Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 1 of 18
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`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
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`Attorneys for Plaintiff
`FINJAN, INC.
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`SAN FRANCISCO DIVISION
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`Case No.: 3:17-cv-05659-WHA
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`PLAINTIFF FINJAN, INC.’S ANSWER
`TO DEFENDANT JUNIPER NETWORKS,
`INC.’S FIRST AMENDED
`COUNTERCLAIMS 1-5
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`DEMAND FOR JURY TRIAL
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`v.
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`Defendant.
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 2 of 18
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`Plaintiff and Counterclaim-Defendant Finjan, Inc. (“Plaintiff” or “Finjan”) hereby answers
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`Counterclaims 1-5 filed by Defendant and Counterclaim-Plaintiff Juniper Networks, Inc. (“Juniper” or
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`“Defendant”) set forth in Defendant’s First Amended Answer to Finjan’s Second Amended
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`Complaint for Patent Infringement and Counter-claims filed on November 5, 2018 (the
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`“Counterclaims”) (Dkt. 218 at 17-31) as set forth below.
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`JUNIPER’S COUNTERCLAIMS
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`Finjan admits that Juniper alleges the following Counterclaims:
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`THE PARTIES
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`171. Admitted.
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`172. Admitted.
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`173. Admitted.
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`JURISDICTION AND VENUE
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`174. Finjan admits that this action arises under the Patent Act, 35 U.S.C. § 1 et seq. and that
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`there exists an actual and justiciable controversy between the parties regarding infringement of the
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`patents-in-suit. To the extent not expressly admitted, Finjan denies the allegations in this paragraph of
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`the Counterclaims.
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`175. Finjan admits that this Court has subject matter jurisdiction over this action pursuant to
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`28 U.S.C. §§ 1331 and 1338. To the extent not expressly admitted, Finjan denies the allegations in
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`this paragraph of the Counterclaims.
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`176. Finjan admits that this Court has personal jurisdiction over Finjan. To the extent not
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`expressly admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
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`177. Finjan admits that venue is proper in this District. To the extent not expressly
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`admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 3 of 18
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`BACKGROUND
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`178. Finjan admits that Juniper purports to seek a declaratory judgment that the patents-in-
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`suit are invalid, not infringed, and unenforceable. To the extent not expressly admitted, Finjan denies
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`the allegations in this paragraph of the Counterclaims.
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`179. Admitted.
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`180. Finjan admits that Finjan filed a complaint alleging that Juniper infringed the Patents-
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`in-Suit. Finjan admits that Juniper has purported to deny that it infringes a valid and enforceable
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`patent. To the extent not expressly admitted, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`181. Finjan admits that on May 18, 2018 Finjan filed a First Amended Complaint alleging
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`that Juniper infringed the original Patents-in-Suit. Finjan admits that Juniper purported to deny that it
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`infringes a valid and enforceable patent. To the extent not expressly admitted, Finjan denies the
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`allegations in this paragraph of the Counterclaims.
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`182. Finjan admits that on July 27, 2018 Finjan filed a Second Amended Complaint alleging
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`that Juniper infringes the Patents-in-Suit. Finjan admits that Juniper purports to deny that it infringes
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`a valid and enforceable patent. To the extent not expressly admitted, Finjan denies the allegations in
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`this paragraph of the Counterclaims.
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`FIRST COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement of the Patents-in-Suit)
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`183. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
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`and the preceding paragraphs of this Answer as though fully set forth herein.
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`184. Finjan admits that its complaint identified that Juniper infringed each of the patents-in-
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`suit. To the extent not expressly admitted, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 4 of 18
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`185. Finjan admits that it Juniper purports that it does not infringe the patents-in-suit. To
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`the extent not expressly admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
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`186. Admitted.
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`187. Finjan admits that Juniper purports to seek a declaratory judgment that it is not
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`infringing any valid and enforceable claim of the patents-in-suit. To the extent not expressly
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`admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
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`SECOND COUNTERCLAIM
`(Declaratory Judgment of Invalidity of the Patents-in-Suit)
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`188. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
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`and the preceding paragraphs of this Answer as though fully set forth herein.
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`189. Admitted.
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`190. Finjan admits that Juniper purports that the patents-in-suit are invalid. To the extent
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`not expressly admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
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`191. Admitted.
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`192. Finjan admits that Juniper purports to seek a declaratory judgment that the patents-in-
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`suit are invalid. To the extent not expressly admitted, Finjan denies the remaining allegations in this
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`paragraph of the Counterclaims.
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`THIRD COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ‘494 Patent for Inequitable Conduct)
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`193. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
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`and the preceding paragraphs of this Answer as though fully set forth herein.
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`194. Admitted.
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`195. Finjan admits that Juniper denies the ‘494 Patent is enforceable. To the extent not
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`expressly admitted, Finjan denies the remaining allegations in this paragraph of the Counterclaims.
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 5 of 18
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`196. Finjan admits that the ‘494 Patent was filed on November 7, 2011. To the extent not
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`expressly admitted, Finjan denies the remaining allegations in this paragraph of the Counterclaims.
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`197. Finjan admits that the file history of the ‘494 Patent contains a declaration stating “I
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`believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which
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`is claimed and for which a patent is sought on the Invention entitled MALICIOUS CODE RUNTIME
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`MONITORING SYSTEM AND METHODS” filed on May 17, 2001, with application number
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`09/881,229, and that Yigal Mordechai Edery, Nimrod Itzhak Vered, David R. Kroll, and Shlomo
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`Touboul are listed on the ‘494 Patent as inventors. The remaining allegations in this paragraph
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`constitute conclusions of law or legal argument to which no responsive pleading is necessary. To the
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`extent a responsive pleading is necessary, and to the extent not expressly admitted herein, Finjan
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`denies the remaining allegations in this paragraph of the Counterclaims.
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`198. Finjan admits that the original application for the ‘494 Patent claimed priority to U.S.
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`Patent No. 6,092,194, which was filed on November 6, 1997. To the extent not expressly admitted,
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`Finjan denies the remaining allegations in this paragraph of the Counterclaims.
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`199. Finjan admits that on July 23, 2012, the Examiner from the USPTO issued a non-final
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`office action relying on U.S. Patent No. 5,983,348. The remaining allegations in this paragraph
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`constitute conclusions of law or legal argument to which no responsive pleading is necessary. To the
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`extent a responsive pleading is necessary, and to the extent not expressly admitted herein, Finjan
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`denies the remaining allegations in this paragraph of the Counterclaims.
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`200. Finjan admits that on October 23, 2012, Dawn-Marie Bey, on behalf of Finjan, filed a
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`“Petition To Accept Unintentionally Delayed Claim Of Priority Under 35 U.S.C. § 119(e) And § 120
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`For The Benefit Of A Prior-filed Application Filed Under 37 C.F.R. § 1.78(a)(3)” and that she
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`represented that “the entire delay between the date the claim was due under 37 CFR § 1.78(a)(2)(ii)
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 6 of 18
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`and the date the claim was filed was unintentional.” The remaining allegations in this paragraph
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`constitute conclusions of law or legal argument to which no responsive pleading is necessary. To the
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`extent a responsive pleading is necessary, and to the extent not expressly admitted herein, Finjan
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`denies the remaining allegations in this paragraph of the Counterclaims.
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`201. Denied.
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`202. Denied.
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`203. Finjan admits that on November 27, 2012, the Petition was dismissed and on January
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`7, 2013, the USPTO issued a final office action. The remaining allegations in this paragraph constitute
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`conclusions of law or legal argument to which no responsive pleading is necessary. To the extent a
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`responsive pleading is necessary, and to the extent not expressly admitted herein, Finjan denies the
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`allegations in this paragraph of the Counterclaims.
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`204. Finjan admits that on May 7, 2013, Ms. Bey, on behalf of Finjan, filed an “Amendment
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`And Response To Office Action Under 37 C.F.R. § 1.114” and submitted a “Declaration Of Prior
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`Invention In The United States To Overcome Cited Patent Or Publication (37 C.F.R. § 131)” sworn
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`by Shlomo Touboul, which stated that claims 1, 3-6, 9, 10, 12-15 were his sole inventions and were
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`conceived no later than November 18, 1996, which was corroborated by a separate contemporaneous
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`document. The remaining allegations in this paragraph constitute conclusions of law or legal
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`argument to which no responsive pleading is necessary. To the extent a responsive pleading is
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`necessary, and to the extent not expressly admitted herein, Finjan denies the allegations in this
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`paragraph of the Counterclaims.
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`205. Finjan admits that on August 29, 2013, the USPTO issued a Notice of Allowance, in
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`which the Examiner stated “The Declaration filed on May 7, 2013 under 37 CFR 1.131(a) is sufficient
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`to overcome the Ji” reference. The remaining allegations in this paragraph constitute conclusions of
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 7 of 18
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`law or legal argument to which no responsive pleading is necessary. To the extent a responsive
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`pleading is necessary, and to the extent not expressly admitted herein, Finjan denies the allegations in
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`this paragraph of the Counterclaims.
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`206. Finjan admits that it asserted claims 10, 14, and 15 of the ‘494 Patent against Symantec
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`Corp. in Case No. 4:14-02998-HSG (N.D. Cal.) and that on or about July 26, 2017, Finjan served a
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`supplemental response to an interrogatory from Symantec stating: “Yigal Edery, Nimrod Vered,
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`David Kroll, and Shlomo Touboul were involved with, and may have knowledge related to the
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`conception and reduction to practice of the ‘494 Patent.” The remaining allegations in this paragraph
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`constitute conclusions of law or legal argument to which no responsive pleading is necessary. To the
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`extent a responsive pleading is necessary, and to the extent not expressly admitted herein, Finjan
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`denies the allegations in this paragraph of the Counterclaims.
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`207. Finjan admits that on November 1, 2017, Mr. David R. Kroll testified under oath about
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`the ’494 Patent during trial in Finjan, Inc. v. Blue Coat Sys., Inc., Case No. CV-15-03295-BLF (N.D.
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`Cal.) and that Mr. Kroll is one of the inventors listed on the face of the ’494 Patent. The remaining
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`allegations in this paragraph constitute conclusions of law or legal argument to which no responsive
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`pleading is necessary. To the extent a responsive pleading is necessary, and to the extent not expressly
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`admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
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`208. Denied.
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`209. The allegations in this paragraph constitute conclusions of law or legal argument to
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`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 8 of 18
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`210. The allegations in this paragraph constitute conclusions of law or legal argument to
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`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`211. Finjan admits that an actual and justiciable controversy exists between Finjan and
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`Juniper regarding infringement of the patents-in-suit. To the extent not expressly admitted, Finjan
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`denies the remaining allegations in this paragraph of the Counterclaims.
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`212. Denied.
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`FOURTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ‘154 Patent for Inequitable Conduct)
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`213. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
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`and the preceding paragraphs of this Answer as though fully set forth herein.
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`214. Admitted.
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`215. Finjan admits that Juniper denies the ‘154 Patent is enforceable. To the extent not
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`expressly admitted, Finjan denies the remaining allegations in this paragraph of the Counterclaims.
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`216. Finjan admits that the ‘154 Patent was filed as a non-provisional patent application on
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`June 14, 2010. To the extent not expressly admitted, Finjan denies the allegations in this paragraph of
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`the Counterclaims.
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`217. Finjan admits that the ‘154 Patent issued on March 20, 2012 and was erroneously
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`missing a claim priority to the U.S. Patent No 7,757,289. To the extent not expressly admitted, Finjan
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`denies the allegations in this paragraph of the Counterclaims.
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`218. Finjan admits that on October 16, 2013, Ms. Bey filed a “Petition To Accept
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`Unintentionally Delayed Claim Of Priority Under 35 U.S.C. § 120 For The Benefit Of A Prior-filed
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 9 of 18
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`Application Filed Under 37 C.F.R. § 1.78(a)(3),” which stated “the entire delay between the date the
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`priority claim was due and the date that this petition with priority claim added to the specification is
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`filed was unintentional.” The remaining allegations in this paragraph constitute conclusions of law or
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`legal argument to which no responsive pleading is necessary. To the extent a responsive pleading is
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`necessary, and to the extent not expressly admitted herein, Finjan denies the allegations in this
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`paragraph of the Counterclaims.
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`219. Denied.
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`220. Finjan admits that N.D. Cal Case Nos.: 5:13-cv-04398; 4:13-cv-03133-SBA; 4:13-cv-
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`05808-HSG; and 4:14-cv-04908-PJH involved the ‘154 Patent. The remaining allegations in this
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`paragraph constitute conclusions of law or legal argument to which no responsive pleading is
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`necessary. To the extent a responsive pleading is necessary, and to the extent not expressly admitted
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`herein, Finjan denies the allegations in this paragraph of the Counterclaims.
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`221. The allegations in this paragraph constitute conclusions of law or legal argument to
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`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`222. Denied.
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`223. Denied.
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`224. Denied.
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`225. Denied.
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`226. Finjan admits that the ‘494 and ‘926 Patents claim priority through the ‘633 and ‘822
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`Patents. To the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of
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`the Counterclaims.
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 10 of 18
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`227. The allegations in this paragraph constitute conclusions of law or legal argument to
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`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`228. The allegations in this paragraph constitute conclusions of law or legal argument to
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`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`229. The allegations in this paragraph constitute conclusions of law or legal argument to
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`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`230. Finjan admits that an actual and justiciable controversy exists between Finjan and
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`Juniper regarding infringement of the patents-in-suit. To the extent not expressly admitted, Finjan
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`denies the remaining allegations in this paragraph of the Counterclaims.
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`231. Denied.
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`FIFTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ‘154, ‘633, ‘926, and ‘494 Patents
`for Unclean Hands)
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`232. Finjan realleges and incorporates by reference the allegations set forth in its Complaint
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`and the preceding paragraphs of this Answer as though fully set forth herein.
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`233. Admitted.
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`234. Finjan admits that it Juniper purports that the patents-in-suit are unenforceable. To the
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`extent not expressly admitted, Finjan denies the allegations in this paragraph of the Counterclaims.
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 11 of 18
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`235. The allegations in this paragraph constitute conclusions of law or legal argument to
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`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`236. Denied.
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`237. Finjan admits that it filed the application for the ‘633 Patent on June 22, 2005. To the
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`extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`238. Finjan admits that the ‘633 Patent claims priority to U.S. Patent No. 6,804, 780 (“the
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`‘780 Patent”), the application for which was filed on March 30, 2000. To the extent not expressly
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`admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
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`239. Finjan admits that the ‘633 Patent issued on January 12, 2010, the USPTO issued the
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`‘633 Patent. To the extent not expressly admitted herein, Finjan denies the allegations in this
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`paragraph of the Counterclaims.
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`240. Finjan admits that on October 7, 2013, a third-party filed an ex parte reexamination against
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`the ‘633 Patent, which was assigned Reexamination Control No. 90/013,016. To the extent not expressly
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`admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
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`241. Finjan admits that the USPTO issued an office action for the ‘633 Patent relying on Ji
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`and Golan. To the extent not expressly admitted herein, Finjan denies the allegations in this
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`paragraph of the Counterclaims.
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`242. Finjan admits that on February 19, 2014, Ms. Bey filed a “Petition to Accept
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`Unintentionally Delayed Priority Claim Under 37 C.F.R. § 1.78” in which she represented that “The
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`entire delay between the date a correctly worded benefit claim was due under paragraph (a)(5)(ii) of
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 12 of 18
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`37 C.F.R. § 1.78 and the date the correctly worded benefit claim was filed was unintentional.” The
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`remaining allegations in this paragraph constitute conclusions of law or legal argument to which no
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`responsive pleading is necessary. To the extent a responsive pleading is necessary, and to the extent
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`not expressly admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
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`243. Denied.
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`244. Admitted.
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`245. Admitted.
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`246. Denied.
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`247. Admitted.
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`248. Finjan admits that on May 22, 2015, the USPTO issued a final office action in ex parte
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`reexamination no. 90/013,016, which stated that the claims under examination “are considered to not
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`be adequately supported by the disclosure of the 6,092,194 and 6,167,520 patents....” The remaining
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`allegations in this paragraph constitute conclusions of law or legal argument to which no responsive
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`pleading is necessary. To the extent a responsive pleading is necessary, and to the extent not
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`expressly admitted herein, Finjan denies the allegations in this paragraph of the Counterclaims.
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`249. Finjan admits that on May 17, 2001, Finjan’s representatives filed a patent application
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`on behalf of Finjan that would ultimately mature into U.S. Patent No. 7,058,822 (“the ‘822 Patent”).
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`The remaining allegations in this paragraph constitute conclusions of law or legal argument to which
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`no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to the
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`extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`250. Admitted.
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 13 of 18
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`251. Finjan admits that the ‘822 Patent issued on June 6, 2006. To the extent a responsive
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`pleading is necessary, and to the extent not expressly admitted herein, Finjan denies the allegations in
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`this paragraph of the Counterclaims.
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`252. Admitted.
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`253. Finjan admits that the USPTO instituted a ex parte reexamination of the ‘822 Patent on
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`December 6, 2013, which utilized U.S. Patent No. 6,058,482 (“Liu”), filed May 22, 1998, and U.S. Patent
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`No. 5,974,549 (“Golan”), filed March 27 1997. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`254. Finjan admits that on March 6, 2014, Ms. Bey filed a “Petition To Accept
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`Unintentionally Delayed Priority Claim Under 37 C.F.R. § 1.78,” which sought to add claims of
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`priority to U.S. Patent No. 6,092,194 (“the ‘194 Patent”), filed November 6, 1997, and U.S. Patent
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`No. 6,167,520 (“the ‘520 Patent”), filed January 29, 1997, and represented: “The entire delay between
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`the date a correctly worded benefit claim...and the date the correctly worded benefit claim was filed
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`was unintentional.” The remaining allegations in this paragraph constitute conclusions of law or legal
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`argument to which no responsive pleading is necessary. To the extent a responsive pleading is
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`necessary, and to the extent not expressly admitted herein, Finjan denies the allegations in this
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`paragraph of the Counterclaims.
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`255. Denied.
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`256. Finjan admits that in its “Decision Granting Petition To Accept Unintentionally
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`Delayed Priority Claim Under 37 C.F.R. § 1.78(e),” on September 8, 2014, the USPTO issued a final
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`office action in ex parte reexamination no. 90/013,017, which stated: “The priority documents US
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`Patent[s] 6,092,194 and 6,167,520 do not describe…” The remaining allegations in this paragraph
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 14 of 18
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`constitute conclusions of law or legal argument to which no responsive pleading is necessary. To the
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`extent a responsive pleading is necessary, and to the extent not expressly admitted herein, Finjan
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`denies the allegations in this paragraph of the Counterclaims.
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`257. Finjan admits that the ‘494 and ‘926 Patents include the ‘822 Patent in their chain or
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`priority. The remaining allegations in this paragraph constitute conclusions of law or legal argument
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`to which no responsive pleading is necessary. To the extent a responsive pleading is necessary, and to
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`the extent not expressly admitted herein, Finjan denies the allegations in this paragraph of the
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`Counterclaims.
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`258. Denied.
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`259. Finjan admits that an actual and justiciable controversy exists between Finjan and
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`Juniper regarding infringement of the patents-in-suit. To the extent not expressly admitted, Finjan
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`denies the remaining allegations in this paragraph of the Counterclaims.
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`260. Denied.
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`PRAYER FOR RELIEF ON JUNIPER’S COMPLAINT
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`Finjan denies that Juniper is entitled to any relief, and specifically denies the allegations and
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`requests for relief set forth in paragraphs A-F under the heading “PRAYER FOR RELIEF ON
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`JUNIPER’S COMPLAINT” in the Counterclaims.
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`FINJAN’S AFFIRMATIVE DEFENSES
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`Without admitting or acknowledging that it bears the burden of proof as to any of them, and
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`without waiver, limitation or prejudice, Finjan hereby asserts the following affirmative defenses:
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 15 of 18
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`FINJAN’S FIRST AFFIRMATIVE DEFENSE
`(Failure to State Claim)
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`1.
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`Finjan realleges and incorporates by reference the allegations set forth in its Complaint
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`and the preceding paragraphs of this Answer as though fully set forth herein.
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`2.
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`Counterclaims 1-5 fail to state a cause of action upon which relief may be granted.
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`Counterclaims 1-2 are conclusory and fail to allege any facts to support the assertions of non-
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`infringement or invalidity, and thus they fail to provide fair notice of the basis for the claims.
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`3.
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`Counterclaims 3-5 each fail to state plausible claims upon which relief may be granted,
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`as none of these Counterclaims, taking all factual allegations as true and ignoring the unsupported
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`legal conclusions, state sufficient grounds to find that any of the patent-in-suit are unenforceable. The
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`Counterclaims are deficient in many respects, including regarding purported allegations of deceit
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`before the Patent and Trademark Office (“PTO”) and there is no allegation to support that the “single
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`most reasonable inference” of the alleged facts is an intent to deceive the PTO. Therefore, there is no
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`proper claim for declaratory relief and Juniper’s Counterclaims 1-5 fail to state a claim.
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`4.
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`Counterclaims 3-4 fail to state a plausible claim because there is no identification of
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`facts to support that “the single most reasonable inference” of the alleged facts is an intent to deceived
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`the PTO, much less sufficient grounds to assert deceit before the PTO, given the undisputed evidence,
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`including the fact that Shlomo Touboul’s affidavit was corroborated by a contemporaneous document.
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`5.
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`Counterclaim 5 further fails to state plausible claim upon which relief may be granted
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`because unenforceability for unclean hands is an affirmative defense and is not a stand-alone claim,
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`such that it cannot be pled as a counterclaim.
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`FINJAN, INC.’S ANSWER TO JUNIPER NETWORKS, INC.’S CASE NO. 3:17-cv-05659-WHA
`FIRST AMENDED COUNTERCLAIMS 1-5
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`Case 3:17-cv-05659-WHA Document 240 Filed 11/19/18 Page 16 of 18
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`FINJAN’S SECOND AFFIRMATIVE DEFENSE
`(Good Faith)
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`6.
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`Finjan realleges and incorporates by reference the allegations set forth in its Complaint
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`and the preceding paragraphs of this Answer as though fully set forth herein.
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`7.
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`Counterclaims 3-5 are barred, in whole or in part, because Finjan’s actions were taken
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`with due diligence, in good faith, with the absence of malicious intent, and constituted and constitute
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`lawful, proper, and justified means to accomplish legitimate business objectives.
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`FINJAN’S THIRD AFFIRMATIVE DEFENSE
`(Unclean Hands)
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`8.
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`Finjan realleges and incorporates by reference the allegations set forth in its Complaint
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`and the preceding paragraphs of this Answer as though fully set forth herein.
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`9.
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`10.
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`Counterclaims 1-5 are barred, in whole or in part, by the doctrine of unclean hands.
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`Juniper is also barred by the doctrine of unclean hands from asserting Counterclaims 3-
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`5, as each of these Counterclaims seeks equitable relief based on Finjan’s purported acts before the
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`PTO. Juniper cannot seek such equitable relief when its own conduct in this action and in relation to
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`these patents has been inequitable. Juniper knew that it infringed Finjan’s patents and attempted to
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`negotiate in bad faith with Finjan for a license. One month after Finjan sued Palo Alto Networks Inc.
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`(“PAN”), Juniper offered to “collaborate” with Finjan by selling Finjan “valuable” information on
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`PAN’s confidential litigation strategy in exchange for a release from Finjan. Juniper’s proposal was
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`an attempt to have Finjan agree to interfere with any actual or potential relationship that Juniper had
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`with PAN relating to any exchange of information related to PAN’s confidential litigation strategy,
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`which Finjan refused to do. Juniper’s current denials of its infringement and the validity of the
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`patents-in-suit are made in bad