Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 1 of 20
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@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
`Ingrid M. H. Petersen (SBN 313927)
`ipetersen@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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`)
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`JUNIPER NETWORKS, INC.’S REPLY IN
`Plaintiff,
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`SUPPORT OF ITS MOTION FOR
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`)
`ATTORNEYS’ FEES PURSUANT TO 35
`vs.
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`)
`U.S.C. § 285
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`)
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`JUNIPER NETWORKS, INC., a Delaware
`)
`Corporation,
`)
`Hearing Date: January 7, 2021
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`Hearing Time: 8:00 a.m.
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`Judge: Hon. William Alsup
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`Courtroom: 12
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`Defendant.
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`10899002
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`REPLY ISO JUNIPER’S MOTION FOR ATTORNEYS’ FEES
`Case No. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 2 of 20
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ............................................................................................................... 1
`ARGUMENT ...................................................................................................................... 2
`A.
`Finjan Concedes that Juniper is the Prevailing Party .............................................. 2
`B.
`This Case is Exceptional ......................................................................................... 2
`1.
`Finjan’s Shifting Sands Damages Case for the ’494 Patent ........................ 3
`2.
`Finjan’s ’494 Patent Infringement Case Was “Smoke and
`Mirrors” ....................................................................................................... 6
`Finjan’s Motion for Summary Judgment as to the ’154 Patent
`Was So Meritless it Ended In a Dispositive Ruling for
`Juniper ......................................................................................................... 8
`Finjan’s Notice Argument for the ’780 Patent Was Baseless ................... 11
`4.
`Finjan Forced Juniper to Defend Additional Meritless Claims ................. 13
`5.
`Finjan’s Appeal Was Exceptional ............................................................. 14
`6.
`Finjan Does Not Contest that the Fees Requested by Juniper are
`Reasonable ............................................................................................................ 14
`Finjan’s Decision to Fire its Counsel is No Reason to Delay ............................... 15
`D.
`CONCLUSION ................................................................................................................. 15
`
`C.
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`3.
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`
`
`I.
`II.
`
`III.
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`10899002.12 01
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`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 3 of 20
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
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`Page(s)
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`Artic Cat, Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ..................................................................................................12
`
`Auto. Techs. Int’l, Inc. v. Siemens VDO Auto. Corp.,
`744 F. Supp. 2d 646 (E.D. Mich. 2010) .....................................................................................13
`
`Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005) ....................................................................................................7
`
`Elec. Commcn’s Techs., LLC v. ShoppersChoice.com, LLC,
`963 F.3d 1371 (Fed. Cir. 2020) ....................................................................................................3
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`879 F.3d 1299 (Fed. Cir. 2018) ....................................................................................................5
`
`Finjan, Inc. v. Cisco Sys., Inc.,
`No. 17-cv-00072-BLF, Dkt. 555 (N.D. Cal. Apr. 17, 2020) ....................................................4, 7
`
`Finjan, Inc. v. ESET, LLC,
`No. 17-cv-183, 2019 WL 5212394 (S.D. Cal. Oct. 16, 2019) .....................................................4
`
`Funai Elec. Co. v. Daewoo Elecs. Corp.,
`616 F.3d 1357 (Fed. Cir. 2010) ............................................................................................11, 12
`
`Gilead Sciences, Inc. v. Merck & Co., Inc.,
`No. 13-cv-04057, 2017 WL 3007071 (N.D. Cal. July 14, 2017) .................................................8
`
`Honeywell Int’l Inc. v. Nokia Corp.,
`615 F. App’x 688 (Fed. Cir. 2015) ...............................................................................................1
`
`Hunter’s Edge, LLC v. Primos, Inc.,
`No. 1:14-cv-00249, 2016 WL 9244954 (M.D. Ala. Sep. 6, 2016) ..............................................8
`
`Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
`876 F.3d 1372 (Fed. Cir. 2017) ..................................................................................................14
`
`Kilopass Tech., Inc. v. Sidense Corp.,
`82 F. Supp. 3d 1154 (N.D. Cal. 2015) .......................................................................................15
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`Linex Techs., Inc. v. Hewlett-Packard Co.,
`No. C 13-159 CW, 2014 WL 4616847 (N.D. Cal. Sept. 15, 2014) .............................................9
`
`Monsanto Co. v. Bowman,
`657 F.3d 1341 (Fed. Cir. 2011) ..................................................................................................12
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`10899002
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`Case No. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 4 of 20
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`Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
`572 U.S. 545 (2014) .............................................................................................................1, 2, 8
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`Palo Alto Networks, Inc. v. Finjan, Inc.,
`752 F. App’x 1017 (Fed. Cir. 2018) .......................................................................................9, 10
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`Phigenix, Inc. v. Genentech, Inc.,
`No. 15-cv-1238, 2018 WL 3845998 (N.D. Cal. Aug. 13, 2018) .................................................3
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`Phonometrics, Inc. v. Westin Hotel Co.,
`350 F.3d 1242 (Fed. Cir. 2003) ....................................................................................................9
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`Princeton Digital Image Corp. v. Office Depot Inc.,
`No. C 13-239, 2016 WL 1533697 (D. Del. Mar. 31, 2016) .......................................................11
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`Regents of Univ. of Minnesota v. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013) ....................................................................................................10
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`Sathianathan v. Smith Barney, Inc.,
`No. C 04-02130, 2009 WL 537158 (N.D. Cal. Mar. 3, 2009) ...................................................14
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`SRI Int’l, Inc. v. Cisco Sys., Inc.,
`No. 13-1534, 2020 WL 1285915 (D. Del. Mar. 18, 2020) ........................................................15
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`Straight Path IP Grp., Inc. v. Cisco Sys., Inc.,
`411 F. Supp. 3d 1026 (N.D. Cal. 2019) .......................................................................................3
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`Straight Path IP Grp., Inc. v. Cisco Sys., Inc.,
`No. C 16-03463 WHA, 2020 WL 5522993 (N.D. Cal. Mar. 4, 2020) .........................................9
`
`Taurus IP, LLC v. DaimlerChrysler Corp.,
`726 F.3d 1306 (Fed. Cir. 2013) ..................................................................................................10
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`Therasense, Inc. v. Becton, Dickinson & Co.,
`No. C 04-02123 WHA, 2012 WL 1877895 (N.D. Cal. May 22, 2012) .......................................8
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`Ultimate Combustion Co., Inc. v. Fuecotech, Inc.,
`No. 12-60545, 2014 WL 12495264 (S.D. Fla. Jun. 4, 2014) .....................................................14
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`Statutes
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`35 U.S.C. § 285 ............................................................................................................................1, 13
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`35 U.S.C. § 287 ..........................................................................................................................11, 12
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`Rules
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`Fed. R. Civ. P. 36 .............................................................................................................................14
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`L.R. 54-5 ..........................................................................................................................................15
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10899002
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`REPLY ISO JUNIPER’S MOTION FOR ATTORNEYS’ FEES
`Case No. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 5 of 20
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`I.
`
`INTRODUCTION
`Finjan’s lawsuit against Juniper was exceptional in every sense of the word. Of the nine
`patents Finjan asserted, only the ’494 Patent survived to trial. As to that lone patent, the Court struck
`Finjan’s damages case as “woefully inadequate” and the jury rejected its infringement case, which
`the Court later described as “smoke and mirrors.” Dkt. 339 at 839:6-8; Dkt. 382 at 3:21-4:18. All
`of Finjan’s other patents were rejected at summary judgment or dismissed with prejudice, and its
`appeal was summarily rejected by the Federal Circuit. Although not a single one of Finjan’s patent
`claims had any merit, Finjan forced Juniper to litigate for three years and incur over $8.6 million in
`attorneys’ fees. It is no exaggeration to say that 35 U.S.C. § 285 was enacted for cases like this one.
`Finjan argues that this case is not exceptional because it had a subjective “good faith” belief
`in its positions due to past success in litigating against other parties and products. Opposition (Dkt.
`638) (“Opp.”) at 1–2. This is irrelevant. The Supreme Court rejected “bad faith” as a requirement
`for finding a case exceptional, and the mere fact that Finjan successfully litigated against different
`parties, with different products, has no bearing on whether Finjan had a meritorious case against
`Juniper. See Honeywell Int’l Inc. v. Nokia Corp., 615 F. App’x 688, 689 (Fed. Cir. 2015) (Supreme
`Court “rejected our precedent” requiring “a showing of subjective bad faith” and “lowered the
`burden of proof for proving a case exceptional”) (citing Octane Fitness, LLC v. ICON Health &
`Fitness, Inc., 572 U.S. 545, 554–48 (2014)).
`In any event, Finjan’s pursuit of objectively baseless claims is not the only reason this case
`is exceptional; the manner in which Finjan litigated its claims is equally (if not more) egregious.
`For example, Finjan asserts that its damages theory for the ’494 Patent was “approved by past
`Federal Circuit law.” Opp. at 1. That representation is not only false (as its theory has actually been
`excluded multiple times), it ignores the reason its conduct was exceptional in this case: it is not
`because Finjan advanced a bogus damages theory, it is because Finjan attempted to change its
`infringement theory to one not advanced by its infringement expert simply to inflate damages. Dkt.
`283 at 4–5. Even after the Court excluded Finjan’s untimely theory, Finjan tried to present the same
`inflated numbers at trial through a “fact-based” damages theory, forcing this Court to exclude them
`again and expressly hold that Finjan was not entitled to any damages. See, e.g., Dkt. 339 at 838:3-
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`Case No. 3:17-cv-05659-WHA
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`5, 839:6-8. Finjan’s refusal to respect this Court’s ruling (and its own disclosed infringement
`theories) rendered the entire trial on the ’494 Patent a waste, forcing Juniper to spend millions of
`dollars trying a patent for which Finjan could not have recovered any damages.
`This is only one example. Juniper’s motion details Finjan’s repeated misconduct, including
`pursuing rejected claim constructions, continuing to pursue claims after dispositive rulings, reneging
`on its own prior stipulations, and more. See, e.g., Motion (“Mot.”) at 15–22. Further, Finjan does
`not contest that the amount of fees, number of hours, and hourly rates sought by Juniper are
`reasonable, and has thus waived any challenge to the fee amount. The Court should therefore declare
`this case exceptional and award Juniper the full $8,656,971 in attorneys’ fees it seeks.
`II.
`ARGUMENT
`A.
`Finjan Concedes that Juniper is the Prevailing Party
`Finjan admits that Juniper prevailed in this case. Opp. at 1 (“Juniper ended up prevailing”).
`Notably, however, Finjan continues its pattern of misrepresentations by claiming that it “defeat[ed]
`motions seeking to invalidate its patents.” Id. This statement is false; the Court never ruled on
`Juniper’s motions to invalidate the ’780 Patent under § 101 because it disposed of those claims on
`the issues of non-infringement and notice. Dkt. 180; Dkt. 491. Similarly, the Court never ruled on
`Juniper’s § 101 defense for the ’494 Patent because the jury found no infringement. Dkt. 348.
`B.
`This Case is Exceptional
`Juniper’s motion identified multiple grounds that, independently and in combination, render
`this case exceptional. See, e.g., Mot. at 8. Finjan does not contest that this Court, the jury, and the
`Federal Circuit rejected all of its dispositive arguments and that it did not recover a single cent on
`its claims. Finjan’s arguments against exceptionality are meritless and, as described below, amount
`to nothing more than further “smoke and mirrors.”
`Finjan also misrepresents the standard for exceptionality, quoting a 2003 Federal Circuit
`case and suggesting fees are only available in “limited” circumstances. However, the Supreme Court
`overruled the Federal Circuit’s previously restrictive standard in Octane Fitness, 572 U.S. 545, and
`the Federal Circuit has since clarified that an exceptional case “is simply one that stands out from
`others with respect to the substantive strength of a party’s litigating position (considering both the
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 7 of 20
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`governing law and the facts of the case) or the unreasonable manner in which the case was litigated.”
`Elec. Commcn’s Techs., LLC v. ShoppersChoice.com, LLC, 963 F.3d 1371, 1376 (Fed. Cir. 2020).
`1.
`Finjan’s Shifting Sands Damages Case for the ’494 Patent
`
`As detailed in Juniper’s motion, Finjan’s damages case for the ’494 Patent was exceptional
`in at least two respects. See Mot. at 9–12.
`First, after realizing the damages base for the accused products was no more than $1.8
`million, Finjan submitted a damages expert report that tried to change its infringement theory in
`order to inflate the damages base to $142 million. Dkt. 283 at 4–5. This Court rejected Finjan’s
`new theory, holding that “Finjan may not now, in an effort to hyper-inflate its damages claim,
`belatedly raise new infringement theories that it failed to assert in its summary judgment motion
`(and, in fact, disclaimed). Finjan will thus be stuck with the $1.8 million base.” Id.; see also, e.g.,
`Straight Path IP Grp., Inc. v. Cisco Sys., Inc., 411 F. Supp. 3d 1026, 1028 (N.D. Cal. 2019) (“the
`shifting sands of the patent owner’s [arguments]” rendered the case exceptional); Phigenix, Inc. v.
`Genentech, Inc., No. 15-cv-1238, 2018 WL 3845998, at *5 (N.D. Cal. Aug. 13, 2018) (litigation
`conduct “became ‘exceptional’” where plaintiff tried to change its infringement theory).
`Second, rather than accept the Court’s ruling, Finjan insisted the case should proceed to trial,
`where it attempted to present a “fact based” damages case relying on the same inflated damages
`base. See, e.g., Dkt. 336 (Trial Tr.) at 277:3-23 (testimony concerning Finjan “analysis” of a $20
`million royalty). Because this $20 million royalty “undoubtedly included the products that this
`Court has now ruled are not a part of this case,” this Court rebuked Finjan, excluded the evidence,
`and issued a curative instruction. Id. at 290:5-294:12. The Court ultimately granted judgment as a
`matter of law that “there will be no damages award,” finding that Finjan’s damages case was
`“woefully inadequate.” Dkt. 339 (Trial Tr.) at 838:3-5, 839:6-8 (emphasis added).
`Finjan’s opposition does not even attempt to justify its improper infringement theory.
`Instead, Finjan simply argues that its expert presented a “reasonable amount of damages” of $60-
`$70 million based on a royalty base of “$142.1 million.” Opp. at 15–16.1 Finjan’s argument
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`1 Finjan’s misrepresentations of the record continue: Finjan claims “[i]t is undisputed at all of
`Juniper’s SRX gateway sales (amounting to about $142.1 million in revenue) included [a] free trial
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`Case No. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 8 of 20
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`misrepresents the Court’s order, which expressly found that Finjan’s damages theory should be
`excluded because Finjan was attempting to “belatedly raise new infringement theories” and that,
`under Finjan’s actual infringement theory, the damages base was $1.8 million. Dkt. 283 at 4-5.
`Further, as the Court found, “[t]hat Expert Arst would suggest that Juniper would have been willing
`to pay an eyepopping $60–$70 million as a royalty for the sake of $1.8 million in revenue is
`preposterous. This order therefore agrees with Juniper that Expert Arst’s testimony ‘defies basic
`laws of economics.’” Dkt. 283 at 4.
`Finjan next argues that it “acted reasonably” in presenting Mr. Arst’s damages model
`because it used a “cost savings” approach approved by the Federal Circuit. Opp. at 16–17. This
`argument misses the point. Again, the primary problem with Finjan’s damages case was not that it
`used a cost savings legal theory, but rather that Finjan attempted to change its infringement theory
`(specifically, to accuse additional products) to inflate the damages base. Dkt. 283 at 4–5. Further,
`Finjan’s assertion that its cost savings approach (which sought $60-$70 million) was reasonable also
`relies on the same rejected $142 million damages base this Court struck. Id.
`But there is more: Finjan’s “cost savings” argument is also factually inaccurate. Though
`Finjan claims that it has “successfully used” the cost savings approach in other cases, it fails to cite
`a single case in which it did so. In fact, multiple courts have excluded Finjan’s cost savings theories
`on grounds similar to those raised by Juniper in this case. See Finjan, Inc. v. Cisco Sys., Inc., No.
`17-cv-00072-BLF, Dkt. 555 at 8–9 (N.D. Cal. Apr. 17, 2020) (“Dr. Valerdi’s cost analysis is based
`not on creating a non-infringing alternative system, but on recreating the accused system. Because
`the Federal Circuit’s ‘cost savings’ method is based on comparing the difference in cost between
`the infringing product and a non-infringing alternative, the Court sees no relevance in Dr. Valerdi’s
`estimated actual cost.”); Finjan, Inc. v. ESET, LLC, No. 17-cv-183, 2019 WL 5212394, at *3 (S.D.
`Cal. Oct. 16, 2019) (excluding for same reason); see also Dkt. 228-4 at 8-12 (Juniper Daubert).
`Finjan also attempts to defend its “fact based” damages case, contending there was
`
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`[to Sky ATP.” Opp. at 15. To the contrary, Sky ATP was only available for a subset of SRX models.
`Dkt. 228-4 at 3. Thus, Finjan’s $142.1 million damages base improperly included revenues for SRX
`models for which a free trial to Sky ATP could not have ever been activated by the customer.
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`“extensive evidence” on damages. Opp. at 17–18. Wrong again. First, as to Finjan’s claim that it
`presented “extensive evidence” of apportionment, Finjan does not identify any actual evidence it
`presented, instead relying on testimony from Juniper’s case. Opp. at 17–18 (citing evidence from
`“Juniper’s own witness”). As the Court found in granting JMOL of no damages, “[f]or purposes of
`this motion, we have to look at the plaintiff’s case, and it was not sufficient. It was woefully
`inadequate. So there will be no damage award.” Dkt. 339 at 839:6-8 (emphasis added). The Court
`further found that “on this record it would be impossible for the jury to apportion the revenue
`between the patented item and the unpatented items.” Id. at 838:3-5. In short, Finjan presented no
`evidence on apportionment, much less “extensive” evidence.
`Second, contrary to Finjan’s claim that it presented appropriate evidence of a royalty base,
`Opp. at 18, its trial presentation simply repeated its effort to inflate the royalty base (in contravention
`of the Court’s order) by including revenues from Juniper SRX devices that were not accused. See,
`e.g., Dkt. 323 at 1–2. This Court expressly rebuked Finjan during trial for attempting to offer such
`evidence, and issued a curative instruction to the jury. Dkt. 336 at 290:5-294:12.
`Third, as to the royalty rate, Finjan argues that it presented appropriate evidence that Finjan
`“seeks a royalty rate of 8% on associated hardware revenues, and 16% on associated software
`revenues, or a use-based rate of 32¢/scan or $8/user.” Opp. at 18. However, as the Court correctly
`noted at trial, the rates Finjan “seeks” are irrelevant—what matters is the rates it actually obtained.
`Dkt. 336 at 290:21-291:11 (“the law is not -- in the hypothetical negotiation the law is not, N-O-T,
`that you get to put your guy on the stand and he gets to say ‘Here’s the way we like to negotiate.’”).
`Indeed, Finjan knew when it presented these rates that the Federal Circuit had expressly rejected
`these exact royalty rates in a prior Finjan case. Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299,
`1312 (Fed. Cir. 2018) (“In short, the $8-per-user fee appears to have been plucked from thin air and,
`as such, cannot be the basis for a reasonable royalty calculation.”).
`In sum, Finjan’s damages case for the ’494 Patent encapsulates why this case is exceptional.
`Finjan first attempted to change its theory to inflate damages then, when the Court stopped this
`effort, Finjan attempted to end-run around the Court and pursue the same inflated damages at trial
`(which the Court again rejected). Finjan’s conduct forced a pointless trial on a patent for which
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`Case No. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 10 of 20
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`Finjan had no damages even if it established infringement (which it also failed to do), costing Juniper
`millions of dollars in legal fees that it never should have had to incur.
`2.
`Finjan’s ’494 Patent Infringement Case Was “Smoke and Mirrors”
`
`Finjan’s infringement case as to the ’494 Patent, which the Court aptly summarized as
`“smoke and mirrors,” also renders this case exceptional. Dkt. 382 at 3:21-4:18; Mot. at 12–14.
`Pursuant to the Court’s “showdown” procedure, Finjan selected claim 10 of the ’494 Patent
`as its “strongest claim” and moved for summary judgment of infringement. Dkt. 98 at 1. The Court
`did not grant summary judgment, and instead ordered an early trial on Claim 10. Dkt. 189. As
`Finjan acknowledges in its opposition, “the dispute [at trial] was narrow.” Opp. at 8. Specifically,
`whether the accused Juniper products stored security profiles in a “database,” which the parties
`stipulated means a “collection of interrelated data organized according to a database schema to
`serve one or more applications.” Dkt. 189 at 16-17 (emphasis added).
`At trial, Juniper presented evidence that the accused products did not practice the “database”
`limitation because they store security profiles in two Amazon-supplied storage solutions (called
`DynamoDB and S3) that do not use database schemas. Dkt. 338 at 750:2-19. In support, Juniper
`presented Amazon documents expressly stating that “DynamoDB is schema-less” and that S3 stores
`data as “unstructured blobs.” Id. at 751:10-752:18; Trial Ex. 1264-1 at 3-4 (Dkt. 126-20).
`Finjan, in contrast, presented no evidence that DynamoDB or S3 use a database schema.
`Instead, Finjan pointed to a different component (ResultsDB), even though Juniper did not store
`security profiles there. Dkt. 337 at 448:4-15. Ultimately, Finjan’s expert admitted that ResultsDB
`was not actually a database, but was instead an “application programming interface” that did not
`physically store security profiles. Dkt. 337 (Trial Tr.) 440:14-17 (“the Results Database
`API”),467:9-11 (conceding information is actually stored in “DynamoDB, and the S3”).
`Juniper exposed Finjan’s sleight-of-hand at closing argument, explaining that Finjan’s
`infringement theory “has sort of a mix and match problem. They can find a database within the
`meaning of the claim, the definition of the construction, but they can’t find any security profiles
`being stored in there. And they can find where the security profiles are being stored, which is
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`10899002
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`REPLY ISO JUNIPER’S MOTION FOR ATTORNEYS’ FEES
`Case No. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 11 of 20
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`DynamoDB and S3, but those don’t have a schema and, therefore, don’t qualify as databases under
`the Court’s construction.” Dkt. 339 (Trial Tr.) at 931:23-932:6. The jury returned a verdict of no
`infringement (Dkt. 333) and, after trial, the Court denied Finjan’s motion for judgment as a matter
`of law. Dkt. 353. In doing so, the Court noted Juniper’s closing on the “database” issue and stated
`that, after Juniper’s closing argument, “finally the scales fell from my eyes.” Dkt. 382 at 3:21-4:18.
`The Court then explained that “So those statements that I made along the way about how I -- that
`was just -- I was just drawn in by your smoke and mirrors.” Id.
`Finjan’s opposition does nothing to undermine the Court’s assessment of Finjan’s case. For
`example, Finjan’s lead argument is that its case was not frivolous because the Juniper products
`practiced some limitations of Claim 10 (not the “database” limitation). Opp. at 9. Of course,
`whether Finjan established that Juniper practiced some limitations of Claim 10 is irrelevant, because
`“infringement requires that each and every limitation set forth in a claim appear in an accused
`product.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed.
`Cir. 2005) (emphasis added). Practicing only some limitations of a claim creates the same liability
`as practicing no limitations of that claim.
`Finjan’s second strategy is to repeat the same “smoke and mirrors” tactic Finjan attempted
`at trial. For example, Finjan argues the Juniper products use a database” by citing a variety of
`documents and testimony using the word “database.” Opp. at 8-9. Of course, Finjan fails to identify
`any evidence that the locations where Juniper actually stored security profiles (DynamoDB and S3)
`are databases within the agreed construction in this case (i.e., databases using a schema). Finjan also
`attempts to attack Juniper’s evidence by claiming Juniper’s motion quoted deposition testimony not
`before the jury. Opp. at 10. Once again, Finjan is misrepresenting the record. The cited testimony
`was played for the jury. Dkt. 337 at 501:7-12 (playing page 259:12-18 of Dr. Cole’s deposition).
`Finjan next argues that the fact its infringement case “made it to a jury” means fees should
`be denied. Opp. at 9. Finjan’s argument is misleading, because Finjan’s claims did not “survive”
`summary judgment. Rather, as discussed above, Finjan moved for summary judgment of
`infringement and the Court denied Finjan’s motion, instead ordering a trial. Dkt. 189. Juniper
`never moved for summary judgment of non-infringement on the ’494 Patent. All Finjan can say,
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`REPLY ISO JUNIPER’S MOTION FOR ATTORNEYS’ FEES
`Case No. 3:17-cv-05659-WHA
`
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`Case 3:17-cv-05659-WHA Document 642 Filed 12/21/20 Page 12 of 20
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`therefore, is that Finjan’s own patent survived Finjan’s motion for summary judgment. And, while
`this seems like a very low bar, it is a bar that Finjan could not even clear for its ’154 patent, as
`discussed below. The cases that Finjan cites (Checkpoint Systems and ResQNet) are inapplicable,
`as both address situations where the defendant moved for summary judgment and the Court denied
`the motion. Finjan’s claims never faced that same pre-trial testing here and, the first time they were
`tested, the jury rejected them and the Court found they were “smoke and mirrors.”
`In any event, Finjan’s assertion that fees cannot be awarded where claims make it to trial is
`wrong. See, e.g., Gilead Sciences, Inc. v. Merck & Co., Inc., No. 13-cv-04057, 2017 WL 3007071,
`at *2 (N.D. Cal. July 14, 2017) (awarding fees to defendants after jury and bench trials); Therasense,
`Inc. v. Becton, Dickinson & Co., No. C 04-02123 WHA, 2012 WL 1877895, at *2-4 (N.D. Cal. May
`22, 2012) (awarding fees to prevailing defendants at bench trial); see also Hunter’s Edge, LLC v.
`Primos, Inc., No. 1:14-cv-00249, 2016 WL 9244954, at *5 n. 3 (M.D. Ala. Sep. 6, 2016) (“if Octane
`Fitness means anything it is that there is no ‘rigid’ test—such as whether a party filed (or did not)
`or won (or lost) summary judgment—for determining whether a case is exceptional.”).
`Finjan also contends its case was reasonable because the Court stated it initially believed
`Finjan “had a strong case on infringement.” Opp. at 9. But Finjan omits the rest of the Court’s
`statement, where the Court explained “I was wrong about that” and “So those statements that I made
`along the way about how I -- that was ju