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

FINJAN, INC.’S REPLY ISO ITS MOTION FOR RECONSIDERATION

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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 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

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 REPLY IN SUPPORT OF 

ITS MOTION FOR RECONSIDERATION 

OF THE COURT’S ORDER ON CISCO’S 

MOTION TO STRIKE PORTIONS OF 

FINJAN’S AMENDED EXPERT 

REPORTS (DKT. NO. 582) 

REDACTED VERSION OF DOCUMENT 

SOUGHT TO BE SEALED 

Hon. Susan van Keulen 

Ctrm: 6, 4th Floor 

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TABLE OF CONTENTS

I. INTRODUCTION ............................................................................................................ 1

II. ARGUMENT.................................................................................................................... 2

A. Cisco Fails to Identify Any Reason to Strike the Specific Paragraphs 

Listed in its Post-Hearing Submission .................................................................. 2

C. The Unrebutted Evidence Shows That Finjan’s Contentions 

Sufficiently Disclosed Theories Relating to the “Virtual Environment 

Agent” ................................................................................................................... 6

D. Cisco Does Not Dispute that Finjan’s Infringement Contentions Refer 

to the “Parameters to Run the Sample File or URL” as MPC .............................. 9

1. Cisco Does Not Identify Any Specific Paragraph Concerning 

“Parameters to Run the Sample File or URL” that is Directed 

to a Theory Not in Finjan’s Infringement Contentions............................. 9

2. The Replacement Language Is Not Overly Broad .................................. 10

E. The Procedural History Does Not Support Cisco’s Argument ........................... 11

F. Finjan Never Waived its Objection to the Post-Hearing Submission................. 12

II. CONCLUSION............................................................................................................... 14

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TABLE OF AUTHORITIES

Page(s)

Cases

Apple, Inc. v. Samsung Elecs. Co.,

2014 U.S. Dist. LEXIS 43907 (N.D. Cal. Mar. 28, 2014)...........................................................2

Bombardier Rec. Prods. v. Arctic Cat, Inc.,

2016 U.S. Dist. LEXIS 184531 (D. Minn. Apr. 19, 2016) ..........................................................2

Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co.,

571 F.3d 873 (9th Cir. 2009)......................................................................................................13

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,

2015 WL 1848524 (E.D. Tex. Jan. 23, 2015)..............................................................................2

Statutes and Rules

Civil L.R. 7-9 ...................................................................................................................................13

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MEMORANDUM OF POINTS AND AUTHORITIES

I. INTRODUCTION

The issue before the Court is whether the description of accused functionalities found in 

Finjan’s infringement contentions is sufficient to put Cisco on notice of the infringement theories

disclosed in Dr. Medvidovic’s report (Dkt. No. 558-1). Conspicuously missing from Cisco’s 

opposition is any attempt to analyze even a single paragraph from Dr. Medvidovic’s report and 

explain why the theory underlying that paragraph is purportedly not in Finjan’s infringement 

contentions. The only party that has done such an analysis is Finjan, not Cisco. Finjan’s opening 

brief submitted an analysis of the “representative” paragraph that Cisco identified in its Motion to 

Strike and showed how that paragraph was supported by Finjan’s infringement contentions. Cisco 

does not dispute Finjan’s sentence-by-sentence assessment on the merits. Finjan’s opening brief

also presented evidence showing that Cisco’s expert and witnesses understand the specific 

terminology that is used in Finjan’s infringement contentions to be consistent with the terminology 

and theories in Dr. Medvidovic’s report. Cisco does not rebut this evidence either. 

Rather than address the merits of Finjan’s Motion for Reconsideration, Cisco attempts to 

shift the focus away from those merits by claiming Finjan waived its objections to Cisco’s 

shortcomings because Finjan supposedly did not object fast enough. Cisco’s waiver argument is 

meritless: Finjan raised its objections a mere six business days after Cisco submitted its posthearing submission that identified (for the first time) over a hundred paragraphs that Cisco wanted 

struck from Dr. Medvidovic’s report (Dkt. No. 558-1). Cisco should not be permitted to use a 

tenuous waiver argument to escape a substantive analysis of the paragraphs at issue. 

Finjan’s Motion for Reconsideration is the first time this Court has had an opportunity to 

consider Finjan’s arguments against striking the language in the paragraphs at issue. Cisco bore 

the burden on its Motion to Strike, and Cisco’s post-hearing submission was grossly insufficient to 

meet its burden of showing why the language in the identified paragraphs was purportedly directed 

to new theories not disclosed in Finjan’s infringement contentions. As explained infra, the 

paragraphs at issue are directed to theories disclosed in Finjan’s infringement contentions and 

therefore the language contained in those paragraphs should not have been struck.

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Thus, the Court should grant Finjan’s Motion for Reconsideration and vacate its Order for 

two separate reasons: (1) Cisco made no effort to explain why the Court should strike any 

particular paragraph (or portion thereof); and (2) Finjan’s infringement contentions sufficiently put 

Cisco on notice of the theories in Dr. Medvidovic’s report.

II. ARGUMENT

A. Cisco Fails to Identify Any Reason to Strike the Specific Paragraphs Listed in 

its Post-Hearing Submission

Cisco’s opposition does not even attempt to offer an explanation as to why the language in 

the specific paragraphs it sought to strike could be struck. To meet its burden, Cisco had to 

explain why the paragraphs containing the replacement language were purportedly directed to 

theories not disclosed in Finjan’s infringement contentions. See 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); Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 

No. 2:13CV213-JRG-RSP, 2015 WL 1848524, at *3 (E.D. Tex. Jan. 23, 2015); Dkt. No. 419 

(January 9, 2020 MSJ Hearing Tr. at 100) at 51 (Judge Freeman instructing Finjan to “submit your 

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

Cisco’s Motion to Strike was premised on the argument that Finjan’s infringement 

contentions allegedly lacked disclosure of a sandbox-only theory (i.e., a theory not based on 

transmission) for Mobile Protection Code (“MPC”). Dkt. No. 491-3 at i, 7-10. Thus, Cisco had to 

show that the specific paragraphs it sought to strike from Dr. Medvidovic’s report were directed 

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

such a showing. Instead, Cisco ignores its burden and appears to suggest that Finjan bears the 

burden on Cisco’s Motion to Strike. Cisco cites no authority for its position, and even worse, fails 

to address the contrary authority that Finjan cites (including statements from Judge Freeman in 

this case) establishing that it is Cisco who carries the burden. See Dkt. No. 626-4 at 4; Dkt. No. 

637-3.

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Cisco still has not provided any explanation (even at this late stage) as to why it identified 

the specific paragraphs listed in its post-hearing submission. Cisco’s rationale for moving to strike 

these specific paragraphs appears to be that the paragraphs initially included the codenames (i.e., 

) that Finjan subsequently substituted with replacement 

language (i.e., “virtual environment agent” and “parameters to run the sample file or URL”) from 

its infringement contentions. Indeed, the only statement in Cisco’s post-hearing submission 

concerning these paragraphs is the following conclusory sentence: “Finjan replaced the codename 

[i.e., ] from the Original Report with the [replacement 

language], but the description of the functionality from the Original Reports was not changed.” 

Dkt. No. 558-1 at 2. 

In other words, it appears that Cisco’s post-hearing submission was just a laundry list of 

every paragraph where Finjan had replaced the codenames with replacement language (i.e., 

“virtual environment agent” and “parameters to run the sample file or URL”). Judge Freeman 

already cautioned that the use of replacement language was not by itself a basis to strike the expert 

opinions because she allowed the replacement language and was only striking the codenames 

themselves. See Dkt. No. 487 at 4 (“Cisco seeks summary judgment on the ground that that the 

accused codenames have been stricken.... The Court rejects those arguments.... [T]he Court struck 

certain codenames from Finjan’s expert reports – but not the experts’ opinions generally.”) 

(emphasis added); Dkt. No. 419 at 51:3-6 (“And so that’s what I struck. I didn’t strike the experts 

opinions generally, it was I allowed the substitution [i.e., the replacement language]. So this 

substitution needs to happen...”) (emphasis added). Particularly here, where Cisco is not 

disputing that the replacement language itself was in Finjan’s infringement contentions (Dkt. No. 

491-3 at 8), Cisco must do more than merely list paragraphs containing language that was 

admittedly disclosed in those contentions. Cisco must explain why those paragraphs were directed 

to a sandbox-only theory not disclosed in Finjan’s infringement contentions. Cisco failed to do so.

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Below are three examples of paragraphs that Cisco lists in its post-hearing submission:

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Dkt. No. 507-10 ¶¶ 460, 656, 1510. Cisco sets forth no argument as to why these paragraphs 

should be struck, but to the extent Cisco contends that these paragraphs set forth a sandbox-only 

theory (which was the original basis of Cisco’s motion), nothing in these paragraphs indicates that 

the “parameters to run the sample file or URL” or “virtual environment agent” were already at the 

sandbox as opposed to being transmitted to the sandbox. These are just three representative 

examples of the many paragraphs that Cisco sought to strike without carrying its burden of 

showing why the paragraphs were purportedly directed to a sandbox-only theory (much less a 

sandbox-only theory not disclosed in Finjan’s infringement contentions). 

Cisco’s belated identification of the paragraphs it sought to strike, combined with its 

failure to perform even the most minimal due diligence, prevented the Court from considering 

important arguments as to why the paragraphs at issue are not directed to new theories, as Cisco 

claims. For example, Finjan noted in its opening brief (and Cisco does not dispute) that numerous 

paragraphs identified in Cisco’s post-hearing submission are largely deposition testimony of Cisco 

engineers (which, procedurally, Finjan could not have disclosed in its original contentions since 

the depositions occurred after Finjan’s disclosure). See Dkt. No. 626-4 at 10. In its opposition, 

Cisco only addresses one of those paragraphs: paragraph 656 containing the testimony of Mr. De 

Beer. Dkt. No. 637-3 at 7. Even after Finjan’s motion refers to specific language from Mr. De 

Beer’s testimony in paragraph 656 and matches it with quotations from Finjan’s infringement 

contentions, Cisco makes no attempt to rebut Finjan’s specific showing. Dkt. No. 637-3 at 7. 

Instead, Cisco simply concludes that this paragraph from Dr. Medvidovic’s report is a “sleight of 

hand” because it allegedly quotes testimony from Mr. De Beer reflecting 

 

Dkt. No. 637-3 at 7. Cisco misses the point: Cisco needed to articulate why Mr. De Beer’s 

statement purportedly relates to a theory not disclosed in the contentions. It has failed to do so—

even after Finjan went through an exemplary paragraph. Cisco simply has not met its burden.

Moreover, the proper remedy, if any (and Finjan maintains there should be none), would 

be an order limiting the scope of use of the replacement language, not outright exclusion. As 

explained infra in Section II.C, the paragraphs listed in Cisco’s post-hearing submission are 

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relevant to Finjan’s transmission-based theories, which were undisputedly disclosed in Finjan’s 

contentions (and which were never abandoned as Cisco misleadingly claims). 

B. The Unrebutted Evidence Shows That Finjan’s Contentions Sufficiently 

Disclosed Theories Relating to the “Virtual Environment Agent”

Finjan’s motion identified evidence and argument showing that Cisco should have 

understood (and actually did understand) the “virtual environment agent” in Finjan’s infringement 

contentions as a reference to functionality. Cisco’s opposition failed to rebut 

that evidence and argument. Cisco’s opposition effectively concedes that its own engineers and 

experts use the term “virtual environment agent” as being equivalent to Cisco’s sandbox-only 

. See Dkt. No. 637-3 at 9-11. Cisco wishes for this evidence to be swept under the 

rug, and presents a variety of excuses in an attempt to achieve that result. None of Cisco’s excuses

hold water.

Regarding the declarations of Messrs. Watchinski and Brozefsky (

), Cisco attempts to dismiss the admissions of Messrs. 

Watchinski and Brozefsky because they occurred in the context of declarations submitted during 

summary judgment briefing. Dkt. No. 637-3 at 9-11. But Cisco’s engineers made these 

statements in their own words under the penalty of perjury. And as Cisco points out in its 

opposition, it is not just the fact that Cisco’s engineer used “virtual environment agent” in his 

declaration, but rather the fact that the remaining sixty-plus words that the declarant used to 

 Compare Dkt. No. 377-23 

(Declaration of Watchinski) ¶ 6; with Dkt. No. 377-9 (Declaration of Brozefsky) ¶ 5; see also Dkt. 

No. 637-3 at 11. Messrs. Watchinski and Brozefsky could have chosen different words, but they 

did not, and instead they 

. 

Cisco also criticizes the timing of Finjan’s reliance on the declarations of Messrs. 

Watchinski and Brozefsky (Finjan raised these declarations for the first time at the hearing). 

Putting aside the irony in Cisco’s criticism (given its heavy reliance on a post-hearing 

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submission), Finjan’s reliance at the hearing was justified because it was in response to an 

argument Cisco made for the first time in its reply. Dkt. No. 637-3 at 10 (acknowledging the 

shifted focus of Cisco’s reply brief). 

Cisco also claims Finjan cannot rely on the declarations of Messrs. Watchinski and 

Brozefsky because those declarations discuss the codenames and Finjan was denied leave to add 

those codenames to its infringement contentions. See Dkt. No. 637-3 at 9. Cisco’s argument is a

red herring: Finjan is using the testimony of Cisco’s engineers to give context as to how Cisco 

would understand the replacement language in the contentions, not to amend the contentions with 

the codenames.

Cisco’s final excuse is that Messrs. Watchinski and Brozefsky were simply “repeat[ing] 

the same terminology that Finjan’s expert used in his report.” Dkt. No. 637-3 at 11. Again, 

Messrs. Watchinski and Brozefsky chose their own words; in fact, they made their statements 

before Finjan ever replaced the 

“ ” language with the “virtual environment agent” language in Dr. Medvidovic’s 

report. 

Cisco similarly argues that the testimony of its expert (Dr. Prakash) was merely 

“repeat[ing] the same terminology that Finjan’s expert used in his report.” Dkt. No. 637-3 at 11. 

Again, Dr. Prakash could have chosen different words but chose instead to t

 And Cisco does not dispute that Dr. 

Prakash described the 

. See Dkt. No. 637-3 at 11. 

Not only does Cisco fail to rebut the aforementioned admissions by its engineers and 

expert, but Cisco does not even attempt to rebut the fact that its own website describes the very 

functionality disclosed in Finjan’s infringement contentions for the virtual environment agent 

(“sandboxing”) as exactly the same functionality that Cisco ascribes to the . Dkt. 

No. 626-4 at 7-8. Cisco’s opposition simply ignores this fact. 

Instead of rebutting the evidence, Cisco’s opposition invents a new criteria that it contends

differentiates a from the functionality described in Finjan’s infringement 

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contentions: the ability to “watch” the execution of a file. Dkt. No. 637-3 at 10 (“The Operative 

Contentions affirmatively states the virtual environment agent . . . [is] inside and watching the 

execution, which again is not the .”) (emphasis added). If anything, Cisco’s new 

argument is fatal to its case. Cisco contends (without any citation) that the operative contentions 

refer to a virtual environment agent as having the attributes of being “inside and watching the 

execution,” but that those attributes are “not the .” See id. 

 And to remove any doubt, Cisco’s witnesses have 

 Ex. 3 (Owens Depo. Tr.) at 18:13-19.

Indeed, those are just examples of how Cisco’s excuses are belied by its own prior 

statements in this very case. Cisco has additionally explicitly stated that the virtual environment 

agent is also known as the . See Dkt. No. 407-3 at 8 (“Cisco’s expert confirmed 

that the (aka ‘virtual environment agent’) is not transmitted.”). And Cisco has 

even admitted that “any virtual environment agent” would be code that is “already resident” at the 

sandbox. See Dkt. No. 382-3 at 15. Cisco should not be allowed to pretend it never made these 

statements just because it suits its position now.

Cisco, its own engineers, and its independent expert, all understood that the appropriate 

meaning attributable to a virtual environment agent in the context of Finjan’s contentions is the 

sandbox-only . Thus, the identification of a virtual environment agent in Finjan’s 

contentions put Cisco on notice as to Finjan’s sandbox-only theory. Just because the infringement 

contentions also contemplate an option to transmit the virtual environment agent (Dkt. No. 491-5 

at 35) does not preclude the fact that Cisco was on notice of the sandbox-only theory because the 

evidence shows that the disclosure of the virtual environment agent constitutes disclosure of a 

sandbox-only theory. In view of this unrebutted evidence regarding how Cisco interprets the 

disclosures in Finjan’s contentions, the Court should not have struck the paragraphs directed to the 

“virtual environment agent.” 

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C. Cisco Does Not Dispute that Finjan’s Infringement Contentions Refer to the 

“Parameters to Run the Sample File or URL” as MPC 

Finjan’s opening brief sets forth multiple reasons as to why it was improper to strike 

paragraphs concerning “parameters to run the sample file or URL” from Finjan’s expert report. 

Finjan went so far as to match specific functionality in one of Cisco’s so-called “representative” 

paragraphs with previously-disclosed theories. Dkt. No. 626-4 at 10-11. Cisco does not 

substantively dispute Finjan’s analysis.

1. Cisco Does Not Identify Any Specific Paragraph Concerning 

“Parameters to Run the Sample File or URL” that is Directed to a 

Theory Not in Finjan’s Infringement Contentions

Finjan’s opening brief walks through paragraph 4331 (which Cisco identified as 

representative of its complaints) and methodically explains why the theory disclosed in that 

paragraph is found in Finjan’s infringement contentions. Instead of disputing whether Finjan 

disclosed the theory underlying paragraph 4331, Cisco contends that paragraph 4331 (and 

presumably others like it) should be struck because they concern transmission-based theories that 

are “out of the case.” Dkt. No. 637-3 at 12-13. Cisco’s flawed reasoning actually shows the 

inadequacy of Cisco’s post-hearing submission. Cisco represented to the Court that its posthearing submission would identify paragraphs relating to a sandbox-only theory allegedly not 

disclosed in Finjan’s infringement contentions. Cisco’s identification of other paragraphs that are 

supposedly “out of the case” for other reasons is exactly illustrative of why Cisco’s post-hearing 

submission was inadequate: one simply cannot tell why any particular paragraph was listed, and 

Cisco fails to meet its burden of providing the required explanation.

The question at hand is whether Dr. Medvidovic’s theories are disclosed in Finjan’s 

contentions, not whether his theories are purportedly “out of the case” for some other reason. 

Putting Cisco’s confusion aside, this is the first time that Cisco has made such a contention. 

Because the issue before the Court is whether specific theories were disclosed in Finjan’s 

infringement contentions (and not whether those paragraphs are out of the case for some other 

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reason), the Court should reconsider and vacate its Order striking these paragraphs based on 

Cisco’s concession alone. 

And although this issue is not before this court, Finjan’s transmission-based theories are 

not out of the case. In support of its sweeping statement, Cisco references a footnote in Finjan’s 

summary judgment briefing stating only that Finjan is not relying upon RESTful APIs as MPC. 

See Dkt. No. 400-4 at 13 (“While Finjan disagrees with Cisco’s arguments regarding APIs, it is 

irrelevant because Finjan has not identified RESTful APIs as MPC and what Finjan identified as 

MPC is discussed in detail below.”). That footnote says nothing about other types of MPC, such 

as “parameters to run the sample file or URL.” And Cisco admits that Finjan’s infringement 

contentions properly disclosed transmission-based theories, including identifying “parameters to 

run the sample file or URL” as MPC that is transmitted to the sandbox. See Dkt. No. 491-3 at 8. 

Cisco cites no evidence to support the idea that Finjan disclaimed its theory that “parameters to 

run the sample file or URL” constitutes MPC that is transmitted to the sandbox. 

In fact, during summary judgment briefing the parties disputed whether 

were transmitted to the sandbox. Dkt. No. 400-4 at 15-18; Dkt. No. 407-3 

at 8-11. Judge Freeman found that the asserted claim does not require transmission, and therefore 

Judge Freeman never had to address the issue of whether were in fact

transmitted. Dkt. No. 487 at 15, 18, 20. In other words, the parties disputed at summary 

judgement whether were transmitted to the sandbox and that dispute was 

never resolved, so clearly Finjan did not abandon its theory that the replacement language for 

(“parameters to run the sample file or URL”) can also be transmitted to the 

sandbox. Therefore, the Court should not have struck the paragraphs directed to “parameters to 

run the sample file or URL” because those paragraphs are relevant to Finjan’s transmission 

theory—a theory that Cisco admits is not new. 

2. The Replacement Language Is Not Overly Broad

Cisco complains that the phrase “parameters to run the sample file or URL” is overly broad 

and could be “anything.” Dkt. No. 637-3 at 13. Cisco ignores the context in which the 

“parameters to run the sample file or URL” language was disclosed in Finjan’s contentions. In 

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Finjan’s infringement contentions, “parameters to run the sample file or URL” are one item among 

many items listed as MPC, which shows that “parameters to run the sample file or URL” is a more 

specific category than Cisco implies. See Dkt. No. 491-5 at 35. Moreover, Cisco does not rebut 

the fact that its own expert refers to (i.e., an alleged sandbox-only component) using 

the very “parameters” replacement language that Cisco admits is disclosed in Finjan’s 

infringement contentions, thereby establishing the language is objectively sufficient to describe the 

functionality. See Dkt. No. 637-3 at 13.

Rather than continuing to chase Cisco’s moving target, Finjan’s opening brief challenged 

Cisco to identify the specific disclosure it contends is missing from Finjan’s contentions. Cisco’s 

opposition failed to do so. The fact that Cisco continues to complain in generalities that Finjan’s 

disclosures are not precise enough, while refusing to identify even one example of that missing 

precision, suggests that Cisco was searching for the specific words 

rather than the relevant functionality. But Judge Freeman has already rejected that as the relevant 

test. And given that Dr. Medvidovic’s report no longer refers to , the 

relevance of Cisco’s argument here is tenuous at best.

Finally, Cisco does not rebut the fact that its own expert refers to the (i.e., an 

alleged sandbox-only component) using the very “parameters” replacement language that Cisco 

admits is disclosed in Finjan’s infringement contentions. See Dkt. No. 637-3 at 13. Instead, Cisco 

claims that its expert’s interpretation of the “parameters” replacement language is “irrelevant.” Id. 

Finjan submits that this testimony is relevant because it is evidence showing how Cisco would 

interpret the “parameters to run the sample file or URL” language in Finjan’s infringement 

contentions, and the evidence shows that Cisco would have interpreted it as including a sandboxonly theory. As previously stated, just because the infringement contentions also contemplate an 

option to transmit (Dkt. No. 491-5 at 35) does not preclude the fact that 

Cisco was on notice of the sandbox-only theory.

D. The Procedural History Does Not Support Cisco’s Argument

Instead of addressing the merits of Finjan’s Motion for Reconsideration, Cisco relies 

heavily on the various orders preceding Finjan’s motion. Cisco claims that the issue here is “the 

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precise” issue that was already addressed in Finjan’s motion for leave to amend its contentions. 

Dkt. No. 637-3 at 13-14. Cisco appears to be asking the Court to avoid addressing the merits and 

instead take a shortcut: deny the relief requested here simply because the Court previously denied 

the relief requested in Finjan’s motion for leave to amend its contentions. This is not appropriate. 

Finjan’s previous motion was about the codenames themselves (

), not the replacement language that is currently at issue (“virtual environment agent” 

and “parameters to run the sample file or URL”) and that is admittedly disclosed in Finjan’s 

contentions. Dkt. No. 230-4 at 2; Dkt. No. 491-3 at 8. 

Nowhere did the Court previously consider the replacement language now at issue, and in 

fact Judge Freeman rejected Cisco’s arguments that the stricken codenames were somehow 

equivalent to the broader theories associated with the replacement language. See Dkt. No. 487 at 4 

(“Cisco seeks summary judgment on the ground that that the accused codenames have been

stricken.... The Court rejects those arguments.... [T]he Court struck certain codenames from 

Finjan’s expert reports – but not the experts’ opinions generally.”) (emphasis added). 

Finjan respectfully submits that its Motion for Reconsideration must be considered on its 

own merits without reliance on the outcome of a previous motion directed to a different issue. 

E. Finjan Never Waived its Objection to the Post-Hearing Submission

In a further attempt to avoid addressing the merits of Finjan’s Motion for Reconsideration, 

Cisco’s main argument is procedural: that Finjan “waived” its objection to Cisco’s post-hearing 

submission by failing to raise the objection at the hearing. Dkt. No. 637-3 at 4-5. To be clear, 

Finjan is not objecting to the fact of the submission, but to its contents. Obviously, Finjan could 

not have objected at the hearing to the contents of a submission that Cisco had not yet served. At 

best, Finjan may have objected to Cisco being allowed to make a post-hearing submission. 

However, since a post-hearing submission by Cisco was specifically requested by the Court in 

order to assist the Court in understanding what Cisco was asking the Court to strike, such an 

objection seemed neither appropriate nor reasonable. Dkt. No. 560 at 65-66.

Cisco’s argument is also not supported by the very law it cites. Cisco’s cited case law 

shows that the standard for waiver is not whether an objection could have been raised, but whether 

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it could have reasonably been raised. See Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & 

Co., 571 F.3d 873, 880 (9th Cir. 2009). It would have been unreasonable for Finjan counsel to 

object to Cisco’s forthcoming submission without knowing which specific paragraphs Cisco was 

going to identify. None of the case law Cisco cites finds that a failure to raise a speculative 

objection regarding a forthcoming submission was waiver. Such a requirement would be 

unreasonable, especially here where Finjan counsel had no notice of the sheer volume (or even 

identity) of the paragraphs that Cisco would list in its post-hearing submission. 

It is also unreasonable to expect Finjan to prepare and file a motion for leave to file a 

response and, assuming that motion was granted, then draft its objections to over a hundred

paragraphs in the three business days between when Cisco filed its post-hearing submission and 

when the Court issued its Order. None of Cisco’s cited case law comes even close to being 

analogous to the situation here. Finjan raised its dispute with Judge Freeman two days after this 

Court issued its Order, and Finjan submits that this timing was reasonable given the 

circumstances. Indeed, this Court already found that Finjan was reasonably diligent when it 

granted Finjan leave to file this motion. See Civil L.R. 7-9; Dkt. No. 620.

Cisco next argues that even though Cisco did not identify any specific opinions it was 

seeking to strike, Finjan should have known the specific paragraphs Cisco was seeking to exclude. 

Not so. Despite having multiple opportunities, Cisco never identified a specific paragraph that it 

wanted to strike until it filed its post-hearing submission. Even after Finjan’s opposition to 

Cisco’s motion to strike identified examples of paragraphs where the disclosure in the report 

tracked the disclosure in the infringement contentions, Cisco did not respond with a single 

exemplary paragraph. Indeed, at the hearing, Cisco represented that there were “probably a 

thousand” places where Finjan’s report used generic replacement language to capture a theory that 

was (allegedly) not in Finjan’s infringement contentions. Dkt. No. 560 at 57. If Cisco did not 

know the specific paragraphs it was seeking to exclude until after the hearing, Finjan could not 

have known either.

In sum, as a result of Cisco’s failure to timely identify the remedy it sought, this Court 

issued its Order without any briefing or argument regarding the specific paragraphs Cisco sought 

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to strike. This Motion for Reconsideration is the first time this Court has finally had the 

opportunity to consider Finjan’s response which clearly shows how Cisco has failed to meet its 

burden.

II. CONCLUSION

For at least the foregoing reasons, Finjan respectfully requests that its Motion for 

Reconsideration be granted, that the Court’s Order on Cisco’s Motion to Strike Portions of

Finjan’s Amended Expert Reports (Dkt. No. 582) be vacated, and that Cisco’s Motion to Strike 

Portions of Finjan’s Amended Expert Reports (Dkt. No. 491-3) be denied.

Dated: May 29, 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 May 29, 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

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