TENTATIVE RULINGS REGARDING MOTIONS SET FOR HEARING ON MAY 11, 2016

WILLIAM H. ORRICK, District Judge.

To aid the parties in preparing for tomorrow's hearing, below are my tentative rulings, and some questions, on the various motions on calendar. We will take up each motion separately in the order addressed below, with the moving party speaking first. Each side will have sixty minutes, total, for argument, and may allocate that time as it sees fit. This time limit should incentivize the parties to be strategic in choosing the issues to argue.

I. FINJAN'S MOTION TO STRIKE

Sophos agrees to withdraw all lack-of-written-description and indefiniteness theories from Dr. Cohen's report, the invalidity theories for the '494 patent based on Ji '348, and all invalidity theories based on the ICD reference. Accordingly, Finjan's motion to strike these portions of Dr. Cohen's report is GRANTED. I am inclined to rule on the remainder of the motion to strike as follows:

A. Allegedly Undisclosed Prior Art References

1. Combinations of SWEEP/InterCheck

GRANT IN PART and DENY IN PART. I am inclined to agree with Sophos that the allegedly undisclosed combinations were adequately disclosed in Sophos's invalidity contentions by the citations to the Delaware trial transcript. However, Sophos may not assert multiple combinations of SWEEP/InterCheck as invalidating prior art in this case — it must select one combination as the allegedly invalidating combination. Then, if appropriate, it may be able to introduce evidence of the other combinations to demonstrate the functionality of the allegedly invalidating combination. (It is not clear to me why Sophos would want to introduce such evidence — if all the combinations of SWEEP/InterCheck are materially identical, then it would seem that Sophos would be content to rely on any one of the combinations while forgoing the rest.)

Which combination of SWEEP/InterCheck does Sophos want to assert as invalidating prior art? Does it want to rely on the combination from the Delaware action (SWEEP-2.72 & InterCheck-2.11)? It did not identify this combination in its June 2, 2015 letter to Finjan. Why not? Also, Dr. Cohen does not identify SWEEP-2.72 & InterCheck-2.11 as a combination of SWEEP/InterCheck "in operation." Cohen Rpt. at 85, 103. What is the significance of this?

DENY.

DENY.

DENY.

GRANT to the extent that the references are being asserted as invalidating prior art references. DENY to the extent that the references are being used merely as background material.

B. Allegedly Undisclosed Invalidity Theories

What exactly is the relationship between VDL, VDL.C, VIRIDENT.DAT and VIRPATS.SB? Assuming the relationship is as Sophos describes it, I am inclined to DENY this motion.

Under the Patent Local Rules, is a party permitted to rely on portions of a prior art reference that were not specifically identified in the party's invalidity contentions, if the portions fit within the scope of a theory that was identified in the invalidity contentions? My understanding is that this is permissible under the Patent Local Rules, and I am inclined to DENY this motion on this ground. But there is some contrary authority in this district. See Largan Precision Co, Ltd. v. Genius Elec. Optical Co., No. 13-cv-02502-JD, 2014 WL 6882275, at *6 (N.D. Cal. Dec. 5, 2014) ("The only portions of the . . . reference cited with respect to claim 8 . . . were the Abstract, 5:60-62, 6:19-20, 27:25-28:67, and Fig. 29. But [defendant's expert] now relies on other portions of the . . . reference to argue that it discloses or renders obvious . . . claim 8 . . . The portions of [the] expert report that do so are stricken."); MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-cv-05341-YGR, 2014 WL 690161, at *3-4 (N.D. Cal. Feb. 21, 2014) (striking the defendant's expert's reliance on a particular figure from a patent to show obviousness, where the defendant's invalidity contentions identified certain portions of the patent as disclosing the relevant claim limitations, but not the particular figure). Are there other cases from this district that directly address this issue?

GRANT.

DENY.

GRANT.

DENY.

DENY.

GRANT.

II. SOPHOS'S MOTION TO STRIKE

A. Source Code Tables

GRANTED IN PART and DENIED IN PART. At trial, Drs. Cole and Mitzenmacher may not rely on the source code tables to articulate new infringement theories that are not disclosed in their reports. They may rely on those portions of the tables that are specifically identified in their reports.

B. Allegedly New Infringement Theories

DENY.

DENY AS MOOT, in light of the tentative GRANT of Sophos's motion for summary judgment of noninfringement of the 918 patent.

DENY.

DENY.

DENY AS MOOT, in light of the tentative GRANT of Sophos's motion for summary judgment of noninfringement of the 289 patent.

DENY.

III. SOPHOS'S MOTION FOR PROTECTIVE ORDER

GRANT to the extent that Sophos seeks amendment of its admissions to conform to the responses served on December 2, 2015. See Fed. R. Civ. P. 36(b). DENY to the extent that Sophos seeks a protective order pursuant to Federal Rules of Civil Procedure 26, 33, 34, and 36. To the extent that Finjan's opposition brief can be construed as a request for sanctions, DENY the request.

IV. JOINT LETTER

DENY Finjan's request to preclude Lammer from testifying at trial. In light of Dr. Hruska's medical condition, and in line Finjan's initial proposal, Sophos has until one month before trial to inform Finjan whether it will call Lammer as a witness. If it will, then Finjan must have an opportunity to depose Lammer. If, due to Dr. Hruska's medical condition, Sophos intends for Dr. Hruska to testify on certain topics regarding "the history of Sophos and its products" and for Lammer to testify on others, then Sophos must also disclose to Finjan the specific topics each witness will cover. Lammer and Dr. Hruska will not be allowed to testify on the same topics at trial.

I am inclined to GRANT Finjan's request to exclude 1197SOPHOS_0179868-69 and DENY its request to exclude 1197SOPHOS_01749964-65. However, it is not clear to me why this information was not produced earlier, in response to the May/October 2014 requests for production identified by Finjan in the joint letter. See Dkt. No. 146 at 3. Does Sophos dispute that the information is responsive to those requests?

V. SOPHOS'S MOTION FOR PARTIAL SUMMARY JUDGMENT

A. Collateral Estoppel

Which combination of SWEEP/InterCheck does Sophos want to assert as invalidating prior art? It appears that each of Sophos's collateral estoppel arguments will be significantly impacted by the answer to this question. I am inclined to find that Sophos may still rely on a collateral estoppel defense despite failing to plead it, but does Finjan know of any cases holding that a collateral estoppel defense was waived in circumstances similar to those at issue here?

B. Method Claims

DENY.

C. Sophos Live Cloud Service/SophosLabs

DENY, based at least on the parties' dispute over the location of the SXL servers and whether the SXL servers are properly characterized as part of the accused service.

D. '289 Patent

GRANT, based on Finjan's failure to present sufficient evidence that the accused products transmit the "modified content . . . to the computer." Even assuming that the preamble of claim 22 of the '289 patent is not limiting, I agree with Sophos that this limitation requires that the modified content be transmitted to the computer to which the content was originally destined.

E. '844 Patent

DENY, based at least on the parties' dispute over the meaning of "web clients." Should this dispute be resolved through supplemental briefing followed by a claim construction ruling? Or is it a question for the jury?

F. '918 Patent

GRANT, based on Finjan's failure to present sufficient evidence of "executable wrapper code" in the accused products.

VI. FINJAN'S MOTION FOR SUMMARY JUDGMENT

A. Infringement of Claim 22 of the '926 Patent by the UTM Products

DENY, based at least on the parties' dispute over the presence of the "list of suspicious computer operations" limitation in the UTM Products.

B. Infringement of Claim 10 of the '494 Patent by Sophos Live Cloud Service

DENY, also based at least on the parties' dispute over the presence of the "list of suspicious computer operations" limitation in Sophos Live Cloud Service.

C. Validity of the '154, '494, '780, '844, and '926 patents over SWEEP/InterCheck

See note above regarding the collateral estoppel arguments in Sophos's motion for partial summary judgment.

D. Public Accessibility of the MIMEsweeper, Nachenberg, and ICD Publications

DENY AS MOOT with respect to the ICD reference, in light of Sophos's agreement to withdraw the reference.

GRANT with respect to the MIMEsweeper Administrator Guide, because the asserted prior art reference in this case is the MIMEsweeper Administrator Guide, not the MIMEsweeper product at issue in the Delaware action, and Sophos cites no evidence of the public accessibility of the MIMEsweeper Administrator Guide.

GRANT with respect to Nachenberg, as Sophos has not presented sufficient evidence of public accessibility.