JOINT CASE MANAGEMENT 

STATEMENT 

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

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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 

FISH & RICHARDSON P.C. 

12860 El Camino Real, Suite 400 

San Diego, CA 92130 

Telephone: (858) 678-5070 

Facsimile: (858) 678-5099 

Additional attorneys on signature page 

Attorneys for Plaintiff 

FINJAN LLC 

D. Stuart Bartow (CA SBN 233107) 

dsbartow@duanemorris.com 

DUANE MORRIS LLP 

2475 Hanover Street 

Palo Alto, CA 94304-1194 

Telephone: (650) 847-4146 

Facsimile: (650) 847-4151 

Additional attorneys on signature page 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

(SAN JOSE DIVISION) 

FINJAN LLC, a Delaware Limited Liability 

Company, 

 

 Plaintiff, 

v. 

CISCO SYSTEMS, INC., a California 

Corporation, 

 Defendant. 

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

JOINT CASE MANAGEMENT 

STATEMENT

DATE: May 6, 2021 

TIME: 1:30 PM 

JUDGE: Hon. Beth Labson Freeman 

PLACE: Ctrm: 3, 5th Floor 

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Pursuant to Civil Local Rule 16-10, Patent Local Rule 2-1, the Standing Order for All Judges 

of the Northern District of California – Contents of Joint Case Management Statement and the 

December 16, 2020 Order Continuing Trial to June 4, 2021, Setting Jury Instruction And Case 

Management Conferences (ECF No. 738), the parties to the above-titled action, Plaintiff Finjan LLC 

(“Finjan”) and Defendant Cisco Systems, Inc. (“Cisco”), jointly submit this Joint Case Management 

Statement. 

1. JURISDICTION AND SERVICE 

This is an action for patent infringement and the jurisdiction of the court arises under the 

Patent Act, 35 U.S.C. § 271 et seq. 

Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c) and/or 1400(b). No 

issues exist regarding personal jurisdiction, venue or service. 

2. FACTS 

This case is set for trial on June 4, 2021. Finjan filed its original complaint in this case on 

January 6, 2017. Finjan alleges that Cisco has directly infringed U.S. Patent Nos. 6,154,844 (“the 

‘844 Patent”), 8,677,494 (“the ‘494 Patent”), 6,804,780 (“the ‘780 Patent”), 8,141,154 (“the ‘154 

Patent”), and 7,647,633 (“the ‘633 Patent”) and (collectively the “Patents-in-Suit”) by making, 

using, selling, offering for sale and/or importing technologies in connection with Cisco’s 

Advanced Malware Protection (“AMP”), including AMP for Networks (including AMP for ASA 

with Firepower, AMP for NGFW, AMP for NGIPS), AMP for CWS, AMP for ESA, AMP for 

WSA, AMP for Meraki, AMP for Endpoints, Threat Grid, Talos Security Intelligence and 

Research Group (“Talos”), and ESA Outbreak Filters.

Finjan additionally alleges that Cisco has induced infringement of each of the Patents-inSuit by instructing, directing and/or requiring others to perform all or some of the steps of method 

claims of the Patents-in-Suit. Finjan further alleges that Cisco’s infringement is willful. Finjan 

contends it holds all rights, title, and interest in the Patents-in-Suit. Finjan seeks damages and 

injunctive relief for the alleged infringement, as well as a finding that this case is exceptional. 

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Cisco filed an answer to Finjan’s original complaint on March 6, 2017 (Dkt. 24) (pursuant 

to the parties’ stipulated extensions of time (Dkt. 28 & 32)). Cisco contends that its accused 

products were developed independently of Finjan and do not practice any of Finjan’s patents. 

Cisco denies Finjan’s allegations of patent infringement. Cisco further alleges that the Patents-inSuit are invalid. Cisco previously alleged that the ’494 Patent is unenforceable due to inequitable 

conduct occurring during the prosecution thereof, but withdrew that allegation in the parties’ 

Proposed Amended Pretrial Statement. (Dkt. 696.) 

3. LEGAL ISSUES 

The principal disputed legal issues are: 

 Whether Cisco has infringed any or all of the Patents-in-Suit, either directly (35 

U.S.C. § 271(a)) or indirectly (35 U.S.C. § 271(b)); 

 Whether Finjan is entitled to damages as a result of the alleged infringement of any 

or all of the Patents-in-Suit, and if so, the amount (35 U.S.C. § 284); 

 Whether Finjan is entitled to injunctive relief to prevent alleged irreparable harm as 

a result of the alleged continuing infringement of any of the ʼ154 Patent (35 U.S.C. 

§ 283); 

 Whether Cisco’s alleged infringement is willful; and 

 Whether any or all claims of the Patents-in-Suit are invalid under 35 U.S.C. §§ 101, 

102, 103, and/or 112. 

4. MOTIONS AND/OR PENDING MATTERS 

A. Pending Motions 

On April 19, 2021, Cisco filed a Motion for Judgment of Invalidity of the ’844, ’780, and 

’494 Patents based on Collateral Estoppel. (Dkt. No. 759.) Finjan filed its opposition on April 26, 

2021, and Cisco filed its reply on April 29, 2021. 

5. AMENDMENT OF PLEADINGS 

The deadline for joining parties and amending the pleadings without leave of Court was 

June 15, 2017. (Dkt. 70). The parties do not expect any further amendments to the pleadings. 

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6. EVIDENCE PRESERVATION 

The parties have reviewed the Northern District of California’s Guidelines For the 

Discovery of Electronically Stored Information (“ESI”) and Checklist for Rule 26(f) Meet and 

Confer Regarding ESI, including those portions related to evidence preservation. Additionally, the 

parties have met and conferred at their Rule 26(f) conference regarding evidence preservation. The 

parties submitted a stipulated Order Regarding Discovery of Electronically Stored Information, 

which was ordered April 16, 2018. (Dkt. 118.) 

7. DISCLOSURES 

The parties exchanged initial disclosures pursuant to Rule 26(a) on June 14, 2017. The 

parties have updated the initial disclosures, as necessary. 

8. DISCOVERY 

Finjan and Cisco are in the process of conferring on one additional discovery issue. 

9. CLASS ACTIONS 

Not applicable. 

10. RELATED CASES 

Finjan identifies the following cases that are pending in other courts: 

 Finjan LLC v. Rapid7, Inc. et al, Civil Action No. 1:18-cv-01519 (D. Del.); 

 Finjan LLC v. Sonicwall, Inc. , Civil Action No. 5:17-cv-04467 (N.D. Cal.); 

 Finjan LLC v. ESET, LLC et al, Civil Action No. 3:17-cv-00183 (S.D. Cal.); 

 Finjan LLC v. Palo Alto Networks, Inc., Civil Action No. 4:14-cv-04908 (N.D. 

Cal.); and 

 Finjan, LLC. v. Fortinet Inc., Civil Action No. 3:18-cv-06555 (N.D. Cal.). 

Of particular relevance to this case is the ESET matter. Currently pending in that case is 

Finjan’s Motion for Reconsideration of the Court’s summary judgment order invalidating two 

patents at issue here: the ’844 and ’780 Patents. That motion was filed on April 12, 2021. See 

Finjan, Inc. v. ESET, LLC, No. 3:17-cv-0183-CAB, ECF 872-1 (S.D. Cal. April 12, 2021). 

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11. RELIEF 

Finjan seeks entry of judgment finding that Cisco has infringed the Patents-in-Suit. Finjan 

seeks entry of judgment finding that Cisco is continuing to infringe the ʼ154 patent, as well as 

injunctive relief, including an injunction against Cisco from infringing any of the Patents-in-Suit 

that have not yet expired. Finjan also seeks monetary damages, including damages based on a 

calculation of lost profits or an amount no less than a reasonable royalty. Finjan further seeks a 

finding that Cisco has willfully infringed the Patents-in-Suit and all damages-related remedies 

available to Finjan for Cisco’s willful infringement. Finjan further seeks a judgment that this case 

is exceptional and an award of Finjan’s costs and reasonable attorneys’ fees. Finjan also seeks an 

accounting of all sales and revenues, together with pre-judgment and post-judgment interest. 

Finjan seeks any other relief available under applicable law. 

Cisco seeks entry of judgement in its favor on Finjan’s claims against Cisco for patent 

infringement, a finding that Cisco does not infringe the Patents-in-Suit, a finding that the asserted 

claims of the Patents-in-Suit are invalid, a judgment that this case is exceptional and an award of 

Cisco’s costs and reasonable attorneys’ fees, and such other relief as the Court deems just and 

proper under the circumstances. 

12. SETTLEMENT AND ADR 

The parties have held multiple mediations, including their most recent mediation which 

was on March 25, 2021 before Magistrate Cousins. The case did not settle. 

13. CONSENT TO MAGISTRATE JUDGE FOR ALL PURPOSES 

The parties do not consent to have a magistrate judge conduct all further proceedings 

including trial and entry of judgment. 

14. OTHER REFERENCES 

The parties do not believe that this case is suitable for reference to binding arbitration, a 

special master, or the Judicial Panel on Multidistrict Litigation. 

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15. NARROWING OF ISSUES – LIMITS ON ASSERTED CLAIMS AND PRIOR ART 

REFERENCES 

The parties have participated in a procedure for narrowing the issues as set forth in the 

Joint Case Management Statement filed by the parties on August 23, 2018. Cisco expects further 

narrowing of the case through resolution of the motion for reconsideration in the ESET case 

mentioned above and Cisco’s motion regarding collateral estoppel pending in this case. 

16. EXPEDITED TRIAL PROCEDURE 

The parties do not propose that this case proceed under the Expedited Trial Procedure of 

General Order 64 Attachment A. 

17. SCHEDULING 

On December 16, 2020, the Court entered an order setting the case for trial on June 4, 

2021. 

18. TRIAL 

The parties have requested a trial by jury. This Court has allotted 15 hours per side 

excluding opening and closing. Trial of this matter is scheduled to begin on June 4, 2021 and this 

Court has indicated the case should go to the jury by June 16, 2021. (ECF No. 738). 

19. DISCLOSURE OF NON-PARTY INTERESTED ENTITIES OR PERSONS 

The parties have filed Certifications of Interested Entities or Persons pursuant to Civil 

Local Rule 3-16. Dkt. No. 3 (Finjan’s certification); Dkt. No. 25 (Cisco’s certification). 

Finjan certifies that the following listed persons, associations of persons, firms, 

partnerships, corporations (including parent corporations) or other entities (i) have a financial 

interest in the subject matter in controversy or in a party to the proceeding, or (ii) have a nonfinancial interest in that subject matter or in a party that could be substantially affected by the 

outcome of this proceeding: Finjan Holdings LLC. Finjan LLC is a wholly owned subsidiary of 

Finjan Holdings LLC. No publicly held corporation owns 10% or more of Finjan LLC’s stock. 

Cisco certifies that no persons, associations of persons, firms, partnerships, corporations 

(including parent corporations) or other entities (i) have a financial interest in the subject matter in 

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controversy or Cisco, or (ii) have a non-financial interest in that subject matter or Cisco that could

be substantially affected by the outcome of this proceeding. 

20. PROFESSIONAL CONDUCT 

The attorneys of record confirm that they have reviewed the Guidelines for Professional 

Conduct for the Northern District of California. 

21. OTHER MATTERS 

Cisco has a few questions for the Court related to the logistics of the trial in light of any 

continuing restrictions as a result of COVID-19. 

Dated: April 29, 2021 FISH & RICHARDSON P.C. 

By: /s/ Aamir Kazi 

 Aamir Kazi (Admitted Pro Hac Vice) 

kazi@fr.com 

Attorneys for Plaintiff 

FINJAN, INC. 

Dated: April 29, 2021 DUANE MORRIS LLP 

By: /s/ Alice E. Snedeker

 Alice E. Snedeker (admitted pro hac vice) 

aesnedeker@duanemorris.com 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

ATTESTATION PURSUANT TO CIVIL L.R. 5-1(i) 

In accordance with Civil Local Rule 5-1(i)(3), I attest that concurrence in the filing of this 

document has been obtained from any other signatory to this document. 

/s/ Aamir Kazi 

Aamir Kazi 

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Additional Counsel: 

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

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

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

Tucker N. Terhufen (CA SBN 311038); terhufen@fr.com

12860 El Camino Real, Suite 400 

San Diego, CA 92130 

Telephone: (858) 678-5070 

Facsimile: (858) 678-5099 

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

1180 Peachtree Street NE, 21st Floor 

Atlanta, GA 30309 

Telephone: (404) 892-5005 

Facsimile: (404) 892-5002 

Attorneys for Plaintiff 

FINJAN, INC. 

DUANE MORRIS LLP

D. Stuart Bartow (CA SBN 233107); dsbartow@duanemorris.com 

2475 Hanover Street 

Palo Alto, CA 94304-1194 

Telephone: (650) 847-4146 

Facsimile: (650) 847-4151 

L. Norwood Jameson (admitted pro hac vice); wjameson@duanemorris.com 

Matthew C. Gaudet (admitted pro hac vice); mcgaudet@duanemorris.com 

Robin L. McGrath (admitted pro hac vice); rlmcgrath@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 Street, Ste. 2000 

Atlanta, GA 30309 

Telephone: (404) 253-6900 

Facsimile: (404) 253-6901 

Joseph A. Powers (admitted pro hac vice); 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 

John M. Desmarais (CA SBN 320875) jdesmarais@desmaraisllp.com 

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Peter C. Magic (CA SBN 278917) pmagic@desmaraisllp.com 

101 California Street, Suite 3070 

San Francisco, CA 94111 

Telephone: 415.573.1900 

Facsimile: 415.573.1901 

 

Paul A. Bondor (admitted pro hac vice) pbondor@desmaraisllp.com 

Priyanka R. Dev (CA SBN 308363) 

pdev@desmaraisllp.com 

Joze F. Welsh (admitted pro hac vice) jwelsh@desmaraisllp.com 

230 Park Avenue 

New York, NY 10009 

Telephone: 212.351.3400 

Facsimile: 212.351.3401 

 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

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