Case 3:17-cv-05659-WHA Document 309 Filed 12/09/18 Page 1 of 1
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`I R E L L & M A N E L L A L L P
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
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`INCLUDING PROFESSIONAL CORPORATIONS
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`R C a r s o n @ i r e l l . c o m
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`December 9, 2018
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`Hon. William Alsup
`U.S. District Court, Northern District of California
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`Re:
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`Finjan, Inc. v. Juniper Networks, Inc., Case No. 3:17-cv-05659-WHA
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`Dear Judge Alsup:
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`Defendant Juniper Networks, Inc. (“Juniper”) writes to clarify its position regarding its
`defense of invalidity to Claim 10 of United States Patent No. 8,677,494 (“the ’494 Patent”), in
`light of the Court’s Final Pretrial Order (Dkt. 301, “Order”) issued on December 6, 2018. In its
`Order, the Court stated “[t]his final pretrial order supersedes the complaint and answer with respect
`to Claim 10 of the ’494 Patent except to the extent it does not reach the issues of prosecution
`laches, inequitable conduct, and unclear hands” but made no mention of Juniper’s invalidity
`defenses under 35 U.S.C. §§ 102 and 103. Order at 1. As noted in the Joint Pretrial Statement
`(Dkt. 262 at 6 n. 3), Juniper did not raise defenses pursuant to §§ 102 and 103 in its opposition to
`Plaintiff Finjan’s motion for summary judgment relating to Claim 10 of the ’494 Patent because it
`believed factual disputes existed that might render summary judgment inappropriate on these
`grounds (and Finjan had not moved for summary judgment of no invalidity pursuant to §§ 102 or
`103). While Finjan has argued that Juniper’s decision to not move for summary judgment pursuant
`to §§ 102 and 103 waived these defenses (see Dkt. 262 at 6 n. 2), the Federal Circuit has made
`clear that “the issue of invalidity is a separate issue from infringement, and an alleged infringer’s
`failure to raise it in opposition to a motion for summary judgment of infringement is not a waiver.”
`See Pandrol USA, LP v. Airboss Ry. Products, Inc.,320 F.3d 1354, 1365 (Fed. Cir. 2003).
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`Juniper has been diligent in asserting its §§ 102 and 103 defenses in this litigation,
`including by serving 6 prior art grounds in its initial election of prior art on October 25, 2018,
`pursuant to an agreed upon schedule between the parties. See Ex. 1 (Juniper’s Initial Election of
`Prior Art Grounds) at 3-4. Juniper thus has not waived such defenses but understands and agrees
`that these defenses will not be addressed at the trial in this action scheduled to begin on December
`10, 2018.
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`10620464
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`Respectfully submitted,
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`/s/ Rebecca L. Carson
`Rebecca L. Carson
`IRELL & MANELLA LLP
`Attorneys for Defendant
`Juniper Networks, Inc.
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