Finjan, LLC v. Qualys Inc.

Background

Qualys Inc. renewed its motion to strike portions of Dr. Nenad Medvidovic’s expert report submitted for Finjan LLC. The challenged portion concerned Finjan’s theory that Qualys’s accused products receive an “incoming stream of program code,” a limitation required by asserted U.S. Patent No. 8,225,408.

Finjan’s infringement contentions stated that the accused products received the relevant content when a node in a cloud-computing environment received content based on a client device requesting it from a source computer, such as the Internet. In his expert report, Dr. Medvidovic instead stated that the products satisfied this limitation by collecting data from network endpoints through transactions initiated by the products, followed by receipt of responses.

The court characterized the report’s approach as a shift from a middleman scanner that passively monitors ongoing traffic to a proactive scanner that initiates transactions to detect vulnerabilities. The court had previously denied Qualys’s motion on this ground without prejudice to renewal because the explanation was unclear.

Ruling

The court granted Qualys’s renewed motion to strike. It held that the expert report advanced a new theory that was not disclosed in Finjan’s infringement contentions. The court reasoned that Qualys was entitled to know Finjan’s precise theory for how the accused products received code. The court rejected Finjan’s argument that the patent claims did not require client requests, explaining that the contentions suggested that client requests were how the products performed the relevant limitation.

The court struck paragraphs 184 through 196 of Dr. Medvidovic’s report. It stated that the order was based solely on a fair reading of the contentions compared with the expert report and made no factual determination about the operation of the accused products, despite the parties’ submission of extrinsic evidence. Judge Yvonne Gonzalez Rogers stated that the order terminated docket numbers 194 and 197. The related motion to seal was denied because the party designating the material confidential did not seek to seal it.