Case No. 5:17-cv-00072-BLF (SVK)

FINJAN’S MOTION FOR RELIEF 

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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

Tucker N. Terhufen (CA SBN 311038) terhufen@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 C. 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.

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) 

FINJAN, INC.’S NOTICE OF MOTION 

AND MOTION FOR RELIEF FROM 

NONDISPOSITIVE PRETRIAL ORDERS 

OF MAGISTRATE JUDGE VAN 

KEULEN REGARDING CISCO’S 

MOTION TO STRIKE (DKT. NOS. 662; 

582) 

REDACTED VERSION OF DOCUMENT 

SOUGHT TO BE SEALED 

Hon. Beth Labson Freeman 

Ctrm: 3, 5th Floor 

Case 5:17-cv-00072-BLF Document 671 Filed 06/25/20 Page 1 of 9
1 Case No. 5:17-cv-00072-BLF (SVK)

FINJAN INC.’S MOTION FOR RELIEF 

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NOTICE OF MOTION AND MOTION FOR RELIEF FROM NONDISPOSITIVE 

PRETRIAL ORDERS OF MAGISTRATE JUDGE VAN KEULEN REGARDING 

CISCO’S MOTION TO STRIKE (DKT. NOS. 662; 582)

PLEASE TAKE NOTICE that Plaintiff Finjan, Inc. (“Finjan”) hereby moves for relief 

from the non-dispositive pretrial orders of Magistrate Judge Van Keulen regarding Cisco Systems, 

Inc.’s (“Cisco’s”) Motion to Strike (Dkt. Nos. 662, 582).

Statement of Relief Requested: By and through this motion, and pursuant to Federal 

Rule of Civil Procedure 72(a), 28 U.S.C. § 636(b)(1)(A), and Local Rule 72-2, Finjan respectfully 

objects to and requests that the Court grant relief from the Magistrate Judge’s Orders on Cisco’s 

Motion to Strike (Dkt. Nos. 662, 582). In particular, Finjan requests that the Magistrate Judge’s 

Orders be vacated and that Cisco’s Motion to Strike be denied. This motion is supported by the 

following Memorandum of Points and Authorities. 

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FINJAN INC.’S MOTION FOR RELIEF

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I. INTRODUCTION

On March 27, 2020, Cisco moved to strike “sandbox-only theories” from Dr. 

Medvidovic’s Amended Expert Report on the grounds that Finjan’s infringement contentions 

allegedly failed to disclose those theories. Dkt. No. 491-3. On April 28, 2020, the Magistrate 

Judge granted Cisco’s motion. Dkt. No. 582. The Magistrate Judge subsequently granted Finjan’s 

Motion for Leave to file a Motion for Reconsideration of the April 28th Order. Dkt. No. 620. 

And on June 11, 2020, the Magistrate Judge denied Finjan’s Motion for Reconsideration. Dkt. 

No. 662. 

Crucially, in neither its original Motion to Strike, nor in its response to Finjan’s Motion for 

Reconsideration, has Cisco ever analyzed a single paragraph in Dr. Medvidovic’s Amended 

Expert Report to explain how that paragraph was directed to a new sandbox-only theory. Instead, 

Cisco successfully sought to strike a laundry list of paragraphs (“the paragraphs-at-issue”) merely 

because they contained “replacement language,” apparently based on the unfounded assumption 

that paragraphs containing that “replacement language” were necessarily directed to sandbox-only 

theories. See, e.g., Dkt. No. 558-1; Dkt. No. 637-3 at 1. In turn, rather than putting Cisco to its 

proof, the Magistrate Judge accepted Cisco’s unfounded assumption and then incorrectly placed 

the burden of proof on Finjan. 

In addition, the Orders contain clear error, since the Court struck language that was 

directed to theories Cisco admits are disclosed in Finjan’s infringement contentions (Finjan’s 

transmission-based theories). See, e.g., Dkt. No. 491-3 at 8; Dkt. No. 653-4 at 9-10; Dkt. No. 618-

4 at 5. Since neither Cisco nor the Magistrate Judge analyzed the paragraphs-at-issue, the Orders 

are silent as to why language associated with Finjan’s transmission-based theories (which were 

admittedly disclosed in Finjan’s contentions) was struck. 

Finjan respectfully requests relief from the Magistrate Judge’s Orders on Cisco’s Motion 

to Strike (Dkt. Nos. 662, 582). The Magistrate Judge’s Orders are contrary to law because they

fail to place the burden of proof on Cisco and instead improperly place the burden of proof on 

Finjan. The Orders are also clearly erroneous because they strike language from Dr. Medvidovic’s

Amended Report that was directed to a theory Cisco admitted was disclosed in Finjan’s 

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infringement contentions. Finjan thus requests that the Magistrate Judge’s Orders be vacated and

that Cisco’s Motion to Strike be denied.

II. LEGAL STANDARD

“The district court ‘may reconsider any pretrial matter under this subparagraph (A) where 

it has been shown that the magistrate judge’s order is clearly erroneous or contrary to law.’” Ali v. 

eBay, Inc., 2018 U.S. Dist. LEXIS 148530, *2 (N.D. Cal. August 29, 2018) (quoting 28 U.S.C. § 

636(b)(1)(A)); EEOC v. Peters' Bakery, 301 F.R.D. 482, 484 (N.D. Cal. 2014). The Magistrate 

Judge’s factual determinations are reviewed for clear error, while legal conclusions are reviewed 

to determine whether they are contrary to law. See Ali, 2018 U.S. Dist. LEXIS 148530, at *2.

III. ARGUMENT

A. The Orders Are Contrary to Law Because They Place the Burden of Proof on 

Finjan Rather Than Cisco

On a Motion to Strike, the moving party bears the burden of proof. See, e.g., Apple, Inc. v. 

Samsung Elecs. Co., No. 12-CV-00630-LHK, 2014 U.S. Dist. LEXIS 43907, at *46 (N.D. Cal. 

Mar. 28, 2014); Bombardier Rec. Prods. v. Arctic Cat, Inc., No. 12-cv-2706 (ADM/LIB), 2016 

U.S. Dist. LEXIS 184531, at *22 (D. Minn. Apr. 19, 2016); Acceleration Bay LLC v. Activision 

Blizzard, Inc., No. 16-453 (RGA), 2017 U.S. Dist. LEXIS 228867, at *7 (D. Del. Nov. 7, 2017);

Dkt. No. 419 (January 9, 2020 MSJ Hearing Tr.) at 51:14-16 (instructing Finjan to “submit your 

modified report and then it will be [Cisco’s] burden because [Cisco] will have to object.”). 

Contrary to what the law requires, both Orders repeatedly place the burden of proof on 

Finjan. See, e.g., Dkt. No. 582 at 9 (“Nevertheless, Finjan must still demonstrate . . . .”); id. at 11 

(“Finjan must show that it disclosed in its operative contentions . . . .”) (emphasis in original); id. 

(“However, Finjan has presented no evidence . . . .”); id. at 12 (“Finjan . . . fatally cites no 

evidence”); Dkt. No. 662 at 10 (same); Dkt. No. 582 at 13 (“Finjan has failed to show . . . .”); id.

at 15 (“Finjan has failed to identify . . . .”); Dkt. No. 662 at 10 (same); id. at 14 (“Finjan has failed 

to show how . . . .”); id. at 10 (“Finjan has failed to identify . . . .”); id. at 13 (“Finjan has therefore 

failed once again to demonstrate . . . .”).

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In order to meet its burden on its Motion to Strike, Cisco should have been required to 

show that Dr. Medvidovic’s Amended Report contained a new theory that was not disclosed in 

Finjan’s infringement contentions. Bombardier, 2016 U.S. Dist. LEXIS 184531, at *23-24. The 

only purportedly “new theory” Cisco even came close to identifying in its Motion to Strike was a 

“sandbox-only” theory. See Dkt. No. 491-3. While Cisco may argue that its Reply (Dkt. No. 523-

2 at 3) identified another theory—failure to disclose “functionalities corresponding to the 

codenames”—the only “functionality” Cisco actually discusses is sandbox-only functionality 

(Dkt. No. 523-2 at 3-4). Thus, for the Orders to be clear of legal error, Cisco should have been 

required to show that Dr. Medvidovic’s Amended Report contained specific paragraphs directed to 

a sandbox-only theory not disclosed in Finjan’s infringement contentions. Cisco was never 

required to do so. As a result, Cisco never analyzed a single paragraph in Dr. Medvidovic’s 

Amended Report to explain how that paragraph is directed to a sandbox-only theory. Instead, 

Cisco’s motion improperly assumed that any paragraph in Dr. Medvidovic’s Amended Report that 

contained the “replacement language” was necessarily directed to a sandbox-only theory. See Dkt. 

No. 558-1 at 2. 

Finjan seeks the Court’s relief because neither Cisco nor the Magistrate Judge has offered 

any explanation as to how the struck language in Dr. Medvidovic’s Amended Report is 

supposedly directed to a sandbox-only theory (much less a sandbox-only theory not disclosed in

Finjan’s contentions). For example, Cisco identified, and the Court struck, the following 

paragraph from Dr. Medvidvoc’s March 2020 Amended Report:

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Dkt. No. 507-10 ¶ 1510 (highlights added); Dkt. No. 528 at 15-16; see also Dkt. No. 653-4 at 4

(identifying two other example paragraphs). The paragraph states that 

 See Dkt. No. 507-10 ¶ 1510. Cisco has argued that mobile protection code is 

not directed to a sandbox-only theory when it is transmitted. See, e.g., Dkt. No. 491-3 at 3, 8. 

Thus, according to Cisco’s logic, the aforementioned paragraph is not directed to a sandbox-only 

theory (the only allegedly new theory Cisco has identified). The Orders struck language from this

paragraph (and numerous others) without Cisco meeting the most basic aspect of its burden—

providing an explanation as to how the struck language is directed to a new theory not disclosed in 

Finjan’s contentions.

It was contrary to law, highly prejudicial, and unfair for the Magistrate Judge to put the 

burden of proof on Finjan and never require Cisco to explain how the language it wanted struck 

was directed to new theories.

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B. It Was Clearly Erroneous to Strike Language from Paragraphs Directed to a 

Theory That Cisco Admitted Was Disclosed in Finjan’s Contentions

One particularly egregious example of clear error is that the Orders strike language 

directed to a theory Cisco admitted was disclosed in Finjan’s infringement contentions. See, e.g., 

Dkt. No. 491-3 at 8; Dkt. No. 653-4 at 9-10. In particular, the Orders strike language from 

paragraphs that are relevant to Finjan’s transmission-based theories. See, e.g., supra at 4; Dkt. No. 

507-10 ¶ 1510; Dkt. No. 582 at 14-16; Dkt. No. 653-4 at 9-10; Dkt. No. 618-4 at 5. Cisco admits

that Finjan’s infringement contentions properly disclosed transmission-based theories, including 

identifying the replacement language as mobile protection code that is transmitted to the sandbox. 

See, e.g., Dkt. No. 491-3 at 8. Cisco has attempted to evade its admission by claiming Finjan’s 

transmission-based theories are no longer in the case, but Cisco cites no evidence to support that 

false notion. See, e.g., Dkt. No. 653-4 at 10. 

The Magistrate Judge’s Order claims “[o]f course, Finjan could have made this argument 

in opposition to Cisco’s motion to strike but failed to do so.” Dkt. No. 662 at 8. Not so. As 

explained supra, Cisco only moved to strike sandbox-only theories from Dr. Medvidovic’s 

Amended Report. If Cisco sought to strike any other theories (such as transmission-based 

theories), it was incumbent upon Cisco to identify those theories in its Motion to Strike. Cisco did 

not do so, and thus Finjan had no reason or anything to rebut this (at the time, non-existent) 

argument in its opposition to Cisco’s Motion to Strike.

It was clearly erroneous for the Magistrate Judge to strike language from Dr. Medvidovic’s 

Amended Report directed to Finjan’s transmission-based theories when Cisco admitted that 

Finjan’s infringement contentions disclose transmission-based theories. 

IV. CONCLUSION

Since the Orders were contrary to law, highly prejudicial and unfair to Finjan, and 

contained clearly erroneous holdings, Finjan respectfully submits that the Magistrate Judge’s 

Orders must be vacated and Cisco’s Motion to Strike be denied.

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Dated: June 25, 2020 Respectfully Submitted,

By: /s/ Aamir A. 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

Tucker N. Terhufen (CA SBN 311038) 

terhufen@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 A. Kazi (Admitted Pro Hac Vice) 

kazi@fr.com

Alana C. 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 June 25, 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 A. Kazi

Aamir A. Kazi 

kazi@fr.com

Case 5:17-cv-00072-BLF Document 671 Filed 06/25/20 Page 9 of 9