Case 3:17-cv-05659-WHA Document 648 Filed 01/09/21 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
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`Plaintiff,
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`v.
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`JUNIPER NETWORK, INC., et al.,
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`Defendants.
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`No. C 17-05659 WHA
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`ORDER RE REQUEST
`FOR ATTORNEY’S FEES
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`INTRODUCTION
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`Following affirmance by the United States Court of Appeals for the Federal Circuit of the
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`rulings in this patent infringement suit, the prevailing defendant moves for attorney’s fees.
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`Because this case did stand out as exceptional in certain respects, a limited award of attorney’s
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`fees under 35 U.S.C. § 285 is warranted.
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`STATEMENT
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`Patent owner Finjan, Inc. filed this infringement suit in September 2017, asserting several
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`patents against Juniper Network, Inc. Motion practice led to the “patent showdown.” Each
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`party chose its strongest patent claim, Finjan its best case for infringement and Juniper its best
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`case for noninfringement or invalidity, and moved for early summary judgment in June 2018.
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`Juniper prevailed on noninfringement of claim 1 of U.S. Patent No. 6,804,780 and though
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`Finjan largely prevailed on infringement of claim 1 of U.S. Patent No. 8,677,494, disputes of
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`fact remained. So we set a jury trial on that claim for December 2018. Before trial, however,
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`Case 3:17-cv-05659-WHA Document 648 Filed 01/09/21 Page 2 of 5
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`Daubert motions excluded Finjan’s damages expert. So Finjan attempted to present a facts-
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`only damages case at trial (which was permissible if competent evidence was presented). After
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`hearing the evidence, though, the Court awarded judgment as a matter of law to Juniper on
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`damages. Worse for Finjan, the jury then returned a noninfringement verdict. Eventually this
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`was all affirmed on appeal.
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`The patent showdown proceeded to the next set of claims. In May 2019, Juniper
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`prevailed, unopposed, on noninfringement of most accused products for claim 9 of the ’780
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`patent, and for those remaining accused products, Finjan’s infringement case fell apart because
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`it hadn’t provided adequate notice of the patent to Juniper under 35 U.S.C. § 287. Then, after
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`the construction of a term from claim 1 of U.S. Patent 8,141,154 appeared to preclude
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`infringement, the undersigned ordered the parties to show cause why summary judgment of
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`noninfringement should not be entered. A following order later in July entered such summary
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`judgment for Juniper. Just over a week later, Finjan stipulated to dismissal with prejudice ofa
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`all remaining patent claims.
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`Finjan then appealed aspects of both rounds of the showdown (including trial in the first
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`round). The Federal Circuit, following full briefing and oral argument, summarily affirmed.
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`Juniper now moves for attorney’s fees. This order follows full briefing and oral argument (held
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`telephonically due to COVID-19).
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`ANALYSIS
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`“The court in exceptional cases may award reasonable attorney fees to the prevailing
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`party.” 28 U.S.C. § 285. An exceptional case “stands out from others with respect to the
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`substantive strength of a party’s litigating position (considering both the governing law and the
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`facts of the case) or the unreasonable manner in which the case was litigated.” It is a totality of
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`the circumstances inquiry committed to the court’s sound discretion. Octane Fitness, LLC v.
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`ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014); Elect. Commc’n Tech. v.
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`ShoppersChoice.com, 963 F.3d 1371, 1377 (Fed. Cir. 2020).
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`Losing, in itself, does not make a case exceptional. More is required. In many respects,
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`however, this case was exceptional. For one example, Finjan’s first-round ’494 patent damages
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`Case 3:17-cv-05659-WHA Document 648 Filed 01/09/21 Page 3 of 5
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`fiasco wasted a great deal of everyone’s time and energy. After discovering its infringement
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`theory covered only a minute portion of Juniper’s revenue base, on the eve of trail Finjan flip
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`flopped and came up with a new infringement theory, one which would capture more of
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`Juniper’s products and inflate the target revenue base. Finjan tried to sneak this theory in with
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`its expert-damages report, but we caught it, and the Daubert order excluded that trick.
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`Undaunted, Finjan pressed ahead and tried to present to the jury a facts-only damages
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`case. Finjan, however, utterly failed. In one instance, a Finjan executive attempted to testify to
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`what it would have sought from Juniper in negotiations, prejudicial testimony patently
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`irrelevant to the question of the hypothetical royalty that two reasonable parties might have
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`agreed to. This stunt earned Finjan a stern caution from the Court and a limiting instruction to
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`the jury, striking the testimony (Dkt. No. 336 at 276–78, 290–294). More broadly, Finjan made
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`no effort at trial to allocate the target revenue base between allegedly infringing product
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`functions and noninfringing functions. Put simply, Finjan’s facts-only damages case at trial
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`evinced the same flaws that got its expert-damages report thrown out, artificially attempting to
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`inflate revenue to which it would be entitled, assuming its infringement case succeeded before
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`the jury. After hearing this case, then, the Court struck Finjan’s “woefully inadequate” damages
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`case for the ’494 patent (Dkt. No. 339 at 837–39). Atop that, the expired patent could not
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`support an injunction. So the whole song and dance came to nothing, even before the jury later
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`rejected the merits of the infringement claim. The entire assertion of the ’494 patent thus stood
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`out as exceptional.
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`For another example, Finjan should have dropped the ’780 patent after that first round
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`patent showdown, which granted Juniper summary judgment of noninfringement on claim 1 on
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`the construction of the phrase “performing a hashing function.” Undeterred, Finjan kept the
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`“substantially overlap[ping]” claim 9, which included the same “performing a hashing function”
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`limitation, in the running for the second round of the showdown and even expanded the scope
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`of accused products. Yet when Juniper moved for summary judgment against claim 9, Finjan
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`failed to oppose as to a majority of the accused products. Just as both parties have a joint duty
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`to frame dispositive issues with good judgment, each party has an individual duty to continually
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`Case 3:17-cv-05659-WHA Document 648 Filed 01/09/21 Page 4 of 5
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`reevaluate the viability of its claims. Finjan shirked its end of both of those duties and again
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`wasted everyone’s time and energy in instigating this motion aspect. Finjan v. Juniper, 387 F.
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`Supp. 3d 1004, 1014 (N.D. Cal. 2019).
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`Finjan’s case as to the few remaining accused products, which turned on whether it had
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`provided actual or constructive notice (through product marking) of the ’780 patent to Juniper
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`before its expiration, suffered its own unforced errors. On the constructive notice front, Finjan
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`attempted to relitigate concessions it had already made to the Court in previous hearings. Then
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`on the actual notice front, Finjan misrepresented, though perhaps not intentionally at least
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`recklessly, a favorable district court decision as having been affirmed on those relevant grounds
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`by the Federal Circuit when, in fact, it had not been. Id. at 1014–16. And so, Finjan’s assertion
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`of the ’780 patent stands out as exceptional as well.
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` On the other hand, it cannot be said that every aspect of this case stood out. Juniper
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`complains that Finjan ignored previous adverse claim constructions regarding the ’154 patent
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`by other tribunals, but Finjan had every right to distinguish and even argue against earlier non-
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`binding claim constructions by the Patent Trial and Appeals Board and unpublished Federal
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`Circuit memoranda. Indeed, this Court disagreed with prior claim constructions from another
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`esteemed judge of this district in ruling for Juniper on the “performing a hashing function”
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`limitation of claim 1 of the ’780 patent (Dkt. No. 180 at 9). “[T]he rule of law embodies
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`evenhandedness, and ‘what is sauce for the goose is normally sauce for the gander.’” Nat’l Inst.
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`of Fam. & Life Advs. v. Becerra, 585 U.S. ___, 138 S. Ct. 2361, 2385 (2018) (Breyer, J.,
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`dissenting) (quoting Heffernan v. City of Paterson, 578 U.S. ___, 136 S. Ct. 1412, 1418
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`(2016)). On this point at least, Juniper has little, if any, right to complain.
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`Other considerations weigh against a complete award of fees here. After all, shifting of
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`attorney’s fees deviates from the “‘American Rule’ that each party in a lawsuit ordinarily shall
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`bear its own attorney’s fees . . . .” Hensley v. Eckerhart, 461 U.S. 424, 429 (1983). Juniper’s
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`attempts to analogize to Straight Path continually miss this point. Even there, where the
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`undersigned found as exceptional the patent owner’s contrary and simultaneous arguments to
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`this Court and the Federal Circuit, the fee award remained limited narrowly to time spent
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`Case 3:17-cv-05659-WHA Document 648 Filed 01/09/21 Page 5 of 5
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`defending against the specific patents tainted by that misconduct. That same caution in fee
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`shifting remains appropriate here. See 411 F. Supp. 3d at 1035; 2020 WL 2539002 at *3.
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`In addition, though Juniper highlights the Federal Circuit’s summary affirmance of the
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`merits of both chapters of our case as evidence in its favor, this order hesitates to adopt an
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`interpretation of “exceptional” that inhibits a party’s right of appeal. Indeed, a recent
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`nonprecedential decision of the Federal Circuit similarly cautioned parties against reading
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`exceptionality into a summary affirmance. See Innovation Sciences v. Amazon.com, No. 2020-
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`1639, 2021 WL 28216 at *3 (Fed. Cir. Jan. 5, 2021).
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`Last, this order notes that although Juniper characterizes Finjan’s record here as zero-for-
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`nine (asserted patents), we only litigated three asserted patents to any substantive rulings, the
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`’494, the ’780, the ’154 patents. True enough; it took two rounds of summary judgment and
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`one jury trial. In the end, however, when it came time to litigate the remaining six patents,
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`Finjan voluntarily dismissed them with prejudice. Juniper may have a colorable argument that
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`Finjan should have done so sooner. But on this record this order cannot conclude that the delay
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`stood out as exceptional.
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`CONCLUSION
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`This order holds as exceptional Finjan’s assertion of the ’494 and ’780 patents, but it
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`awards no fees yet. Juniper’s submitted billing records do not distinguish between work
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`eligible for reimbursement and work not. So, Juniper shall resubmit its records and take care to
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`submit only for time spent on the ’494 and ’780 patents, which truly deserves compensation,
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`and at reasonable billing rates. The Court may treble the deduction of inappropriate requests, or
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`may deny fees altogether. The Court is inclined to appoint a special master to resolve
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`remaining disputes. A companion order will set out the procedure going forward.
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`IT IS SO ORDERED.
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`Dated: January 9, 2021.
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`WILLIAM ALSUP
`UNITED STATES DISTRICT JUDGE
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