Finjan, LLC. v. Cisco Systems Inc.

Background

Finjan sued Cisco for allegedly infringing five patents concerning computer and network security. The court addressed five motions involving expert reports:

The court also vacated hearings scheduled for November 21, 2019, and January 23, 2020, concluding that the motions could be decided without oral argument.

Cisco’s Motion to Strike Finjan’s Infringement Reports

Cisco argued that Finjan’s infringement reports improperly relied on internal names of Cisco software components and improperly accused Talos as an independent infringing entity, even though Finjan had previously been denied permission to add those theories to its infringement contentions.

The court agreed that expert reports may not introduce new infringement theories or new accused products that were not disclosed in the required infringement contentions. Finjan had twice sought to amend its contentions to add the disputed component names and had not shown the diligence and lack of prejudice required for amendment. The court rejected Finjan’s attempt to establish through a lengthy exhibit that the reports merely provided additional evidence for existing theories.

The court also noted that Finjan had withdrawn its allegations against Talos standing alone and ordered Finjan’s experts to remove the Talos-only allegations. For the patent identified in the order as the “’154 Patent,” the court allowed references to “behavioral indicators” because it found those references in Finjan’s operative contentions, but required removal of other undisclosed components and functionality.

The court GRANTED Cisco’s motion at ECF 312. Finjan’s experts were ordered to revise their reports by removing the disallowed terminology and Talos-only allegations and ensuring that their opinions followed Finjan’s operative infringement contentions.

Finjan’s Motion to Strike Cisco’s Invalidity Theories

Finjan sought to strike several alleged new invalidity theories, including combinations involving Janus 0.8, Wagner, Feigenbaum, and TBAV; three allegedly undisclosed references and background materials; and theories under Sections 101 and 112 of the patent statute.

The court found the motion premature because the expert opinions had not yet been relied on or offered into evidence. It explained that the parties could raise these disputes through a motion in limine, a request to exclude evidence before trial, in connection with summary judgment, or at trial.

The court DENIED WITHOUT PREJUDICE Finjan’s motion at ECF 319 and stated that Finjan could refile it as a motion in limine under the court’s standing order for civil jury trials.

Cisco’s Motion to Strike Finjan’s Damages Theories

Cisco sought to strike two damages theories from the reports of Dr. Anne Layne-Farrar and Dr. Ricardo Valerdi, arguing that Finjan had not disclosed those theories in its damages contentions.

The court found the motion premature for the same reasons discussed regarding Finjan’s motion to strike the invalidity theories. The court also noted that Cisco filed the motion and Finjan filed its opposition before Dr. Layne-Farrar’s deposition, which led to additional briefing. The court directed the parties to focus on their strongest positions and defer evidence-admissibility disputes to the appropriate proceeding, including the final pretrial conference.

The court DENIED WITHOUT PREJUDICE Cisco’s motion at ECF 326. Cisco could refile the motion as a motion in limine under the court’s standing order.

Finjan’s Motion to Strike the Supplemental Hall-Ellis Report

Finjan argued that Cisco’s supplemental report was untimely and improperly added new grounds supporting Dr. Hall-Ellis’s opinion about whether the Feigenbaum reference had been publicly available. Cisco responded that the report merely supplied additional material supporting the same opinion and was served before the expert’s deposition and before expert discovery closed.

The court explained that supplementation under Federal Rule of Civil Procedure 26(e) is generally limited to correcting incomplete or incorrect disclosures, but that courts may allow harmless supplementation that clarifies or expands on matters expressly discussed in the original report without changing the opinion.

The court found that Dr. Hall-Ellis’s opinion had not changed. The supplemental report directed Finjan to archived Internet pages and a paper that supported her original opinion that the Feigenbaum reference had been published and publicly accessible by the relevant time. The court also found no undue prejudice because the report was fewer than three pages, was served two days before Dr. Hall-Ellis’s deposition, expert discovery remained open afterward, and trial was months away.

The court DENIED Finjan’s motion to strike the supplemental report at ECF 365.

Finjan’s Administrative Motion

Finjan sought permission to file supplemental material addressing Cisco’s reply in support of its damages-theories motion. Because the court denied Cisco’s underlying motion without prejudice, it DENIED AS MOOT Finjan’s administrative motion at ECF 368.

Final Order and Effect

The court’s final dispositions were:

- Cisco’s motion to strike Finjan’s infringement reports, ECF 312: GRANTED. - Finjan’s motion to strike invalidity theories, ECF 319: DENIED WITHOUT PREJUDICE. - Cisco’s motion to strike damages theories, ECF 326: DENIED WITHOUT PREJUDICE. - Finjan’s motion to strike the supplemental Hall-Ellis report, ECF 365: DENIED. - Finjan’s administrative motion for leave to file supplemental material, ECF 368: DENIED AS MOOT.

Because the order ruled on two motions seeking to exclude evidence, the court stated that each party would have four remaining motions in limine available before the final pretrial conference.