was referred to the undersigned judge. Dkt. No. 75. The Court heard oral argument on the matter on October 29, 2019 and gave the parties an opportunity to file supplemental material on October 30, 2019. Dkt. Nos. 177, 179. Having considered the parties' submissions and arguments made at the hearing, the Court grants in part and denies in part SonicWall's motion to strike. The Court also orders Finjan to revise its infringement contentions as described below.

         I. BACKGROUND

         On April 10, 2018, Finjan served its original disclosure of asserted claims, infringement contentions, and document production pursuant to Patent Local Rules 3-1 and 3-2. The original disclosure asserted infringement of 39 claims across the following ten patents: U.S. Patent Nos. 6, 154, 844 (“the '844 patent”); 7, 058, 822 (“the '822 patent”); 6, 804, 780 (“the '780 patent”); 7, 613, 926 (“the '926 patent”); 7, 647, 633 (“the '633 patent”); 8, 141, 154 (“the '154 patent”); 8, 677, 494 (“the '494 patent”); 7, 975, 305 (“the '305 patent”); 8, 225, 408 (“the '408 patent”); and 6, 965, 968 (“the '968 patent”). See Dkt. No. 112-2 at 2. After SonicWall objected to this original disclosure, Finjan served supplemental infringement contentions on November 9, 2018. Dkt. No. 118 at 2. These did not satisfy SonicWall, which moved to compel further supplemental infringement contentions. Dkt. No. 112.

         On May 1, 2019, the Court granted SonicWall's motion and ordered Finjan to amend its infringement contentions. Dkt. No. 146. As relevant here, the Court ordered Finjan to eliminate open-ended language and references to unidentified components by, among other things, removing placeholder reference to unspecified products, services, or components, and specifying whether a 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 certain limitations of claim 6 of the '305 patent, claim 22 of the '926 patent, claim 9 of the '408 patent, claims 1 and 15 of the '844 patent, claim 9 of the '780 patent, claims 1, 10, and 3 of the '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. No. 170 at 2. SonicWall now moves to strike Finjan's second supplemental infringement contentions on the ground that they fail to comply with the Court's May 2019 order requiring amendment.

         II. LEGAL STANDARD

         “Striking a patentee's infringement contentions is a severe sanction that should be used sparingly and only for good cause.” Avago Techs., Inc. v. IPtronics Inc., No. 5:10-CV-02863-EJD, 2015 WL 4647923, at *2 (N.D. Cal. 2015) (citation omitted). As a result, “motions to strike initial infringement [contentions] are frequently treated as motions to compel amendment of the infringement contentions.” Geovector Corp. v. Samsung Elecs. Co., No. 16-CV-02463-WHO, 2017 WL 76950, at *7 (N.D. Cal. Jan. 9, 2017). However, courts may strike, with prejudice, supplemental or amended infringement contentions where patentees repeatedly fail to comply with Patent Local Rule 3-1 and earlier orders concerning amendment. Compare, e.g., id. (declining to strike plaintiff's infringement contentions with prejudice on defendant's first motion to strike) with Shared Memory Graphics LLC v. Apple Inc., No. C-10-02475-MMC (JSC), 2011 WL 3878388, at *11-12 (N.D. Cal. Nov. 2, 2011) (denying leave to serve third amended infringement contentions where plaintiff had amended its contentions twice already but still failed to comply with Patent Local Rule 3-1(c)) and Huang v. Nephos Inc., No. C 18-06654 WHA, 2019 WL 5892988, at *4 (N.D. Cal. Nov. 12, 2019) (granting second motion to strike fourth amended infringement contentions and dismissing case with prejudice “[a]fter multiple wasted chances” and “despite repeated guidance from the Court”).

         Patent Local Rule 3-6 provides that a patentee may only amend its infringement contentions “by order of the Court upon a timely showing of good cause.”

         III. DISCUSSION

         SonicWall moves to strike Finjan's second supplemental infringement contentions on four grounds. First, SonicWall says that Finjan's contentions do not clarify its infringement theories by providing separate charts for accused products alone and for accused products in combination with the Capture Advanced Threat Protection (“Capture ATP”) product but instead continue to assert allegedly infringing combinations of standalone products and cloud-based resources. Second, SonicWall says that Finjan's contentions continue to use open-ended language that does not provide SonicWall fair notice of what is accused. Third, SonicWall says that Finjan's contentions for the '154 patent fail to comply with the Court's order to specify the instrumentality that meets the limitation of claim 1 that requires “transmitting the input to the security computer for inspection, when the first function is invoked.” Fourth, SonicWall argues that for all asserted patents except for the ‘408 patent Finjan asserts new infringement theories that go beyond the scope of the amendments the Court previously permitted.

         A. Finjan's Contentions for Products that Infringe “Alone”

         In its May 2019 order, the Court ordered that “Finjan must specify whether a product or service infringes alone or in combination. For example, if Finjan contends that the Capture ATP product infringes an asserted claim, both alone and in combination with some other product or service, its infringement contentions should make that clear.” Dkt. No. 146 at 5. Finjan's second supplemental contentions include separate charts that purport to describe its infringement theories for the accused Gateway and Email Security Appliance (“ESA”) instrumentalities alone and separately for those instrumentalities in combination with Capture ATP, which Finjan has previously described as “SonicWall's cloud-based sandbox network.” Dkt. No. 118 at 6 n.6.

         SonicWall argues that these second supplemental contentions do not comply with the Court's May 2019 order because the “alone” charts do not actually chart the accused Gateway or ESA instrumentalities alone; instead, Finjan's amended contentions require the combination of Gateway and ESA with additional components. Dkt. No. 164 at 6-7. Specifically, SonicWall says that Finjan has simply replaced references to “Capture ATP” with references to other external sandboxes-namely the “CloudAV sandbox” and the “GRID sandbox”-in its “alone” contentions. Id. at 9-12. According to SonicWall, the Gateway- or ...


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