Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 1 of 19
`
`
`
`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
`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’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 45 Filed 03/21/18 Page 2 of 19
`
`
`
`
`
`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 Complaint for Patent Infringement and
`
`Counter-claims filed on February 28, 2018 (the “Counterclaims”) (Doc. No. 42 at 23-37) as set forth
`
`below.
`
`JUNIPER’S COUNTERCLAIMS
`
`
`
`Finjan admits that Juniper alleges the following Counterclaims:
`
`THE PARTIES
`
`215. Admitted.
`
`216. Admitted.
`
`217. Finjan admits that it is a plaintiff in the underlying action and contends that Juniper
`
`infringes the ‘844 Patent, the ‘780 Patent, the ‘633 Patent, the ‘926 Patent, the ‘154 Patent, the ‘494
`
`Patent, as described in paragraphs 9-32 of the Complaint (the “patents-in-suit”), and that the patents-
`
`in-suit are enforceable. Finjan denies that it included the ‘944 Patent in the Complaint. To the extent
`
`not expressly admitted, Finjan denies the allegations in paragraph 217 of the Counterclaims.
`
`JURISDICTION AND VENUE
`
`218. 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 paragraph 218
`
`of the Counterclaims.
`
`219. 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
`
`paragraph 219 of the Counterclaims.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`1
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 3 of 19
`
`
`
`220. Finjan admits that this Court has personal jurisdiction over Finjan. To the extent not
`
`expressly admitted, Finjan denies the allegations in paragraph 220 of the Counterclaims.
`
`221. Finjan admits that venue is proper in this District. To the extent not expressly
`
`admitted, Finjan denies the allegations in paragraph 221 of the Counterclaims.
`
`BACKGROUND
`
`222. 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 paragraph 222 of the Counterclaims.
`
`223. Admitted.
`
`224. 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 paragraph 224 of the
`
`Counterclaims.
`
`FIRST COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement of the Patents-in-Suit)
`
`225. 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.
`
`226. 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 paragraph 226 of the
`
`Counterclaims.
`
`227. 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 paragraph 227 of the
`
`Counterclaims.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`2
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 4 of 19
`
`
`
`228. Admitted.
`
`229. 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 paragraph 229 of the Counterclaims.
`
`SECOND COUNTERCLAIM
`(Declaratory Judgment of Invalidity of the Patents-in-Suit)
`
`230. 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.
`
`231. Admitted.
`
`232. Finjan admits that it Juniper purports that the patents-in-suit are invalid. To the extent
`
`not expressly admitted, Finjan denies the allegations in paragraph 232 of the Counterclaims.
`
`233. Admitted.
`
`234. 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,
`‘305, and ‘408 Patents)
`
`235. 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.
`
`236. Admitted.
`
`237. Finjan admits that it Juniper purports that the patents-in-suit are unenforceable. To the
`
`extent not expressly admitted, Finjan denies the allegations in paragraph 237 of the Counterclaims.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`3
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 5 of 19
`
`
`
`238. Finjan admits that the ‘926 Patent was filed on March 7, 2006, and claims priority to U.S.
`
`Patent No. 6,092,194, which was filed on November 6, 1997. To the extent not expressly admitted,
`
`Finjan denies the allegations in paragraph 238 of the Counterclaims.
`
`239. Finjan admits that the ‘633 Patent was filed on June 22, 2005 and claims priority to U.S.
`
`Patent No. 6,804,780, which was filed on March 30, 2000. To the extent not expressly admitted, Finjan
`
`denies the allegations in paragraph 239 of the Counterclaims.
`
`240. Finjan admits that the ‘154 Patent was filed on June 14, 2010 and claims priority to U.S.
`
`Patent No. 7,757,289, which was filed on December 12, 2005. To the extent not expressly admitted,
`
`Finjan denies the allegations in paragraph 240 of the Counterclaims.
`
`241. Finjan admits that he ‘494 Patent was filed on November 7, 2011 and claims priority to
`
`U.S. Patent No. 6,167,520, which was filed on January 29, 1997. To the extent not expressly admitted,
`
`Finjan denies the allegations in paragraph 241 of the Counterclaims.
`
`242. Finjan admits that the ‘305 patent was filed December 9, 2004 and claims priority to U.S.
`
`Patent Application No. 08/964,388, which was filed on November 6, 1997. To the extent not expressly
`
`admitted, Finjan denies the allegations in paragraph 242 of the Counterclaims.
`
`243. Finjan admits that the ‘408 Patent was filed on August 30, 2004 and claims priority to U.S.
`
`Patent No. 6,092,194, which was filed on November 6, 1997. To the extent not expressly admitted,
`
`Finjan denies the allegations in paragraph 243 of the Counterclaims.
`
`244. Denied.
`
`245. Denied.
`
`246. 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 264 of the Counterclaims.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`4
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 6 of 19
`
`
`
`247. Denied.
`
`FOURTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ‘494 Patent for Inequitable Conduct)
`
`248. 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.
`
`249. Admitted.
`
`250. Finjan admits that it Juniper purports that the patents-in-suit are unenforceable. To the
`
`extent not expressly admitted, Finjan denies the allegations in paragraph 250 of the Counterclaims.
`
`251. Finjan admits that the continuation application that matured into the ‘494 Patent was
`
`filed on November 7, 2011, and patent attorney Dawn-Marie Bey filed the applications. To the extent not
`
`expressly admitted, Finjan denies the allegations in paragraph 251 of the Counterclaims.
`
`252. Admitted.
`
`253. Finjan admits that the original application for the ‘494 Patent claimed priority to U.S.
`
`Patent No. 6,092,194, which was filed on November 6, 1997. To the extent not expressly admitted,
`
`Finjan denies the remaining allegations in paragraph 253 of the Counterclaims.
`
`254. Finjan admits that on July 23, 2012, the Examiner from the USPTO issued a non-final
`
`office action relying on U.S. Patent No. 5,983,348. The remaining allegations in paragraph 254
`
`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 paragraph 254 of the Counterclaims.
`
`255. Finjan admits that on October 23, 2012, Dawn-Marie Bey, on behalf of Finjan, filed a
`
`“Petition To Accept Unintentionally Delayed Claim Of Priority Under 35 U.S.C. § 119(e) And § 120
`
`For The Benefit Of A Prior-filed Application Filed Under 37 C.F.R. § 1.78(a)(3)” and that she
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`5
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 7 of 19
`
`
`
`represented that “the entire delay between the date the claim was due under 37 CFR § 1.78(a)(2)(ii)
`
`and the date the claim was filed was unintentional.” The remaining allegations in paragraph 254
`
`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 paragraph 255 of the Counterclaims.
`
`256. Denied.
`
`257. Finjan admits that on November 27, 2012, the Petition was dismissed and on January
`
`7, 2013, the USPTO issued a final office action. The remaining allegations in paragraph 257
`
`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 paragraph 257 of the Counterclaims.
`
`258. Finjan admits that on May 7, 2013, Ms. Bey, on behalf of Finjan, filed an “Amendment
`
`And Response To Office Action Under 37 C.F.R. § 1.114” and submitted a “Declaration Of Prior
`
`Invention In The United States To Overcome Cited Patent Or Publication (37 C.F.R. § 131)” sworn
`
`by Shlomo Touboul, which stated that claims 1, 3-6, 9, 10, 12-15 were his sole inventions and were
`
`conceived no later than November 18, 1996, which was corroborated by a separate contemporaneous
`
`document. The remaining allegations in paragraph 258 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 paragraph
`
`258 of the Counterclaims.
`
`259. Finjan admits that on August 29, 2013, the USPTO issued a Notice of Allowance, in
`
`which the Examiner stated “The Declaration filed on May 7, 2013 under 37 CFR 1.131(a) is sufficient
`
`to overcome the Ji” reference. The remaining allegations in paragraph 259 constitute conclusions of
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`6
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 8 of 19
`
`
`
`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
`
`paragraph 259 of the Counterclaims.
`
`260. Finjan admits that it asserted claims 10, 14, and 15 of the ‘494 Patent against Symantec
`
`Corp. in Case No. 4:14-02998-HSG (N.D. Cal.) and that on or about July 26, 2017, Finjan served a
`
`supplemental response to an interrogatory from Symantec stating: “Yigal Edery, Nimrod Vered,
`
`David Kroll, and Shlomo Touboul were involved with, and may have knowledge related to the
`
`conception and reduction to practice of the ‘494 Patent.” The remaining allegations in paragraph 260
`
`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 paragraph 260 of the Counterclaims.
`
`261. Denied.
`
`262. The allegations in paragraph 262 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 paragraph 262 of the
`
`Counterclaims.
`
`263. The allegations in paragraph 263 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 paragraph 263 of the
`
`Counterclaims.
`
`264. 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 264 of the Counterclaims.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`7
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 9 of 19
`
`
`
`265. Denied.
`
`FIFTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ’154 Patent for Inequitable Conduct)
`
`266. 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.
`
`267. Admitted.
`
`268. Finjan admits that it Juniper purports that the patents-in-suit are unenforceable. To the
`
`extent not expressly admitted, Finjan denies the allegations in paragraph 268 of the Counterclaims.
`
`269. Finjan admits that the ‘154 Patent was filed as a non-provisional patent application on
`
`June 14, 2010. To the extent not expressly admitted, Finjan denies the allegations in paragraph 269 of
`
`the Counterclaims.
`
`270. Finjan admits that the ‘154 Patent issued on March 20, 2012 and was erroneously
`
`missing a claim priority to the U.S. Patent No 7,757,289. To the extent not expressly admitted, Finjan
`
`denies the allegations in paragraph 270 of the Counterclaims.
`
`271. Finjan admits that on October 16, 2013, Ms. Bey filed a “Petition To Accept
`
`Unintentionally Delayed Claim Of Priority Under 35 U.S.C. § 120 For The Benefit Of A Prior-filed
`
`Application Filed Under 37 C.F.R. § 1.78(a)(3),” which stated “the entire delay between the date the
`
`priority claim was due and the date that this petition with priority claim added to the specification is
`
`filed was unintentional.” The remaining allegations in paragraph 271 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 paragraph
`
`271 of the Counterclaims.
`
`272. Denied.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`8
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 10 of 19
`
`
`
`273. Finjan admits that N.D. Cal Case Nos.: 5:13-cv-04398; 4:13-cv-03133-SBA; 4:13-cv-
`
`05808-HSG; and 4:14-cv-04908-PJH involved the ‘154 Patent. The remaining allegations in
`
`paragraph 273 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 paragraph 273 of the Counterclaims.
`
`274. The allegations in paragraph 274 constitute conclusions of law or legal argument to
`
`which no responsive pleading is necessary. To the extent a responsive pleading is necessary, Finjan
`
`denies the allegations in paragraph 274 of the Counterclaims.
`
`275. Denied.
`
`276. Finjan admits that Palo Alto Networks, Inc. is a defendant in a lawsuit brought by
`
`Finjan and filed IPR2016-00151 on November 5, 2015. The remaining allegations in paragraph 276
`
`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 paragraph 276 of the Counterclaims.
`
`277. Finjan admits that on August 31, 2016, Finjan, through its counsel James Hannah of
`
`Kramer Levin Naftalis & Frankel LLP, asserted that conception of the invention had occurred by
`
`October 31, 2005 and that there was sufficient diligence and no intent to abandon or unreasonably
`
`delay between the “filing date of the Ross reference, November 17, 2005, and the December 12, 2005,
`
`filing date of U.S. Patent Application No. 11/298,475, the parent application of U.S. Patent No.
`
`8,141,154.” To the extent not expressly admitted herein, Finjan denies the allegations in paragraph
`
`277 of the Counterclaims.
`
`278. Finjan admits that the Board did not find the claims of the ‘154 Patent unpatentable
`
`over the teachings of Ross. The remaining allegations in paragraph 278 constitute conclusions of law
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`9
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 11 of 19
`
`
`
`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
`
`paragraph 278 of the Counterclaims.
`
`279. Denied.
`
`280. The allegations in paragraph 280 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 paragraph 280 of the
`
`Counterclaims.
`
`281. 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.
`
`282. Denied.
`
`SIXTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the ‘154, ‘633, ‘926, and ‘494 Patents
`for Unclean Hands)
`
`283. 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.
`
`284. Admitted.
`
`285. Finjan admits that it Juniper purports that the patents-in-suit are unenforceable. To the
`
`extent not expressly admitted, Finjan denies the allegations in paragraph 285 of the Counterclaims.
`
`286. The allegations in paragraph 286 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 paragraph 286 of the
`
`Counterclaims.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`10
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 12 of 19
`
`
`
`287. Denied.
`
`288. 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 paragraph 288 of the
`
`Counterclaims.
`
`289. 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 paragraph 288 of the Counterclaims.
`
`290. 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 paragraph
`
`290 of the Counterclaims.
`
`291. 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 paragraph 291 of the Counterclaims.
`
`292. 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 paragraph
`
`292 of the Counterclaims.
`
`293. 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 paragraph 293 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 paragraph 293 of the Counterclaims.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`11
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 13 of 19
`
`
`
`294. Denied.
`
`295. Admitted.
`
`296. Admitted.
`
`297. Denied.
`
`298. Admitted.
`
`299. 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
`
`be adequately supported by the disclosure of the 6,092,194 and 6,167,520 patents....” The remaining
`
`allegations in paragraph 299 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 paragraph 299 of the Counterclaims.
`
`300. 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 paragraph 300 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 paragraph 300 of the
`
`Counterclaims.
`
`301. Admitted.
`
`302. 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
`
`paragraph 302 of the Counterclaims.
`
`303. Admitted.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`12
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 14 of 19
`
`
`
`304. 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 paragraph 304 of the
`
`Counterclaims.
`
`305. 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
`
`No. 6,167,520 (“the ‘520 Patent”), filed January 29, 1997, and represented: “The entire delay between
`
`the date a correctly worded benefit claim was due...and the date the correctly worded benefit claim
`
`was filed was unintentional.” The remaining allegations in paragraph 305 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
`
`paragraph 305 of the Counterclaims.
`
`306. Denied.
`
`307. 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 paragraph 307
`
`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 paragraph 307 of the Counterclaims.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`13
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 15 of 19
`
`
`
`308. Finjan admits that the ‘494 and ‘926 Patents include the ‘822 Patent in their chain or
`
`priority. The remaining allegations in paragraph 308 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 paragraph 308 of the
`
`Counterclaims.
`
`309. Denied.
`
`310. 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.
`
`311. 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.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`14
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 16 of 19
`
`
`
`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.
`
`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.
`
`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
`
`
`
`FINJAN’S ANSWER TO JUNIPER
`NETWORKS, INC.’S COUNTERCLAIMS 1-6
`
`15
`
`CASE NO. 3:17-cv-05659-WHA
`
`

`

`Case 3:17-cv-05659-WHA Document 45 Filed 03/21/18 Page 17 of 19
`
`
`
`7.
`
`Counterclaims 3-6 are barred, in whole or in part, because Finjan’s actions were taken
`
`with due diligence, in good fai