Case 3:17-cv-05659-WHA Document 477 Filed 05/15/19 Page 1 of 3
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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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`Honorable William Alsup
`U.S. District Court Judge
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`May 15, 2019
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`Re: Dkt. No. 459, Finjan, Inc. v. Juniper Networks, Inc.,
`Case No. 3:17-cv-05659-WHA (N.D. Cal.)
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`Dear Judge Alsup:
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`W E B S I T E : w w w . i r e l l . c o m
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`W R I T E R ' S D I R E C T
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`R C a r s o n @ i r e l l . c o m
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`Pursuant to this Court’s Order dated May 8, 2019 (Dkt. No. 459), Juniper Networks, Inc.
`(“Juniper”) submits this letter identifying issues that remain to be addressed at or before the October
`trial.
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`While this letter identifies the outstanding issues for all remaining claims in this case, Juniper
`is aware that the Court indicated at the hearing on May 9, 2019, it will order Finjan to specifically
`limit and identify the issues it plans to present at the October trial. This will drastically reduce the
`number of issues that need to be addressed at the October trial. In addition, it will help focus the
`resources of the parties and the Court on those issues that will actually be in dispute—both at trial
`and for pre-trial activities. To best conserve party and Court resources, Juniper requests that the Court
`set a deadline for Finjan to notify the Court and Juniper of the claims Finjan intends to pursue at the
`October trial by no later than May 30, 2019. Once Finjan provides this notification, the parties can
`submit a proposed case schedule (based off the October 21, 2019 trial date) with deadlines for fact
`discovery, expert reports, dispositive motions, Daubert motions, and all other pre-trial deadlines by
`June 7, 2019. Based on the currently unlimited list of claims Finjan could pursue at the October trial,
`Juniper identifies the following list of claims and defenses related to all claims that were not finally
`resolved during the two rounds of the Patent Showdown:
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`Global Defenses/Counter-Claims
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`Inequitable Conduct/Unclean Hands: Juniper’s affirmative defenses and counter-claims
`that the ’926, ’633, ’731, ’494, and ’154 Patents are unenforceable due to inequitable conduct and/or
`unclean hands have yet to be addressed by the Court. See Dkt. No. 218 (Juniper’s First Amended
`Answer). Given that these equitable defenses and counterclaims may be dispositive on all but one of
`the patents-in-suit remaining,1 Juniper believes it would be prudent for the Court to address Juniper’s
`equitable defenses and counter-claims at a bench trial prior to the October jury trial.
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`Failure to Comply With 35 U.S.C. § 287: With regard to the remaining patents-in-suit,
`Juniper maintains that Finjan is either precluded from obtaining damages or that the damages period
`is severely limited due to lack of pre-suit notice. Juniper believes that this issue is dispositive on
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`1 Juniper understands that the Court’s recent Order on Finjan’s failure to comply with
`35 U.S.C. § 287 with respect to the ATP Appliance disposes of all remaining claims under the ’780
`Patent. Thus, the only remaining patent that is not subject to Juniper’s equitable counterclaims and
`defenses is the ’844 Patent.
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`Case 3:17-cv-05659-WHA Document 477 Filed 05/15/19 Page 2 of 3
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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 L AW PARTNERSHIP
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`INCLUDING PROFESSIONAL CORPORATIONS
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`several of Finjan’s remaining claims, and thus should be addressed on summary judgment. For
`example, Finjan failed to identify the ’926 Patent to either Juniper or Cyphort before filing its lawsuit
`against Juniper on September 29, 2017. Because the ’926 Patent expired in January 2017, Finjan’s
`claims against all of the accused products under the ’926 Patent are barred for the same reasons that
`this Court recently found that Finjan’s claims under the ’780 Patent are barred.
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`Similarly, Finjan failed to provide Juniper with any notice of the ’844 Patent prior to filing its
`lawsuit, much less communicate a specific charge of infringement of that patent regarding the SRX
`or Sky ATP. Because the ’844 Patent expired in January 2017, Finjan’s claims against the SRX and
`Sky ATP under the ’844 Patent are barred.
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`Finjan also failed to provide pre-suit notice to either Juniper or Cyphort concerning the ’633
`Patent, which expires on November 8, 2019, or the ’731 Patent, which expired on April 27, 2019. As
`such, the damages periods are limited to September 29, 2017 (for SRX and Sky ATP)/March 8, 2018
`(ATP Appliance) to November 8, 2019 for the ’633 Patent, and May 25, 2018 to April 27, 2019 for
`the ’731 Patent.2
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`The damages period for Finjan’s claims concerning the ATP Appliance under the ’844 and
`’494 Patents are also severely limited, as there is no dispute that Finjan failed to provide Cyphort with
`notice of those patents any earlier than January 28, 2016.
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`Patent-Specific Issues
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`In addition to the issues identified above that apply to all of the remaining patents, Juniper
`identifies the following additional issues, which are patent-specific. To the extent that Finjan chooses
`to narrow the claims that it is asserting against Juniper, some of these issues may no longer need to
`be litigated at the October trial.
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` U.S. Patent No. 6,154,844 (“the ’844 Patent”): Juniper denies that any accused product
`infringes any asserted claim of the ’844 Patent, which includes claims 1, 15, and 41. In
`addition, Juniper asserts that these claims are invalid under 35 U.S.C. §§ 102, 103, and
`112. Juniper notes that the PTAB instituted IPR proceedings brought by Juniper for the
`’844 Patent on April 9, 2019, and a Final Written Decision is expected by April 9, 2020.
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` U.S. Patent No. 7,613,926 (“the ’926 Patent”): Juniper denies that any accused product
`infringes the asserted claim of the ’926 Patent, which is claim 22. In addition, Juniper
`asserts that this claim is invalid under 35 U.S.C. §§ 101, 102, 103, and 112.
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` U.S. Patent No. 7,647,633 (“the ’633 Patent”): Juniper denies that any accused product
`infringes any asserted claim of the ’633 Patent, which includes claims 1, 8, 14, and 19. In
`addition, Juniper asserts that these claims are invalid under 35 U.S.C. §§ 101, 102, 103,
`and 112. Juniper notes that the PTAB instituted IPR proceedings brought by Cisco for the
`’633 Patent on June 5, 2018, and a Final Written Decision is expected by June 5, 2019.
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` U.S. Patent No. 7,418,731 (“the ’731 Patent”): Juniper denies that any accused product
`infringes any asserted claim of the ’731 Patent, which includes claims 1 and 17. In
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`2 The ’731 Patent was added via a motion for leave filed on May 31, 2019, and thus the original
`complaint did not contain any specific charge of infringement as to the ’731 Patent.
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`Case 3:17-cv-05659-WHA Document 477 Filed 05/15/19 Page 3 of 3
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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 L AW PARTNERSHIP
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`INCLUDING PROFESSIONAL CORPORATIONS
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`
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`addition, Juniper asserts that these claims are invalid under 35 U.S.C. §§ 101, 102, 103,
`and 112.
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` U.S. Patent No. 8,677,494 (“the ’494 Patent”): The first round of the Patent Showdown
`in which the jury found that Juniper does not infringe the ’494 Patent only addressed the
`SRX and Sky ATP products because Finjan did not add the ATP Appliance to the case
`until July 27, 2018. Thus, unless Finjan agrees to drop its claims against the ATP
`Appliance product, or unless the Court chooses to rule on Juniper’s § 101 defense (which
`was tried at the December 2018 trial but which the Court has yet to rule on), then there is
`the issue of whether the ATP Appliance infringes the asserted claims of the ’494 Patent,
`as well as the invalidity of those claims under 35 U.S.C. §§ 101, 102, 103, and 112 will
`need to be tried at the October trial. Finjan’s remaining claims under the ’494 Patent may
`also be narrowed if the Court chooses to rule on Juniper’s motion for judgment as a matter
`of law on the issue of notice, which the Court held in abeyance (Dkt. No. 387).
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`Claims That Are Moot In View Of The Patent Showdown Procedures
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`Given the Court’s Orders on both rounds of the Patent Showdown proceedings (Dkt. Nos. 177,
`185, and 459), Juniper understands that the following claims have been resolved:
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` Finjan’s claims against Sky ATP and SRX under all asserted claims of the ’780 Patent
`(claims 1 and 9) have been disposed of via the Court’s order of summary judgment of non-
`infringement.
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` Finjan’s claims against the ATP Appliance under all asserted claims of the ’780 Patent
`(claims 1 and 9) have been disposed of via the Court’s order of summary judgment of no
`damages due to lack of constructive or actual notice.
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` Finjan’s claims against SRX and Sky ATP under all asserted claims of the ’494 Patent
`(claims 1, 14, and 18) have been disposed of via the jury verdict on December 14, 2018,
`and the Court’s ruling on December 14, 2018 granting Juniper’s motion for judgment as
`a matter of law on damages.
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` Juniper further believes that Finjan’s submission on the Court’s order to show cause why
`summary judgment should not be granted for Juniper on the asserted claim of the ’154
`Patent (claim 1) is meritless, and thus requests that the Court enter summary judgment of
`non-infringement on the ’154 patent. Additional details as to why Finjan’s position is
`meritless will be provided in Juniper’s response to Finjan’s submission, which is due
`March 16. In the event that the Court does not enter summary judgment of non-
`infringement on the ’154 Patent, then the issues of infringement and invalidity will need
`to be addressed at the October 2019 trial.
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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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