Finjan, Inc. v. Check Point Software Technologies, Inc.

Background

Finjan accused Check Point Software Technologies, Inc. and Check Point Software Technologies Ltd. of infringing several cybersecurity patents. The case had gone through three rounds of infringement contentions—documents describing how the accused products allegedly infringe each patent claim.

The court had previously ordered Finjan to identify specific accused products, provide infringement theories that complied with the Northern District of California’s Patent Local Rules, and include pinpoint source-code citations showing where each element of each asserted patent claim appeared in each accused product. The court struck portions of Finjan’s first and amended contentions and allowed one final opportunity to amend.

Finjan then served second amended infringement contentions containing 5,135 claim charts and more than 185,000 pages. In the January 17, 2020 order that Finjan sought to appeal, the court struck with prejudice certain contentions, including previously rejected products and theories, new accusations, and contentions lacking pinpoint source-code citations. The court also appointed retired Magistrate Judge Elizabeth D. Laporte as a special master to evaluate whether additional contentions should be struck for inadequate source-code explanations or failure to explain how the same code applied to different infringement theories.

Finjan’s Motion

Finjan asked the court to certify the January 17 order for interlocutory appeal, meaning an appeal before the district court entered a final judgment. It framed the proposed legal question as whether Patent Local Rule 3-1 requires pinpoint source-code citations for every element of every asserted claim, particularly before fact-discovery depositions, or whether other evidence could establish where and how infringement occurred. Finjan also sought a stay of the proceedings and limited discovery while an appeal was pending.

Court’s Analysis

Under 28 U.S.C. § 1292(b), certification for an early appeal requires a controlling question of law, substantial grounds for disagreement about that question, and a likelihood that immediate review would materially advance the end of the case. Certification is also discretionary with the district court.

Judge Orrick concluded that Finjan had not satisfied these requirements. First, he held that the January 17 order did not simply interpret Patent Local Rule 3-1. It applied that rule together with case-specific orders governing the litigation and the court’s management of the pretrial process. Whether pinpoint citations were required depended on the facts of this case, including the nature of Finjan’s contentions and the several prior opportunities Finjan had to correct them. The court therefore viewed the proposed issue as, at best, a mixed question of law and fact rather than a pure legal question suitable for early appeal.

The court also noted that the challenged contentions had been struck on multiple overlapping grounds, not only for lacking pinpoint source-code citations. As a result, a ruling on the proposed citation issue would not necessarily change the outcome of the litigation.

Second, the court found no substantial ground for disagreement. Finjan relied on other patent cases, but Judge Orrick found those decisions distinguishable because the requirement for pinpoint citations depended on the facts and procedural history of each case. He explained that the January 17 order did not establish a blanket rule requiring universal source-code citations in all software-patent cases; it applied the requirements of the court’s earlier, case-specific orders.

Third, the court rejected Finjan’s arguments that an early appeal would speed up the case. The court found the risk of duplicative expert reports and trials to be low after Finjan had received multiple opportunities to comply with the governing requirements. It also determined that an appellate ruling would not necessarily assist the special master, who was evaluating the explanations supporting existing pinpoint citations rather than deciding whether citations had been provided at all. Finally, the court stated that the case had already been pending for nearly two years and remained at the infringement-contentions stage, so an early appeal would not accelerate the district-court proceedings.

Disposition

The court denied Finjan’s motion to certify the January 17, 2020 order for interlocutory appeal. The opinion does not state a separate disposition for the requested stay or limited discovery beyond discussing those requests in its analysis.