Case 3:17-cv-05659-WHA Document 350 Filed 01/10/19 Page 1 of 5
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`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@irell.com
`Alan Heinrich (SBN 212782)
`aheinrich@irell.com
`Joshua Glucoft (SBN 301249)
`jglucoft@irell.com
`Casey Curran (SBN 305210)
`ccurran@irell.com
`Sharon Song (SBN 313535)
`ssong@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Rebecca Carson (SBN 254105)
`rcarson@irell.com
`Kevin Wang (SBN 318024)
`kwang@irell.com
`840 Newport Center Drive, Suite 400
`Newport Beach, California 92660-6324
`Telephone: (949) 760-0991
`Facsimile: (949) 760-5200
`
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`FINJAN, INC., a Delaware Corporation,
`)
`Case No. 3:17-cv-05659-WHA
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`)
`
`JUNIPER NETWORKS, INC.’S
`Plaintiff,
`)
`RESPONSE TO POST-TRIAL ORDER
`
`)
`(DKT. NO. 348)
`vs.
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`)
`
`
`)
`JUNIPER NETWORKS, INC., a Delaware
`)
`Hon. William Alsup
`Corporation,
`)
`
`)
`)
`)
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`Defendant.
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10629697
`
`
`
`
`
`RESPONSE TO POST-TRIAL ORDER (DKT. NO. 348)
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 350 Filed 01/10/19 Page 2 of 5
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`Defendant Juniper Networks, Inc. (“Juniper”) respectfully submits this response to the
`questions posed in the Court’s post-trial Order (Dkt. No. 348).
`A.
`Juniper’s Section 101 Defense, Equitable Defenses And Counterclaims
`Despite the jury’s verdict that Juniper’s Sky ATP service alone or in combination with
`Juniper’s SRX product does not infringe Claim 10 of the ’494 Patent, Juniper’s validity and
`equitable defenses and counterclaims are not moot. These defenses and counterclaims include:
`• Juniper’s Section 101 defense, which was briefed during early summary judgment and
`which the parties presented evidence on at the trial.
`• Juniper’s counterclaim for a declaratory judgment that the ’494 Patent is invalid under
`35 U.S.C. §§ 102 and 103 (Dkt. No. 218, ¶¶ 188-192), as well as Juniper’s first
`affirmative defense (¶ 140). These counterclaims and affirmative defenses were not
`briefed during early summary judgment due to factual disputes and were therefore not
`presented at trial.
`• Juniper’s counterclaims for a declaratory judgment of the unenforceability of the ’494
`Patent due to unclean hands and inequitable conduct (Dkt. No. 218, ¶¶ 232-260
`(unclean hands counterclaim), ¶¶ 193-212 (inequitable conduct counterclaim)), as well
`as Juniper’s tenth, thirteenth and fourteenth affirmative defenses (¶¶ 150, 162-170).
`These counterclaims and affirmative defenses were not briefed during early summary
`judgment due to factual disputes and were therefore not presented at trial.
`The defenses and counterclaims identified above remain live issues in this case for at least
`three reasons. First, Finjan has informed Juniper that it intends to pursue its claims of
`infringement of the ’494 Patent against the Cyphort/ATP Appliance product, which was not at
`issue in the first round of summary judgment and trial. See Ex. 1 (Glucoft/Kastens email chain) at
`3. Accordingly, the Court’s ruling on Juniper’s Section 101 defense is not moot because there are
`still pending claims of infringement of Finjan’s ’494 Patent against Juniper. Moreover, if the
`Court does not invalidate the ’494 Patent under Section 101, then Juniper’s other defenses and
`counterclaims concerning the validity and unenforceability of the ’494 Patent (i.e., unclean hands,
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10629697
`
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`RESPONSE TO POST-TRIAL ORDER (DKT. NO. 348)
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 350 Filed 01/10/19 Page 3 of 5
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`inequitable conduct, and invalidity under §§ 102 and 103) will remain relevant to the case and
`should be addressed at the next trial in this matter.
`Second, Finjan has indicated that it may appeal the verdict of non-infringement as to the
`products that were at issue in the December trial. See https://www.finjan.com/news-media/press-
`releases/detail/763/jury-finds-non-infringement-of-claim-10-of-finjans. In order to preserve its
`invalidity and unenforceability defenses and counterclaims in the event that the jury’s verdict is
`overturned on appeal, Juniper would object to the dismissal of those defenses and counterclaims
`from the case. In particular, Juniper believes that it would be most efficient for the Court to issue
`its ruling on Juniper’s Section 101 defense, given that the evidence on that defense has already
`been presented to the Court.
`Third, rulings in Juniper’s favor on its affirmative defenses and counterclaims remain
`relevant to the case because they may entitle Juniper to attorneys’ fees, particularly favorable
`rulings on inequitable conduct and unclean hands. “Prevailing on a claim of inequitable conduct
`often makes a case ‘exceptional’ under § 285” (In re Rembrandt Techs. LP Patent Litigation, 899
`F.3d 1254, 1272 (Fed. Cir. 2018) (quotations and alterations omitted)), and unclean hands can also
`make a case “exceptional” under § 285 (see Ardisam, Inc. v. Ameristep, Inc., 343 F. Supp. 2d 726,
`728 (W.D. Wis. 2004)). Under 35 U.S.C. § 285, “[t]he court in exceptional cases may award
`reasonable attorney fees to the prevailing party.” Therefore, Juniper’s affirmative defenses and
`counterclaims regarding invalidity and unenforceability must still be decided because they are
`highly relevant factors in the Court’s consideration of whether to award attorneys’ fees.
`Given Finjan’s positions regarding the continued viability of the ’494 Patent and the
`potential applicability of the outstanding issues to an attorneys’ fees motion, Juniper respectfully
`requests that the Court issue an order on Juniper’s Section 101 defense. See Dkt. No. 189 at 18-20
`(Court holding that Claim 10 is directed to an abstract idea under Step One of the Alice test and
`waiting “to have the benefit of the trial record for determining whether Claim 10 contains an
`inventive concept such that it is patent eligible”). To the extent that the Court believes that post-
`trial briefing on Juniper’s Section 101 defense would be helpful, Juniper proposes the following
`schedule (with page limits following the default rules for motions under L.R. 7-2 and 7-3):
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`10629697.1
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`Case 3:17-cv-05659-WHA Document 350 Filed 01/10/19 Page 4 of 5
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`• February 1, 2018: Juniper’s opening brief
`• February 22, 2018: Finjan’s opposition brief
`• March 8, 2018: Juniper’s reply brief
`Juniper also respectfully requests that the Court issue a formal scheduling order, setting a trial for
`July 29 on Juniper’s remaining invalidity and unenforceability defenses and counterclaims related
`to the ’494 Patent, including inequitable conduct, unclean hands, and invalidity under §§ 102 and
`103, which were properly pled, timely identified pursuant to P.L.R. 3-3,1 and never waived.
`B.
`Progress Report On Second Showdown Procedure
`With respect to the second showdown procedure, the Court has ordered the parties to
`disclose their claim selection on or before January 24. See Dkt. No. 219. To comply with the
`Court’s Order, Juniper recently requested that Finjan tell Juniper whether it maintained any claims
`of infringement of the ’780 Patent given the Court’s Order granting Juniper’s Motion for
`Summary Judgment on Claim 1 of that patent. See Dkt. No. 180 (Summary Judgment Order).
`Juniper assumed that Finjan would drop these claims, in view of the fact that the other asserted
`claim (Claim 9) is nearly identical to Claim 1 and contains the exact same term that the Court
`construed in Juniper’s favor and found dispositive on the infringement issue. Dkt. No. 180 at 5-10
`(construing “performing a hashing function on the Downloadable and the fetched software
`components to generate a Downloadable ID”); Ex. 2 (’780 Patent) at Column 10, claims 1 and 9.
`Surprisingly, Finjan responded that “Claim 9 of the ’780 Patent is an independent claim, therefore
`the Court’s finding of no infringement for Claim 1 of the ’780 Patent on summary judgment does
`not apply to this claim.” Ex. 1 (Glucoft/Kastens email chain) at 1.
`Finjan has also indicated that it is still pursuing both Claims 1 and 9 of the ’780 Patent
`against the Cyphort/ATP Appliance product, which was not addressed during the first round of the
`showdown. Id. at 3; Dkt. No. 88 at ¶ 46 (First Amended Complaint added the ATP Appliance to
`the list of accused products). This is also surprising given that Finjan’s infringement contentions
`
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`1 On October 25, 2018, Juniper timely served its Initial Election of Prior Art Grounds,
`which identified six grounds under which the ’494 Patent is anticipated and/or obvious among the
`many grounds identified in Juniper’s initial invalidity contentions under P.L.R. 3-3.
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10629697.1
`
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`RESPONSE TO POST-TRIAL ORDER (DKT. NO. 348)
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`Case 3:17-cv-05659-WHA Document 350 Filed 01/10/19 Page 5 of 5
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`for the Cyphort/ATP Appliance product make clear that its infringement theory rests on an
`interpretation of the claims that was rejected by the Court during the first showdown procedure.
`See Ex. 3 (Finjan Infringement Contentions) at 6-7 (asserting the same “dropped files” theory that
`Finjan pursued against Sky ATP and excerpting a data sheet which shows that a separate hash is
`created for the dropped file).
`Juniper believes that Finjan’s pursuit of Claim 1 of the ’780 Patent against the
`Cyphort/ATP Appliance product and Claim 9 of the ’780 Patent against all of Juniper’s products
`(Sky ATP, SRX and Cyphort/ATP Appliance) is frivolous in view of the Court’s prior Order, as
`will be discussed in further detail in Juniper’s upcoming Motion for Sanctions.
`
`Dated: January 10, 2019
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`Respectfully submitted,
`
`IRELL & MANELLA LLP
`
`By: /s/ Rebecca Carson
`Rebecca Carson
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10629697.1
`
`
`
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`RESPONSE TO POST-TRIAL ORDER (DKT. NO. 348)
`(Case No. 3:17-cv-05659-WHA)
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