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CISCO’S RESPONSE TO FINJAN’S MOTION FOR RELIEF

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

DUANE MORRIS LLP

Nicole E. Grigg (CA SBN 307733)

negrigg@duanemorris.com

D. Stuart Bartow (CA SBN 233107)

dsbartow@duanemorris.com

2475 Hanover Street

Palo Alto, CA 94304-1194

Telephone: 650.847.41500

Facsimile: 650.847.4151

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

Admitted Pro Hac Vice

wjameson@duanemorris.com

Matthew C. Gaudet

Admitted Pro Hac Vice

mcgaudet@duanemorris.com

David C. Dotson

Admitted Pro Hac Vice

dcdotson@duanemorris.com

John R. Gibson

Admitted Pro Hac Vice

jrgibson@duanemorris.com

Jennifer H. Forte

Admitted Pro Hac Vice

jhforte@duanemorris.com

Alice E. Snedeker

Admitted Pro Hac Vice

aesnedeker@duanemorris.com

1075 Peachtree NE, Suite 2000

Atlanta, GA 30309

Telephone: 404.253.6900

Facsimile: 404.253.6901

IN THE 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

CISCO SYSTEMS, INC.’S RESPONSE TO 

FINJAN, INC.’S MOTION FOR RELIEF 

FROM NON-DISPOSITIVE PRETRIAL 

ORDERS

Judge: Hon. Beth Labson Freeman

Courtroom: 6, 4th Floor

REDACTED

Case 5:17-cv-00072-BLF Document 676-4 Filed 07/20/20 Page 1 of 8
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CISCO’S RESPONSE TO FINJAN’S MOTION FOR RELIEF

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

TABLE OF ABBREVIATIONS

Deposition of Matt Watchinski Exhibit A

Comparison of Exemplary Paragraph Across 

Expert Reports of Nenad Medvidovic

Exhibit B

Operative Contentions Finjan’s November 30, 2017 Infringement 

Contentions

Dkt. 582 April 28, 2020 Order Granting Cisco’s 

Motion to Strike

Dkt. 662 June 11, 2020 Order Denying Finjan’s 

Motion for Reconsideration

Case 5:17-cv-00072-BLF Document 676-4 Filed 07/20/20 Page 2 of 8
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CISCO’S RESPONSE TO FINJAN’S MOTION FOR RELIEF

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

I. INTRODUCTION

Judge van Keulen fully considered Cisco’s motion to strike and correctly determined—

twice—that the motion should be granted. Her Orders (Dkts. 582, 662) reviewed the lengthy history 

of the dispute, including Finjan’s repeated efforts to expand beyond its Operative Contentions. Finjan 

has now lost five motions on this issue; its latest reprisal does not require a different result. 

First, Finjan argues that Judge van Keulen’s Orders “improperly placed the burden of proof 

on Finjan.” But Cisco carried its burden of identifying the accused functionality in Finjan’s expert 

reports (including replacement language in its multiple amended reports) and showing Finjan had 

not disclosed that functionality in its Operative Contentions. Finjan failed to rebut Cisco’s showing 

by identifying where it had disclosed the functionality now associated with its replacement language 

in the almost 10,000 pages of expert reports on the ’633 Patent. 

Second, Finjan argues the Orders are “clearly erroneous” because they struck language 

“directed to a theory Cisco admitted was disclosed” in the Operative Contentions, specifically 

Finjan’s so-called “transmission theory.” That allegation is incorrect. The Orders methodically 

compared the functionality in the Operative Contentions with the accusations in the expert reports. 

The Orders properly struck the paragraphs for the surviving components because neither the original 

terms, the replacement terms, nor the language describing their functionality was in the Operative 

Contentions. (E.g., Dkt. 582 at 10-12). Also, Finjan expressly abandoned any “transmission-based 

theory” at summary judgment, (Dkt. 637-3 at 2, 7; Dkt. 487 at 14-15 & n.6), showing the extent to 

which Finjan is stretching. The Orders are proper, and Finjan’s motion should be denied.

II. LEGAL STANDARD

A magistrate judge’s ruling is modified or set aside only if “clearly erroneous or contrary to 

law.” 28 U.S.C. § 636(b)(1)(A); FED. R. CIV. P. 72(a). The district judge should not simply substitute 

his or her judgment for that of the magistrate judge. Grimes v. City & Cnty. of San Francisco, 951 

F.2d 236, 241 (9th Cir. 1991). “Clear error is found when a reviewing court has a definite and firm 

conviction that a mistake has been committed.” Lewis v. Ayers, 681 F.3d 992, 998 (9th Cir. 2012).

III. FINJAN’S LATEST VERSION OF ITS ARGUMENTS FAIL

A. Judge van Keulen Applied the Proper Burden of Proof 

Case 5:17-cv-00072-BLF Document 676-4 Filed 07/20/20 Page 3 of 8
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CISCO’S RESPONSE TO FINJAN’S MOTION FOR RELIEF

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

Finjan contends the Orders impermissibly shifted the burden of proof from Cisco to Finjan 

because Cisco allegedly did not analyze each paragraph stricken from the almost 10,000 pages of 

Dr. Medvidovic’s reports on the ‘633 Patent. In view of Finjan’s opposition to the Motion to Strike, 

the question in Cisco’s motion was whether the Operative Contentions disclosed the functionality of 

the replacement language in the amended Medvidovic reports for the 3 components that survived 

summary judgment. These issues were fully briefed and argued, with Cisco wading through all of 

the disclosures in the Operative Contentions. Dkts. 491-4, 523-3, 558, 560. 

To put this dispute in context, Cisco moved to strike the infringement theories Finjan 

advanced at summary judgment (that 7 components were mobile protection code (MPC)) because 

the Operative Contentions failed to disclose those theories. In evaluating this argument, the question 

this Court posed was whether Finjan disclosed specific functionality in the Operative Contentions

such that its expert’s opinions as to the 7 components are “‘the identification of additional evidentiary 

proof’ and not ‘new theories’ of infringement.” Dkt. 582 at 3. Cisco carried its initial burden of proof 

by identifying the deficiencies and lack of disclosure; what was left to resolve was whether Finjan 

could rebut this showing, all against the backdrop of Finjan having twice lost a motion to amend its 

contentions, Dkt. 274, 304, and also having lost Cisco’s related motion to strike, Dkt. 397.

By way of further background, Cisco moved for summary judgment on all MPC theories in 

Finjan’s expert reports—both (i) the theories in which alleged MPC was transmitted to a sandbox 

and (ii) the theories that alleged MPC was already resident at a sandbox. Dkt. 377-25 at 11-17. On 

March 20, 2020, this Court granted Cisco summary judgment as to 4 of those 7 components, and this 

left a dispute as to only 3 components: (i) ; (ii) ; and (iii) , which 

the Court expressly found are “components of Threat Grid and Dkt. 487 at 15. The 

question referred to Judge van Keulen, in parallel, was whether Finjan had disclosed any of the 

resident-component theory in its Operative Contentions. As further guidance, this Court explained 

that Judge van Keulen should decide whether the components in the amended Medvidovic reports 

had a “corresponding functionality” in the Operative Contentions. Dkt. 487 at 4. 

Finjan was well aware of exactly what the issue was. Cisco moved to strike the relevant 

portions of the expert reports for the 7 components addressed at summary judgment (including the 4 

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CISCO’S RESPONSE TO FINJAN’S MOTION FOR RELIEF

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

for which summary judgment was granted to “ensure[] that Finjan does not attempt to use DOE to 

revive the other four components”)—following extensive meet-and-confers with Finjan. Dkt. 491-4

at 7. Cisco’s motion encompassed the Original and First Amended versions of Finjan’s 6,000+ page 

expert reports, and whether the functionality for the components was disclosed in the Operative 

Contentions. After Cisco filed its motion and shortly before Finjan filed its opposition, Finjan served 

a Second Amended Report replacing (again) the First Amended Report’s replacement language for 

the 3 component names and other language, but leaving the language describing the functionality of 

those 3 components from the Original Report. Dkt. 507-4 at 6, 10. For example, the Second Amended 

Report replaced the First Amended Report’s replacement language for “ ” and “ ” 

with the further-amended phrase “parameters to run the sample file or URL,” but left in the language 

and evidence describing the functionality of the “ ” and “ ”. Id. at 10.

In its opposition to the motion to strike, Finjan addressed only the surviving 3 components. 

Judge van Keulen properly 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 or in 

this motion. Dkt. 582 at 8. Thus, Cisco’s motion to strike was narrowed to what Finjan contested in 

its opposition: whether Finjan sufficiently disclosed in its Operative Contentions the 3 surviving 

components ((i) ; (ii) ; and (iii) ) and their functionality. 

As this Court previously explained in striking Finjan’s original expert report, an infringement 

theory in an expert report that is only vaguely supported in the infringement contentions must be 

struck. Dkt. No. 397 at 3. The Court also noted that “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.” Id. Cisco carried its burden in identifying the accused functionality in the expert 

report, and explained in detail (in its briefs and a multi-hour hearing) how the Operative Contentions 

had not disclosed this functionality. E.g., Dkts. 491-4 at 7-10, 523-3 at 2-5. Finjan failed to rebut this 

evidence. Finjan was unable to demonstrate that it had disclosed the functionality now associated 

with Finjan’s replacement language in its thousands of pages of expert reports on the ’633 Patent. 

Thus, the Orders properly found that neither these 3 components, nor the functionality described 

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CISCO’S RESPONSE TO FINJAN’S MOTION FOR RELIEF

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

when the replacement language is substituted, were properly disclosed in the Operative Contentions. 

Finjan’s allegations that neither Cisco nor Judge Van Keulen (who has now written 32 pages of 

Orders) provided sufficient explanation of Finjan’s failure to disclose are belied by the record. 

B. Finjan’s Belated Arguments About its Abandoned “Transmission Theory” Fail

Finjan disclaimed all “transmission-based theories” at summary judgment, regardless of 

whether this theory was disclosed in the Operative Contentions. Specifically, in its opposition to 

summary judgment, Finjan expressly abandoned its theory that MPC was transmitted to the sandbox 

from another device (“transmission theory”), which this Court confirmed in its MSJ Order. Dkt. 401 

at 14; Dkt. 487 at 14-15, n.6. Finjan argued only that 7 components already resident at the sandbox 

were MPC. Id. Any theory based on those 7 components—and thus, any theory left in this case—

is by definition a “sandbox-only theory.” Then, this Court grated summary judgment as to 4 of those 

7. Judge van Keulen confirmed Finjan’s position that everything was moot except for the 3 

components that survived summary judgment. Dkt. 582 at 8. Judge van Keulen then struck the 

paragraphs that originally accused those 3 components, rejecting Finjan’s attempted word swaps 

because there was no correspondence in the Operative Contentions to the functionality for those 

components described in the properly struck paragraphs. Judge van Keulen’s analysis of Paragraph 

656 shows Finjan’s improper descriptions of functionality of undisclosed components, and then 

Finjan’s effort to simply swap the title of the component with a more genericized phrase—but leaving 

in the undisclosed functionality. Dkt. 582 at 10-12. The Orders correctly strike this. 

1. The Exemplary Paragraph Confirms The Appropriateness of the Remedy

Finjan’s “sleight of hand” (Dkt. 582 at 9) can be seen in the exemplary paragraph its motion 

highlights from the Second Amended Report. Finjan contends ¶ 1510 was improperly struck because 

the replacement language—“parameters to run the sample file or URL”—did not directly replace the 

words “ ” or “ .” Rather, Finjan argues, the phrase in the Second Amended Report 

replaced the previous phrase “preset configurations for the sandbox in Talos” in the First Amended 

Report. Dkt. 672-4 at 3-4. 

Finjan’s argument ignores the history of its reports. The point of this paragraph in the Original 

Report was to accuse “ ” and “ ,” whose functionality was not disclosed in the 

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CISCO’S RESPONSE TO FINJAN’S MOTION FOR RELIEF

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

Operative Contentions. The fact Finjan used 2 steps to make its replacement did not throw Judge 

van Keulen off the trail. As step 1, Finjan used the First Amended Report to replace “ ” and 

“ ” with “preset configurations for the sandbox in Talos” and “scripts” or “scripts to emulate 

certain user actions,” while keeping the description of the undisclosed functionality of “ ” 

and “ ”. Dkt. 558. Then, as step 2, Finjan’s Second Amended Report changed the 

replacements phrases (from the First Amended Report) into “parameter to run the sample file or 

URL,” again keeping the language describing the functionality. Ex. B.

Finjan’s attempt to genericize its reports and retroactively swallow all possible allegations 

with “parameters to run the sample file or URL” is confirmed, as Judge van Keulen recognized, by 

the fact Finjan attempted to replace at least 5 different MPC theories with that same term: (i) 

. 

Dkt. 582 at 13. Judge van Keulen properly rejected this. Id. Again, the ambiguity in what “parameters 

to run the sample file or URL” refers to, including in ¶ 1510, illustrates Cisco’s earlier argument that 

Finjan’s use of the phrase is so vague it is meaningless—which is prohibited by the case law. 

Furthermore, Judge van Keulen appropriately struck paragraphs, such as ¶ 1510, that cite 

deposition testimony from Cisco’s engineers because Finjan has improperly attributed its 

replacement language to Cisco engineers’ testimony. For example, the Watchinski testimony cited 

in ¶ 1510 discusses —not “parameters to run the sample file or URL.” Ex. A. Finjan 

cannot rely on Cisco engineers’ testimony in its expert reports for the same reasons it could not 

amend its Operative Contentions to include functionality described by that testimony: Finjan waited 

too long to depose Cisco’s witnesses, and Judge van Keulen and this Court denied Finjan leave to 

amend its contentions to accuse functionality that relied upon this testimony. Dkt. 274, 304. 

2. Finjan was Fully on Notice of the Relief Sought

Finally, Finjan complains “the Orders strike language from paragraphs that are relevant to 

Finjan’s transmission-based theories.” Mot. 5. In addition to being wrong on the merits, Finjan did 

not present this argument to Judge van Keulen. Dkt. 662 at 8. Finjan has no excuse for failing to 

timely raise this argument. Nor does this argument deserve attention from this Court, as Finjan 

expressly disclaimed any such theories at summary judgment. Dkt. 401 at 14; Dkt. 487 at 14-15, n.6.

Case 5:17-cv-00072-BLF Document 676-4 Filed 07/20/20 Page 7 of 8
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CISCO’S RESPONSE TO FINJAN’S MOTION FOR RELIEF

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

Dated: July 20, 2020 Respectfully submitted,

/s/ Nicole Grigg 

D. Stuart Bartow

Nicole E. Grigg

Duane Morris LLP

2475 Hanover Street

Palo Alto, CA 94304-1194

Email: dsbartow@duanemorris.com

Telephone: 650.847.4150

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

David C. Dotson (admitted pro hac vice)

Email: dcdotson@duanemorris.com

Jennifer H. Forte (admitted pro hac vice)

Email: jhforte@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 676-4 Filed 07/20/20 Page 8 of 8