FINJAN’S MOTION IN LIMINE NO. 3 CASE NO. 5:17-cv-00072-BLF-SVK

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Juanita R. Brooks (CA SBN 75934) brooks@fr.com

Roger A. Denning (CA SBN 228998) denning@fr.com

Frank J. Albert (CA SBN 247741) albert@fr.com

Megan A. Chacon (CA SBN 304912) chacon@fr.com

K. Nicole Williams (CA SBN 291900) nwilliams@fr.com

Oliver J. Richards (CA SBN 310972) ojr@fr.com

Jared A. Smith (CA SBN 306576) jasmith@fr.com 

FISH & RICHARDSON P.C.

12390 El Camino Real, Suite 100

San Diego, CA 92130

Telephone: (858) 678-5070 / Fax: (858) 678-5099

Aamir Kazi (Admitted Pro Hac Vice) kazi@fr.com

Alana Mannige (CA SBN 313341) mannige@fr.com

FISH & RICHARDSON P.C.

1180 Peachtree Street NE, 21st Floor

Atlanta, GA 30309

Telephone: (404) 892-5005 / Fax: (404) 892-5002

Attorneys for Plaintiff

FINJAN, INC.

IN THE UNITED STATES DISTRICT COURT

FOR THE 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

PLAINTIFF FINJAN, INC.’S MOTION IN 

LIMINE NO. 3 RE: INVALIDITY 

THEORIES NOT DISCLOSED IN 

INVALIDITY CONTENTIONS 

Date: April 30, 2020

Time: 1:30 P.M.

Place: 3, 5th Floor

Before: Honorable Beth L. Freeman

Case 5:17-cv-00072-BLF Document 529 Filed 04/16/20 Page 1 of 8
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FINJAN’S MOTION IN LIMINE NO. 3 CASE NO. 5:17-cv-00072-BLF-SVK

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I. INTRODUCTION

Cisco Systems, Inc. (“Cisco”) should not be permitted to present any evidence, testimony, or 

argument at trial regarding invalidity theories that were not timely disclosed in its invalidity contentions, 

in violation of Patent Local Rules 3-3 and 3-4 and this Court’s Orders. Specifically, Cisco’s invalidity 

experts rely on (1) a Feigenbaum-ThunderBYTE Antivirus Utilities combination that Cisco never 

properly disclosed or charted in its invalidity contentions; (2) three new references that Cisco never 

identified in its invalidity contentions or elections of alleged prior art; and (3) new theories under 35 

U.S.C. §§ 101 and 112 that were never properly disclosed in Cisco’s invalidity contentions. Because 

these invalidity theories were not timely disclosed, Cisco should be precluded from offering any argument 

or evidence related to the foregoing theories at trial.

II. ARGUMENT

Cisco should be precluded from offering invalidity theories that it did not timely disclose, in 

violation of the Patent Local Rules and this Court’s Orders. See MediaTek Inc. v. Freescale 

Semiconductor, Inc., No. 11-cv-5341 YGR, 2014 WL 690161, at *1 (N.D. Cal. Feb. 21, 2014) (“Any 

invalidity theories not disclosed pursuant to Local Rule 3-3 are barred . . . from presentation at trial 

(whether through expert testimony or otherwise).”); Largan Precision Co. v. Genius Elec. Optical Co., 

No. 13-cv-02502-JD, 2014 WL 6882275, at *3-4 (N.D. Cal. Dec. 5, 2014) (striking portions of expert 

report that relied on invalidity theories not disclosed in invalidity contentions/charts); ASUS Comp. Int’l 

v. Round Rock Research, LLC, No. 12-cv-02099-JST (NC), 2014 WL 1463609, at *8 (N.D. Cal. Apr. 11, 

2014) (same).

Cisco’s invalidity contentions did not (1) identify and chart alleged prior art for Cisco’s new 

theories, (2) identify obviousness combinations in Cisco’s new theories, or (3) identify the newly alleged 

grounds for invalidity under 35 U.S.C. §§ 101 and 112. In so doing, not only did Cisco violate the Local 

Patent Rules, but it violated this Court’s Orders in this very case. See Dkt. No. 140 at 2 (“a specific 

combination of references for a single obviousness theory shall not be changed or revised for [a] 

subsequent election”); Dkt. No. 274 at 4 (“only those primary references that were charted in Cisco’s 

Invalidity Contentions are valid choices from which Cisco may elect prior art in its narrowing 

elections.”) (emphasis added).

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Cisco Should Be Precluded From Relying on the Feigenbaum-ThunderBYTE 

Antivirus Utilities Combination Against the ’844 Patent

Cisco should be precluded from relying on the Feigenbaum-ThunderBYTE Antivirus Utilities

combination at trial because it did not identify or chart this combination in its invalidity contentions as 

required. See Patent L.R. 3-3(b) (requiring Cisco to identify “any combinations of prior art showing 

obviousness”). In its invalidity contentions served on August 7, 2017, Cisco identified Feigenbaum as 

prior art against U.S. Patent No. 6,154,844 (“the ’844 Patent”) and identified 22 other references that 

could allegedly be combined with Feigenbaum for obviousness, but none of these references included 

ThunderBYTE Antivirus Utilities (“ThunderBYTE”). See Dkt. No. 319-6 at 1–2. Similarly, while Cisco 

identified ThunderBYTE as prior art for the ’844 Patent and identified 13 other references that could

allegedly be combined with ThunderBYTE, none of these references included Feigenbaum. See Dkt. 

No. 319-7 at 1–2. In total, Cisco identified approximately four hundred alleged obviousness 

combinations for the ’844 Patent, none of which included the Feigenbaum-ThunderBYTE combination.

Instead, Cisco waited until June 25, 2019 to identify the Feigenbaum-ThunderBYTE combination 

in its third amended election of prior art. See Dkt. No. 319-11. And even with that belated identification, 

to this day Cisco has not charted the Feigenbaum-ThunderBYTE combination (outside of its expert 

reports) or sought the Court’s leave to include this new theory in its contentions. Cisco contends its 

failure to timely identify and chart the combination of Feigenbaum-ThunderBYTE is excused because of 

its (belated) identification in its third amended election.

1

 Not so. As explained in this Court’s September

13, 2018 Order, Cisco’s third amended election was intended to be a “narrowing of the Asserted ... Prior 

Art,” not a broadening of it. See Dkt. No 140 at 1 (emphasis added). The parties agreed, and the Court 

ordered, that Cisco should serve a third election that was expressly limited to “6 invalidity theories ... 

per patent” elected from the “subset of prior art it previously identified.” Id. at 1-2 (emphasis added). 

The Order explicitly stated that “a specific combination of references for a single obviousness theory 

shall not be changed or revised for [a] subsequent election.” Id. at 2 (emphasis added). 

 

1 On June 27, 2019, Finjan informed Cisco of various defects with its amended third election, including 

its improper election of the Feigenbaum-ThunderBYTE combination, which was not identified in 

Cisco’s contentions. Dkt. No. 319-12 at 8. Cisco refused to remove the combination. 

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Cisco claims that it “reserve[d] the right to rely on any combination of prior art.” Dkt. No. 333 

at 5. This boilerplate language is no excuse for failing to meet the requirements of Patent Local Rule 3-

3(b), particularly when Cisco identified over forty alleged prior art items for the ’844 Patent in its 

contentions, resulting in thousands of potential combinations.

Finally, Finjan will suffer prejudice if Cisco is allowed to rely upon the FeigenbaumThunderBYTE combination in contravention of the rules. Finjan made numerous decisions in this case 

without the benefit of knowing that Cisco intended to identify the Feigenbaum-ThunderBYTE

combination. Cisco should not be allowed to improperly backdoor this new (and untimely) invalidity 

theory into this case after Finjan has already relied upon Cisco’s prior representations that did not include 

this theory.

Cisco’s “Background” References—Necula, Karger, December—Should Be 

Excluded

Cisco also should be precluded from relying on the alleged “background” references Karger, 

December, and Necula for its invalidity analysis because they were not identified or charted in Cisco’s 

invalidity contentions or any of its elections of prior art, including its most recent Amended Third 

Election. See Dkt. No. 319-3 (Cisco’s Invalidity Contentions); Dkt. No. 319-11 (Cisco’s Amended Third 

Election); Patent L.R. 3-3(a), (c) (requiring Cisco to identify “each item of prior art” and provide “[a]

chart identifying specifically where and how in each alleged item of prior art each limitation of each 

asserted claim is found”); Dkt. No. 140 at 1 (limiting Cisco’s opening reports to its third election). 

While Cisco may argue these articles are “background,” that simply is not the case. At least 

Karger and December are used by Cisco’s experts as part of their element-by-element invalidity analyses, 

such that they go beyond serving merely as background references. See Dkt. No. 318-4 (Almeroth 

Report) ¶¶ 240, 280, 332, 352, 376, 410; Dkt. No. 318-6 (McDaniel Report) ¶ 234. For example, Dr. 

Almeroth relies on Karger’s description of JavaScript for a claim element in the ’844 Patent2 drawn to

“JavaScriptTM script,” because the Zwienenberg and other references on which he relies do not disclose 

JavaScript. See Dkt. No. 318-4 ¶¶ 240-41, 375-77, 410-11. Similarly, Dr. McDaniel relies on December 

for a browser that purportedly “fetches referenced software components prior to performing the hashing

 

2 Claim 7 of the ’844 Patent references “wherein the Downloadable includes a JavaScriptTM script.”

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function” in order to support a claim element in U.S. Patent No. U.S. 6,804,780 (“the ’780 Patent”), 

because the Atkinson reference on which he relies does not disclose that limitation.

3 See Dkt. No. 318-

6 (McDaniel Rpt.) ¶ 234. Finally, Dr. Almeroth relies upon Necula in his invalidity analysis. See Dkt. 

No. 318-4 (Almeroth Rpt.) ¶¶ 280, 352. Cisco has represented that Dr. Almeroth “does not rely on Necula 

as disclosing a claim element,” Dkt. No. 333 at 8, and therefore at a minimum Cisco should not be 

permitted to rely upon Necula at trial as disclosing any claim element.

Cisco should be precluded from relying on these references to support its invalidity analysis. See 

Largan, 2014 WL 6882275, at *6 (reference that is relied on as part of the invalidity analysis in this 

manner is considered “asserted prior art”); Life Techs. Corp. v. Biosearch Techs., Inc., No. C 12-00852 

WHA, 2012 WL 4097740, at *1–2 (N.D. Cal. Sept. 17, 2012) (striking portions of opinion in expert 

report because they relied on prior art that should have been disclosed pursuant to the Patent Local Rules, 

recognizing that “[o]ther courts have rejected such attempts to elude patent local rules by defining 

materials as ‘background’ or ‘context.’”) (citations omitted). 

Cisco’s New Invalidity Grounds Under Sections 101 and 112 Should Be Precluded

Finally, Cisco should be precluded from relying on its subject matter and written description 

invalidity theories, which were identified more than a year and a half after Cisco served its invalidity 

contentions. See Patent L.R. 3-3(d) (requiring identification of “[a]ny grounds of invalidity based on 35 

U.S.C. § 101 . . . or enablement or written description under 35 U.S.C. § 112(1) of any of the asserted 

claims.”) (emphasis added). 

Section 101: Cisco’s invalidity contentions provided only a short mostly boilerplate recitation 

addressing Section 101 (amounting to one paragraph-per-patent), alleging in a conclusory fashion that 

the claims are directed to an “abstract concept” or recite “generic computer components,” without any 

meaningful explanation. See Dkt. No. 319-3 at 85-87. Nearly a year and a half after serving its 

contentions, Cisco served an interrogatory response presenting new bases for its Section 101 defense, 

and then served the expert report of Dr. McDaniel, who provides twenty-one paragraphs of opinions that 

were never discussed or even summarized in Cisco’s invalidity contentions. Dkt. No. 318-6 (McDaniel 

 

3 Claim 9 of the ’780 Patent references “an ID generator ... that fetches at least one software component 

identified by the one or more references, and for performing a hashing function....”

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Rpt.) ¶¶ 214, 222, 502-20; Dkt. No. 333-10 (Cisco’s Response to Finjan’s Interrogatory No. 16). These 

untimely disclosures were improper. See Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-cv00876-RS(JSC), 2017 WL 5257001, at *4-5 (N.D. Cal. Nov. 13, 2017) (defendant could not rely on 

Section 101 theories that were described in contentions because they were conclusory); see also Finjan, 

Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2015 WL 9460295, at *3-4 (N.D. Cal. Dec. 23, 2015) 

(finding “broad reservation” insufficient under Rule 3-3(d) and emphasizing defendants’ burden to 

identify the actual grounds for invalidity under Sections 101 and 112 so as to “provide structure to 

discovery and to allow the parties to move efficiently toward the eventual resolution of their dispute”).

Section 112: For lack of written description under Section 112, Cisco’s contentions recite a 

laundry list of potential claim terms that allegedly lack written description/enablement, without providing 

any explanation for any of those particular terms. See Dkt. No. 319-3 at 74-80. In contrast, Cisco’s

experts identify particular claim terms and offer new theories and explanations as to how the 

specifications are supposedly deficient under Section 112. See Dkt. No. 318-4 (Almeroth Rpt.) ¶¶ 619-

83; Dkt. No. 318-6 (McDaniel Rpt.) ¶¶ 213, 221, 479-501; Dkt. No. 319-15 (Prakash Rpt.) ¶¶ 166, 475–

489. Cisco’s laundry list of alleged terms did not meet Cisco’s burden of providing meaningful notice 

of the specific claim terms Cisco would allege as deficient under Section 112, much less notice as to why 

those claim terms were purportedly deficient under Section 112. Having failed to provide adequate notice 

in its contentions, Cisco should not now be permitted to rely on its experts’ belatedly disclosed theories 

at trial. See MediaTek, 2014 WL 690161, at *6-7 (striking from reports Section 112 theories not disclosed 

in invalidity contentions); see also Finjan, 2015 WL 9460295, at *3-4.

Cisco’s failure to identify these theories in its contentions has prejudiced Finjan because Finjan 

has not had the opportunity to fairly address these theories during fact discovery (see supra at 3). Cisco’s 

belatedly asserted grounds for invalidity under Sections 101 and 112 should be excluded.

III. CONCLUSION

Finjan respectfully requests that its Motion in Limine No. 3 be granted for at least the foregoing 

reasons.

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DATED: April 16, 2020

Respectfully submitted,

By: /s/ Aamir Kazi

Juanita R. Brooks (CA SBN 75934) brooks@fr.com

Roger A. Denning (CA SBN 228998) denning@fr.com

Frank J. Albert (CA SBN 247741) albert@fr.com

Megan A. Chacon (CA SBN 304912) chacon@fr.com

K. Nicole Williams (CA SBN 291900) nwilliams@fr.com

Oliver J. Richards (CA SBN 310972) ojr@fr.com

Jared A. Smith (CA SBN 306576) jasmith@fr.com

FISH & RICHARDSON P.C.

12390 El Camino Real, Suite 100

San Diego, CA 92130

Phone: (858) 678-5070 / Fax: (858) 678-5099

Aamir Kazi (Admitted Pro Hac Vice) kazi@fr.com

Alana Mannige (CA SBN 313341) mannige@fr.com

FISH & RICHARDSON P.C.

1180 Peachtree Street NE, 21st Floor

Atlanta, GA 30309

Phone: (404) 892-5005 / Fax: (404) 892-5002

Attorneys for Plaintiff

FINJAN, INC.

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the above and foregoing document 

has been served on April 16, 2020 to all counsel of record who are deemed to have consented to 

electronic service via the Court’s CM/ECF system. Any other counsel of record will be served by 

electronic mail and regular mail.

/s/ Aamir Kazi

Aamir Kazi

kazi@fr.com

Case 5:17-cv-00072-BLF Document 529 Filed 04/16/20 Page 8 of 8