Opinion
Case No. 13-cv-05808-HSG
02-16-2016
FINJAN, INC., Plaintiff, v. PROOFPOINT, INC., et al., Defendants.
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS' MOTION TO STRIKE PORTIONS OF PLAINTIFF'S EXPERT REPORTS
Re: Dkt. No. 209
Pending before the Court is Proofpoint, Inc. and Armorize Technologies, Inc.'s ("Defendants") motion to strike portions of Plaintiff Finjan, Inc.'s expert reports. Dkt. No. 209. Defendants contend that the expert reports identify newly accused products and infringement theories. For the reasons explained below, the Court GRANTS IN PART AND DENIES IN PART Defendants' motion to strike.
Given that the parties are familiar with the factual and procedural background of this action, the Court refers the unfamiliar reader to the Court's earlier orders, see Dkt. Nos. 138, 271, and repeats facts here only as necessary.
I. LEGAL STANDARD
The Patent Local Rules state that a plaintiff must provide:
(b) Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality ("Accused Instrumentality") of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known. Each method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;
(b) A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by
35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function.See Patent L.R. 3-1(b), (e) (emphases added).
"[A] party may not use an expert report to introduce new infringement theories, new infringing instrumentalities, new invalidity theories, or new prior art references not disclosed in the parties' infringement contentions or invalidity contentions." ASUS Computer Int'l v. Round Rock Research, LLC, No. 12-CV-02099 JST (NC), 2014 WL 1463609, at *1 (N.D. Cal. Apr. 11, 2014). "The scope of contentions and expert reports are not, however, coextensive." Apple Inc. v. Samsung Elecs. Co., No. 5:12-CV-0630-LHK-PSG, 2014 WL 173409, at *1 (N.D. Cal. Jan. 9, 2014). "Infringement contentions need not disclose specific evidence, whereas expert reports must include a complete statement of the expert's opinions, the basis and reasons for them, and any data or other information considered when forming them." Digital Reg of Texas, LLC v. Adobe Sys. Inc., No. CV 12-01971-CW (KAW), 2014 WL 1653131, at *2 (N.D. Cal. Apr. 24, 2014) (internal quotation marks omitted). "The threshold question in deciding whether to strike an expert report is whether the expert has permissibly specified the application of a disclosed theory or impermissibly substituted a new theory altogether." Id.
II. ANALYSIS
A. Newly Accused Products: Dr. Cole and Dr. Mitzenmacher's Identification of Additional Accused Products is Improper
Defendants contend that Plaintiff accused Defendants' TAP, Enterprise Protection, and Essential products of infringing the '086, '154, and '918 Patents for the first time in the expert reports. Dkt. No. 209 at 10.
Although Plaintiff identified TAP, Enterprise Protection, and Essential products for other patents in its supplemental infringement contentions, Plaintiff did not identify these products for the '086, '154, and '918 patents. For these three patents, Plaintiff identified only two products: Malvertising Protection (also known as SafeImpression) and HackAlert Anti-Malware (also known as HackAlert Suite). Dkt. No. 209, Ex. D at 3-4. It is not enough that Plaintiff identified these products for other patents. See ASUS, 2014 WL 1463609, at *6 (holding that the contentions must be "as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known"). Indeed, Plaintiff's identification of TAP, Enterprise Protection, and Essential for other patents (and not these) supports a reasonable inference that Plaintiff intended to limit its accusation for the '086, '154, and '918 Patents to HackAlert and SafeImpression.
Plaintiff argues that and that Dkt. No. 246 at 6-7. Plaintiff contends that the . Id. at 5-6.
The Court finds Plaintiff's explanation internally inconsistent. The argument that Defendants merely and that it is "the exact same product" is undermined by the explanation that . See Dkt. No. 288 at 16-17. If was "incorporated" into an existing product (as both parties agree and as the depositions confirm), then that combination has created a new, separate product. See e.g., Dkt. No. 246, Ex. 12 at 11-12. Plaintiff cannot accuse a new product at this late stage in the proceedings. See Adobe Sys. Inc. v. Wowza Media Sys., No. 11-CV-02243-JST, 2014 WL 709865, at *14 (N.D. Cal. Feb. 23, 2014) ("It is insufficient for Adobe to argue at this stage of the litigation, particularly without pointing to any evidence, that RTMP Enhanced is equivalent to RTMPe. Adobe was required by the local rules to make that notion clear in the contentions."); ASUS, 2014 WL 1463609, at *6 (N.D. Cal. Apr. 11, 2014) (holding "that identifying a product that has a different name, but which [defendant] claims is substantially similar to a named product, is not sufficient identification under the Local Rules").
The Court is unpersuaded by Plaintiff's argument that it could not have incorporated this change into its supplemental infringement contentions because Defendants did not provide the necessary discovery until months after Plaintiff served its contentions. Dkt. No. 246 at 5. At the motion hearing, counsel confirmed that at the time Plaintiff had known about the for a "couple of months," Dkt. No. 288 at 17-18. If Plaintiff wanted to accuse TAP, Enterprise Protection, and Essentials products, Plaintiff should have moved for leave to amend as provided by the local rules. See Patent L.R. 3-6.
Because Plaintiff has failed to satisfy the local rules' requirement that Plaintiff specifically identify the accused products for each claim, the Court GRANTS Defendants' motion to strike the references to these products for the'086, '154, and '918 patents from the expert reports.
B. Dr. Layne-Farrar's Reliance on Previously Unidentified Accused Products and Infringement Theories
Defendants further argue that Dr. Layne-Farrar improperly included TAP sales in her calculation of damages for the '086, '154, and '918 patents, because she was only entitled to include damages based on HackAlert and Malvertising Protection sales. Dkt. No. 209 at 13.
Although the Court finds that TAP and Enterprise Protection were not properly disclosed in the supplemental infringement contentions, that conclusion does not necessitate striking these products from this expert's report. The bases for damages calculations do not pertain to the issue at hand: whether the infringement contentions provided Defendants adequate notice as to the theories of infringement under the local rules. Accordingly, the Court DENIES Defendants' motion to strike TAP sales from Dr. Layne-Farrar's calculation of damages.
C. New Infringement Theories
Dr. Mitzenmacher provides infringement opinions regarding the '305, '086, '154, and '408 Patents, and Dr. Cole provides opinions as to the alleged infringement of the '844, '822, '633, and '918 Patents. Defendants allege that these opinions include previously undisclosed infringement theories. Dkt. No. 209 at 13. The Court finds that some, but not all, of the theories in Plaintiff's expert report should be stricken.
1. The '154 Patent - Dr. Mitzenmacher's opinion as to "rewriting URLs" and " "
Dr. Mitzenmacher's expert report includes the theory that Proofpoint's URL rewriting function and the infringe the '154 Patent. Defendants argue that Plaintiff's infringement contentions did not include either theory. Dkt. No. 209 at 14, Ex. G ¶¶ 1087, 1088, 1137, 1177.
According to Plaintiff, both of these theories relate to and the scanning of URLs. Plaintiff contends that Dr. Mitzenmacher identified the as a tool that looks for Dkt. No. 246 at 10. It argues that this was not a change in Plaintiff's theory and points to the following in its supplemental infringement contentions: Dkt. No. 246, Ex. 25 at 6. The Court is not convinced. This general statement does not encompass Dr. Mitzenmacher's theory. Instead of expanding on a previously disclosed theory, the expert report describes the use of a . Dkt. No. 209, Ex. G at ¶ 1071. The expert report explains how the . Id. It further states that " ." Id. at ¶ 1072. The contentions for the '154 Patent did not describe such a theory. Accordingly, the Court GRANTS the motion to strike as to these references.
Plaintiff further contends that the rewriting of URLs is not a new theory given that the contentions stated: Dkt. No. 246, Ex. 25 at 6-7. Again, the Court is not persuaded. Although the contentions may describe a process by which , the concept of rewriting the URL is a new, previously undisclosed theory. See also Dkt. No. 288 at 26-27. Because Defendants did not have notice of the theory now advanced with regard to the rewriting function, the Court GRANTS the motion to strike.
2. The '086 Patent - Dr. Mitzenmacher's opinion as to "AFRM" and " "
Defendants allege there are two undisclosed theories for the '086 Patent in Dr. Mitzenmacher's report. First, Defendants cite Dr. Mitzenmacher's opinion that the Armorize Forensic Reporting Methodology ("ARFM") report, generated in Proofpoint's products, meets limitations of the '086 Patent because . Dkt. No. 209 at 15. Defendants argue that the contentions were limited to the AFRM, .
The plain language of the supplemental infringement contentions negates Defendants' assertions. The contentions state that " ." Dkt. No. 301, Ex. K. at 16. Accordingly, the contentions expressly give notice that " ." Id. at 10 (emphases added). The theory was adequately disclosed in the infringement contentions and the expert's further explanation is proper as elaboration on the previously disclosed theory. See Apple, 2014 WL 173409, at *2. The motion is DENIED as to this concept.
Second, Defendants allege that the infringement contentions did not mention the ." Dkt. No. 209 at 15; Ex. G ¶¶ 875-77. Defendants contend that the constitutes a new, previously undisclosed theory. Dkt. No. 209 at 16.
Plaintiff's infringement contentions did not disclose the expressly. That the contentions identified is not enough. Consistent with the local rules, Plaintiff needed to assert not simply a general location, but the specific theory of infringement: namely, that a . See Ex. G ¶ 875. Plaintiff cites the following from the infringement contentions in support: Dkt. No. 208-4, Ex. K at 5 (emphasis added). Plaintiff fails to explain whether and how the cited language identifies a . Absent this explanation, Plaintiff cannot show that its contention provided the notice required under the local rules. Because the contentions do not identify explicitly and because Plaintiff does not explain how the cited language encompasses ," the Court GRANTS Defendants' motion to strike the .
3. The '408 and '305 Patents - Dr. Mitzenmacher's opinion as to " "
Defendants contend that Dr. Mitzenmacher's report discloses the following new theories for the'408 and '305 Patents: (1) , and (3) that the AFRM report is itself a parse tree. Dkt. No. 209 at 17. Although the Court finds that the first two are not new theories of infringement, the Court agrees that the latter (that the AFRM is a parse tree) was not previously disclosed and should be stricken.
First, Defendants claim that the expert report improperly discusses the , because the infringement contentions do not cite or reference . They argue that while the contentions identify source code directories for both , the contentions do not identify source code for .
The Court finds that Plaintiff's failure to identify " " by name is not dispositive. Dr. Mitzenmacher is entitled to provide further explanation and examples of a theory disclosed in Plaintiff's infringement contentions, and that is exactly what the reference to . See Apple, 2014 WL 173409, at *2. The infringement contentions state that the product Dkt. No. 301, Ex. M at 6-8. Accordingly, Defendants have been on notice that Plaintiff's theory of infringement is that See id. at 10. The expert's explanation was consistent with the disclosed theory: Dkt. No. 246, Ex. 24 ¶¶ 232, 1698. Because Defendants were on notice of the specific elements of the alleged infringing theory, the fact that a component called a " " performs the does not constitute an undisclosed theory. See Golden Bridge Tech. Inc. v. Apple, Inc., No. 5:12-CV-04882-PSG, 2014 WL 1928977, at *3 (N.D. Cal. May 14, 2014) (holding that a court must assess whether "the expert has permissibly specified the application of a disclosed theory," or whether the "expert impermissibly substituted a new theory altogether").
Second, Defendants argue that Dr. Mitzenmacher's report for the first time Dkt. No. 209 at 18. For the reasons discussed above, the Court rejects Defendants' contention. Not only does the seem to appear in the source code subdirectories, but the is simply another example of a system in the accused products that uses . Dkt. No. 246, Ex. 24 ¶ 227; see Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 WL 3640694, at *3 (N.D. Cal. June 11, 2015) (holding that an expert can elaborate on the manner of infringement, as long as the explanation "does not amount to a last-minute disclosure of a new infringement theory"). The is not a previously undisclosed theory of infringement.
Finally, Defendants contend that the expert's opinion that the AFRM Report is itself a parse tree is a new theory. The Court agrees. Although the supplemental infringement contention state this is not sufficient to give Defendants notice that the AFRM is itself a parse tree. Dkt. No. 301, Ex. N at 13. Because the contentions do not identify the AFRM as a parse tree, Defendants' motion is GRANTED as to this theory.
4. The '918 Patent - Dr. Cole's opinion as to " " and " "
Defendants argue that the infringement contentions fail to provide reasonable notice of Dr. Cole's for the '918 Patent. Defendants argue that Plaintiff's contentions disclosed : Dkt. No. 301, Ex. O at 17-18 (emphasis added). Defendants argue that the " Dkt. No. 209 at 19.
The Court finds that although the infringement contentions adequately disclosed that " " is a part of and that the , see Dkt. No. 301, Ex. O at 31, the contentions did not disclose that the Dkt. No. 209, Ex. F, ¶ 2308. The italicized portion above is not enough to constitute reasonable notice of Defendants' . Accordingly, the Court GRANTS Defendants' motion to strike as to Plaintiff's .
5. The '844 Patent - Dr. Cole's opinion as to "Generating and Linking"
Defendants allege that Dr. Cole identified new theories on how the accused products generate a Downloadable security profile and link a Downloadable security profile to the Downloadable. In particular, Defendants contest the expert's opinion that the generates a security profile using " ," see Dkt. No. 209, Ex. F at ¶¶ 199-201, 227, 673, 884, 887, 1212, 1215, and that the links a representation of a downloadable to the downloadable.
The Court rejects Defendants' argument. Defendants have failed to establish that the identification of the discloses a new theory of infringement. The contentions assert that . Dkt. No. 301, Ex. P at 9 (emphasis added) This disclosure incorporates the expert's opinion about the . That the contentions identified two examples of does not preclude the expert from providing a third example as long as the example is consistent with the previously disclosed theory. See id. at 10. Here, there was adequate notice under the local rules. See Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2011 WL 4479305, at *3 (N.D. Cal. Sept. 26, 2011) (holding that where the limiting function was disclosed in the infringement contentions, it was of no consequence that the specific file or source code was not previously disclosed). Thus, Defendants' motion to strike is DENIED.
6. The '822 and '633 Patents: Dr. Cole's opinion as to "Mobile Protection Code"
According to Defendants, Dr. Cole alleges two previously undisclosed theories relating to Mobile Protection Code, or MPC. First, Dr. Cole opines that static data such as file-type information and is the accused mobile protection code and Dkt. No. 209 at 21. Defendants contend that that this opinion should be stricken because the supplemental infringement contentions did not disclose any type of static data such as file-type information or as constituting mobile protection code. Id. Second, Defendants allege that Dr. Cole's report provides the new opinion that the limitation The Court agrees with Defendants, and GRANTS the motion to strike as to both theories.
First, the supplemental infringement contentions do not disclose that mobile protection code includes "the ' ' with the file type information." Plaintiff cites the following from the contentions: Dkt. No. 301, Ex. Q at 12 (emphasis added). Nothing in this citation, however, supports Plaintiff's argument that Dr. Cole merely "applies" a previously disclosed infringement theory. See Dkt. No. 246 at 20. Plaintiff does not explain how the above citation encompasses the infringement theory in the expert report or discloses to Defendants that MPC included " with the file type information." Absent such explanation, Plaintiff has failed to establish that it provided Defendants the requisite notice, and Defendants' motion is GRANTED.
Second, Defendants appropriately note that the supplemental infringement contentions fail to provide reasonable notice with regard to code, such as the , applied within a . Plaintiff cites the italicized language above for support. See Dkt. No. 301, Ex. Q at 12. But Dr. Cole's opinion is not limited to the basic transfer of code to the ; rather, he describes the transfer of information " " and cites the as an example of a component that is transferred to the . See Dkt. No. 246, Ex. 23, ¶ 1481. The cited contentions do not encompass such a theory: . See Oracle, 2011 WL 4479305, at *4 (holding that the report ran afoul of the local rules, where the contentions identified the accused item and identified conditions before and after the item was used, but failed to explain the processes underlying the item). Accordingly, this also constitutes a new infringement theory and is stricken.
7. The '822 and '633 Patents: Dr. Cole's opinion as to whether "Downloadable-Information Includes Executable Code"
Defendants assert that Dr. Cole's opinion as to whether downloadable information includes executable code is based on a new infringement theory. Dr. Cole opines that Proofpoint products use to determine whether the downloadable information includes executable code.
The supplemental infringement contentions state that " ." Dkt. No. 301, Ex. Q at 6. As he is entitled to do, Dr. Cole simply provides additional explanation of the detailed processes underlying this previously-disclosed function in discussing the . See Apple, 2014 WL 173409, at *2. Defendants had reasonable notice under the local rules, and the Court DENIES Defendants' motion to strike these references.
8. Dr. Cole's and Dr. Mitzenmacher's Theories for Proofpoint Enterprise Protection and the Threat Dashboard Are Not Improper
Defendants contend that Plaintiff's experts impute , arguing that these are separate products and that Plaintiff did not disclose such an imputation theory. Contrary to Defendants' argument, the Court finds that Plaintiff's contentions disclosed a theory that recognized a relationship between . Indeed, Plaintiff included screenshots of Proofpoint's product descriptions that recognized a relationship between the two products. For instance, for the '822 Patent, the screenshot states that the " " Dkt. No. 301, Ex. Q at 1; see also id. at 7; Dkt. No. 301, Ex. M at 1-3, Ex. P at 4-5.
Defendants also argue that Plaintiff's supplemental infringement contentions fail to include theories of infringement identifying the Threat Dashboard. Dkt. No. 209 at 23. Defendants contend that Plaintiff never previously explained how could be considered relevant to any of the asserted claims. Id. The Court disagrees. Because the Threat Dashboard , see Dkt. No. 246, Ex. 29 at 153, the Court finds that the experts' references to does not on its own constitute a new infringement theory. See Golden Bridge, 2014 WL 1928977, at *3.
Accordingly, the Court DENIES Defendants' motion to strike any alleged imputation of as well as the experts' reliance on the Threat Dashboard.
D. Dr. Medvidovic Reliance on Previously Undisclosed Infringement Theories
The Court GRANTS Defendants' motion to strike portions of Dr. Medvidovic's expert report that are inconsistent with this opinion. That is to say, Dr. Medvidovic may not rely on any portion of Dr. Cole and Dr. Mitzenmacher's expert reports which the Court has stricken as a new, previously undisclosed, infringing theory or product.
III. CONCLUSION
For foregoing reasons, Defendants' motion to strike is GRANTED IN PART AND DENIED IN PART. The parties are ordered to file dispositive motions within 5 days of this order.
IT IS SO ORDERED. Dated: 2/16/16
/s/_________
HAYWOOD S. GILLIAM, JR.
United States District Judge