Finjan, LLC. v. Cisco Systems Inc.

Background

Cisco moved to strike portions of Finjan expert Nenad Medvidovic’s amended reports concerning alleged infringement of Patent No. 7,647,633. Cisco argued that the reports introduced infringement theories that Finjan had not disclosed in its operative infringement contentions.

Finjan previously sought to amend those contentions, but Judge van Keulen denied that request. Judge Beth Freeman later denied Finjan’s request for relief from that decision and ruled that Finjan could not use expert reports to introduce theories or accused components that it had been denied permission to add. Judge Freeman allowed Finjan to substitute permitted functionality from its infringement contentions for disallowed code names, with disputes about the substitutions to be presented to Judge van Keulen.

Cisco later moved for partial summary judgment on non-infringement. Judge Freeman granted that motion in part and denied it in part. The present order addressed the remaining dispute over replacement language in Medvidovic’s December 2019 and March 2020 reports.

Legal standard

The court applied the patent local-rule disclosure requirement that expert reports may not introduce new infringement theories or new accused components that were not disclosed in the infringement contentions. The key question was whether the challenged material stated a new infringement theory or instead supplied additional evidence for a theory already disclosed.

Rulings

The court held that Cisco’s motion to strike was procedurally proper. Finjan’s argument that the issue should instead be addressed only through a motion in limine did not change that conclusion. The court denied as untimely Cisco’s argument that the December 2019 and March 2020 reports were not operative reports, and it analyzed the motion using those two reports.

The court struck replacement language in paragraphs 632, 656, 657, and 690 of the March 2020 Report. Finjan had not shown that its operative infringement contentions linked the functionality previously associated with the challenged term to the replacement phrase “virtual environment agent.” The court stated that the fact that “virtual environment agent” appeared somewhere in the contentions was not enough to disclose the specific theory asserted in the amended report.

The court also struck replacement language for two other challenged terms in the specified paragraphs of the December 2019 and March 2020 Reports. It relied on the fact that Finjan had previously sought, and been denied permission, to add those terms and related explanations to its infringement contentions. The court also found that Finjan had not shown that similar language appearing elsewhere in the contentions was linked to the functionality attributed to the replacement language in the amended reports.

Disposition and limits of the ruling

The court granted Cisco’s motion to strike. The order did not decide the proper scope of Medvidovic’s trial testimony and did not rule on the viability or merits of Finjan’s claim that Cisco infringed the patent. Those issues were left for Judge Freeman.