Finjan, LLC v. Qualys Inc.

Opinion

1 2 5 6 FINJAN LLC, CASE NO. 4:18-cv-07229-YGR

7 Plaintiff, ORDER GRANTING DEFENDANT’S 8 vs. RENEWED MOTION TO STRIKE

9 QUALYS INC., Re: Dkt. No. 194, 197 10 Defendant.

11 12 Before the Court is Defendant Qualys Inc. renewed motion to strike portions of Dr. Nenad 13 Medvidovic’s expert report proffered on behalf of Plaintiff Finjan LLC. (Dkt. No. 194 (“Mot.”).)1 14 Qualys seeks to strike Dr. Medvidovic’s theory that the accused products “receiv[e] an incoming 15 stream of program code,” as required by the asserted U.S. Patent No. 8,225,408 (“’408 Patent”), 16 because the theory was not disclosed in Finjan’s infringement contentions. The Court previously 17 denied the motion on this ground, without prejudice to renewal, for lack of clear explanation. (See 18 Dkt. No. 188 (“Order”) at 7 & n.5.) Qualys now clarifies as follows: 19 Finjan accuses vulnerability management features in Qualys’ Cloud Platform. (Dkt. No. 20 194-2 (“Medvidovic Report”) ¶¶ 87-90.) In its infringement contentions, Finjan stated that the 21 accused products “receiv[e] . . . an incoming stream of program code” when a node in the cloud 22 computing environment “receives content based on a client device requesting the content from a 23 source computer, such as the Internet.” (Dkt. No. 158-6 (“Contentions”) at 2.) In his report, Dr. 24 Medvidovic states that the accused products do the same when “collect[ing] data from various 25 endpoints in the network” by “initiating a network transaction, and receiving a response to that 26

27 1 The Court finds the motion appropriate for resolution without oral argument and the ] transaction.” (Medvidovic Report §/ 184-96.) In other words, Finjan shifted its theory from a 2 middleman scanner that passively monitors ongoing traffic to a proactive scanner that initiates 3 transactions to detect vulnerabilities. 4 This is a new theory, and the Court GRANTS the renewed motion to strike. See Looksmart 5 Group, Inc. v. Microsoft Corp., 386 F. Supp. 3d 1222, 1227 (N.D. Cal. 2019). Although all data 6 network is presumably involved in some client-server interactions, Qualys was entitled to 7 know Finjan’s precise theory for how the products receive code.” Finjan’s main argument in 8 response—that the claims do not require client requests—misses the mark: the claims may not 9 require them, but the contentions suggest that’s how the products perform the limitation. As such, 10 paragraphs 184-96 of the Medvidovic report, which advance this new theory, are struck. 11 This Order terminates docket numbers 194 and 197. 12

2B

14 IT Is SO ORDERED.

15 16 ] Dated: June 3, 2021 YVONNE GONZALEZ ROGE 7 UNITED STATES DISTRICT COURT JUDGE

18 19 20 21 22 23 24 25 %6 ? Both parties submit extrinsic evidence about the accused products’ operation. The Court does not consider it here and makes no factual determination on that issue. This Order is based 97 solely on a fair reading of the contentions compared to the expert report. 28 > The related motion to seal (Dkt. No. 197) is DENIED as the party designating the material as confidential does not seek to seal. (See Dkt. No. 199.)