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DEFENDANT CISCO SYSTEMS INC.’S RENEWED MOTION IN LIMINE NO. 4 RE ’633 PATENT

CASE NO. 5:17-CV-00072-BLF-SVK 

DUANE MORRIS LLP 

D. Stuart Bartow (CA SBN 233107)

dsbartow@duanemorris.com

Nicole E. Grigg (CA SBN 307733)

negrigg@duanemorris.com

2475 Hanover Street

Palo Alto, CA 94304-1194

Telephone: +1 650 847 4146

Fax: +1 650 523 4780

Telephone: 415.957.3000

Facsimile: 415.957.3001

DUANE MORRIS LLP 

Joseph A. Powers (PA SBN 84590) 

Admitted Pro Hac Vice 

japowers@duanemorris.com 

Jarrad M. Gunther (PA SBN 207038) 

Admitted Pro Hac Vice 

jmgunther@duanemorris.com 

30 South 17th Street 

Philadelphia, PA 19103 

Telephone: 215.979.1000 

Facsimile: 215.979.1020 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

DUANE MORRIS LLP 

L. Norwood Jameson (GA SBN 003970)

Admitted Pro Hac Vice

wjameson@duanemorris.com

Matthew C. Gaudet (GA SBN 287789)

Admitted Pro Hac Vice

mcgaudet@duanemorris.com

David C. Dotson (GA SBN 138040)

Admitted Pro Hac Vice

dcdotson@duanemorris.com

John R. Gibson (GA SBN 454507)

Admitted Pro Hac Vice

jrgibson@duanemorris.com

Jennifer H. Forte (GA SBN 940650)

Admitted Pro Hac Vice

jhforte@duanemorris.com

1075 Peachtree NE, Suite 2000

Atlanta, GA 30309

Telephone: 404.253.6900

Facsimile: 404.253.6901

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

FINJAN, INC., a Delaware Corporation, 

Plaintiff, 

v. 

CISCO SYSTEMS, INC., a California 

Corporation, 

Defendant. 

Case No.: 5:17-cv-00072-BLF-SVK

DEFENDANT CISCO SYSTEMS, 

INC.’S RENEWED MOTION IN 

LIMINE NO. 4 RE EVIDENCE AND 

ARGUMENTS PERTAINING TO THE 

’633 PATENT 

REDACTED

Case 5:17-cv-00072-BLF Document 694-4 Filed 08/11/20 Page 1 of 8
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DEFENDANT CISCO SYSTEMS INC.’S RENEWED MOTION IN LIMINE NO. 4 RE ’633 PATENT

CASE NO. 5:17-CV-00072-BLF-SVK 

TABLE OF ABBREVIATIONS 

Plaintiff Finjan, Inc. Finjan or Plaintiff 

Defendant Cisco Systems, Inc. Cisco or Defendant 

Order Granting in Part and Denying in Part Cisco’s Motion for Partial 

Summary Judgment of Non-Infringement (Dkt. 487) 

MSJ Order 

Excerpts from Appendix C1 from Finjan’s operative infringement 

contentions dated November 30, 2017 

Ex. A 

Excerpts from Appendix C3 from Finjan’s operative infringement 

contentions dated November 30, 2017 

Ex. B 

Amended Expert Report of Nenad Medvidovic, Ph.D. Regarding 

Infringement of Cisco Systems, Inc. of Patent No. 7,647,633 

Ex. C 

Declaration of Nicole Grigg in Support of Defendant Cisco Systems, 

Inc.’s Renewed Motions in Limine No. 4 

Grigg Decl.1

1

 Unless otherwise specified, all exhibits refer to those attached to the Grigg Decl. 

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DEFENDANT CISCO SYSTEMS INC.’S RENEWED MOTION IN LIMINE NO. 4 RE ’633 PATENT

CASE NO. 5:17-CV-00072-BLF-SVK 

As the Court directed, Cisco refiles its Motion in Limine No. 4, seeking to exclude any 

evidence or argument relating to alleged infringement of the ’633 Patent because there are no surviving 

components that Finjan accused of meeting the “mobile protection code” (MPC) requirement of the 

‘633 Patent. Dkt. 640 at 19-20. This renewed motion is ripe in view of the March 20, 2020 Order 

Granting in Part Cisco’s Motion for Partial Summary Judgment of Non-Infringement, and the August 

4, 2020 Order denying Finjan’s motion for relief from Judge van Keulen’s April 28 and June 11 Orders 

granting Cisco’s motion to strike. As further explained below, the Court has now struck all seven 

components alleged by Finjan to be MPC: four through summary judgment, and the remaining three 

because they were not disclosed in Finjan’s operative infringement contentions. In sum, there is no 

evidence of MPC in the case. Dkt. 419 at 120:6-11 (directing Finjan to ask Judge van Keulen to “allow 

a substitution from something from the contentions to go to the jury in place of all of the arguments 

[for these theories] ... because otherwise they have provided me no evidence.”). However, despite 

Finjan losing repeated motions on this issue, Finjan asserted in the meet-and-confer for this motion 

that it can still present evidence of MPC based on the three theories that survived summary judgment 

if it does not use the specifically stricken words. In other words, Finjan’s reaction to this entire series 

of motions is that it was much ado about nothing, and it can continue to assert theories outside its 

operative infringement contentions. Finjan is wrong. 

Background. Cisco moved for summary judgment that none of its accused products had the 

MPC of claim 14 (the only asserted claim), including the requirements that MPC “is executable” and 

“monitors or intercepts code operations”. See MSJ Order at 15. Cisco argued there was no MPC at 

all, including the theory in which alleged MPC was transmitted to a sandbox, and the theory that 

alleged MPC was already resident at a sandbox. Dkt. 377-25 at 11-17. The burden shifted to Finjan to 

come forward with any evidence of MPC. Novatek, Inc. v. Sollami Co., 599 F. App’x 1101, 1022 

(Fed. Cir. 2014) (“Where a defendant seeks summary judgment of non-infringement, ‘nothing more 

is required than the filing of a . . . motion stating that the patentee had no evidence of infringement and 

pointing to the specific ways in which accused [products] did not meet the claim limitations.’ [] The 

burden of production then shifts to the patentee to ‘identify genuine issues that preclude summary 

judgment.’”) (citations omitted). Faced with this burden, Finjan expressly abandoned any theory that 

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DEFENDANT CISCO SYSTEMS INC.’S RENEWED MOTION IN LIMINE NO. 4 RE ’633 PATENT

CASE NO. 5:17-CV-00072-BLF-SVK 

MPC was satisfied by items transmitted to the sandbox from another device. Dkt. 487 at 15 (“While 

Finjan disagrees with Cisco’s arguments regarding APIs, it is irrelevant because Finjan has not 

identified RESTful APIs as MPC and what Finjan identified as MPC is discussed in detail 

below.”). The only things that Finjan “discussed in detail below” in its Opposition were the seven 

alleged MPC components discussed in the MSJ Order. Id. This Court confirmed that the “dispute at 

summary judgment is limited to the Cisco items Finjan has identified as MPC (namely: 

 – all 

components of Threat Grid and .)” MSJ at 15; Opp’n at 14; Order (Dkt. 487) at 14-15. 

The Court confirmed Finjan’s abandonment of the allegation MPC was transmitted to a sandbox. Id.

at 15 n.6. At the same time, there was an ongoing dispute about whether Finjan had disclosed the 

seven alleged MPC components in its Operative Contentions. The Court already struck the actual 

code names (e.g., ) from Finjan’s report because they were not in the Operative 

Contentions and the Court denied Finjan leave to add them. Dkt. 274, 304. The remaining question 

was whether Finjan disclosed the functionality of those items, such that it could continue to assert 

them (without using codenames) through its experts, as the Court explained: 

Accordingly, the Court decides on Cisco’s motion for summary judgment under the 

assumption that the codenames used in the expert reports (and the parties’ briefing) have a 

corresponding functionality in the infringement contentions and thus, are still in the case. 

Dkt 487 at 4. On March 20, 2020, this Court granted Cisco summary judgment as to 4 of the 7 alleged 

MPC components, leaving only 3: . Dkt. 487 at 

15. Then, both Judge van Keulen and this Court struck those three alleged MPC components because 

their corresponding functionalities were not in the Operative Contentions. 8/4/20 Order at 2-3 (“The 

Court has carefully reviewed the record and concludes that the briefing and hearing transcript 

regarding Cisco’s Motion to Strike clearly shows that Cisco met its burden by showing why the 

functionalities for ,’ – the disputed terms identified in 

expert report that survived summary judgment – were not disclosed in the operative infringement 

contentions. . . . On the heels of this extensive motion practice, Finjan was well-aware that it was 

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DEFENDANT CISCO SYSTEMS INC.’S RENEWED MOTION IN LIMINE NO. 4 RE ’633 PATENT

CASE NO. 5:17-CV-00072-BLF-SVK 

required to show that the functionality of were 

disclosed in the operative infringement contentions. Finjan failed to do so.”). 

Literal Infringement. Based on the process the Court set forth at summary judgment, Finjan 

cannot present evidence of literal infringement. Cisco requested that Finjan so stipulate per the 8/4/20 

Order, but Finjan refused. Instead, Finjan now tries to rewrite the six Orders by latching onto the 

language in the 8/4/20 Order that “No theory of infringement was stricken, only the replacement 

language for the disallowed terms was stricken.” 8/4/20 Order at 5. Finjan contends that this sentence 

means Finjan can proceed to trial against the three items that survived summary judgment and accuse 

their functionality based on other portions of the expert report, so long as it chooses its words carefully. 

Finjan has mischaracterized the Court’s Order. The Court already precluded Finjan from using the 

codenames of the three surviving components in the Court’s 7/17/19 Order, which already issued at 

the time the summary judgment hearing, but Finjan had not yet substituted a new expert report. The 

question in the recent motion was whether the Operative Contentions described the same functionality

(not using the codenames), such that Finjan could supply the Court with summary judgment evidence 

through replacement language from its Operative Contentions that captured the same functionality as 

the struck codenames. Per the sentence on which Finjan now relies, that functionality is precisely 

what was struck, leaving nothing to support the three components that survived summary judgment. 

As the Court described, the background was Finjan’s argument that Judge van Keulen struck 

“language directed to a theory Cisco admitted was disclosed in Finjan’s infringement contentions” – 

specifically, the “transmission-based theory.” Order at 4. The Court found that Finjan 

“mischaracterize[d] Judge van Keulen's Orders” precisely because Judge van Keulen did what is 

described above – she determined there was no corresponding functionality in the Operative 

Contentions for the three MPC components that survived summary judgment. . 

Finjan also suggested in the meet-and-confer it has some unidentified language in its 3,000 

pages of reports on the ’633 Patent that actually corresponds to the functionality of three components 

that survived summary judgment – but that was exactly the motion Finjan just fought and lost, for the 

sixth time. In essence, Finjan wants a do-over on the entire summary judgment process. But it is too 

late; the Court has definitively ruled that Finjan failed to disclose functionally corresponding to the 

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DEFENDANT CISCO SYSTEMS INC.’S RENEWED MOTION IN LIMINE NO. 4 RE ’633 PATENT

CASE NO. 5:17-CV-00072-BLF-SVK 

three components that conditionally survived summary judgement. It would be highly prejudicial to 

Cisco to allow Finjan to use its experts to perform some Jedi-mind-trick to offer up a new infringement 

theory on the ‘633 Patent on this record. The Court should grant Cisco’s MiL on direct infringement. 

Doctrine of Equivalents (DOE). The Court’s striking of Finjan’s infringement theories 

from its expert report applies equally whether a component is accused for literal infringement or 

DOE: the disclosure requirements applied equally, and the striking of the theories applies equally. 

Accordingly, the Court should also grant this motion with respect to DOE for the MPC element for 

two reasons: (1) the Court struck all seven components on which Finjan opposed summary 

judgment; and (2) the Operative Contentions did not disclose any DOE theory. 

1. No DOE Theory Survived the Motions. As of the summary judgment proceedings, Finjan 

asserted infringement – whether literal or under DOE – based only on the seven components Finjan 

identified at the sandbox. Far from arguing that a “transmission to the sandbox” theory remained at 

summary judgment, Finjan represented to the Court that no theories existed in its expert report 

asserting infringement based on the transmission of something to the sandbox. Dkt. 400-4 at 13; Dkt 

487 Order at 14-15 & n.6. Thus, the ’633 case regarding MPC was reduced to the 7 components that 

already existed at the sandbox. Id. Then, even after the Court granted summary judgment on four of 

those seven components, Cisco still moved to strike all seven (including the four for which no literal 

infringement was found) to “ensure[] that Finjan does not attempt to use DOE to revive the other 

four components.” Dkt. 491-4 at 7. In its opposition to the motion to strike, Finjan addressed only 

the surviving 3 components. Judge van Keulen confirmed the “parties agree that Finjan’s proposed 

amendments to the Medvidovic report that relate to the other [four] terms relied on by Finjan in 

opposition to summary judgment are now moot,” a point that Finjan did not contest in its motion for 

reconsideration to Judge van Keulen or in its motion for relief to this Court. Dkt. 582 at 8. Thus, 

Finjan did not ask Judge van Keulen to “allow a substitution from something from the contentions 

to go to the jury in place of” those four component names. Instead, Finjan agreed (and the Court 

confirmed) the issue was moot as to those four components. Accordingly, those four components 

and their functionalities are out of the case for all purposes. 

2. No Disclosure in the Operative Contentions. Finjan’s concession on DOE was for a good 

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DEFENDANT CISCO SYSTEMS INC.’S RENEWED MOTION IN LIMINE NO. 4 RE ’633 PATENT

CASE NO. 5:17-CV-00072-BLF-SVK 

reason: Finjan’s Operative Infringement Contentions (and its expert reports) have no disclosure of any 

specific component or any specific theory relating to DOE. The invocation of DOE does not excuse a 

plaintiff from the burden of identifying a specific component that satisfies a claim element. Quite the 

opposite; DOE adds an additional burden of showing that the specifically-identified component is 

equivalent to whatever requirement of the claim is literally absent (e.g., the “executable” element of 

MPC). Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995) (“Only if an 

accused product contains specific structure which meets all limitations of an asserted claim directed 

to structure, at least equivalently, can that product infringe under the doctrine of equivalents.”); CSR 

Tech., Inc. v. Freescale Semiconductor, No. C-12-02619 RS (JSC), 2013 U.S. Dist. LEXIS 17502, at 

*27 (N.D. Cal. 2/18/13) (insufficient to have language that “merely references the entire Accused 

Products, rather than discrete components, as the equivalent structure that accomplishes the claimed 

function”). Accordingly, to use DOE, the Operative Contentions (and then the expert report) would 

have needed to provide a specific accusation against a component of the accused products (as with 

literal infringement), and then also would have needed to show why that component is equivalent to 

the requirements of the claimed MPC. Dkt. 487 at 21-23. No such thing exists in the Operative 

Contentions (which is why Finjan did not even fight the motion to strike as to the other four 

components). The entirety of the ’633 DOE analysis is the same in each chart of Finjan’s Operative 

Contentions for each accused product, with the only difference being a substitution of the product 

name. For example, the DOE analysis for the MPC element in Finjan’s AMP for Network contentions 

(C1) for claim 14 is highlighted in Ex. A. The ThreatGrid chart (C3) just substitutes “ThreatGrid” for 

“AMP for Networks.” Ex. B. 

The assertions for DOE in all of Finjan’s ‘633 expert reports basically copy-and-paste these 

contentions). Ex. C (Amended Medvidovic Report at ¶¶ 4340-43 (DOE analysis of claim element 

14(d) for Threat Grid) and ¶¶ 4498-4501 (for AMP Gateway/Cloud Products with Cisco Sandboxes). 

These assertions are so short and generic – referring only to packaging some unspecified “code” with 

the downloadable information – that they do not offer a specific DOE theory as to any specific 

infringement allegation pertaining to any of the seven components Finjan accuses as MPC. For 

example, MPC must be “executable,” but the word “executable” does not exist in the DOE contentions. 

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DEFENDANT CISCO SYSTEMS INC.’S RENEWED MOTION IN LIMINE NO. 4 RE ’633 PATENT

CASE NO. 5:17-CV-00072-BLF-SVK 

Dated: August 11, 2020 Respectfully submitted, 

/s/ Nicole E. Grigg 

Nicole E. Grigg 

D. Stuart Bartow 

DUANE MORRIS LLP 

2475 Hanover Street 

Palo Alto, CA 94304-1194 

Email: negrigg@duanemorris.com 

Email: dsbartow@duanemorris.com 

Telephone: 650.847.4146 

Facsimile: 650.847.4151 

L. Norwood Jameson (admitted pro hac vice) 

Email: wjameson@duanemorris.com 

Matthew C. Gaudet (admitted pro hac vice) 

Email: mcgaudet@duanemorris.com 

John R. Gibson (admitted pro hac vice) 

Email: jrgibson@duanemorris.com 

David C. Dotson (admitted pro hac vice) 

Email: dcdotson@duanemorris.com 

Jennifer H. Forte (admitted pro hac vice) 

Email: jhforte@duanemorris.com 

Alice E. Snedeker 

Email: aesnedeker@duanemorris.com 

1075 Peachtree Street, Ste. 2000 

Atlanta, GA 30309 

Telephone: 404.253.6900 

Facsimile: 404.253.6901 

Joseph A. Powers (admitted pro hac vice) 

Email: japowers@duanemorris.com 

Jarrad M. Gunther (admitted pro hac vice) 

jmgunther@duanemorris.com 

30 South 17th Street 

Philadelphia, PA 19103 

Telephone: 215.979.1000 

Facsimile: 215.979.1020 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

Case 5:17-cv-00072-BLF Document 694-4 Filed 08/11/20 Page 8 of 8