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DEFENDANT CISCO SYSTEMS, INC.’S OPPOSITION TO PLAINTIFF FINJAN INC.’S MOTION IN LIMINE NO. 1 

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: 650.847.4150 

Facsimile: 650.847.4151 

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 

IN THE 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 

OPPOSITION TO 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 PM 

Courtroom: 3, 5th Floor 

Judge: Hon. Beth L. Freeman 

REDACTED 

Case 5:17-cv-00072-BLF Document 567 Filed 04/23/20 Page 1 of 8
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DEFENDANT CISCO SYSTEMS, INC.’S OPPOSITION TO PLAINTIFF FINJAN INC.’S MOTION IN LIMINE NO. 1 

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

TABLE OF ABBREVIATIONS

Plaintiff Finjan, Inc. Finjan or Plaintiff 

Defendant Cisco Systems, Inc. Cisco or Defendant 

Exhibit 14 entered at the August 6, 2019 

deposition of Shlomo Touboul 

Ex. 23 

Exhibit 15 entered at the August 5, 2019 

deposition of Asher Polani 

Ex. 24 

July 11, 2019 expert report of Dr. Anne 

Layne-Farrar 

Ex. 25 

August 14, 2019 expert report of Dr. Stephen 

Becker 

Ex. 26 

May 23, 2019 Final Written Decision in 

IPR2018-00391 

Ex. 27 

April 3, 2018 Decision Denying Institution of 

Inter Partes Review in IPR2017-02154 

Ex. 28 

April 3, 2018 Decision Denying Institution of 

Inter Partes Review in IPR2017-02155 

Ex. 29 

March 17, 2010 email exchange regarding 

Finjan 

Ex. 31 

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DEFENDANT CISCO SYSTEMS, INC.’S OPPOSITION TO PLAINTIFF FINJAN INC.’S MOTION IN LIMINE NO. 1 

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

1 

Finjan’s Motion should be denied for several reasons. Cisco addresses the issues relating to 

concluded litigation, pending litigation, and PTO proceedings separately below. 

A. Finjan’s Concluded Litigations Are Relevant To Damages and Willfulness 

1. Finjan’s willfulness and damages cases rely on the idea that Cisco knew it was infringing 

Finjan’s patents. But Finjan’s litigation history, coupled with the correspondence between the parties, 

shows why Cisco would have no such belief. Aspects of Finjan’s prior litigation are crucial for the 

jury to get the full picture of the actual communications and relationship between Finjan and Cisco, a 

topic that Finjan appears intent on making a centerpiece of this trial. For example, in 2006 Finjan 

described to Yoav Samet (Cisco’s board observer) its patent litigation strategy against competitors: 

Finjan would “accuse multiple products using additional patents (even if not infringing) – defocus the 

other party and increase workload and perceived exposure.” Ex. 24. Then, in 2010, Finjan told Mr. 

Samet that Finjan became an “IP company” and would focus on “litigation.” Ex. 31. Finjan then 

executed that plan and started filing litigation throughout the industry—all leading to what, the jury 

should conclude, Cisco perceives as completely unfounded assertions of patents in this case. If Finjan 

wants to put Cisco’s state of mind at issue based on the parties’ relationship, the facts relating to 

concluded litigation cannot be artificially excised. 

The concluded litigation pertains to Cisco’s state of mind as to the ’780 and ’844 Patents in 

particular, as it explains Cisco’s position that Finjan is asserting patents that were previously described 

to Cisco in a way that Cisco could not possibly infringe. Specifically, in 2004, Finjan’s Shlomo 

Touboul (its founder) sent an email to Mr. Samet describing Finjan’s patents, including the “Gateway 

Patents” (i.e., the subject matter of this case). Ex. 23. Finjan first described the ’194 Patent as “the 

main gateway based behavior blocking and behavior inspection patent of Finjan.” It then described 

the ’780 Patent as the other “Gateway Patent” that covers the concept of “pre fetching of mobile 

code”—a characterization Finjan now disputes. The ’844 Patent was separately described (under the 

heading “Signing content patent”) as follows: “this is a patent of signing behavior inspection result of 

mobile code and have the mobile code traveling with these signatures.” Id. The ’194 Patent was later 

invalidated in Finjan’s litigation against Symantec. From Cisco’s perspective, that invalidation is why 

Finjan has reinterpreted the ’780 and ’844 Patents in order to assert them against Cisco now. Thus, in 

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DEFENDANT CISCO SYSTEMS, INC.’S OPPOSITION TO PLAINTIFF FINJAN INC.’S MOTION IN LIMINE NO. 1 

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

2 

order to fairly and fully understand Cisco’s state of mind (which, again, is the focus of Finjan’s 

willfulness claim), the jury must hear about Finjan’s concluded litigations. 

2. All but two of the ten licenses that Dr. Layne-Farrar (Finjan’s damages expert) points to 

as supportive of her reasonable royalty rate were executed against the backdrop of litigation. The jury 

must be able to evaluate the circumstances of these litigations to determine what weight, if any, to 

place on these licenses. Specifically, at the time of her expert report, Dr. Layne-Farrar found that 

“Finjan has entered into 20 license/settlement agreements,” each of which involved a license to 

Finjan’s entire patent portfolio, including the five patents-in-suit. Ex. 25 ¶ 189. Although she 

concluded that none of these agreements is “directly comparable,” for certain agreements she finds 

“aspects ... informative for the hypothetical negotiation.” Ex. 9 at ¶ 284. Similarly, some of the license 

agreements relied upon by Dr. Becker resulted from litigation. 

Dr. Layne-Farrar recognized that “licenses borne out of litigation settlements may either 

undervalue or overvalue the licensed intellectual property.” Ex. 25 at ¶ 190. Finjan argues, however, 

that the experts should not go “into irrelevant details of the cases or allowing Cisco to paint Finjan as 

particularly litigious.” Mot., at 1 n.1. Finjan provides no guidance as to what it thinks is an “irrelevant 

detail,” and the jury must be able to evaluate the full facts and circumstances surrounding these 

settlements in making its determination of the weight to afford them. See, e.g., Prism Techs. LLC v. 

Sprint Spectrum L.P., 849 F.3d 1360, 1370-71 (Fed. Cir. 2017) (court properly balanced the potential 

prejudice under Rule 403 and admitted a settlement agreement, both parties were free to introduce 

relevant evidence regarding the circumstances of the settlement); LaserDynamics, Inc. v. Quanta 

Computer, Inc., 694 F.3d 51, 77 (Fed. Cir. 2012) (settlement licenses must be “consider[ed] ... in its 

proper framework to ensure that the reasonable royalty rate reflects ‘the economic demand for the 

claimed technology.’”). 

Moreover, each of the licenses relied upon by both damages experts provides rights to 

Finjan’s entire patent portfolio. Dr. Becker opines that this licensing history is evidence that Finjan 

equally values each patent within its portfolio, thereby justifying his opinion that an equal value of 

patents within Finjan’s portfolio is appropriate. See, e.g., Ex. 26 at ¶¶ 127, 437-442, 453-458; see also 

Prism, 849 F.3d at 1371 (where prior license covered “the patents at issue here, though not only the 

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DEFENDANT CISCO SYSTEMS, INC.’S OPPOSITION TO PLAINTIFF FINJAN INC.’S MOTION IN LIMINE NO. 1 

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

3 

patents at issue here ... evidence was needed that reasonably addressed what bearing the amounts in 

that Agreement had on the value of the particular patents at issue here”). This Court noted that such 

evidence “establish[es] the proper foundation for his opinion that Finjan treats the patents in its 

portfolio as having equal value.” Dkt. 549 (redacted at Dkt. 555) (citing Finjan, Inc. v. Blue Coat Sys., 

Inc., No. 13-cv-03999-BLF, 2015 WL 4272870, *7 (N.D. Cal. July 14, 2015)). 

For other licenses that settled litigation—e.g., Proofpoint/Armorize, F5, FireEye, and Carbon 

Black—to the extent that Dr. Layne-Farrar relies on these agreements to support her position that 

Finjan and Cisco would have agreed to a royalty rate of 8% on hardware and 16% on software for the 

patents-in-suit here, Cisco must be able to provide the jury the context within which those agreements 

were reached, including the patents asserted and the timing of the settlement. 

With respect to two specific concluded litigations (and the resulting licenses)—Intel/McAfee 

and Blue Coat/Symantec—it would appear that the parties agreed that at least the outlier lump-sum 

payments made by Intel/McAfee and Blue Coat/Symantec should be excluded. Cisco’s Motion in 

Limine No. 3 (Dkt. 532-6). The lump-sum payments are not relied upon by any expert and, therefore, 

are irrelevant and should be excluded. Indeed, Cisco does not believe any portion of these litigations 

or licenses is relevant. Should the Court nevertheless permit Finjan to introduce these licenses and/or 

the settlement figures or jury verdicts from these agreements, then Cisco must be permitted to provide 

the full context behind these settlements and how the final lump-sum amounts were influenced by 

litigation, including, e.g., the fact that at the time the Symantec/Blue Coat settlement was executed, 

the parties had already tried four cases and three more trials were scheduled for the upcoming year. 

Similarly, there is nothing relevant about the Websense and Sophos settlements and Cisco 

does not object to the total exclusion of discussions of these settlements (and the litigations from 

which they arose). Specifically, Dr. Layne-Farrar relies on Finjan’s September 2014 settlement 

agreement with Websense, and in particular Finjan’s Mr. Hartstein’s assertion that “Finjan based its 

valuations on a royalty rate of 6% to 8%.” Ex. 25 at ¶ 292. However, as Dr. Layne-Farrar notes, 

“Websense settled after an initial trial on two patents, not at issue here, and subsequent infringement 

complaints listing the ’822, ’633, ’408, ’154 and ’494 Patents.” Id. ¶ 293. She also relies on Finjan’s 

settlement agreement with Sophos, arguing that because she “was the damages expert in that 

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DEFENDANT CISCO SYSTEMS, INC.’S OPPOSITION TO PLAINTIFF FINJAN INC.’S MOTION IN LIMINE NO. 1 

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

4 

litigation, I know that the damages calculations for the eight patents in suit were based on a royalty 

rate of 6%-8% for hardware products and a royalty rate of 8% - 16% for software products.” Id. ¶ 

302. Dr. Layne-Farrar further notes that “[t]he Sophos settlement agreement was entered into after a 

jury verdict and award of $15 million” and “was based on infringement of the ’844, ’494, ’780, ’926, 

and ’154 Patents.” Id. ¶ 300. She then goes on to cite her trial testimony regarding her proposed 

royalties “on an individual patent basis.” Id. Thus, total exclusion of these settlements and litigations 

is warranted. However, to the extent Finjan is permitted to introduce the Websense and Sophos 

agreements, Cisco must be able to cross-examine Dr. Layne-Farrar, for example, on the nature of her 

opinions in Sophos case and the impact the litigations (including findings on patents not asserted here) 

had on settlement. 

B. Finjan’s Pending Litigations Are Relevant to Expert Credibility And Finjan’s 

Negotiation Positions. 

Finjan has repeatedly hired the identical set of technical experts, each one always finding 

infringement, regardless of the patents or the accused products. The collective revenue from the 

pending litigation constitutes a very substantial portion of those expert’s current income. Cisco should 

be permitted to probe these witnesses’ bias and will necessarily need to refer to co-pending litigations. 

Likewise, even if an agreement was entered into prior to the commencement of litigation, Finjan’s 

pattern of litigation against industry participants, as evidenced by the large number of pending cases, 

demonstrates that the threat of litigation loomed over all of Finjan’s recent licenses. The jury must 

be permitted to see exactly what those licensees saw regarding Finjan’s litigation profile. Indeed, as 

a publicly traded company, Finjan regularly provides the public (which of course includes potential 

licensees), with updates on its litigation efforts. 

C. PTO Proceedings 

Finjan asks this Court to exclude any discussion of “other pending proceedings involving 

Finjan’s asserted patents, including in ... the USPTO.” Dkt. 527, at 1. Finjan does not identify any 

pending USPTO proceedings it seeks to exclude, other than characterizing them as “multiple copending proceedings involving ... the asserted patents, but not Cisco.” Id. at 2. It appears that what 

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DEFENDANT CISCO SYSTEMS, INC.’S OPPOSITION TO PLAINTIFF FINJAN INC.’S MOTION IN LIMINE NO. 1 

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

5 

Finjan requests is for it to be able to present evidence about three Cisco IPR proceedings on the ’633, 

’844 and ’494 Patents while precluding Cisco from presenting evidence about any other IPRs. 

To be clear, as set forth in Cisco’s Motion in Limine No. 2 (Dkt. 535) (“Cisco’s MIL No. 2”), 

Cisco believes the Court should exclude all evidence and argument about post-grant proceedings—

both those involving Cisco and those involving third parties—as they are of little (if any) probative 

value and are highly prejudicial. Specifically, the Court should exclude all evidence and argument 

regarding the three irrelevant and prejudicial Cisco proceedings, two of which (the ’494 and ‘844 

IPRs) were not even instituted and the other of which (the ’633 IPR) is for a patent that Cisco is not 

challenging with prior art at trial. See, e.g., Cisco’s MIL No. 2 at § I.B. 

Cisco submits, however, that should the Court allow Finjan to present evidence to the jury 

regarding the Cisco proceedings, then it is only proper to allow Cisco to present evidence pertaining 

to other PTO proceedings. Some of these proceedings invalidated claims in the asserted patents. For 

example, independent claim 1 of the asserted ’494 Patent was invalidated in an IPR. See Cisco’s MIL 

No. 2 at 1-2 (citing Palo Alto Networks, Inc. v. Finjan, Inc., 777 F. App’x 501, 508 (Fed. Cir. 2019)). 

Given the very minor differences between the now-invalidated independent claim 1 and the asserted 

independent claim 10 (which is the only other independent claim in the patent), it would be highly 

misleading for Finjan to bathe claim 10 in the glow of a non-institution decision, but prevent the jury 

from hearing that the very similar claim 1 was invalidated. 

Moreover, the Cisco proceedings themselves expressly refer to prior non-Cisco proceedings 

and, if the Cisco IPRs are admitted, Cisco should be afforded the opportunity to address the other 

proceedings discussed therein. See, e.g., Ex. 27 (May 23, 2019 Final Written Decision (IPR2018-

00391)) at 2 (referring to non-Cisco prior PTAB final written decision and non-Cisco ex parte 

reexamination), at 7-9 (same), at 46 (referring to prior non-Cisco PTAB proceeding in which Board 

considered same evidence of objective indicia of non-obiousness); Ex. 28 (April 3, 2018 Decision 

Denying Institution of Inter Partes Review (IPR2017-02154)) at (referring to non-Cisco prior PTAB 

proceedings), at 13-14 (same), at 27 (same) at 34 (same); Ex. 29 (April 3, 2018 Decision Denying 

Institution of Inter Partes Review (IPR2017-02155)) at 3 (referring to non-Cisco prior PTAB

proceedings), at 6-9 (same), at 36 (same). 

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DEFENDANT CISCO SYSTEMS, INC.’S OPPOSITION TO PLAINTIFF FINJAN INC.’S MOTION IN LIMINE NO. 1 

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

6 

Dated: April 23, 2020 DUANE MORRIS LLP 

/s/ Nicole E. Grigg 

Nicole E. Grigg 

D. Stuart Bartow 

L. Norwood Jameson (admitted pro hac vice) 

Matthew C. Gaudet (admitted pro hac vice) 

David C. Dotson (admitted pro hac vice) 

John R. Gibson (admitted pro hac vice) 

Jennifer H. Forte (admitted pro hac vice) 

Joseph A. Powers (admitted pro hac vice) 

Jarrad M. Gunther (admitted pro hac vice) 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

Case 5:17-cv-00072-BLF Document 567 Filed 04/23/20 Page 8 of 8