Finjan LLC v. Sonicwall, Inc.
- Virginia Demarchi
- 5:17-cv-04467
- U.S. District Court · Northern District of California
- 9
Finjan v. SonicWall — Judge Demarchi denied Finjan’s request to amend its patent-infringement contentions for lack of diligence.
Finjan’s attempt to add infringement theories was denied; SonicWall opposed the amendments, and the court did not reach the issue of prejudice to SonicWall.
What happened
In Finjan, Inc. v. SonicWall, Inc., Finjan asked to add several patent-infringement theories to its required disclosures during the case. The proposed additions concerned cloud sandboxes, a statistics server, a database, and WXA appliances.
Finjan argued that newer evidence supported the amendments and that it had acted diligently. SonicWall opposed the request. The court had previously struck the proposed theories after finding that they were new theories or did not comply with an earlier order.
The court denied the motion because Finjan did not show that it acted diligently in seeking permission to amend. The court did not decide whether the amendments would prejudice SonicWall. Judge Virginia K. Demarchi issued the order.
The detailed version
- Finjan LLC v. Sonicwall, Inc. · No. 5:17-cv-04467
- Virginia Demarchi
- Mar. 9, 2020
Background
Finjan sued SonicWall in a patent-infringement action. Finjan originally asserted infringement of ten patents and later served supplemental infringement contentions. After SonicWall objected, the court ordered Finjan to remove open-ended references, identify the relevant components, and specify whether products infringed alone or in combination with Capture ATP.
Finjan served a second set of supplemental contentions. SonicWall moved to strike portions of them, arguing that they did not comply with the court’s order and introduced new infringement theories. The court granted that motion in part and struck several theories, including theories involving the CloudAV and GRID sandboxes, the Stats server and URL Thumbprint Database, and WXA appliances.
Finjan then moved for leave to amend its infringement contentions to add the theories that had been struck.
Legal standard
Under the Patent Local Rules, a party may amend infringement contentions only with the court’s permission and a timely showing of good cause. The court first considers whether the party seeking amendment acted diligently and then considers whether the amendment would unfairly harm the opposing party. Finjan had the burden of showing diligence.
Court’s analysis
The court found that Finjan did not show diligence concerning the proposed CloudAV and GRID sandbox theories. Finjan said it obtained new evidence in April or May 2019 and that it could not have known the theories were new until the court struck them in November 2019. But the court noted that Finjan had previously represented that the Gateways and ESA products infringed either on their own or in combination with Capture ATP. Because the court had not authorized additional combinations with other cloud components, Finjan was required to seek permission before adding those theories. It did not do so.
The court also found that Finjan waited about eight months after discovering the evidence it identified before seeking leave to amend. Finjan relied on documents and source code produced earlier and did not adequately connect the proposed amendments to newly discovered information. The court rejected Finjan’s argument that SonicWall’s delay in moving to strike justified Finjan’s own failure to seek permission earlier.
The court likewise found that Finjan had not shown diligence for the proposed Stats server, URL Thumbprint Database, and WXA appliance amendments. Finjan argued that relevant source code was not available for inspection until August 2019, but it did not explain how information first made available then supported the proposed changes. The court noted Finjan’s admission that its May 2019 contentions and proposed amendments did not differ in the relevant respects.
Disposition
Because Finjan did not establish diligence, the court did not reach whether the amendments would prejudice SonicWall. The court denied Finjan’s motion for leave to amend its infringement contentions. Judge Virginia K. Demarchi signed the order.
Read the full 9-page opinion on CourtListener, the free public archive maintained by the Free Law Project.