Finjan LLC v. Sonicwall, Inc.

Background

This patent-infringement case involved Finjan’s second supplemental infringement contentions—its detailed disclosures of how SonicWall’s products allegedly infringe particular patent claims. SonicWall moved to strike those contentions because it argued that they did not comply with the court’s May 2019 order.

The May order required Finjan to eliminate open-ended language and unidentified components, specify the products or services at issue, state whether infringement was alleged by a product alone or in combination, and identify which parts of the accused instrumentalities met specified claim limitations. Finjan served its second supplemental contentions on May 31, 2019.

Rulings

The court granted in part and denied in part SonicWall’s motion to strike. The court also ordered Finjan to revise its infringement contentions.

Gateway-only and ESA-only theories

The court had previously required Finjan to distinguish theories that Gateway and ESA products allegedly infringed by themselves—described as infringement “on the box”—from theories involving those products in combination with Capture Advanced Threat Protection. The court found that some of Finjan’s purported Gateway-only and ESA-only contentions instead relied on cloud-based resources, including the CloudAV and GRID sandboxes. Those theories were outside the scope of the permitted amendments, so the court granted SonicWall’s motion to strike them.

Finjan was ordered to re-serve its Gateway-only and ESA-only disclosures without contentions that cloud-based resources or components met the relevant claim limitations.

Combinations of contentions

SonicWall argued that Finjan’s numbered contentions and a statement allowing contentions to be used in combinations created an unclear and potentially very large number of infringement theories. The court denied SonicWall’s motion to strike on this ground because the dispute arose from an ambiguity the parties could have resolved without court assistance.

The court nevertheless ordered Finjan to revise its contentions to state clearly which numbered contentions could be combined. Finjan could not rely only on communications between the parties’ lawyers to provide that clarification.

’154 patent

SonicWall argued that Finjan had not explained whether or how the accused instrumentalities satisfied the ’154 patent’s requirement that the input be transmitted to the security computer when the first function is invoked. Finjan said the explanation appeared elsewhere in its contentions and agreed to revise them.

The court denied SonicWall’s motion to strike on this ground, but ordered Finjan to make clear whether and how the accused instrumentalities met that portion of the claim limitation.

Allegedly new infringement theories

The court considered SonicWall’s challenges to theories involving several patents. It found that references to the CloudAV and GRID sandboxes, including honeypots and webcrawlers, had not previously been disclosed as part of the challenged Gateway-only and ESA-only theories. It also found that identifying the Stats server for Gateway products and the URL Thumbprint Database for ESA products constituted new theories rather than merely more specific versions of earlier theories.

For the ’968 patent, the court found that Finjan’s contentions concerning WXA appliances disclosed a new theory because the appliances were newly identified as meeting additional claim limitations. The court granted SonicWall’s motion to strike these new theories and ordered Finjan to eliminate them from its infringement contentions.

Possible further amendment and deadline

The court did not decide whether Finjan had good cause to add the stricken theories or other new theories. Under Patent Local Rule 3-6, amendment requires a court order based on a timely showing of good cause, including diligence and consideration of prejudice to the opposing party. Finjan could seek permission to amend by filing a proper motion after conferring with SonicWall’s counsel.

Judge Virginia K. DeMarchi ordered Finjan to serve revised contentions consistent with the order by December 11, 2019.