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 DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 2 RE POST-GRANT PROCEEDINGS

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 MOTION IN LIMINE NO. 2 

RE EVIDENCE OR ARGUMENTS 

ABOUT POST-GRANT 

PROCEEDINGS 

Case 5:17-cv-00072-BLF Document 535 Filed 04/16/20 Page 1 of 7
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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 2 RE POST-GRANT PROCEEDINGS

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

TABLE OF ABBREVIATIONS 

Plaintiff Finjan, Inc. Finjan or Plaintiff 

Defendant Cisco Systems, Inc. Cisco or Defendant 

January 9, 2020 transcript of proceedings before Judge Freeman Ex. 8 

Declaration of Nicole Grigg in Support of Defendant Cisco Systems, 

Inc.’s Motions in Limine 

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 MOTION IN LIMINE NO. 2 RE POST-GRANT PROCEEDINGS

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

I. THE COURT SHOULD PRECLUDE FINJAN FROM PRESENTING EVIDENCE OR 

ARGUMENT ABOUT POST-GRANT PROCEEDINGS BEFORE THE UNITED 

STATES PATENT AND TRADEMARK OFFICE ON THE ASSERTED PATENTS. 

The Court should preclude Finjan from presenting any evidence or argument about inter 

partes review (“IPR”) and other post-grant proceedings – whether involving Cisco or other parties – 

before the USPTO. Courts have disallowed evidence of these proceedings under Federal Rule of 

Evidence 403 due to their minimal (if any) relevance and significant potential to mislead the jury: 

“While these [proceedings] may have some probative value, [the Court] believe[s] that this will be 

far outweighed by likely confusion to the jury.” Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197-WHO, 

2016 WL 4560071, *14 (N.D. Cal. Aug. 22, 2016) (granting motion to exclude evidence of IPR 

proceedings and citing Interdigital Commc’ns Inv. v. Nokia Corp., No. 13-10, 2014 WL 8104167, 

*1 (D. Del. Sept. 19, 2014)); Milwaukee Elec. Tool Corp. v. Snap-On Inc., No. 14-CV-1296-JPS, 

2017 WL 4570787, at *6-7 (E.D. Wis. Oct. 12, 2017) (excluding IPR evidence where “the IPRs have 

all been completed and resulted in decisions on the merits upholding patentability.”). As the Sophos 

Court recognized, “[I]it would take a significant amount of time and effort to adequately explain the 

relevance and limitations of the PTO proceedings to the jury and ... there is a substantial risk that 

the jury will improperly substitute its own judgment for the PTO decisions.” Id. Even Finjan has 

argued that “evidence of the pending PTO proceedings is irrelevant, non-probative, and prejudicial.” 

Id. at *9. The jury will be independently evaluating Cisco’s defenses of invalidity, and in doing so 

will apply different legal standards, hear from different experts, receive different evidence, and have 

a wholly separate record from that before the PTO. Allowing introduction of evidence and discussion 

of these prior PTO proceedings would result in having a trial-within-a-trial about these post-grant 

proceedings, which would only confuse the jury and make their task more difficult. 

The five asserted patents in this case – U.S. Patent Nos. 6,804,780 (’780 Patent), 6,154,844 

(’844 Patent), 8,677,494 (’494 Patent), 8,141,154 (’154 Patent) and 7,647,633 (’633 Patent) – have 

been the subject of at least 26 IPR petitions and several additional ex parte reexaminations. All but 

three of these proceedings were filed by parties other than Cisco. The overall result was mixed for 

both sides; many claims were invalidated, and some others survived. The difference between the 

surviving claims and the invalidated claims was often quite narrow. See, e.g., Palo Alto Networks, 

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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 2 RE POST-GRANT PROCEEDINGS

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

Inc. v. Finjan, Inc., 777 Fed. Appx 501, 508 (Fed. Cir. 2019) (confirming invalidity of independent 

claim 1 while affirming Board decision that independent claim 10 was not shown invalid). 

“Admitting evidence of the IPRs is likely to mislead the jury into believing that because the patentsin-suit have survived many attacks, they must be valid against the present attacks,” and without 

extensive testimony explaining the differences between the issues presented in the IPRs and the 

issues presented at trial, evidence or testimony about the IPR will only serve to mislead the jury and 

waste time. Milwaukee Elec. Tool, 2017 WL 4570787, at *6-7. 

A. Post-Grant Proceedings Not Involving Cisco 

The unfair prejudice to Cisco related to IPR proceedings for which Cisco was not a party is 

clear. See InterDigital Commc’ns, Inc. v. Nokia Corp., No. 13-10-RGA, slip-op at 3 (D. Del. Aug. 

28, 2014) (“A PTO non-merits decision not involving Defendants has little or no probative value, 

and would require a lot of explanation for the jury to be able to understand... [I]f it were assumed to 

have some minimal probative value, that probative value would be substantially outweighed by the 

danger of unfair prejudice to the Defendants, and the risk of jury confusion from the complexity 

added by such testimony.”); Ziilabs Inc., Ltd. v. Samsung Elecs. Co. Ltd., et al., No. 2:14-cv-203-

JRG-RSP, slip-op at 6-7 (E.D. Tex. Oct. 28, 2015) (excluding evidence or testimony relating to the 

PTAB’s decision in IPR brought by third party prejudiced defendant because defendant was not a 

party to the IPR proceeding). Indeed, Finjan’s counsel conceded this point at the summary judgment 

hearing. See Ex. 8 at 8:10-14 (referring to “how many time these patents have been IPR’ed and how 

many time they survived” and stating, “And I understand the Court says that doesn’t come in because 

it’s different parties”). 

B. Post-Grant Proceedings Involving Cisco 

Likewise, the Court should preclude Finjan from presenting evidence or argument about the 

three IPR proceedings brought by Cisco for additional reasons discussed below. 

Cisco ’844 and ’494 Patent IPR Proceedings. The two IPR proceedings Cisco brought against 

the ’844 and ’494 Patents resulted in denials of institution. These decisions denying institution are 

of no relevance to the issues before the jury; they are not entitled to weight as evidence, and they do 

not change the legal standard for proving invalidity. Cisco thus concurs with the tentative position 

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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 2 RE POST-GRANT PROCEEDINGS

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

the Court expressed at the January 9, 2020 summary judgment hearing that evidence of these IPRs 

would be “too prejudicial to a jury to admit[.] It’s not probative of anything because there’s no actual 

decision.” Ex. 8 at 8:18-24 (emphasis added). 

A determination by the PTAB to deny review is not “a decision on the merits” and is not

based on a full presentation of evidence or argument: 

[The Court] do[es] not agree that [the IPR denial] is a decision on the merits, any more 

so than a grant of an IPR is a decision on the merits. It is akin to a ruling on a 

preliminary injunction, where the merits are assessed with less than a full record and 

with less than a full adversarial proceeding. 

InterDigital Commc’ns, Inc. v. Nokia Corp., No. 13-10, 2014 WL 8104167, at *1 (D. Del. Sept. 19, 

2014). In denying a petition, the PTAB makes “no explicit, or even implicit, decision on the validity 

of the patent ... .” Wisconsin Alumni Research Found. v. Apple, Inc., 135 F. Supp. 3d 865, 875 (W.D. 

Wis. 2015). Moreover, IPR proceedings are subject to “different standards, purposes and outcomes” 

than the proceedings in district court. Id. at 874-75. As the Interdigital Court found, 

[T]he PTAB’s actions in relation to the [IPR denial] are of marginal relevance, and 

the probative value is greatly outweighed by the expenditure of time that would be 

required to give the jury the full context necessary to fairly evaluate the evidence. 

Further, because of the complexity involved in giving the full context, there would 

also be a significant risk of confusion of the issues. Thus, I exclude the [IPR] denial 

under Rule 403. 

Interdigital, 2014 WL 8104167, at *1. 

Even if there were some limited probative value, it would be greatly outweighed here by the 

expenditure of time that would be required to put these decisions in proper context, especially in a 

trial that already involves 5 patents and 13 claims. On balance, the minimal probative value of the 

PTAB’s institution denials is “substantially outweighed by the risk of unfair prejudice, as well as the 

risk of jury confusion” if the plaintiff were permitted to tell the jury about the PTAB’s rulings. 

Wisconsin Alumni., 135 F. Supp. 3d at 875. 

Case 5:17-cv-00072-BLF Document 535 Filed 04/16/20 Page 5 of 7
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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 2 RE POST-GRANT PROCEEDINGS

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

Cisco ’633 Patent IPR Proceeding. The Court should also preclude Finjan from presenting 

evidence or argument about the Cisco ’633 Patent IPR proceedings. Cisco is not challenging the 

validity of the asserted ’633 Patent claim at trial based on prior art. Thus, even if there was some 

probative value to these proceedings (there is not, as explained above) to the patent’s validity, that 

question will not be before the jury on the ’633 Patent. 

Moreover, the ’633 proceedings are unsettled and complex. The final written decision on the 

Cisco ’633 Patent IPR can fairly be characterized as a mixed result for both parties, with the PTAB 

invalidating claims 1-13 (eight of which—claims 1, 2, 3, 4, 8, 11, 12 and 13—were asserted in this 

case), and confirming the validity only of claim 14. Both parties have appealed this decision to the 

Federal Circuit. “Given the non-finality of the reexamination proceedings (appeal rights have not 

been exhausted) and the different standards applicable to reexaminations and litigation, the probative 

value of the reexamination evidence is substantially outweighed by the risk of unfair prejudice and 

the risk of confusing the jury.” Personalized User Model, L.L.P. v. Google Inc., No. CV 09-525-

LPS, 2014 WL 807736, at *3 (D. Del. Feb. 27, 2014) (emphasis added); Hologic, Inc. v. Minerva 

Surgical, Inc., 2018 WL 3348998, at *4 (D. Del. July 9, 2018) (issuing order in limine “because the 

patent office proceeding and decision are not binding and are on appeal, the prejudicial and confusing 

effect of the evidence almost certainly outweighs any probative value”). The Court should exclude 

all evidence and arguments relating to Cisco’s IPR proceedings and decisions relating to the ’633 

Patent. 

Dated: April 16, 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)

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5 

DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 2 RE POST-GRANT PROCEEDINGS

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

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 535 Filed 04/16/20 Page 7 of 7