FINJAN’S MOTION IN LIMINE NO. 1 CASE NO. 5:17-cv-00072-BLF-SVK

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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 

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.

IN THE UNITED STATES DISTRICT COURT

FOR THE 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

PLAINTIFF FINJAN, INC.’S MOTION IN 

LIMINE NO. 1 TO PRECLUDE 

REFERENCE TO PENDING AND 

UNRELATED LITIGATIONS AND PTO 

PROCEEDINGS

Date: April 30, 2020

Time: 1:30 P.M.

Place: 3, 5th Floor

Before: Honorable Beth L. Freeman

Case 5:17-cv-00072-BLF Document 527 Filed 04/16/20 Page 1 of 7
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I. INTRODUCTION

Pursuant to Federal Rules of Evidence 401, 402, 403, and 611, Finjan, Inc. (“Finjan”) respectfully 

requests that the Court exclude from presentation to the jury at trial any discussion of: (1) other pending 

proceedings involving Finjan’s asserted patents, including in other courts and/or the USPTO (“Pending 

Proceedings”); and (2) other litigation—whether pending or final—involving Finjan and patents that are 

not asserted in this case (“Irrelevant Proceedings”)1(collectively, the “Proceedings”). The Court should 

exclude the Pending Proceedings because no final decisions for any of the asserted claims have been 

reached in these proceedings and therefore any preliminary results are irrelevant. Moreover, any 

discussion of the Pending Proceedings would be unduly prejudicial to Finjan given the risk of confusing 

the jury or encouraging it to decide the issues before it based on irrelevant factors. Similarly, the 

Irrelevant Proceedings should be excluded because they are also irrelevant to the issues of infringement 

and validity and there is a substantial risk the jury could improperly rely on decisions for other patents 

that are not at issue here.

Apparently Cisco Systems, Inc. (“Cisco”) intends to present evidence of these Proceedings to 

paint Finjan as a bad actor, i.e., to argue Finjan is litigious and deserves no remedy. But introducing 

evidence of Finjan’s Proceedings for that purpose is not relevant to the issues being tried to the jury 

here—namely, whether Cisco infringes the patents-in-suit, whether those patents are valid, and what 

damages will be assessed. Therefore, introduction of any evidence relating to the Proceedings will only 

risk confusing the jury and will be highly prejudicial to Finjan. 

II. ARGUMENTS

The Court Should Preclude Argument and Evidence Regarding Pending 

Proceedings

The Court should preclude Cisco from presenting any arguments or evidence regarding Pending 

 

1 Finjan recognizes that license agreements that resulted from prior litigations involving patents not at 

issue in this case may be relevant to damages, including to Georgia-Pacific factors 4, 12 and 15. See 

Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y 1970), mod. 

and aff’d., 446 F.2d 295 (2d Cir. 1971), cert denied, 404 U.S. 870 (1971). It is therefore proper for the 

damages experts to consider and discuss licenses that arose from such prior litigation without going

into irrelevant details of the cases or allowing Cisco to paint Finjan as particularly litigious. See Exh. 

1, Finjan, Inc. v. Blue Coat Sys., LLC., Case No. 15-cv-03295-BLF, Dkt. No. 404 at 20 (N.D. Cal. Oct. 

18, 2017) (allowing consideration of Finjan license and settlement agreements as “comparable to the 

Asserted Patents in a sense that they relate to the same technology”).

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Proceedings involving Finjan. Specifically, there are multiple co-pending proceedings involving Finjan

and the asserted patents, but not Cisco or its accused products. There have been no decisions on the 

merits of the claims or defenses in these lawsuits, and fact discovery has yet to close in some of them. 

Thus, the mere existence of these lawsuits has no bearing or relevance on the issues here, i.e., they do 

not have “any tendency to make a fact more or less probable than it would have be without the evidence.” 

FED. R. EVID. 401. 

At a minimum, any probative value of these co-pending litigations is far outweighed by the risk 

of prejudice. FED. R. EVID. 403. Introducing evidence of Pending Proceedings carries a substantial risk 

the jury will be confused as to the specifics of Finjan’s claims against Cisco and its accused products, or 

that the jury will perceive Finjan negatively simply because it is involved in other litigations. See, e.g., 

In re Homestore.com, Inc. Sec. Litig., No. CV 01-11115, 2011 WL 291176, at *1 (C.D. Cal. Jan. 25, 

2011) (finding that “evidence of Plaintiff’s involvement in other litigation . . . is also irrelevant and 

carries with it a high risk of prejudice”); see also Outley v. City of New York, 837 F.2d 587, 595 (2d Cir. 

1988) (finding that opening up the area of other litigation “invites detailed inquiries, denials, and 

explanations, likely to lead to multifariousness and a confusion of issues.”) (cited by Seals v. Mitchell, 

No. CV 04-3764 NJV, 2011 WL 1399245, at *5 (N.D. Cal. Apr. 13, 2011) (the slight probative value of 

plaintiff’s litigation history was “outweighed by the substantial danger of jury bias against the chronic 

litigant.”)). Finjan has a lawful right to seek redress for infringement of its patents against Cisco, 

regardless of the existence of other proceedings, and any evidence or argument seeking to paint Finjan 

as overly litigious is highly prejudicial. Finally, the introduction of evidence or argument about Pending 

Proceedings would be a waste of time and resources, as Finjan would then feel obligated to present the 

jury with the facts underlying the Pending Proceedings to put the litigations in context. 

For these reasons, courts regularly exclude evidence regarding other litigations and USPTO 

proceedings. See, e.g., Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir. 2009) (“The 

district court did not abuse its discretion in concluding that the prejudicial nature of evidence concerning 

the ongoing parallel re-examination proceeding outweighed whatever marginal probative or corrective 

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value it might have had in this case.”); Exh.

2

1, Finjan, Inc. v. Blue Coat Sys., Inc., Case No. 15-cv03295-BLF, Dkt. No. 404 at 4–5 (N.D. Cal. Oct. 18, 2017) (granting Finjan’s motion in limine regarding 

pending litigations and patent office proceedings); In re Static Random Access Memory (SRAM) Antitrust 

Litig., No. 07-md-01819 CW, 2010 WL 10086747, at *2 (N.D. Cal. Dec. 16, 2010) (granting motion in 

limine to exclude reference to party’s other litigation, finding “[s]uch evidence does not appear 

relevant”); Exh. 2, Golden Bridge Tech. Inc. v. Apple Inc., No. 5:12-cv-04882- PSG, Dkt. No. 469, Order 

on Motions in Limine at 2 (N.D. Cal. May 16, 2014) (excluding suggestion of unrelated litigation). 

Therefore, Finjan respectfully requests the Court preclude Cisco from introducing evidence or argument 

regarding Finjan’s Pending Proceedings. 

The Court Should Preclude Irrelevant Proceedings

The Court also should preclude Cisco from discussing USPTO and court proceedings for patents,

claims and accused products that are not at issue in this case because they are not relevant and their

probative value, if any, is outweighed by prejudice. See, e.g. Mendenhall v. Cedarapids, Inc., 5 F.3d 

1557, 1572–75 (Fed. Cir. 1993) (prior judicial opinion was properly excluded from the jury under Rule 

403). The validity or infringement of Finjan’s unasserted patents and claims are not relevant here 

because those patent claims reflect different inventions and have different elements and claim scope than

the patent claims at issue in this case. See FED. R. EVID. 401–403; ICU Med., Inc. v. RyMed Techs., Inc., 

752 F. Supp. 2d 486, 490–91 (D. Del. 2010) (excluding reference to unasserted claims because “[t]elling 

the jury that the Alaris court found certain of [plaintiff’s] patent claims to be invalid would introduce 

irrelevant evidence and would risk unduly prejudicing [the plaintiff]”). Moreover, the introduction of 

the Irrelevant Proceedings will risk confusing the jury, requiring them to parse the differences between 

patent claims that are at issue in this case and patent claims that are not. See ActiveVideo Networks, Inc. 

v. Verizon Commc’ns, Inc., Civil Action No. 2:10cv248, 2011 WL 7036048, at *2 (E.D. Va. July 5, 

2011) (“[P]resentation of evidence pertaining to proceedings involving some of the patents-in-suit in this 

case in the ITC or elsewhere would be unduly prejudicial, as any such evidence may have a tendency to 

confuse the jury.”) (citing Mendenhall, 5 F.3d at 1572-75).

 

2 All exhibits referenced herein are incorporated in the Omnibus Declaration of Megan A. Chacon in 

Support of Plaintiff Finjan, Inc.’s Motions in Limine (“Chacon Decl.”).

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In addition, Finjan’s prior claims against other defendants are irrelevant to the issue of 

infringement in this case because they relate to different accused products. A proper infringement 

analysis requires comparing the accused product with properly construed claims. Markman v. Westview 

Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995); see also Gen. Mills Inc. v. Hunt-Wesson, Inc., 103 

F.3d 978, 981 (Fed. Cir. 1997) (“Literal infringement requires that every limitation of the patent claim 

be found in the accused infringing device.”); see also Exh.1, Finjan, Inc. v. Blue Coat Sys., Inc., Case 

No. 15-cv-03295-BLF, Dkt. No. 404 at 5 (N.D. Cal. Oct. 18, 2017) (excluding litigations involving 

different defendants and different accused products). References to third-party products not at issue in 

this case have no bearing on the infringement claims here and would only risk confusing the jury. See 

FED. R. EVID. 401, 403, and 611.

In sum, the results from the Irrelevant Proceedings pose a substantial risk of impairing the jury’s 

ability to reach a fair and independent decision. Rather than weighing the relevant evidence, the jury 

may be tempted to improperly substitute decisions made in other cases for its own judgment. And, as 

described above, reference to these proceedings bears a substantial risk the jury will have an unfair 

negative perception of Finjan based solely on the fact that it has asserted its patent rights in the past. See, 

e.g., In re Homestore.com, Inc. Sec. Litig., No. CV 01-11115, 2011 WL 291176, at *1 (C.D. Cal. Jan. 

25, 2011); Outley v. City of New York, 837 F.2d 587, 595 (2d Cir. 1988). Therefore, exclusion is 

appropriate under Rule 403, which provides for the exclusion of extraneous evidence where there is an 

“undue tendency to suggest a decision on an improper basis, commonly, though not necessarily, an 

emotional one.” FED. R. EVID. 403, Notes of Advisory Committee; see CPC Int’l, Inc. v. Northbrook 

Excess & Surplus Ins. Co., 144 F.3d 35, 45 n. 10 (1st Cir. 1998) (courts “have affirmed the exclusion of 

prior judicial opinions on Rule 403 grounds, all of them citing the danger of jury confusion and prejudice 

to the party as bases for their decision”) (citations omitted); see also Dethmers Mfg. Co. v. Automatic 

Equipment Mfg. Co., 73 F. Supp. 2d 997, 1002 (N.D. Iowa 1999).

III. CONCLUSION

Based on the foregoing reasons, Finjan respectfully requests the Court grant its Motion in Limine

No. 1. 

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Dated: April 16, 2020 Respectfully submitted,

By: /s/ Megan A. Chacon 

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

FISH & RICHARDSON P.C.

12390 El Camino Real, Suite 100

San Diego, CA 92130

Phone: (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

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 April 16, 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/ Megan A. Chacon

Megan A. Chacon

chacon@fr.com

Case 5:17-cv-00072-BLF Document 527 Filed 04/16/20 Page 7 of 7