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Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

FINJAN, INC.,

Plaintiff,

v.

CISCO SYSTEMS INC.,

Defendant.

Case No. 17-cv-00072-BLF (SVK)

***FILED UNDER SEAL***

FINAL ORDER ON MOTIONS HEARD 

ON JUNE 6, 2019

Re: Dkt. Nos. 118, 209, 231, 243, 261

The Court heard oral argument on the following motions on June 6, 2019:

• ECF 188: Finjan’s Motion to Strike Cisco’s Further Updated Second Election of 

Asserted Prior Art;

• ECF 231: Finjan’s Motion for Leave to Supplement Infringement Contentions;

• ECF 209: Cisco’s Motion to Strike Finjan’s Second Supplemental Objections and 

Responses to Cisco’s Interrogatory No. 10 or, in the alternative, Leave to Amend to 

Assert Counterclaim for Breach of Contract;

• ECF 243: Joint discovery letter brief re deposition subpoena to non-party Neal 

Rubin; and

• ECF 261: Joint discovery letter brief re Finjan’s production of documents 

regarding relationship between IBM and Finjan/Finjan Blue.

In advance of the hearing, the Court issued tentative rulings and questions on the motions. 

ECF 271. This order contains the Court’s final rulings on the motions. After careful 

consideration of the parties’ submissions, statements at oral arguments, the case file, and relevant 

law, the Court ORDERS as follows:

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ECF 188: Finjan’s Motion to Strike 

Cisco’s Further Updated Second Election of Asserted Prior Art

Finjan moves to strike Cisco’s Further Updated Second Election of Asserted Prior Art on 

the grounds that it does not comply with the Court’s August 16, 2017 Order requiring a phased 

reduction in the number of asserted prior art references in this case. ECF188; see also ECF 70 

(the “August 2017 Order”). Finjan’s motion is GRANTED IN PART and DENIED IN PART.

I. Background

Patent Local Rule 3-3 requires that after the patent holder serves a Disclosure of Asserted 

Claims and Infringement Contentions, the accused infringer must serve Invalidity Contentions. 

The Invalidity Contentions must contain, among other things, “[a] chart identifying specifically 

where and how in each alleged item of prior art each limitation of each asserted claim is found.” 

Patent L.R. 3-3(c). 

The Court’s August 2017 Order adopted the parties’ stipulation to streamline the case by 

imposing “phased limits on asserted claims, prior art and invalidity theories.” ECF 70 at 4. 

Specifically, after Cisco provided its Invalidity Contentions, Finjan was required to serve a 

Preliminary Election of Asserted Claims, selecting a limited number of claims from the claims 

Finjan had previously asserted in its Infringement Contentions. Id. Cisco was then required to 

serve a Preliminary Election of Asserted Prior Art, electing a limited number of prior art 

references from prior art previously asserted in its Invalidity Contentions. Id. 

The second phase of elections required the parties to further reduce the number of asserted 

claims and prior art references by serving a Second Election of Asserted Claims (by Finjan), 

followed by a Second Election of Asserted Prior Art (by Cisco). Id. 

On September 13, 2018, the Court issued an order approving the parties’ stipulation to 

further narrow the asserted claims and prior art in this case. ECF 140. Under that order, Cisco 

was required to serve a Third Election of Asserted Prior Art, which identified a limited number of 

invalidity theories from the subset of previously-identified prior art. Id. at 1.

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II. Discussion

Finjan’s current motion seeks to strike Cisco’s Second Election of Asserted Prior Art—

more precisely, Cisco’s Further Updated Second Election of Asserted Prior Art served on January 

18, 2019 (for purposes of this Order, that document will be referred to as Cisco’s “Second 

Election”). ECF 188.1 The Second Election was served pursuant to the August 2017 Order, 

which provided that this election “shall assert from the subset of prior art previously identified no 

more than 6 prior art references per patent and no more than a total of 20 references across all 

Patents-in-Suit.” ECF 70 at 4. The August 2017 Order clarified that “[a] prior art instrumentality

(such as a device or process) and associated references that describe that instrumentality shall 

count as one reference, as shall the closely related work of a single prior artist.” Id. at n.3. Finjan 

argues that Cisco’s Second Election does not comply with the August 2017 Order because Cisco

“chose to obfuscate the specific prior art products it is asserting against Finjan and added new 

prior art references that Cisco failed to include in its Invalidity Contentions.” ECF 188 at 5. 

Finjan’s specific disagreements with Cisco’s Second Election are discussed below.

1. Cisco’s identification of multiple versions of software: The Court’s tentative 

ruling was that each version of software counts as one piece of prior art, and thus if Cisco wants 

the identified software to count as only one piece of prior art, it must pick a single version of the 

software to assert. ECF 271. At the hearing, Cisco agreed to update its election of software to 

conform to the Court’s tentative ruling. Accordingly, the Court adopts its tentative ruling as its 

final order on the issue of software versions.

2. Cisco’s identification of multiple versions of user manuals: The Court’s final 

order is that for an elected version of software, Cisco may identify a user manual that refers to that 

 

1 Following Cisco’s service of it Second Election of Asserted Prior Art, the parties met and 

conferred on various issues. See ECF 188 at 3-4. As a result of those meet and confer efforts, 

Cisco subsequently served an Updated Second Election on December 14, 2018 and, following 

additional meet and confer efforts, a Further Updated Second Election of Asserted Prior Art on 

January 18, 2019. Id.; ECF 188-1 at ¶¶ 4-5. 

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specific software version as an “associated reference” under the August 2017 Order. For an 

elected version of software, Cisco may not identify multiple user manuals across various operating 

systems 

3. References that Finjan claims Cisco did not chart as part of its original 

invalidity contentions: As discussed above, Patent Local Rule 3-3(c) requires the accused 

infringer to chart each alleged prior art reference. The Court therefore holds that 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. Finjan’s motion to strike argues that 

Cisco did not chart the ’346 Chess patent, the ’035 Nash patent, or the ’348 Ji patent and that 

therefore those references may not be included in Cisco’s election of prior art. 

a. ’346 Chess patent and ’035 Nash patent

Cisco argues that it adequately charted the ’346 Chess patent the ’035 Nash patent because 

the chart in its Invalidity Contentions for patent-in-suit 7,647,633, while not identifying these 

patents specifically, cross-references Section III.C.3 of Cisco’s Invalidity Contentions cover 

pleading. See ECF 195-3 at 8. However, Section III.C.3. of the Invalidity Contentions cover 

pleading is 15 pages in length and covers at least five claim elements. See ECF 194-3 at 51-67. 

Under the element “Determining if Downloadable-Information has Executable Code,” which itself 

covers six pages, the Chess and Nash patents are mentioned, along with numerous other 

references. Id. If the issue before the Court was purely a question of whether Finjan was on 

notice of the Chess and Nash patents, Cisco’s manner of cross-referencing the cover pleading in 

the ’633 chart might suffice. However, Patent Local Rule 3-3(c) requires prior art references to be 

charted. Having failed to chart these references, Cisco cannot now elect them as prior art 

references.

b. ’348 Ji patent

At the hearing, Finjan agreed with Cisco that the ’348 Ji patent was charted for certain 

asserted claims. Accordingly, that patent can be elected by Cisco as a prior reference for any 

claim for which it was charted.

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c. Digital Immune System (“DIS”)

For patents-in-suit 7,647,633 and 8,677,494, Cisco identified as prior art “Digital Immune 

System” and listed four (for the ’633 patent) and five (for the ’494 patent) “following references.” 

ECF 188-6 at 3-4. Based on the arguments and clarifications presented by the parties at the 

hearing, where the Digital Immune System reference has been identified for the ’633 and the ’494 

patents, Cisco must limit its election to just one of the “following references” that has been 

charted.

4. Amendment of Second Election: The Court DENIES Finjan’s motion to strike 

Cisco’s prior art allegations as a sanction for Cisco’s conduct. The Court instead ORDERS that 

Cisco must serve an amended Second Election that conforms to this order within seven (7) days of 

the date of the order. Cisco must also serve an amended Third Election of Prior Art within seven 

(7) days of serving the amended Second Election.

5. Production of prior art: Finjan’s motion to strike refers to certain issues 

regarding the production of prior art. See, e.g., ECF 188 at 8. At the hearing, neither party raised 

an issue with respect to Court’s tentative ruling that within seven (7) days of Cisco’s service of its 

amended election of prior art, the parties must meet and confer to resolve and, if necessary, file a 

joint discovery letter brief regarding any issues concerning the production of prior art. 

Accordingly, the Court adopts its tentative ruling as its final order on this issue.

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ECF 231: Finjan’s Motion to Amend Infringement Contentions

Finjan moves to amend its Infringement Contentions. ECF 231. Finjan’s motion is 

DENIED for the reasons set forth below. 

A plaintiff may amend its infringement contentions “only by order of the Court upon a 

timely showing of good cause,” such as the “[r]ecent discovery of nonpublic information about the 

Accused Instrumentality.” Patent L.R. 3-6. When determining whether to grant leave to amend, 

the Court first considers whether the party seeking leave acted diligently. Apple Inc. v. Samsung 

Elecs. Co., No. CF 12-00630 LHK, 2012 WL 5632618, at *2 (N.D. Cal. Nov. 15, 2012) (citation 

omitted). The Court then considers whether the proposed amendment would unduly prejudice the 

non-moving party. Id. (citation omitted). 

In support of its motion, Finjan does not provide a redline of its existing infringement 

contentions, claiming that redlines made the charts unwieldly. Instead, Finjan has prepared 

“Supplemental Infringement Charts” and provided the chart for patent-in-suit 6,154,844 as an 

exemplar. See ECF 230-14 (“exemplary example” of Supplemental Infringement Chart – see ECF 

231-1 at ¶ 26). At the hearing, Finjan stated that the issues raised by this motion and Cisco’s 

opposition fall into two categories: (1) Finjan’s identification of components that correspond to 

previous contentions, and (2) Finjan’s assertion of Talos as a standalone infringing product. 

However, the Supplemental Infringement Chart (hereinafter “SIC”) does not distinguish between 

amendments to identify components and amendments that now assert Talos alone is an infringing 

product. 

1. Identification of components

Finjan argues that many of its proposed amendments to the Infringement Contentions 

would simply add the name of a particular component (e.g., ThreatBrain) to its previous 

contentions regarding the associated functionality. Finjan argues that it learned the internal 

codenames of various Cisco components only recently during deposition.

Cisco argues that (1) Finjan’s proposed amendments are not as simple as Finjan suggests, 

and (2) most of the proposed amendments could have been “discovered” earlier in the litigation 

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through focused depositions. ECF 250. In particular, Cisco notes that the SIC, which is only for 

the ’844 patent, contains 47 proposed changes. Whereas some of the proposed amendments might 

simply add the name of a component to functionality previously disclosed in Finjan’s 

Infringement Contentions, others appear to seek to link newly-identified components to 

functionalities disclosed in the Infringement Contentions in a way that simply mirrors the claim 

language. 

It appears from the Court’s careful review of the proposed SIC and the arguments 

presented at the hearing that Finjan’s proposed amendments to identify components are 

significantly more complex and prejudicial than Finjan has portrayed them. First and foremost, as 

described above, Finjan did not present its proposed amendments in the form of a redlined version 

of its existing Infringement Contentions, but instead as an entirely new, separate document. At the 

hearing, the Court pressed Finjan on its suggestion that it was merely inserting specific names for 

a previously described functionality. If that were the case, it is not clear why Finjan’s current 

infringement contention charts could not be redlined to insert the purportedly recently discovered 

name at the place where the functionality is presently described. Simply put, without a redline, the 

Court is unable to determine that Finjan’s proposed amendments are limited to clarifying the 

existing contentions rather than expanding them. Thus, the Court is unable to conclude that Finjan 

has carried its not insubstantial burden of showing diligence and lack of prejudice. Further, 

creating an entirely new, separate document raises a specter that the parties and experts would 

have to work with two operable infringement contention documents—the original Infringement 

Contentions and a set of Supplemental Infringement Charts. There is no provision in the Local 

Rules for this approach, and no other Court in this District has endorsed it. 

Accordingly, Finjan’s motion to amend its infringement contentions to add the 

identification of components is DENIED. Finjan’s showing of diligence is insufficient given the 

apparent significance of its proposed amendment/supplementation which defy redlining its 

existing contentions. An amendment/supplementation this extensive would disrupt the case 

schedule at this point in the litigation.

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2. Talos standalone infringement theory

Finjan argues that it should be permitted to amend its Infringement Contentions to reflect 

Talos, by itself, as an infringing product. In its brief, Finjan argues that its SIC merely “identifies 

the relevant technological relationships among the Accused Products, such that there is no 

‘amendment’ to Finjan’s infringement claims against Cisco. In other words, the same grounds for 

asserting infringement against the same Accused Products remain the same . . . .” ECF 230-4 at 9. 

However, at the hearing Finjan admitted for the first time that its “standalone Talos” contention is 

a new theory. Finjan argues that this new infringement theory arises from recent deposition

testimony of Cisco witness Matt Watchinski that Talos uses sandboxes and other allegedly 

infringing features. Id. at 5. 

It is too late for Finjan to add this new theory to its infringement contentions. The nature 

and characteristics of Talos have long been the subject of discovery and argument between these 

parties. See ECF 79, ECF 83, ECF 198, ECF 199, and ECF 200. Finjan argues that Cisco 

misrepresented the nature of Talos not only to Finjan but to this Court, but a review of the 

proffered evidence on this point is not persuasive. That evidence, including produced documents

and deposition testimony, indicates that enough of Talos’s functionality was revealed to Finjan to 

enable it to seek discovery on these issues earlier. See ECF 249-62 (chart identifying previous 

references to Talos). Moreover, in its Initial Disclosures, Cisco disclosed Stefan Buhlmann of Joe 

Security as a witness “[k]nowledgeable regarding JoeBox (n/k/a Joe Sandbox) sandboxing” and 

Mr. Watchinski as a witness with “information relating to Talos service.” ECF 250-44 at 3.

In sum, Finjan’s showing of diligence is insufficient given the significance of its proposed 

amendment/supplementation, which would add a new infringement theory at this very late date in 

the litigation. Accordingly, Finjan’s motion to amend its infringement contentions to add a 

standalone Talos infringement theory is DENIED. 

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ECF 209: Cisco’s Motion to Strike Finjan’s Second Supplemental Response to 

Interrogatory 10 or, in the alternative, Motion to Amend Counterclaim

Cisco moves to strike Finjan’s second supplemental response and objections to 

Interrogatory No. 10. That interrogatory seeks Finjan’s allegations regarding when Cisco received 

actual or constructive notice of infringement of each patent-in-suit. The second supplemental 

response adds allegations of notice arising from the parties’ pre-litigation licensing discussions, 

which were covered by a non-disclosure agreement (“NDA”). Cisco argues that Finjan’s second 

supplemental response should be stricken because the facts that were added to that response have 

been in Finjan’s possession since it filed the lawsuit. Cisco also argues that if the interrogatory 

response is not stricken, it should be granted leave to amend to assert a counterclaim for breach of 

the parties’ NDA. 

At the hearing, Finjan provided a timeline attempting to link its second supplemental 

response to Interrogatory No. 10 on March 11, 2019 to a production of documents that occurred in 

January to April 2019 in advance of the depositions of Finjan’s CEO and its former VP of 

licensing. According to Finjan, documents regarding the parties’ pre-litigation licensing 

discussions were in that document production. Finjan also argued that although it had included

allegations concerning the licensing discussions in its original complaint (which it later removed 

from the complaint), those allegations related to willfulness, whereas Interrogatory No. 10 relates 

to notice.

Finjan’s arguments miss the point. Finjan has known about the licensing discussions and 

related documents it now, belatedly, points to as evidence of notice since before the lawsuit was 

filed, as evidenced by the allegations regarding those discussions in its original complaint. 

Although the focus of the interrogatory on notice may differ from the purpose for which Finjan 

offered evidence of licensing discussions in its complaint, the underlying facts have nevertheless 

been known to Finjan since the outset of the case. There simply is no good cause as to why Finjan 

waited until its second supplemental response to assert facts in support of its position on notice. 

Cisco’s motion to strike Finjan’s second supplemental response and objections to 

Interrogatory No. 10 is therefore GRANTED. 

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ECF 243: Joint Discovery Letter Brief re

Motion to Quash Deposition Subpoena to Neal Rubin

At the hearing neither party challenged the Court’s tentative ruling that the request by 

Cisco and non-party Neal Rubin to quash the deposition subpoena served by Finjan on Mr. Rubin 

is DENIED. ECF 271 at 3. Accordingly, the Court adopts its tentative ruling as the final order on 

this issue for the reasons discussed in the tentative ruling. Id.

ECF 261: Joint Discovery Letter Brief re

Cisco’s Motion to Compel Production of Documents re Finjan Blue

Cisco asks the Court to compel Finjan to produce all documents that hit on Cisco’s email 

search terms related to the patent acquisition and development agreement entered into between 

Finjan subsidiary Finjan Blue, Inc. and IBM and the relationship between Finjan and IBM. ECF 

261. 

At the hearing, Finjan argued that it only intends to make one reference to IBM to explain 

to the jury that Finjan has a subsidiary, Finjan Blue, that has or had a relationship with IBM. 

Finjan said it might also use a demonstrative reflecting, among other things, its relationship with 

IBM. Finjan argues that because it will offer only minimal references to IBM and Finjan Blue at 

trial, in the context of explaining Finjan’s corporate structure, Cisco is not entitled to the discovery 

it seeks and Finjan’s previous production of the Finjan’s agreement with IBM is sufficient.

According to Cisco, under Finjan’s agreement with IBM, Finjan purchased patents from 

IBM and has the right to retain the inventors on an hourly basis to assist in patent prosecution and 

enforcement. ECF 260-4 at 2. Cisco is concerned that Finjan will portray its relationship with 

IBM as more extensive. Cisco argues that if Finjan intends to create a “halo effect” at trial by 

mentioning the company’s relationship with IBM, Cisco must be given an opportunity to obtain 

evidence to impeach that statement. Cisco has offered to forego discovery on this issue if Finjan 

agrees not to reference its relationship with IBM at trial.

Cisco’s motion to compel discovery on this issue is CONDITIONALLY GRANTED. 

The fact that Finjan may refer only briefly to IBM at trial does not mean that discovery on the 

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issue must be limited to the Finjan-IBM contract that Finjan has already produced. Cisco has 

demonstrated why additional discovery is necessary to challenge statements Finjan may make at 

trial regarding its relationship with IBM. Therefore, if Finjan intends to refer to its relationship 

with IBM at trial, it must produce the requested documents. Within two (2) weeks, Finjan must 

either product the requested documents or inform Cisco in writing that it will not refer to Finjan’s 

relationship with IBM at trial. 

SO ORDERED.

Dated: June 11, 2019

SUSAN VAN KEULEN

United States Magistrate Judge

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