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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 4 RE ’633 PATENT

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. 4 

RE EVIDENCE AND ARGUMENTS 

PERTAINING TO CERTAIN ’633 

PATENT INFRINGEMENT 

THEORIES 

Case 5:17-cv-00072-BLF Document 611 Filed 05/04/20 Page 1 of 7
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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 4 RE ’633 PATENT

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

TABLE OF ABBREVIATIONS 

Plaintiff Finjan, Inc. Finjan or Plaintiff 

Defendant Cisco Systems, Inc. Cisco or Defendant 

Order Granting in Part and Denying in Part Cisco’s Motion for Partial 

Summary Judgment of Non-Infringement (Dkt. 487) 

MSJ Order 

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

Amended Expert Report of Nenad Medvidovi, Ph.D. Regarding 

Infringement of Cisco Systems, Inc. of Patent No. 7,647,633 

Ex. 19 

Order Directing Parties to Submit Stipulated Proposed Redactions to the 

Court’s Order of November 12, 2019 on or before November 19, 2019 

(Dkt. 398) 

November 12, 2019 

Order 

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. 4 RE ’633 PATENT

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

As directed by the Court, Cisco seeks to exclude any evidence, testimony, or argument 

relating to the infringement theories regarding U.S. Patent No. 7,647,633 (’633 Patent) that survived 

summary judgment but that lack any support in Finjan’s infringement contentions in violation of the 

Patent Local Rules, as will be determined by Magistrate Judge Van Keulen’s ruling on Cisco’s 

pending motion to strike (Dkt. 492). See Order Granting in Part and Denying in Part Cisco’s Motion 

for Partial Summary Judgment of Non-Infringement (Dkt. 487) (“MSJ Order”) at 4. Any expert 

theories that are not disclosed in the infringement contentions in accordance with the Patent Local 

Rules must be struck from the expert report. DSS Tech. Mgmt. v. Apple, Inc., 2020 U.S. Dist. LEXIS 

6177 at *23-25 (N.D. Cal. 1/14/20) (striking expert reports that relied on new infringement theories 

not disclosed in infringement contentions per Patent Local Rule 3-1). 

If Judge van Keulen grants Cisco’s motion, then Finjan would have no admissible evidence 

to support its infringement theories on the ’633 Patent, and the Court should preclude any argument 

or evidence regarding the ’633 Patent under FRCP 26(a)2(B) and 37 and FRE 401, 402 and 403. 

More specifically, “Federal Rule of Civil Procedure 26(a)(2)(B) requires a witness who is ‘retained 

or specially employed to provide expert testimony in the case’ to provide a written report containing, 

among other things, ‘(i) a complete statement of all opinions the witness will express and the basis 

and reasons for them,’ and ‘(ii) the facts or data considered by the witness in forming them.’” Asia 

Vital Components Co. v. Asetek Danmark A/S, 377 F. Supp. 3d 990, 1002 (N.D. Cal. 2019) (citing 

rule). “Rule 37, in turn, ‘gives teeth to Rule 26’s disclosure requirements by forbidding the use at 

trial of any information that is not properly disclosed.’” Id. (quoting Goodman v. Staples The Office 

Superstore, LLC, 644 F.3d 817, 827 (9th Cir. 2011). “[W]here an expert fails to provide a theory in 

the report, a court may ‘preclud[e] him from testifying on this issue.’” Id. (citing Nationwide 

Transp. Fin. v. Cass Info. Sys., Inc., 523 F.3d 1051, 1062 (9th Cir. 2008)). 

Background. The Court’s MSJ Order (Dkt. 487) sets forth the background of the ’633 

Patent, in which Claim 14 is the only asserted claim. In opposition to Cisco’s motion for summary 

judgment on the ’633 Patent, Finjan relied on seven alleged forms of mobile protection code 

(“MPC”) already resident at the Cisco sandboxes. Finjan disclaimed any theories where the mobile 

protection code was not already at the sandbox. i.e., any theories where the mobile protection code 

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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 4 RE ’633 PATENT

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

is transmitted from a gateway to the sandbox. MSJ Order (Dkt. 487) at 15 n.6; Finjan’s Opposition 

to Cisco’s Motion for Partial Summary Judgment (Dkt. 401) at 13. The Court granted Cisco’s motion 

for summary judgment of no literal infringement as to four of the seven alleged theories, leaving 

only (i) kernel monitor, (ii) playbooks and (iii) cookbooks. See MSJ Order (DKt. 487) at 33. The 

Court denied Cisco’s motion with respect to the unavailability of the doctrine of equivalents based 

on prosecution history estoppel. Id. at 21-23. 

The Court granted Cisco’s motion to strike Finjan’s expert reports on November 12, 2019. 

See Order on Motions Re Expert Reports (Dkt. 397) (“November 12, 2019 Order”). Finjan served 

amended reports on December 13 and 16, but did not supplement the summary judgment record, 

which was based on the original reports that were subject to the Court’s November 12, 2019 Order. 

At the January 9, 2020 summary judgment hearing, the Court directed the parties to confer 

on whether the specific theories in Finjan’s expert report that Finjan relied upon in opposition to 

summary judgment (which were subject to the Court’s November 12, 2019 Order) were properly 

disclosed in the operative infringement contentions and, to the extent there were unresolved disputes 

over disclosure, directed Finjan to ask Judge van Keulen to “allow a substitution from something 

from the contentions to go to the jury in place of all of the arguments [for these theories] ... because 

otherwise they have provided me no evidence.” Ex. 8 at 120:6-11. Following a meet-and-confer, 

Cisco filed a Motion to Strike Portions of Finjan’s Amended Expert Report on Infringement of Patent 

No. 7,647,633 (Dkt. 492) (“Cisco ’633 Motion”) before Judge van Keulen to strike the infringement 

theories of Finjan’s expert that were not disclosed in the operative infringement contentions. In its 

’633 Motion, Cisco sought an order striking from the “Amended Expert Report of Nenad 

Medvidovic, Ph. D Regarding Infringement ... of Patent No. 7,647,633” all of the theories (both 

literal and under the doctrine of equivalents) that survived summary judgment, i.e., (i) all theories 

where the mobile protection code is a component at the sandbox and not transmitted to the sandbox 

from an AMP Gateway Product (including by equivalents) and (ii) all theories based on the 

“playbooks,” “cookbooks,” and “kernel monitor” as the mobile protection code. Finjan filed its 

Opposition on April 10, 2020 (Dkt. 508). Cisco filed its Reply in Support of Its Motion to Strike on 

April 15, 2020 (Dkt. 523-3) (“April 15, 2020 Reply”). The hearing on Cisco’s motion before Judge 

Case 5:17-cv-00072-BLF Document 611 Filed 05/04/20 Page 4 of 7
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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 4 RE ’633 PATENT

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

van Keulen is set for April 21, 2020. As of the filing of this Motion, therefore, the dispute is currently 

before Magistrate Judge van Keulen. 

Enforcement Through This Motion in Limine. Cisco understands that this motion in 

limine is the proper mechanism to enforce Judge van Keulen’s forthcoming ruling on Cisco’s ’633 

Motion, to the extent that motion is granted. Specifically, during the summary judgment hearing, 

and as reflected in the Court’s MSJ Order, the Court directed that Judge van Keulen’s resolution of 

this dispute would be enforced through a motion in limine. See MSJ Order at 4 (“If, however, Finjan 

is unable to show that the functionalities corresponding to the codenames were included in its 

operative infringement contentions, the Court would entertain that dispute in a motion in limine. See

Hr’g Tr. at 159:14-17.”); see also Ex. 8 at 51:4-6 (dispute to be resolved by Magistrate Judge van

Keulen), 51:19-21 (same), 120:6-11 (same), 158:23-25 (same), 159:7-10 (same); April 15, 2020 

Reply (Dkt. 523-3) at 1-2. 

With respect to doctrine of equivalents for the relevant claim elements, all versions of 

Finjan’s expert report on infringement of the ’633 Patent have the same short, generic section that 

has no relevance to the ’633 elements that are literally missing. See, e.g., Ex. 19 (Amended Expert 

Report of Nenad Medvidovic, PH.D. Regarding Infringement of Cisco Systems, Inc. of Patent No. 

7,647,633) at ¶¶ 4340-4343 (doctrine of equivalents analysis of claim element 14(d) for Threat Grid) 

and ¶¶ 4498-4501 (doctrine of equivalents analysis of claim element 14(d) for AMP Gateway/Cloud 

Products with Cisco Sandboxes). First, none of Finjan’s expert reports contain a doctrine of 

equivalents theory relating to the missing “executable” element in Finjan’s now-abandoned literal 

infringement theory that an API submission from the AMP Gateway product involves transmission 

of mobile protection code to the Cisco sandboxes (in other words, because Finjan conceded at 

summary judgment that the API submission is not “executable” and thus is not mobile protection 

code, Finjan would have to have a DOE theory as to how a non-executable API submission is 

equivalent to the “executable” element of the claim, but no such analysis exists in the expert reports). 

With respect to Finjan’s sandbox-only mobile protection code theories on literal infringement, the 

Court granted summary judgment as to 4 of the 7 alleged mobile protection code theories because 

none of the 4 components performed the monitoring or intercepting required by the Court’s mobile 

Case 5:17-cv-00072-BLF Document 611 Filed 05/04/20 Page 5 of 7
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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 4 RE ’633 PATENT

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

protection code construction and 2 of 4 were not even executable. The expert reports do not include 

doctrine of equivalent theories addressing equivalence regarding these two deficiencies with respect 

to these 4 components (or any other components). Finally, as noted above, the contentions do not 

even include “kernel monitor”, “playbook” and “cookbook” theories and, as such, do not disclose 

doctrine of equivalent theories directed at these components. 

Relief Sought. Per the Court’s directive, Cisco submits this motion in limine to preclude 

Finjan from presenting any evidence or arguments relating to the theories that survived summary 

judgment but that lack any support in Finjan’s infringement contentions, to the extent Magistrate 

Judge van Keulen grants Cisco’s ’633 Motion. The result would be to preclude any argument or 

evidence regarding the ’633 Patent, as all remaining theories (whether literal infringement or 

infringement under the doctrine of equivalents) would be struck. 

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) 

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 

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DEFENDANT CISCO SYSTEMS INC.’S MOTION IN LIMINE NO. 4 RE ’633 PATENT

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

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 611 Filed 05/04/20 Page 7 of 7