Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 1 of 16
`
`
`
`PAUL ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`AUSTIN MANES (State Bar No. 284065)
`amanes@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`FINJAN, INC., a Delaware Corporation,
`
`
`Plaintiff,
`
`SAN FRANCISCO DIVISION
`
`Case No.: 3:17-cv-05659-WHA
`
`PLAINTIFF FINJAN, INC.’S ANSWER
`TO DEFENDANT JUNIPER NETWORKS,
`INC.’S COUNTERCLAIMS 1-6
`
`DEMAND FOR JURY TRIAL
`
`
`
`
`
`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`
`v.
`
`Defendant.
`
`
`
`____________________________________________________________________________________
`FINJAN, INC.’S ANSWER TO JUNIPER
`CASE NO. 3:17-cv-05659-WHA
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 2 of 16
`
`
`
`
`
`Plaintiff and Counterclaim-Defendant Finjan, Inc. (“Plaintiff” or “Finjan”) hereby answers
`
`Counterclaims 1-6 by Defendant and Counterclaim-Plaintiff Juniper Networks, Inc. (“Juniper” or
`
`“Defendant”) set forth in Defendant’s Answer to Finjan’s Second Amended Complaint for Patent
`
`Infringement and Counter-claims filed on August 10, 2018 (the “Counterclaims”) (Dkt. 179 at 23-29)
`
`as set forth below.
`
`JUNIPER’S COUNTERCLAIMS
`
`
`
`Finjan admits that Juniper alleges the following Counterclaims:
`
`THE PARTIES
`
`163. Admitted.
`
`164. Admitted.
`
`165. Admitted.
`
`JURISDICTION AND VENUE
`
`166. Finjan admits that this action arises under the Patent Act, 35 U.S.C. § 1 et seq. and that
`
`there exists an actual and justiciable controversy between the parties regarding infringement of the
`
`patents-in-suit. To the extent not expressly admitted, Finjan denies the allegations in this paragraph of
`
`the Counterclaims.
`
`167. Finjan admits that this Court has subject matter jurisdiction over this action pursuant to
`
`28 U.S.C. §§ 1331 and 1338. To the extent not expressly admitted, Finjan denies the allegations in
`
`this paragraph of the Counterclaims.
`
`168. Finjan admits that this Court has personal jurisdiction over Finjan. To the extent not
`
`expressly admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`169. Finjan admits that venue is proper in this District. To the extent not expressly
`
`admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`1
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 3 of 16
`
`
`
`BACKGROUND
`
`170. Finjan admits that Juniper purports to seek a declaratory judgment that the patents-in-
`
`suit are invalid, not infringed, and unenforceable. To the extent not expressly admitted, Finjan denies
`
`the allegations in this paragraph of the Counterclaims.
`
`171. Admitted.
`
`172. Finjan admits that Finjan filed a complaint alleging that Juniper infringed the Patents-
`
`in-Suit. Finjan admits that Juniper has purported to deny that it infringes a valid and enforceable
`
`patent. To the extent not expressly admitted, Finjan denies the allegations in this paragraph of the
`
`Counterclaims.
`
`173. Finjan admits that on May 18, 2018 Finjan filed a First Amended Complaint alleging
`
`that Juniper infringed the original Patents-in-Suit. Finjan admits that Juniper purported to deny that it
`
`infringes a valid and enforceable patent. To the extent not expressly admitted, Finjan denies the
`
`allegations in this paragraph of the Counterclaims.
`
`174. Finjan admits that on July 27, 2018 Finjan filed a Second Amended Complaint alleging
`
`that Juniper infringes the Patents-in-Suit. Finjan admits that Juniper purports to deny that it infringes
`
`a valid and enforceable patent. To the extent not expressly admitted, Finjan denies the allegations in
`
`this paragraph of the Counterclaims.
`
`FIRST COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement of the Patents-in-Suit)
`
`175. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`176. Finjan admits that its complaint identified that Juniper infringed each of the patents-in-
`
`suit. To the extent not expressly admitted, Finjan denies the allegations in this paragraph of the
`
`Counterclaims.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`2
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 4 of 16
`
`
`
`177. Finjan admits that it Juniper purports that it does not infringe the patents-in-suit. To
`
`the extent not expressly admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`178. Admitted.
`
`179. Finjan admits that Juniper purports to seek a declaratory judgment that it is not
`
`infringing any valid and enforceable claim of the patents-in-suit. To the extent not expressly
`
`admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`SECOND COUNTERCLAIM
`(Declaratory Judgment of Invalidity of the Patents-in-Suit)
`
`180. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`181. Admitted.
`
`182. Finjan admits that Juniper purports that the patents-in-suit are invalid. To the extent
`
`not expressly admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`183. Admitted.
`
`184. Finjan admits that Juniper purports to seek a declaratory judgment that the patents-in-
`
`suit are invalid. To the extent not expressly admitted, Finjan denies the remaining allegations in
`
`paragraph 234 of the Counterclaims.
`
`THIRD COUNTERCLAIM
`(Declaratory Judgment of Unenforceability for Prosecution Laches of the ‘926, ‘633, ‘154,
`‘494, and ‘731 Patents)
`
`185. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`186. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`3
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 5 of 16
`
`
`
`187. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`188. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`189. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`190. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`191. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`192. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`193. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`194. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`195. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`196. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`FOURTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ‘494 Patent for Inequitable Conduct)
`
`197. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`4
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 6 of 16
`
`
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`198. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`199. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`200. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`201. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`202. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`203. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`204. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`205. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`206. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`207. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`208. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`5
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 7 of 16
`
`
`
`209. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`210. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`211. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`212. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`213. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`214. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`FIFTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ’154 Patent for Inequitable Conduct)
`
`215. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`216. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`217. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`218. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`6
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 8 of 16
`
`
`
`219. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`220. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`221. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`222. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`223. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`224. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`225. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`226. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`227. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`228. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`229. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`7
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 9 of 16
`
`
`
`230. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`231. The Court entered an Order striking this counterclaim; on that basis, Finjan denies the
`
`allegations in this paragraph as moot.
`
`SIXTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ‘154, ‘633, ‘926, and ‘494 Patents
`for Unclean Hands)
`
`232. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`233. Admitted.
`
`234. Finjan admits that it Juniper purports that the patents-in-suit are unenforceable. To the
`
`extent not expressly admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`235. The allegations in paragraph 235 constitute conclusions of law or legal argument to
`
`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
`
`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
`
`Counterclaims.
`
`236. Denied.
`
`237. Finjan admits that it filed the application for the ‘633 Patent on June 22, 2005. To the
`
`extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
`
`Counterclaims.
`
`238. Finjan admits that the ‘633 Patent claims priority to U.S. Patent No. 6,804, 780 (“the
`
`‘780 Patent”), the application for which was filed on March 30, 2000. To the extent not expressly
`
`admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`8
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 10 of 16
`
`
`
`239. Finjan admits that the ‘633 Patent issued on January 12, 2010, the USPTO issued the
`
`‘633 Patent. To the extent not expressly admitted herein, Finjan denies the allegations in this
`
`paragraph of the Counterclaims.
`
`240. Finjan admits that on October 7, 2013, a third-party filed an ex parte reexamination against
`
`the ‘633 Patent, which was assigned Reexamination Control No. 90/013,016. To the extent not expressly
`
`admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`241. Finjan admits that the USPTO issued an office action for the ‘633 Patent relying on Ji
`
`and Golan. To the extent not expressly admitted herein, Finjan denies the allegations in this
`
`paragraph of the Counterclaims.
`
`242. Finjan admits that on February 19, 2014, Ms. Bey filed a “Petition to Accept
`
`Unintentionally Delayed Priority Claim Under 37 C.F.R. § 1.78” in which she represented that “The
`
`entire delay between the date a correctly worded benefit claim was due under paragraph (a)(5)(ii) of
`
`37 C.F.R. § 1.78 and the date the correctly worded benefit claim was filed was unintentional.” The
`
`remaining allegations in this paragraph constitute conclusions of law or legal argument to which no
`
`responsive pleading is necessary. To the extent a responsive pleading is necessary, and to the extent
`
`not expressly admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`243. Denied.
`
`244. Admitted.
`
`245. Admitted.
`
`246. Denied.
`
`247. Admitted.
`
`248. Finjan admits that on May 22, 2015, the USPTO issued a final office action in ex parte
`
`reexamination no. 90/013,016, which stated that the claims under examination “are considered to not
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`9
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 11 of 16
`
`
`
`be adequately supported by the disclosure of the 6,092,194 and 6,167,520 patents....” The remaining
`
`allegations in this paragraph constitute conclusions of law or legal argument to which no responsive
`
`pleading is necessary. To the extent a responsive pleading is necessary, and to the extent not
`
`expressly admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
`
`249. Finjan admits that on May 17, 2001, Finjan’s representatives filed a patent application
`
`on behalf of Finjan that would ultimately mature into U.S. Patent No. 7,058,822 (“the ‘822 Patent”).
`
`The remaining allegations in this paragraph constitute conclusions of law or legal argument to which
`
`no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to the
`
`extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
`
`Counterclaims.
`
`250. Admitted.
`
`251. Finjan admits that the ‘822 Patent issued on June 6, 2006. To the extent a responsive
`
`pleading is necessary, and to the extent not expressly admitted herein, Finjan denies the allegations in
`
`this paragraph of the Counterclaims.
`
`252. Admitted.
`
`253. Finjan admits that the USPTO instituted a ex parte reexamination of the ‘822 Patent on
`
`December 6, 2013, which utilized U.S. Patent No. 6,058,482 (“Liu”), filed May 22, 1998, and U.S. Patent
`
`No. 5,974,549 (“Golan”), filed March 27 1997. To the extent a responsive pleading is necessary, and to
`
`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
`
`Counterclaims.
`
`254. Finjan admits that on March 6, 2014, Ms. Bey filed a “Petition To Accept
`
`Unintentionally Delayed Priority Claim Under 37 C.F.R. § 1.78,” which sought to add claims of
`
`priority to U.S. Patent No. 6,092,194 (“the ‘194 Patent”), filed November 6, 1997, and U.S. Patent
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`10
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 12 of 16
`
`
`
`No. 6,167,520 (“the ‘520 Patent”), filed January 29, 1997, and represented: “The entire delay between
`
`the date a correctly worded benefit claim...and the date the correctly worded benefit claim was filed
`
`was unintentional.” The remaining allegations in this paragraph constitute conclusions of law or legal
`
`argument to which no responsive pleading is necessary. To the extent a responsive pleading is
`
`necessary, and to the extent not expressly admitted herein, Finjan denies the allegations in this
`
`paragraph of the Counterclaims.
`
`255. Denied.
`
`256. Finjan admits that in its “Decision Granting Petition To Accept Unintentionally
`
`Delayed Priority Claim Under 37 C.F.R. § 1.78(e),” on September 8, 2014, the USPTO issued a final
`
`office action in ex parte reexamination no. 90/013,017, which stated: “The priority documents US
`
`Patent[s] 6,092,194 and 6,167,520 do not describe…” The remaining allegations in this paragraph
`
`constitute conclusions of law or legal argument to which no responsive pleading is necessary. To the
`
`extent a responsive pleading is necessary, and to the extent not expressly admitted herein, Finjan
`
`denies the allegations in this paragraph of the Counterclaims.
`
`257. Finjan admits that the ‘494 and ‘926 Patents include the ‘822 Patent in their chain or
`
`priority. The remaining allegations in this paragraph constitute conclusions of law or legal argument
`
`to which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
`
`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
`
`Counterclaims.
`
`258. Denied.
`
`259. Finjan admits that an actual and justiciable controversy exists between Finjan and
`
`Juniper regarding infringement of the patents-in-suit. To the extent not expressly admitted, Finjan
`
`denies the remaining allegations in paragraph 281 of the Counterclaims.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`11
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 13 of 16
`
`
`
`260. Denied.
`
`PRAYER FOR RELIEF ON JUNIPER’S COMPLAINT
`
`Finjan denies that Juniper is entitled to any relief, and specifically denies the allegations and
`
`requests for relief set forth in paragraphs A-F under the heading “PRAYER FOR RELIEF ON
`
`JUNIPER’S COMPLAINT” in the Counterclaims.
`
`FINJAN’S AFFIRMATIVE DEFENSES
`
`
`
`Without admitting or acknowledging that it bears the burden of proof as to any of them, and
`
`without waiver, limitation or prejudice, Finjan hereby asserts the following affirmative defenses:
`
`FINJAN’S FIRST AFFIRMATIVE DEFENSE
`(Failure to State Claim)
`
`1.
`
`Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`2.
`
`Counterclaims 1-6 fail to state a cause of action upon which relief may be granted.
`
`Counterclaims 1-2 are conclusory and fail to allege any facts to support the assertions of non-
`
`infringement or invalidity, and thus they fail to provide fair notice of the basis for the claims.
`
`3.
`
`Counterclaims 3-6 each fail to state plausible claims upon which relief may be granted,
`
`as none of these Counterclaims, taking all factual allegations as true and ignoring the unsupported
`
`legal conclusions, state sufficient grounds to find that any of the patent-in-suit are unenforceable. The
`
`Counterclaims are deficient in many respects, including regarding purported allegations of deceit
`
`before the Patent and Trademark Office (“PTO”) and there is no allegation to support that the “single
`
`most reasonable inference” of the alleged facts is an intent to deceive the PTO. Therefore, there is no
`
`proper claim for declaratory relief and Juniper’s Counterclaims 1-6 fail to state a claim. Further, the
`
`Court issued an order striking Counterclaims 3-5, so those Counterclaims are moot.
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`12
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 14 of 16
`
`
`
`4.
`
`Counterclaim 4 fails to state a plausible claim because there is no identification of facts
`
`to support that “the single most reasonable inference” of the alleged facts is an intent to deceived the
`
`PTO, much less sufficient grounds to assert deceit before the PTO, given the undisputed evidence,
`
`including the fact that Shlomo Touboul’s affidavit was corroborated by a contemporaneous document.
`
`5.
`
`Counterclaims 3 and 6 further fail to state plausible claim upon which relief may be
`
`granted because unenforceability for unclean hands and prosecution laches are affirmative defenses
`
`and are not stand alone claims, such that they cannot be pled as counterclaims.
`
`FINJAN’S SECOND AFFIRMATIVE DEFENSE
`(Good Faith)
`
`6.
`
`Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`7.
`
`Counterclaims 3-6 are barred, in whole or in part, because Finjan’s actions were taken
`
`with due diligence, in good faith, with the absence of malicious intent, and constituted and constitute
`
`lawful, proper, and justified means to accomplish legitimate business objectives.
`
`FINJAN’S THIRD AFFIRMATIVE DEFENSE
`(Unclean Hands)
`
`8.
`
`Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`9.
`
`10.
`
`Counterclaims 1-6 are barred, in whole or in part, by the doctrine of unclean hands.
`
`Juniper is also barred by the doctrine of unclean hands from asserting Counterclaims 3-
`
`6, as each of these Counterclaims seeks equitable relief based on Finjan’s purported acts before the
`
`PTO. Juniper cannot seek such equitable relief when its own conduct in this action and in relation to
`
`these patents has been inequitable. Juniper knew that it infringed Finjan’s patents and attempted to
`
`negotiate in bad faith with Finjan for a license. One month after Finjan sued PAN, Juniper offered to
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`13
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 15 of 16
`
`
`
`“collaborate” with Finjan by selling Finjan “valuable” information on PAN’s confidential litigation
`
`strategy in exchange for a release from Finjan. Juniper’s proposal was an attempt to have Finjan
`
`agree to interfere with any actual or potential relationship that Juniper had with PAN relating to any
`
`exchange of information related to PAN’s confidential litigation strategy, which Finjan refused to do.
`
`Juniper’s current denials of its infringement and the validity of the patents-in-suit are made in bad
`
`faith. Given Juniper’s inequitable conduct and bad faith, Juniper may not seek equitable relief from
`
`infringement on any grounds, including on purported inequitable conduct or delay before the PTO.
`
`FINJAN’S FOURTH AFFIRMATIVE DEFENSE
`(Equitable Estoppel)
`
`11.
`
`Finjan realleges and incorporates by reference the allegations set forth in its Complaint
`
`and the preceding paragraphs of this Answer as though fully set forth herein.
`
`12.
`
`Counterclaims 1-6 are barred, in whole or in part, by the doctrine of equitable estoppel.
`
`The bases for this defense include the foregoing allegations.
`
`*
`
`*
`
`*
`
`
`
`Finjan’s investigation of its defenses is ongoing. Finjan reserves all affirmative defenses
`
`under Rule 8(c) of the Federal Rules of Civil Procedure, the Patent Laws of the United States, and any
`
`other defenses at law or in equity that may exist now or that may be available in the future based on
`
`discovery and further factual investigation in this action.
`
`FINJAN’S PRAYER FOR RELIEF
`
`
`
`
`
`
`
`WHEREFORE, Finjan prays for relief against the Counterclaimant as follows:
`
`A.
`
`B.
`
`That each of the Counterclaims be dismissed with prejudice;
`
`For an entry of judgment that Juniper is not entitled to the relief sought, or any other
`
`relief, on the Counterclaims;
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`14
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-05659-WHA Document 192 Filed 08/31/18 Page 16 of 16
`
`
`
`
`
`
`
`suit;
`
`C.
`
`D.
`
`That the Court award Finjan the relief sought in its Complaint;
`
`For an entry of judgment declaring that Juniper infringes all claims of the patents-in-
`
`
`
`E.
`
`For an entry of judgment declaring that each and every claim of the patents-in-suit is
`
`valid and enforceable;
`
`
`
`G.
`
`For a finding that this case is “exceptional” and an award to Finjan of its costs and
`
`reasonable attorney’s fees, as provided by 35 U.S.C. § 285; and
`
`
`
`H.
`
`That Finjan be granted all further and other relief as the Court may deem proper and
`
`just.
`
`
`
`
`
`DATED: August 31, 2018
`
`Respectfully submitted,
`
`
`By: /s/ Austin Manes
`
`
`Paul J. Andre (State Bar. No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`Kristopher Kastens (State Bar No. 254797)
`Austin Manes (State Bar No. 284065)
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`kkastens@kramerlevin.com
`amanes@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`
`FINJAN, INC.’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`15
`
`CASE NO. 3:17-cv-05659-WHA
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`