Finjan LLC v. Palo Alto Networks, Inc.

Background

Palo Alto Networks asked the court to strike portions of three expert reports submitted by Finjan’s experts, Dr. Min, Dr. Jakobsson, and Dr. Keromytis. Palo Alto Networks argued that the reports presented infringement opinions based on the “CTD engine,” “single pass scanning,” and “single pass architecture,” even though those theories had not been disclosed in Finjan’s infringement contentions.

Patent Local Rule 3-1 requires a party claiming patent infringement to identify each asserted claim, each accused device or method, and where each claim limitation appears in each accused instrumentality. The rule is intended to give the opposing party early notice of the infringement theories and to limit later amendments to circumstances supported by diligence and good cause.

CTD-engine opinions

The parties disagreed about whether the CTD engine and Content-ID referred to the same feature. Palo Alto Networks described the CTD engine as a unified threat engine that inspects network traffic for malware and other cybersecurity threats. Finjan argued that the CTD engine was effectively interchangeable with Content-ID, which Finjan had identified in its infringement contentions. Finjan also argued that it had disclosed the CTD engine by listing source-code files associated with it.

The court rejected those arguments. The cited deposition testimony did not establish that the two features were identical or that the CTD engine operated underneath Content-ID. Finjan’s second amended infringement contentions had used “Content-ID” rather than “CTD engine,” and the court noted that Palo Alto Networks’ website treated them as separate pages. The court also found that scattered references to filenames or software files did not adequately identify the CTD engine as an accused instrumentality under Rule 3-1.

Because Finjan’s earlier disclosures did not give Palo Alto Networks fair notice of infringement claims based on the CTD engine, the court held that expert opinions relying on the CTD engine in the Next Generation Firewall to show infringement of the ’408, ’154, and ’731 patents would be excluded.

Single-pass architecture and scanning

The court reached a different conclusion concerning single-pass architecture and single-pass scanning. Palo Alto Networks initially asserted that Finjan had not mentioned those subjects anywhere in its infringement contentions. Finjan then identified multiple references to them in the infringement chart for the ’408 patent. The court treated that response as ending Palo Alto Networks’ objection on this issue and held that Finjan’s experts’ opinions about single-pass architecture and scanning would not be excluded as inadequately disclosed.

Disposition

The court granted in part Palo Alto Networks’ motion to strike. It excluded the specified CTD-engine opinions but did not exclude the opinions concerning single-pass architecture and single-pass scanning for inadequate disclosure.