Finjan, LLC. v. Cisco Systems Inc.
5:17-cv-00072
N.D. Cal.Jun 18, 2020Background
- This dispute concerns the Court’s April 28, 2020 order granting Cisco’s motion to strike portions of Finjan’s amended expert reports of Nenad Medvidovic regarding infringement of U.S. Patent No. 7,647,633. Finjan moved for leave and then sought reconsideration of that order.
- Finjan’s two principal grounds for reconsideration: (1) it allegedly lacked an opportunity to respond to Cisco’s post-hearing submission that identified paragraphs to be struck; and (2) the Court allegedly failed to consider facts and arguments showing that Finjan’s replacement terms in the amended reports—"virtual environment agent" and "parameters to run the sample file or URL"—were supported by Finjan’s Operative Contentions.
- The parties have a long procedural history: Judge Freeman previously allowed Medvidovic’s reports to be modified only insofar as substitutions track the Operative Contentions, and Finjan was earlier denied leave to add certain theories to its contentions.
- The Court found Cisco’s post-hearing submission merely cataloged paragraph numbers where Finjan had substituted the replacement phrases; the submission did not introduce new argument or misstate facts, and Finjan did not identify any substantive response it could have timely made.
- The Court concluded Finjan failed to show the Operative Contentions disclosed the specific functionality attributed to the replacement terms in the amended reports, and that much of the evidence Finjan now relies on was new or could have been presented earlier.
- Magistrate Judge Susan van Keulen denied Finjan’s motion for reconsideration in full, explaining the April 28 Order was not the product of a manifest failure to consider material facts or arguments and that no other grounds for reconsideration were shown.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| 1) Whether Finjan had a right/opportunity to respond to Cisco’s post-hearing submission identifying paragraphs to strike | Finjan: Cisco’s post-hearing list was filed without inviting a response; Finjan was prejudiced and the Court did not consider supporting facts | Cisco: The submission simply identified paragraph numbers from Finjan’s own redlines; no response was necessary and Finjan had opportunity to seek correction | Denied — Court held no response was required, the list merely identified substitutions, and Finjan failed to show any timely, substantive response it could have made |
| 2) Whether "virtual environment agent" replacement language was disclosed in the Operative Contentions with the functionality later attributed in Medvidovic’s reports | Finjan: Operative Contentions and later-deposed Cisco engineers/website language put Cisco on notice that a virtual environment agent performs the cited functionality | Cisco: Finjan never linked Operative Contentions to the specific functionality; Finjan’s new evidence is untimely or insufficient | Denied — Court found no evidence in Operative Contentions linking that functionality to the replacement term and treated Finjan’s late evidence as insufficient/timely raised |
| 3) Whether "parameters to run the sample file or URL" replacement language was disclosed with the functionality attributed in Medvidovic’s reports | Finjan: Contentions and Cisco understanding show the parameters refer to the accused functionality | Cisco: Finjan had sought and been denied permission to add those theories earlier; Finjan failed to show Operative Contentions disclosed the functionality | Denied — Court held Finjan failed to show Operative Contentions disclosed the relevant functionality; prior denial to amend contentions supported striking the language |
| 4) Whether the April 28 Order struck only the replacement phrases or entire paragraphs containing them | Finjan: Asked for clarification (only phrases or whole paragraphs?) | Cisco: The April 28 Order was clear — it struck replacement language in the enumerated paragraphs | Clarified/held: The April 28 Order struck the replacement language for the identified terms in the listed paragraphs; the effect on infringement theories is for the assigned judge to address |
Key Cases Cited
- Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873 (9th Cir. 2009) (motions for reconsideration are disfavored and permitted only for newly discovered evidence, clear error, or intervening change in law)