Case No. 5:17-cv-00072-BLF 

FINJAN’S OPPOSITION TO CISCO’S MOTION IN LIMINE NO. 2 

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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. 

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 

PLAINTIFF FINJAN, INC.’S OPPOSITION 

TO DEFENDANT CISCO SYSTEMS, INC.’S 

MOTION IN LIMINE NO. 2 RE EVIDENCE 

OR ARGUMENTS ABOUT POST-GRANT 

PROCEEDINGS 

Date: April 30, 2020 

Time: 1:30 P.M. 

Place: 3, 5th Floor 

Before: Hon. Beth L. Freeman 

Case 5:17-cv-00072-BLF Document 564 Filed 04/23/20 Page 1 of 8
1 Case No. 5:17-cv-00072-BLF

FINJAN’S OPPOSITION TO CISCO’S MOTION IN LIMINE NO. 2 

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I. INTRODUCTION 

While both parties seek to exclude pending post grant proceedings for both the asserted 

and unasserted patents, see, Finjan’s Motion in Limine No. 1, Cisco also seeks to exclude evidence 

of final post grant proceedings including those filed by Cisco. Cisco has failed to carry its burden 

of demonstrating that the probative value of this evidence is outweighed by any undue prejudice. 

First, Cisco points to the invalidation of an unasserted patent to justify Cisco’s prelitigation behavior towards Finjan. To the extent that evidence is probative, so are affirmations of 

Finjan’s unasserted patents. Second, despite filing this motion, Cisco relies on post grant activity 

(regardless of whether filed by Cisco or not) to support non-infringement and invalidity. Third, 

findings by the Patent Trial and Appeals Board (“PTAB”) are probative of the strength and value 

of Finjan’s patents—particularly where Cisco is relying on the same prior art theories already 

rejected by the PTAB. Finally, Finjan should be permitted to use evidence of IPR proceedings for 

impeachment and rebuttal purposes. 

II. FINAL POST GRANT ACTIVITY FOR NON-ASSERTED PATENTS AND 

ACTIVITY NOT INVOLVING CISCO IS RELEVANT GIVEN THE 

CIRCUMSTANCES OF THIS CASE 

Finjan and Cisco have a long and involved history. One part of that history is that Finjan 

provided details concerning its patents to Cisco before filing this suit. Cisco’s knowledge of the 

strength of Finjan’s patents before this case was filed is relevant to whether Cisco’s pre-litigation 

conduct was reasonable. Cisco cannot dispute this point; indeed, Cisco’s own expert reports 

contain discussion of how one of Finjan’s non-asserted patents (U.S. Pat. No. 6,092,194) that was 

identified in pre-suit correspondence to Cisco has since been found to be invalid. See Exh. C 

(Almeroth Op. Rpt.) at ¶ 601; Exh. D (McDaniel Op. Rpt.) at ¶ 458. At the very least, Cisco’s 

reliance on the invalidity of a non-asserted patent to attempt to excuse its pre-litigation decisions 

demonstrates the relevance of affirmations of validity of non-asserted (and asserted) patents. 

Neither of the cases Cisco cites is applicable to the specific facts of this case. In both 

Ziilabs and Interdigital, the courts unremarkably excluded IPRs they found not relevant to any 

disputed issues. Neither of the opinions considered and rejected the issue here, which is that post 

grant activity concerning Finjan’s patents is relevant to show the unreasonableness of Cisco’s preCase 5:17-cv-00072-BLF Document 564 Filed 04/23/20 Page 2 of 8
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FINJAN’S OPPOSITION TO CISCO’S MOTION IN LIMINE NO. 2 

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litigation positions. See generally Ziilabs Inc., Ltd. v. Samsung Elecs. Co. Ltd., et al., No. 2:14-

cv-203-JRG-RSP, 2015 U.S. Dist. LEXIS 191430 (E.D. Tex. Oct. 28, 2015); InterDigital 

Commc’ns, Inc. v. Nokia Corp., No. 13-cv-10-RGA, 2014 WL 8104167 (D. Del. Aug. 28, 2014). 

In addition, Cisco’s trial exhibit list includes documents referring to post grant activity 

filed by third parties (see, e.g., Dkt. No. 547-5 (Cisco’s Trial Exh. List) at 27 (identified as DTX 

2640, included here as Exh. E (FINJAN-CISCO 541296) at 541322) and Cisco’s experts liberally 

rely upon post grant activity for the asserted patents in their reports. See Exh. C (Almeroth Op. 

Rep.) at ¶¶ 84-85 (Cisco’s expert Dr. Kevin Almeroth referencing the PTAB’s analysis in 

IPR2019-00026 filed by Juniper Networks in his opinion about the priority date of the ’844 

Patent); id. at 126-27 (Dr. Almeroth relying on third-party IPRs in his invalidity analysis of the 

’154 Patent); Exh. D (McDaniel Op. Rep.) at ¶¶ 477-78 (Cisco expert Dr. McDaniel relying on 

third-party IPRs for the ’780 and ’494 Patents in his invalidity analysis); Exh. F (McDaniel Reb. 

Rep.) at ¶ 538 (Dr. McDaniel relying on third-party IPRs for the ’780 and ’494 Patent in his noninfringement analysis); ¶ 604 (same). At the same time, Cisco is seeking to prevent Finjan from 

introducing evidence and argument regarding the same post grant activity for the asserted patents, 

namely that the PTAB has issued Final Written Decisions upholding asserted claims of the 

asserted patents. 

Cisco cannot have it both ways. Because it has relied on post grant activity filed by third 

parties as part of its case (including post grant activity for non-asserted patents), Cisco cannot 

credibly ask the Court to prevent Finjan from doing the same. 

III. FINAL POST GRANT ACTIVITY FOR THE ASSERTED PATENTS FILED BY 

CISCO SHOULD NOT BE EXCLUDED 

Cisco filed post grant proceedings concerning the ’494, ’844, and ’633 Patents. The 

outcome of these proceedings is relevant and not unfairly prejudicial. 

A. Cisco’s Failed IPR Petitions Rebut Cisco’s Willfulness Defense 

In addition to reasons set forth above, post grant activity concerning the ’494, ’844, and 

’633 Patents are relevant to rebut Cisco’s defenses to willfulness. From the outset of the case, 

Cisco has denied it is willfully infringing Finjan’s patents. One of the factual predicates for that 

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denial has been that Finjan’s patents are invalid. Cisco relies upon these arguments despite the 

fact several courts and the PTAB have upheld Finjan’s patents over the years. In particular, the 

PTAB’s denials of institution are relevant because they make it more probable that Cisco did not 

have a good faith belief in the invalidity of either the ’494, ’844, or ’633 Patents following the 

denials. See, e.g., Dexcowin Glob., Inc. v. Aribex, Inc., No. 16-cv-143-GW-AGRX, 2017 WL 

3478492, at *3 (C.D. Cal. June 29, 2017) (denying motion in limine to exclude PTO’s decisions 

denying institution of Defendant’s IPR petitions of asserted patents where Plaintiff argued the 

denials are relevant to show willful infringement). That Cisco recently dropped its invalidity 

defense for the ’633 Patent only highlights the fact that Cisco’s reliance upon that defense was 

unreasonable all along. Any potential confusion related to different legal standards between 

district court and PTAB proceedings can be addressed with an appropriate jury instruction. See id. 

Final post grant activity for the ’494 Patent is relevant for an additional reason: Cisco 

raises the same argument here that the PTAB rejected. In its IPR, Cisco argued that claims 10, 11, 

and 14-16 of the ’494 Patent are invalid as obvious over Crawford1

 and the knowledge of a person 

of ordinary skill in the art. Exh. H (IPR2017-02155, Decision Denying Institution) at 5. Cisco 

relies on that same prior art here. See Dkt. 547 (Pre-Trial Statement) at 10:17-18. But the PTAB 

considered Cisco’s invalidity arguments based on Crawford and denied Cisco’s petition, 

concluding it failed to show a reasonable likelihood it would prevail in showing unpatentability of 

any of the claims on the asserted grounds. See Exh. H (IPR2017-02155 Decision Denying 

Institution) at 38. That decision is “final and nonappealable.” 35 U.S.C. § 314(d). 

These institution denials demonstrate a rejection, by a panel of three skilled patent 

examiners, of the same prior art and arguments Cisco relies upon here. These facts are undeniably 

relevant to Cisco’s invalidity defense. Fed. R. Evid. 401. Even the authority Cisco relies upon 

supports Finjan’s argument. In Finjan, Inc. v. Sophos, Inc., No. 3:14-cv-1197-WHO, 2016 WL 

 

1

 R. Crawford et al., A Testbed for Malicious Code Detection: A Synthesis of Static and Dynamic 

Analysis Techniques, Proc. 14th Ann. Conf. Dep’t Energy Computer Security Group (1991) 

(“Crawford” or “Testbed”). 

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4560071, *14 (N.D. Cal. Aug. 22, 2016) (hereinafter “Sophos”), the defendant’s motion in limine

to exclude evidence or argument about post grant proceedings emphasized that the defendant 

would present different prior art at trial than it presented in the IPRs in question. See Exh. I 

(Def.’s Mot. in Limine, Dkt. 217) at 19 (“[I]mportantly, none of the IPRs or the reexamination 

involved the SWEEP-InterCheck prior art that Sophos will present at trial.”) (emphasis added). 

The court acknowledged that “PTO proceedings may be relevant to [plaintiff]’s claims of validity 

and that courts frequently allow evidence of this kind.” Sophos, 2016 WL 4560071, *14 (citing 

Universal Elecs., Inc. v. Universal Remote Control, Inc., No. 12-cv-00329-AG, 2014 WL 

8096334, at *7 (C.D. Cal. Apr. 21, 2014)) (emphasis added). While the court in Sophos ultimately 

found the probative value was outweighed by likely confusion to the jury because there was not 

overlap in prior art (see Sophos, 2016 WL 4560071, *14), here Cisco is relying on the same prior 

art and arguments it presented to the PTAB. 

Finally, while denial to institute IPR has different legal standards, “any potential confusion 

can be addressed by appropriate jury instructions on the standard of proof applicable to patent 

invalidity defenses and counterclaims.” Dexcowin Glob., 2017 WL 3478492, at *3 (denying 

motion to exclude PTO’s decision denying institution of accused infringer’s petition for IPR) 

(quoting Universal Elecs., 2014 WL 8096334, at *7 (denying motion to exclude evidence of 

PTO’s rejection of IPR petition)); see also Chamberlain Grp., Inc. v. Techtronic Indus. Co., No. 

16-cv-6097, 2018 WL 2332461, *18-*19 (N.D. Ill. May 23, 2018), aff’d in relevant part, 935 F.3d 

1341, 1351-52 (Fed. Cir. 2019) (denying motion for a new trial and rejecting contention that 

court’s prior denial of the accused infringer’s motion to exclude evidence that the PTO denied the 

accused infringer’s IPR petition was improper); StoneEagle Services, Inc. v. Pay-Plus Solutions, 

Inc., No. 8:13-cv-2240, 2015 WL 3824208, *8-*9 (M.D. Fla. Jun. 19, 2015) (denying accused 

infringer’s motion to preclude evidence that PTO denied its IPR and CBM petitions). 

IV. EVIDENCE OF IPR PROCEEDINGS SHOULD BE PERMITTED FOR

IMPEACHMENT AND REBUTTAL PURPOSES 

Cisco’s motion is overly broad in that it seeks to exclude IPR evidence without limitation. 

At a minimum, the Court should allow Finjan to use evidence of IPR proceedings for 

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impeachment and rebuttal where Cisco opens the door. Even where courts have granted accused 

infringer’s motion to exclude evidence of IPR proceedings, many still allow use of such evidence 

for these purposes. See, e.g., Pac. Biosciences of California, Inc. v. Oxford Nanopore Techs., Inc., 

No. 17-cv-1353, 2020 WL 954938, at *2 (D. Del. Feb. 27, 2020) (allowing IPR petition and 

declaration to be used to impeach defendant’s witnesses); Nox Med. Ehf v. Natus Neurology Inc., 

No. 15-cv-709, 2018 WL 6629704, at *1 (D. Del. Apr. 12, 2018) (“Of course, if a witness made 

an inconsistent statement in connection with an IPR, the witness may be impeached with it ....”); 

Morley v. Square, Inc., No. 4:14-cv-172, 2016 WL 2733114, at *3 (E.D. Mo. May 11, 2016) 

(excluding findings from PTO proceedings “still in progress,” yet allowing “the parties to make 

use of the testimony and other evidence used in the PTO proceedings”); Rembrandt Wireless 

Techs., LP v. Samsung Elecs. Co., No. 2:13-cv-213, 2015 WL 627430, at *5 (E.D. Tex. Jan. 31, 

2015) (“If [Defendant], either expressly or implicitly, leads the jury to believe that this is the first 

time the relevant references have been evaluated, the Court will permit Plaintiff to rebut this line 

of argument by producing evidence of the PTAB’s action on [Defendant]’s non-instituted IPR 

petitions.”). 

V. EVIDENCE OF POST GRANT ACTIVITY FOR FINJAN’S PATENTS IS 

RELEVANT TO THE STRENGTH AND VALUE OF FINJAN’S PORTFOLIO 

Finally, both Cisco’s and Finjan’s damages experts consider distinctions between Finjan’s 

patents and the prior art to determine patent value. See Exh. G (Layne-Farrar Op. Rep.) at 171; 

Exh. L (Becker Reb. Rep.) at ¶ 364. Finjan has not lost a single patent in 23 post grant 

proceedings. The Finjan patents’ advancement over the prior art corroborates Finjan’s expert 

opinion (see, e.g., Exh. G (Layne-Farrar Op. Rep.) at 171, n. 701) and undermines Cisco’s expert 

opinions that Finjan’s patents offer “narrow” inventions or “incremental value. . . over the prior 

art.” See Exh. L (Becker Reb. Rep) at ¶ 358, ¶ 444. This evidence is probative, and should be 

allowed. 

VI. CONCLUSION 

For the foregoing reasons, Finjan respectfully requests that the Court deny Cisco’s Motion 

in Limine No. 2 to exclude evidence or arguments about post grant proceedings. 

Case 5:17-cv-00072-BLF Document 564 Filed 04/23/20 Page 6 of 8
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Dated: April 23, 2020 Respectfully Submitted, 

By: /s/ Aamir 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 

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 23, 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 Kazi 

Aamir Kazi 

kazi@fr.com

Case 5:17-cv-00072-BLF Document 564 Filed 04/23/20 Page 8 of 8