United States District Court, N.D. California, San Jose Division
ORDER GRANTING IN PART MOTION TO STRIKE SECOND
SUPPLEMENTAL INFRINGEMENT CONTENTIONS RE: DKT. NO.
VIRGINIA K. DEMARCHI United States Magistrate Judge
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
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.
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.
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.
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”).
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.”
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.
Finjan's Contentions for Products that Infringe
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.
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 ...