Case 3:18-cv-02621-WHO Document 65 Filed 01/25/19 Page 1 of 12
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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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`CHECK POINT SOFTWARE
`TECHNOLOGIES, INC., et al.,
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`Defendants.
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`Case No. 18-cv-02621-WHO
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`
`ORDER GRANTING MOTION TO
`STRIKE DEFENDANTS'
`AFFIRMATIVE DEFENSES IN PART
`AND DENYING IN PART
`
`Re: Dkt. No. 49
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`
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`Plaintiff Finjan, Inc. (“Finjan”) brings a patent infringement lawsuit against defendants
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`Check Point Software Technologies, Inc. and Check Point Software Technologies Ltd.
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`(collectively “Check Point”) alleging infringement of seven of Finjan’s patents related to
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`cybersecurity. Finjan moves to strike Check Point’s affirmative defenses for lack of standing,
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`prosecution laches, and inequitable conduct.
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`
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`I grant Finjan’s motion in part and deny it in part. The motion to strike the prosecution
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`laches affirmative defense is granted with leave to amend; the allegations contained in the answer
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`are insufficient to raise an inference that Finjan’s prosecution of the patents at issue was
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`unreasonable. Finjan’s motion to strike the affirmative defenses based on inequitable conduct is
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`denied; the allegations in the answer are enough to survive dismissal. Finjan’s motion to strike the
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`affirmative defense for lack of standing is unopposed and granted.
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`BACKGROUND1
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`Finjan holds a number of patents related to cybersecurity and is in the business of
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`1 Finjan’s request for judicial notice [Dkt. No. 50] is granted. The documents Finjan asks that I
`take notice of are matters of public record. Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir.
`2001) (citing Fed. R. Evid. 201).
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`developing and producing secure mobile products for the consumer market. Complaint [Dkt. No.
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`1] at ¶¶ 8-9. Check Point is also a cybersecurity company. Id. at ¶ 35. Finjan filed suit against
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`Check Point alleging that Check Point directly and indirectly infringed on several of its patents:
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`the direct infringement claims involve U.S. Patent No. 6,154,844 (“the ‘844 Patent”), U.S. Patent
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`No. 6,965,968 (“the ‘968 Patent”), U.S. Patent No. 7,418,731 (“the ‘731 Patent”), U.S. Parent No.
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`7,647,633 (“the ‘633 Parent”), U.S. Patent No. 8,079,086 (“the ‘086 Patent”), U.S. Patent No.
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`8,141,154 (“the ‘154 Patent”), and U.S. Patent No. 8,677,494 (“The ‘494 Patent”), and the indirect
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`infringement claims relate to all of the above patents except the ‘154 Patent. Id..
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`On November 21, 2018, Check Point filed an amended answer asserting twelve affirmative
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`defenses. (“Answer”) [Dkt. No. 46]. Finjan moves to strike the second affirmative defense for
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`lack of standing related to the ‘154 Patent; the sixth affirmative defense for prosecution laches
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`related to the ‘494 Patent, the ‘154 Patent, the ‘086 Patent, the ‘633 Patent, and the ‘731 Patent;
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`the ninth affirmative defense for inequitable conduct related to the ‘154 Patent; and the tenth
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`affirmative defense for inequitable conduct related to the ‘494 Patent. [Dkt. No. 49]. The motion
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`to strike the prosecution laches defense and inequitable conduct defense appears to have been
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`litigated in this district in several cases where Finjan was the plaintiff. See e.g. Finjan, Inc. v.
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`Juniper Network, Inc., No. 17-CV-05659-WHA, 2018 WL 5454318, at *1 (N.D. Cal. Oct. 29,
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`2018); Finjan, Inc. v. Cisco Sys., Inc., No. 17-CV-00072-BLF, 2018 WL 4361134, at *1 (N.D.
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`Cal. Sept. 13, 2018); Finjan, Inc. v. Bitdefender Inc., No. 17-CV-04790-HSG, 2018 WL 1811979,
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`at *1 (N.D. Cal. Apr. 17, 2018).
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`LEGAL STANDARD
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`Federal Rule of Civil Procedure 12(f) allows the Court to strike from a pleading an
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`insufficient defense or any redundant, immaterial, impertinent, or scandalous matter. Fed. R. Civ.
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`P. 12(f). “The function of a 12(f) motion to strike is to avoid the expenditure of time and money
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`that must arise from litigating spurious issues by dispensing with those issues prior to trial.”
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`Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970, 973 (9th Cir. 2010) (citation and alteration
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`omitted). Motions to strike, however, “are generally disfavored [by courts] because the motions
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`may be used as delaying tactics and because of the strong policy favoring resolution on the
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`Case 3:18-cv-02621-WHO Document 65 Filed 01/25/19 Page 3 of 12
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`merits.” Barnes v. AT & T Pension Ben. Plan-Nonbargained Program, 718 F.Supp.2d 1167, 1170
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`(N.D. Cal. 2010) (citation omitted). Such motions should only be granted if “the matter has no
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`logical connection to the controversy at issue and may prejudice one or more of the parties to the
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`suit.” New York City Employees' Ret. Sys. v. Berry, 667 F.Supp.2d 1121, 1128 (N.D. Cal. 2009).
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`“Where the moving party cannot adequately demonstrate such prejudice, courts frequently deny
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`motions to strike even though the offending matter literally was within one or more of the
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`categories set forth in Rule 12(f).” Id. (citation and quotation marks omitted). “Ultimately,
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`whether to grant a motion to strike lies within the sound discretion of the district court.” Cruz v.
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`Bank of New York Mellon, No. 12—CV- 00846-LHK, 2012 WL 2838957, at *2 (N.D. Cal. July
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`10, 2012) (citing Whittlestone, 618 F.3d at 973).
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`DISCUSSION
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`I.
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`PROSECUTION LACHES
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`Finjan moves to strike Check Point’s sixth affirmative defense of prosecution laches
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`related to the ‘494 Patent, the ‘154 Patent, the ‘086 Patent, the ‘633 Patent, and the ‘731 Patent for
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`failure to sufficiently plead that it engaged in unreasonable or unexplained delay or that Check
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`Point was prejudiced by its conduct. Mot. at 9-12. In support of its motion, Finjan contends that
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`neither its alleged strategy to limit the universe of prior art by claiming priority to early-filed
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`applications nor Check Point’s conclusory statements related to each of the above patent’s priority
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`and filling dates support an inference of unreasonable delay. Id. Additionally, Finjan contends
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`that terminal disclaimers are irrelevant to prosecution laches and that Check Point has failed to
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`show that it has been prejudiced. Finjan asks me to join my colleagues in this district who have
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`granted similar motions in favor of Finjan. Id. (citing Juniper, 2018 WL 5454318, at *4-5; Cisco,
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`2018 WL 4361134, at *3-4.)
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`In opposition, Check Point argues that because the time period between the priority date
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`and filing dates of each of the five patents “exceed[s] the average age for granted patent
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`applications during the period of the five patents” and are for an improper purpose, they constitute
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`unreasonable delay. Oppo. at 1-5. It alleges that by belatedly “claiming priority to early-filed
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`applications, Finjan limited the universe of prior art considered by the examiner during the
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`prosecution of its patents.” Id. (citing Answer at ¶ 18). It also argues that it sufficiently alleged
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`prejudice by pleading that during Finjan’s long prosecution periods, Check Point was unable to
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`determine what was patented and what was not, and that in the interim it invested considerable
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`resources on products and services that Finjan now accuses infringe upon the above patents. Id. at
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`4. Check Point urges that I follow the court’s decision in Finjan, Inc. v. ESET, LLC, No. 17-CV-
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`00183, 2017 WL 4358128, at *1 (S.D. Cal. Oct. 2, 2017), where it argues similar allegations by an
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`opponent of Finjan’s were sufficient and that in this pleading it has addressed the deficiencies
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`identified in Juniper and Cisco. Id.
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` “The doctrine [of prosecution laches] ‘may render a patent unenforceable when it has
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`issued only after an unreasonable and unexplained delay in prosecution’ that constitutes an
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`egregious misuse of the statutory patent system under the totality of the circumstances.” Cancer
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`Research Tech. Ltd. v. Barr Labs., Inc., 625 F.3d 724, 728 (Fed. Cir. 2010) (quoting Symbol
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`Techs., Inc. v. Lemelson Med., Educ. & Research Found., 422 F.3d 1378, 1385–86 (Fed. Cir.
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`2005)). It also requires a showing of prejudice, which in turn requires “evidence of intervening
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`rights, i.e., that either the accused infringer or others invested in, worked on, or used the claimed
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`technology during the period of delay.” Id. at 729. “[T]here are no strict time limitations for
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`determining whether continued refiling of patent applications is a legitimate utilization of statutory
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`provisions or an abuse of those provisions. The matter is to be decided as a matter of equity,
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`subject to the discretion of [the] district court....” Symbol Techs., 422 F.3d at 1385.
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`I agree with Finjan that Check Point has failed to plead adequate facts to show
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`unreasonable or unexplained delay in the prosecution of the above patents. Check Point’s mere
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`recitation of the number of years between Finjan’s filing of its application for the parent patent and
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`the applications for the five patents at issue here and the conclusory allegation that Finjan adopted
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`a repetitious continuation strategy and limited the universe of prior art by claiming priority to
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`early-filed applications, without more, fails to raise an inference that the delay was unreasonable
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`or unexplained. Id. (“There are legitimate grounds for refiling a patent application which should
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`not normally be grounds for a holding of laches, and the doctrine should be used sparingly lest
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`statutory provisions be unjustifiably vitiated”). Although Check Point argues in its opposition that
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`Case 3:18-cv-02621-WHO Document 65 Filed 01/25/19 Page 5 of 12
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`the delays between the priority date and the filing date of the five patents at issue “far exceed the
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`average age for granted patent applications during the period of the five patents at issue[,]” this
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`allegation is not contained in the Amended Answer and may not properly be considered in this
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`motion. Oppo. at 3; Schneider v. California Dep’t of Corr., 151 F.3d 1194, 1197 n.1 (9th Cir.
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`1998) (finding that new allegations in an opposition motion are irrelevant for dismissal purposes).
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`Additionally, Finjan has put forward an explanation for each delay. Mot. at 9-11.
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`This case is different from ESET, where the ESET defendant pleaded facts showing that the
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`patents at issue were not entitled to earlier priority date. See ESET SPOL. S.R.O.’s Amended
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`Answer, Affirmative Defenses and Counterclaims to Plaintiff’s Original Complaint for Patent
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`Infringement at ¶¶61-74, ESET, LLC, No. 17-CV-00183 (S.D. Cal. Aug. 14, 2017), ECF No. 143.2
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`Here, Check Point fails to explain why Finjan’s strategy is not a legitimate utilization of statutory
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`provisions. This case is also distinguishable from Hynix Semiconductor Inc. v. Rambus Inc., No.
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`C-05-02298 RMW, 2007 WL 4209386, at *3 (N.D. Cal. Nov. 26, 2007), which Check Point cites
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`to support its contention that long delays in issuing entire families of patents can lead to an
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`inference of prosecution laches. Oppo. at 3. In Hynix, the court found that some evidence
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`suggested that the patents-in-suit took longer to issue than 99.9% of similar patents and denied
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`summary judgment on prosecution laches. 2007 WL 4209386, at *3. No such allegation is
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`present here.
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`Although Check Point’s allegations specifying the patents and the products that it invested
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`in during the period of delay is sufficient to allege prejudice, Check Point has not sufficiently
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`pleaded that the delay was unreasonable or unexplained. Answer at ¶ 19; Cancer Research, 625
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`F.3d at 729. Therefore, Finjan’s motion to strike the sixth affirmative defense is granted with
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`leave to amend.3
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`2 I take judicial notice of the amended answer in ESET as it is a matter of public record. Lee, 250
`F.3d at 689 (citing Fed. R. Evid. 201).
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` Finjan correctly notes that insofar as the sixth affirmative defense is concerned, Check Point did
`not oppose nor cite any case to dispute Finjan’s position that “correcting priority claims has no
`relevance to prosecution laches.” Reply at 3.
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`Case 3:18-cv-02621-WHO Document 65 Filed 01/25/19 Page 6 of 12
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`II.
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`INEQUITABLE CONDUCT
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`To state a claim for inequitable conduct, a party must allege that “(1) an individual
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`associated with the filing and prosecution of a patent application made an affirmative
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`misrepresentation of a material fact, failed to disclose material information, or submitted false
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`material information; and (2) the individual did so with a specific intent to deceive the PTO.”
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`Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). Check Point
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`alleges that Finjan engaged in inequitable conduct related to the ‘154 Patent and the ‘494 Patent by
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`employing a strategy of submitting false declarations in support of petitions for allegedly
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`“unintentionally” delayed claims of priority. Answer at ¶¶ 22-48. Finjan responds that Check
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`Point’s inequitable conduct affirmative defenses for the ‘154 and ‘494 Patents should be struck
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`because Check Point cannot meet the heightened pleading standard under Federal Rule of Civil
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`Procedure 9(b) and the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson & Co.,
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`649 F.3d 1276, 1287 (Fed. Cir. 2011). Mot. at 13-22. Finjan contends that Check Point’s factual
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`allegations fail to show any misrepresentation to or reliance by the Patent Office or specific intent
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`to deceive the Patent Office. Id.
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`Inequitable conduct must be pleaded with particularity under Federal Rule of Civil
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`Procedure 9(b). Exergen, 575 F.3d at 1326. To plead inequitable conduct with the requisite
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`particularity, “the pleading must identify the specific who, what, when, where, and how of the
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`material misrepresentation or omission committed before the PTO.” Id. at 1328. To meet the
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`intent prong, the pleading “must include sufficient allegations of underlying facts from which a
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`court may reasonably infer that a specific individual (1) knew of the withheld material information
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`or of the falsity of the material misrepresentation, and (2) withheld or misrepresented this
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`information with a specific intent to deceive the PTO.” Id. at 1328–29.
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`That said, courts disagree on the detail required to meet the pleading requirements for the
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`affirmative defense of inequitable conduct. I agree with my colleagues in this district that it is
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`inappropriate to impose a standard that requires more than that set forth in Exergen during a
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`motion to strike an affirmative defense. See e.g. Juniper, 2018 WL 5454318, at *2 (“At the
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`pleading stage, however, inference of deceptive intent need only be reasonable and drawn from a
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`pleading’s allegations of underlying fact to satisfy Rule 9(b)”) (internal quotation marks omitted);
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`iLife Techs. Inc v. AliphCom, No. 14-CV-03345-WHO, 2015 WL 890347, at *4 (N.D. Cal. Feb.
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`19, 2015) (applying Exergen standard and not Therasense standard); Nalco Co. v. Turner Designs,
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`Inc., No. 13–CV–02727 NC, 2014 WL 645365, at *3 (N.D. Cal. Feb. 19, 2014) (same).
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`A.
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`The ‘154 Patent
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`On June 14, 2010, Finjan filed its application for the ‘154 Patent without making any claim
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`of priority in the specification. Answer at ¶ 22. On March 20, 2012, the ‘154 Patent was issued
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`without any claim of priority. Id. at ¶ 23. Check Point alleges that Finjan engaged in inequitable
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`conduct when on October 16, 2013, its patent attorney filed a “Petition To Accept Unintentionally
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`Delayed Claim Of Priority Under 35 U.S.C. § 120 For The Benefit Of A Prior-filed Application
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`Filed Under 37 C.F.R. § 1.78(a)(3)” (“the ‘154 Petition”) to claim priority to U.S. Patent No.
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`7,757,289 (“the ‘289 Patent”), which was filed on December 12, 2005. Id. Finjan’s patent
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`attorney at the time, Dawn-Marie Bey, represented that “the entire delay between the date the
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`priority claim was due and the date that this petition with priority claim added to the specification
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`is filed was unintentional.” Id.
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`Check Point submits that discovery is likely to produce evidence showing that Bey
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`misrepresented a material fact and violated her duty of candor to the PTO when she stated that the
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`delay was unintentional. Id. at ¶ 24. Check Point notes that the ‘154 Petition to accept a
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`significantly delayed claim of priority conspicuously coincided with a Finjan’s commencement of
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`litigation asserting the ‘154 Patent against Websense, Inc. on September 23, 2013 (Case No. 13-
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`CV-04398-BLF, N.D. Cal.) and FireEye, Inc. on July 8, 2013 (Case No. 13-CV-03133-SBA, N.D.
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`Cal.), and shortly before Finjan instigated other litigation asserting the ‘154 Patent against
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`Proofpoint, Inc. on December 16, 2013 (Case No. 4:13-cv-05808-HSG, N.D. Cal.), and Palo Alto
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`Networks, Inc. on November 4, 2014 (Case No. 4:14-cv-04908-PJH, N.D. Cal.). Id. Because
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`claims entitled to an earlier priority date expire earlier, Finjan is incentivized to claim priority only
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`to the extent necessary to overcome otherwise invalidating prior art. Check Point argues that the
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`evidence will show that Finjan delayed claiming priority to maximize the value of the ‘154 Patent
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`during pre-suit licensing negotiations and only attempted to correct its claim of priority once it
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`determined that the ‘154 Patent would be subject to invalidity attacks during litigation. Id. at ¶ 25.
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`Check Point contends that the ‘154 Petition constitutes material affirmative egregious
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`misconduct when viewed in the context of Finjan’s allegedly overarching pattern of repeated
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`misrepresentations to the PTO of unintentionally delayed claims of priority involving the ‘154
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`Patent, the ‘494 Patent, the ‘086 Patent, and the ‘633 Patent. Id. at ¶¶ 12-16, 26. Further, Finjan is
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`alleged to have an unusually abundant history of petitioning for unintentionally delayed claims of
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`priority to wait and see if a patent would be granted or validated with a later priority date; only
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`when it becomes clear that it would not does Finjan seek to “correct” its “unintentionally” delayed
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`priority claim to moot asserted prior art. Id. at ¶ 27.
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`Finjan responds that there could be no material representation because the ‘289 Patent was
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`already identified as part of the file record when the ‘154 Patent was filed and the PTO granted the
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`certificate of correction. Mot. at 13-14. The ‘154 Petition was submitted because the priority
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`claim of the ‘289 Patent was not reflected in the printed patent as it should have been; the petition
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`constituted a simple correction. Id. Further, Finjan contends that Check Point failed to plead facts
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`showing that Bey intended to deceive the PTO and that the publicly available file history of the
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`‘154 patent would show that the priority claim to the ‘289 Patent had been made when the ‘154
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`patent was filed. Id. at 14-15. Finjan also argues that the PTO acknowledged Finjan’s priority
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`claim to the ‘289 Patent around the time the ‘154 Patent was filed, so it must have considered prior
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`art in view of the earlier priority date. Id. Finally, Finjan asserts that Check Point fails to allege
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`any but-for materiality because there is no “unusually abundant history of petitioning” for
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`correcting priority claims. Id. at 15-17.
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`Check Point sufficiently alleges the who, what, when, where, and how of the alleged
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`inequitable conduct by stating that in filling the ‘154 Petition on October 16, 2013, Bey
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`misrepresented that Finjan’s delay between the priority date claim and the date the ‘154 Petition
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`was filed was unintentional. Exergen, 575 F.3d at 1328. Construing the Answer’s allegations in a
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`light most favorable to Check Point and considering the four separate patents owned by Finjan for
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`which it filed petitions of delayed claims of priority, I find that Check Point has sufficiently stated
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`a pattern of inequitable conduct through the repeated filing of petitions to accept purportedly
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`Case 3:18-cv-02621-WHO Document 65 Filed 01/25/19 Page 9 of 12
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`unintentionally delayed claims of priority. Answer at ¶¶ 12-15. This is sufficient to support a
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`reasonable inference that Bey intentionally delayed filing the petition for the ‘154 Patent in order
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`to maximize the value of the ‘154 patent during pre-suit licensing negotiations and only filed its
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`petition to correct the claim of priority once it realized that the ‘154 Patent would be subject to
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`invalidity attacks in litigation. Juniper, 2018 WL 5454318, at *3 (citing Exergen, 575 F.3d at
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`1330). The alleged misrepresentation by Bey, as contained in the ‘154 Petition, is per se material.
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`Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1294 (Fed. Cir. 2012)
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`(“[W]here the patentee has engaged in affirmative acts of egregious misconduct, such as the filing
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`of an unmistakably false affidavit, the misconduct is material.”) (internal citation omitted).
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`Further, the submission of the allegedly false ‘154 Petition raises a strong inference of intent to
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`deceive the PTO. Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339, 1345 (Fed. Cir. 2013)
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`(holding that the submission of an affidavit containing fabricated examples in order to overcome a
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`prior art reference raises a strong inference of intent to deceive).
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`Finjan’s arguments address only whether it was allowed to file the ‘154 Petition, not
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`whether Bey misrepresented the delay as unintentional. Compliance is not determinative of
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`reasonableness. Reiffin v. Microsoft Corp., 270 F. Supp. 2d 1132, 1155 (N.D. Cal. 2003) (in
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`considering conduct related to a prosecution laches claim). Similarly, the PTO’s grant of the
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`petition is not relevant to Bey’s alleged state of mind or Finjan’s intent when she filed the ‘154
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`Petition. Check Point has sufficiently alleged inequitable conduct with respect to the ‘154 Petition
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`and the ‘154 Patent for pleading purposes. Finjan’s motion to strike the ninth affirmative defense
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`is denied.
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`B.
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`The ‘494 Patent
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`On May 17, 2001, Finjan submitted a declaration with the application that would lead to
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`the issuance of the ‘494 Patent identifying Yigal Mordechai Edery, Nimrod Itzhak Vered, David
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`R. Kroll, and Shlomo Touboul as the inventors. Answer at ¶ 31. On July 23, 2012, the PTO
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`issued a non-final rejection finding all of the claims as anticipated by U.S. Parent No. 5,983,348
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`(“the Ji Patent”). Id. at ¶ 32. The Ji Patent was filed on September 10, 1997 and was prior art
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`since the claim of priority started on November 6, 1997. Id. Check Point states that Finjan
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`Case 3:18-cv-02621-WHO Document 65 Filed 01/25/19 Page 10 of 12
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`engaged in inequitable conduct by submitting an allegedly false declaration by Shlomo Touboul
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`(the “Touboul Declaration”) stating that Touboul was the sole inventor of claims 1, 3, 4-6, 9, 10,
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`12-15 and 18 and that he had conceived of and developed them by at least November 18, 1996.
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`Id. at ¶¶ 38-41. Check Point supports its argument by citing to Finjan’s discovery responses in
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`other cases to show that Touboul was not the sole inventor of the above claims and that he did not
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`conceive of them before the Ji Patent. Id. at ¶¶ 42-45. Check Point contends that the false
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`statement in the Touboul Declaration was material because the PTO allowed all of the then-
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`pending claims, stating “[t]he Declaration filed on May 7, 2013 under 37 CFR 1.131(a) is
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`sufficient to overcome the Ji, U.S. 5,983,348 reference.” Id. at ¶ 40.
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`To support its argument that the Touboul Declaration was false, Check Point identifies
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`several statements identifying Yigal Edery, Nimrod Vered, David Kroll, and Shlomo Touboul as
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`having knowledge related to the conception and reduction to practice of some of the same claims
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`at issue in the ‘494 Patent. Id. at ¶ 42. Check Point also points to statements made by David Kroll
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`in a deposition that he helped conceive of the ‘494 Patent and that he did not begin working at
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`Finjan until 1999, three years after Touboul’s asserted priority date. Id. at ¶¶ 42-46.
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`Finjan argues that its discovery responses do not show that Touboul deceived the PTO and
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`that the statement that the other inventors may have knowledge about the conception and reduction
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`to practice of the asserted claims does not contradict Touboul. Mot. at 18. It also contends that its
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`discovery statements were made in response to a very broad interrogatory asking about many
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`aspects of conception and reduction to practice and that its later supplemental responses clarified
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`that Touboul invented claims 10, 14, and 15 individually. Id. at 19-20. Finally, Finjan asserts that
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`Check Point has not alleged facts to show materiality or specific intent. Id. at 20-22.
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`Check Point sufficiently alleges the who, what, when, where, and how of the alleged
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`inequitable conduct by stating that in the Touboul Declaration, Finjan misrepresented that Touboul
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`was the sole inventor of the asserted claims and that he invented them before the Ji Patent’s
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`priority date. Exergen, 575 F.3d at 1328. Construing the Answer’s allegations in a light most
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`favorable to Check Point and accepting the allegations related to the falsity of the Touboul
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`Declaration as true, Kroll’s deposition statement and Finjan’s discovery responses together are
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`Case 3:18-cv-02621-WHO Document 65 Filed 01/25/19 Page 11 of 12
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`sufficient to support a reasonable inference that Touboul made material affirmative
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`misrepresentations with the intent to deceive the PTO in order to backdate the otherwise
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`invalidating Ji Patent. Travel Caddy, 695 F.3d at 1294; Intellect Wireless, 732 F.3d at 1345.
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`Finjan’s counterarguments speak to the weight of the evidence and are not appropriate or
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`persuasive at this stage in the litigation. In reaching this decision, I am in agreement with several
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`of my colleagues in this district who have come to the same conclusion. See e.g. Juniper, 2018
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`WL 5454318, at *2; Cisco Sys., 2018 WL 4361134, at *4-5; Bitdefender, 2018 WL 1811979, at
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`*2-3. Finjan’s motion to strike the tenth affirmative defense is denied.4
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`III. LACK OF STANDING AND THE ‘154 PATENT
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`Check Point asserts a second affirmative defense based on lack of standing, arguing that
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`Finjan does not have full ownership of the ‘154 Patent. Answer at 13. Finjan moved to strike this
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`defense and Check Point did not oppose it. I grant Finjan’s motion to strike the second affirmative
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`defense based on lack of standing.
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`CONCLUSION
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`Finjan’s motion to strike the sixth affirmative defense for prosecution laches related to the
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`‘494 Patent, the ‘154 Patent, the ‘086 Patent, the ‘633 Patent, and the ‘731 Patent is granted with
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`leave to amend.
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`Finjan’s motion to strike the ninth and tenth affirmative defenses related to the ‘154 and
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`‘494 Patents, respectively, is denied.
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`4 Finjan correctly notes that insofar as the tenth affirmative defense is concerned, Check Point did
`not oppose the motion to strike on the grounds that Bey’s filing of a petition to accept
`unintentionally delayed claim of priority for the ‘494 Patent constituted inequitable conduct on its
`own. Reply at 7. Unlike Check Point’s ninth affirmative defense, Check Point did not provide
`further corroborating facts to support an inference that this particular petition, on its own,
`contained a misrepresentation.
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`Case 3:18-cv-02621-WHO Document 65 Filed 01/25/19 Page 12 of 12
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`I also grant Finjan’s unopposed motion to strike the second affirmative defense for lack of
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`standing with regards to the ‘154 Patent.
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`IT IS SO ORDERED.
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`Dated: January 25, 2019
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`William H. Orrick
`United States District Judge
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