Finjan, Inc. v. Blue Coat Systems, Inc., No. 5:2013cv03999 - Document 116 (N.D. Cal. 2014)
Court Description: ORDER GRANTING-IN-PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS by Magistrate Judge Paul Singh Grewal granting-in-part 68 (psglc2, COURT STAFF) (Filed on 10/16/2014)
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Finjan, Inc. v. Blue Coat Systems, Inc. Doc. 116 1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 United States District Court For the Northern District of California 8 SAN JOSE DIVISION 11 FINJAN, INC., a Delaware Corporation, 12 13 14 Plaintiff, v. BLUE COAT SYSTEMS, INC., a Delaware Corporation, 15 Defendant. 16 17 ) ) ) ) ) ) ) ) ) ) Case No. 5:13-cv-03999-BLF ORDER GRANTING-IN-PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS (Re: Docket No. 68) A little over a year ago, Plaintiff Finjan Inc. brought this suit against Defendant Blue Coat 18 Systems, Inc. for infringement of six of its patents. In its initial infringement contentions, Finjan 19 accused ten specific Blue Coat products and services but did not accuse all ten of infringing all six 20 patents. Instead, certain products and services were accused of infringing certain patents, but not 21 22 others. With the benefit of various Blue Coat documents revealed during discovery, Finjan now seeks leave to amend its contentions to accuse more of the Blue Coat products and services of 23 24 25 26 infringing more of the patents. Because most of the “new” information in the documents relied on by Finjan is, in fact, not so new, the court grants leave to amend to Finjan, but only in part, as set out below. 27 28 1 Case No. 5:13-cv-03999-BLF ORDER GRANTING-IN-PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS Dockets.Justia.com I. 1 2 Patent cases are hard enough—and expensive enough—when the issues in dispute are 3 fixed. When issues shift, or worse, grow in number, a case can become unmanageable for all 4 concerned. And so our court’s local patent rules “require parties to crystallize their theories of the 5 case early in litigation and to adhere to those theories once they have been disclosed.” 1 This 6 crystallization takes the form of contentions about infringement, invalidity and the like. 7 A party may amend its contentions “only by order of the Court upon a timely showing of 8 9 good cause.” 2 Good cause requires a showing both diligence and lack of prejudice to the other United States District Court For the Northern District of California 10 side. In measuring diligence, the relevant question is when the moving party could have learned an 11 amendment was necessary, not when it did. 3 If the moving party cannot establish its diligence, 12 there is “no need to consider the question of prejudice.” 4 13 Finjan is the assignee of United States Patent Nos. 6,804,780, 7,058,822, 7,647,633, 14 6,154,844, 6,965,968 and 7,418,731. Pursuant to Patent L.R. 3-1, Finjan served infringement 15 16 contentions that accuse various Blue Coat products and services as follows: 17 18 19 20 21 22 23 24 1 O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n.12 (Fed. Cir. 2006). 25 2 Patent L.R. 3-6. 26 3 27 See Google, Inc. v. Netlist, Inc., Case No. 09-4144, 2010 U.S. Dist. LEXIS 144392, at *4 (N.D. Cal. May 5, 2010). 4 28 O2 Micro Int’l Ltd., 467 F.3d at 136. 2 Case No. 5:13-cv-03999-BLF ORDER GRANTING-IN-PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS Accused Blue Coat Product 1 2 3 4 5 6 7 ProxySG Secure Web Gateway Virtual Appliance ProxyAV Content Analysis System Malware Analysis System WebPulse Service WebFilter MailThreat BLADE WebThreat BLADE FileThreat BLADE 8 ‘822 X X ‘633 X X Asserted Patent ‘968 ‘844 X X ‘780 X X X ‘731 X X X X X X X X X X X X X Over the next several months, Blue Coat produced over 100,000 pages of documents in 9 response to Finjan’s demands. These documents included functional specifications, feature design United States District Court For the Northern District of California 10 11 documents, research reports, functional and operational overviews, developer’s guides, 12 requirements documents and technical overviews. A substantial portion were marked with the 13 highest confidentiality designation under the stipulated protective order. Blue Coat also made 14 public a number of other documents describing how the accused products and services work. 15 16 Citing what it claims is new information in the disclosures, Finjan proposed that Blue Coat stipulate that Finjan may amend its contentions. Under its proposal, Finjan would amend as 17 follows: 18 19 20 21 22 23 24 • • • WebPulse Service additionally infringes claims 1-18 of the ‘780 Patent, claims 1-3 and 911 of the ‘822 Patent and claims 1-14 of the ‘633 Patent; the Content Analysis System additionally infringes claims 1-18 of the ‘780 Patent and claims 1, 4, 5, 7, 11-14, 17, 18, 20 and 22 of the ‘731 Patent; and the Malware Analysis Appliance additional infringes claims 1-18 of the ‘780 Patent, claims 1, 3-8, 11, 12, 15-17, 19, 21-23 and 41-44 of the ‘844 Patent, claims 1, 6, 7, 9, 10, 13, 23, 26, 32 and 33 of the ‘968 Patent and claims 1, 4, 5, 7, 11-12, 14, 17, 18 and 20 of the ‘731 Patent. 25 Blue Coat responded that all of the information relied on by Finjan was available to Finjan long 26 ago, and so no amendment at this stage was warranted. 27 28 3 Case No. 5:13-cv-03999-BLF ORDER GRANTING-IN-PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS Finjan then brought this motion for leave to amend. Finjan notes that it does not seek to 1 2 add any new patents, products or theories to the case. Finjan also notes that it did not delay in 3 bringing the motion and that with many months remaining before fact discovery ends, Blue Coat 4 faces no real prejudice. 5 II. 6 7 8 9 This matter was referred by the presiding judge pursuant to Civil L.R. 72-1 and the court’s June 9, 2014 case management order. 5 This referral is further authorized under 28 U.S.C. § 636(b)(1)(A). III. United States District Court For the Northern District of California 10 11 12 13 Patent L.R. 3-6 specifically identifies the “recent discovery of nonpublic information” as a circumstance demonstrating a party’s diligence in pursuing an amendment of contentions. But inherent in the reference to “recent” discovery is the notion that the same information was not 14 available in some other form at an earlier time. This is where Finjan largely falls short. 15 First, Finjan fails to identify any new information in the documents it cites suggesting 16 17 additional infringement by WebPulse Service. Pointing to the “mobile protection code” limitations 18 of the ‘822 and ‘633 patents that it contends requires “code capable of monitoring or intercepting 19 potentially malicious code,” Finjan claims that only recently did Blue Coat disclose that WebPulse 20 monitors for certain types of operations performed by malicious code. 6 But a Blue Coat document 21 publically available in 2013 explicitly taught that WebPulse includes “malware behavior scanners” 22 that “make it possible to quickly identify malicious files based on their behaviors.” This was more 23 24 25 than sufficient to put Finjan on notice of exactly what Finjan says the “mobile protection code” limitation requires. 26 5 See Docket Nos. 64, 72. 27 6 See Docket No. 70-13 at BC0077324. 28 4 Case No. 5:13-cv-03999-BLF ORDER GRANTING-IN-PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS Finjan does not dispute that Blue Coat disclosed monitoring generally well before its later 1 2 production It instead emphasizes the particular manner in which the monitoring takes place or 3 what specific operations are monitored. Even under Finjan’s preferred construction, however, the 4 limitation does not require any such manner of monitoring or the monitoring of particular 5 operations. The limitation just requires code capable of monitoring. This was plainly disclosed. 6 Second, Finjan fails to identify any new information in the documents it cites suggesting 7 8 9 additional infringement by Malware Analysis Appliance. Finjan argues that only after it served its contentions did it learn that MAA “provides an overview of the sample file or URL, along with United States District Court For the Northern District of California 10 resources and any tasks that have been run in MAG2 using the sample in either the SandBox or the 11 IntellliVM analysis environment.” 7 Finjan may be right that this is relevant to the ‘844 patent, 12 which requires generating a security profile for a downloadable. 8 But Finjan says nothing about 13 the other three patents—the ‘968 patent, ‘780 patent and the ‘731 patent—for which it seeks to add 14 infringement contentions against MAA. Even as to the ‘844 patent, publicly available documents 15 16 clearly disclose that “Hybrid Sandboxing technology [] includes traditional sandboxing and 17 intelligent virtual machines (iVMs) . . . by providing a detailed report on the sample behavior.” 9 18 The court can offer no explanation as to how this is different from what Finjan claims is new, and 19 Finjan does not even try. 20 21 Where Finjan gains traction is with its claim of new information in the documents about Content Analysis System. Here, Finjan hangs its hat on limitations in two asserted patents: 22 “policy-based cache manager” and “memory for storing a cache of digital content” in the ‘968 23 24 patent, and updating the “cache” in the ‘731 patent. An initial problem for Finjan is that while it 25 7 See Docket No. 68-23 at BC0057484. 26 8 See Docket No. 1-4 at 11. 27 9 See Docket No. 68-15 at FINJAN-BC 011765. 28 5 Case No. 5:13-cv-03999-BLF ORDER GRANTING-IN-PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS
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