Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 1 of 13
`
`PAUL J. ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`AUSTIN MANES (State Bar No. 284065)
`amanes@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`OAKLAND DIVISION
`
`FINJAN, INC., a Delaware Corporation,
`
`Case No.: 4:18-cv-07229-YGR
`
`Plaintiff,
`
`v.
`
`QUALYS INC., a Delaware Corporation,
`
`Defendant.
`
`PLAINTIFF FINJAN, INC.’S OPPOSITION TO
`DEFENDANT QUALYS INC.’S MOTION FOR
`LEAVE TO AMEND ANSWER AND
`AFFIRMATIVE DEFENSES
`Date:
`April 7, 2020
`Time:
`2:00 PM
`Place: Courtroom 1, 4th Floor
`Before: Hon. Yvonne Gonzalez Rogers
`
` REDACTED VERSION OF DOCUMENTS SOUGHT TO BE SEALED
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`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
`
`CASE NO.: 4:18-cv-07229-YGR
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`

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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 2 of 13
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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ....................................................................................................................... 1
`
`FACTUAL BACKGROUND ...................................................................................................... 2
`
`A.
`
`B.
`
`Facts Relating to Qualys’ Purported Preclusion Defense .................................................2
`
`Facts Relating to Qualys’ Purported Patent Exhaustion and Implied
`License Defenses ..............................................................................................................3
`
`III.
`
`ARGUMENT ............................................................................................................................... 4
`
`A.
`
`The Court Should Deny Qualys’ Motion as to its Proposed Preclusion
`Defense .............................................................................................................................4
`
`1.
`
`2.
`
`3.
`
`Qualys’ Proposed Preclusion Defense is Futile ....................................................4
`
`Qualys Unduly Delayed in Seeking to Assert its Proposed
`Preclusion Defense................................................................................................6
`
`Qualys’ Belated Assertion of its Proposed Preclusion Defense is
`Prejudicial to Finjan ..............................................................................................7
`
`B.
`
`The Court Should Deny Qualys’ Motion as to its Proposed Patent
`Exhaustion and Implied License Defenses .......................................................................7
`
`1.
`
`2.
`
`3.
`
`Qualys’ Proposed Patent Exhaustion and Implied License
`Defenses are Futile ................................................................................................7
`
`Qualys Unduly Delayed in Seeking to Assert its Proposed Patent
`Exhaustion and Implied License Defenses ...........................................................9
`
`Qualys’ Belated Assertion of its Proposed Patent Exhaustion and
`Implied License Defenses is Prejudicial to Finjan ................................................9
`
`IV.
`
`CONCLUSION .......................................................................................................................... 10
`
`i
`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
`
`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 3 of 13
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`Acri v. Int’l Ass’n of Machinists & Aerospace Workers,
`781 F.2d 1393 (9th Cir. 1986) ............................................................................................................. 6
`
`Avago Techs. U.S. Inc. v. IPtronics Inc.,
`No. 5:10-CV-02863-EJD, 2014 WL 12650655 (N.D. Cal. Dec. 10, 2014) .................................... 7, 9
`
`Blonder-Tongue Labs., Inc. v. University of Illinois Foundation,
`402 U.S. 313 (1971)), report and recommendation adopted, No. CV 15-1155-RGA-SRF,
`2017 WL 2569604 (D. Del. June 13, 2017) ......................................................................................... 4
`
`Chodos v. West Publ’s Co.,
`292 F.3d 992 (9th Cir. 2002) ........................................................................................................... 6, 9
`
`ChriMar Sys., Inc. v. Cisco Sys., Inc.,
`No. C 13-01300 JSW, 2014 WL 12628539 (N.D. Cal. Mar. 12, 2014) .............................................. 4
`
`Edwards Lifesciences LLC v. Cook Inc.,
`No. C 03-03817-JSW, 2008 WL 913328 (N.D. Cal. Apr. 2, 2008) .................................................... 6
`
`Eset, LLC v. Finjan, Inc.,
`No. IPR2017-01738, Paper 57 (P.T.A.B. Jan. 24, 2019) ................................................................. 3, 5
`
`Hydranautics v. FilmTec Corp.,
`204 F.3d 880 (9th Cir. 2000) ............................................................................................................... 4
`
`Lockheed Martin Corp. v. Network Sols., Inc.,
`194 F.3d 980 (9th Cir. 1999) ............................................................................................................... 4
`
`Offshore Sportswear, Inc. v. Vuarnet Int’l, B.V.,
`114 F.3d 848, 850 (9th Cir. 1997) ....................................................................................................... 4
`
`Outdoor Sys., Inc. v. City of Mesa,
`997 F.2d 604 (9th Cir. 1993) ............................................................................................................... 4
`
`Purdue Pharma L.P. v. Mylan Pharm. Inc.,
`No. CV 15-1155-RGA-SRF, 2017 WL 784989 (D. Del. Mar. 1, 2017) ......................................... 4, 5
`
`Quanta Comput., Inc. v. LG Elecs., Inc.,
`553 U.S. 617 (2008) ............................................................................................................................. 8
`
`
`
`ii
`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
`
`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 4 of 13
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`
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`I.
`
`INTRODUCTION
`The Court should deny Defendant Qualys’ motion for leave to file a Second Amended Answer
`to assert new defenses because the proposed new defenses are futile, Qualys unduly delayed in
`presenting them, and injecting these defenses into the case at this stage would be prejudicial to Finjan.
`Qualys first seeks permission to assert an open-ended preclusion defense. Qualys primarily
`relies on the decision of the United States Patent and Trademark Office (“USPTO”) to invalidate
`certain claims from U.S. Patent No. 7,975,305 (“’305 Patent”) to allege that Finjan should be precluded
`from asserting different claims from the ‘305 Patent. Qualys’ defense is futile because the claims at
`issue in this case were not found invalid in the reexamination, the USPTO confirmed the validity of
`were confirmed valid in subsequent proceedings before the USPTO, and the asserted claims are
`different in scope from the claims invalidated in the reexamination.
`Denial of Qualys’ proposed preclusion defense is also warranted because Qualys demonstrated
`an inexplicable lack of diligence in pleading this defense. The claim rejections Qualys relies on are
`from 2016, more than two years before Finjan filed this suit. Qualys’ extreme delay in presenting this
`proposed defense is to Finjan’s prejudice. Finjan elected its claims to assert in this case nearly a year
`ago and, to the extent Qualys believed Finjan is precluded from asserting claims on invalidity grounds,
`it should have timely made that assertion so Finjan could take it into account in electing its claims.
`Thus, leave to add this defense should be denied.
`Qualys also seeks leave to amend to include futile and belated patent exhaustion and implied
`license defenses based on its alleged incorporation of Trend Micro, Inc.’s source code into Qualys’
`
`products. While Trend Micro indeed has a license from Finjan,
` Thus, as a matter of law, Qualys’ patent exhaustion and implied
`license defenses fail. Moreover, Qualys has been unable to provide any license or evidence supporting
`its claim that its products incorporate any software validly obtained from Trend Micro. Additionally,
`Qualys delayed many months in seeking this amendment. Accordingly, leave to add these defenses
`should also be denied.
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`AMEND ANSWER & AFFIRMATIVE DEFENSES
`
`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 5 of 13
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`
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`II.
`
`FACTUAL BACKGROUND
`Finjan filed suit against Qualys on November 29, 2018 based on Qualys’ willful infringement of
`seven patents. Dkt. No. 1. Qualys filed its initial Answer on January 23, 2019, then successfully
`moved for leave to file a First Amended Answer on March 6, 2019. Dkt. Nos. 17, 26. Qualys’ first
`two answers did not raise defenses of preclusion, patent exhaustion or implied license. A year after
`Qualys filed its second Answer, it now seeks leave to assert these defenses in a third Answer.
`Facts Relating to Qualys’ Purported Preclusion Defense
`A.
`Qualys has been on notice of the reexamination invalidity determination that is the basis for its
`preclusion defense since 2016, two years before Finjan filed this case. A reexamination request of the
`‘305 Patent was filed on December 11, 2015, challenging the validity of Claims 1, 2, 5, and 16 (the
`“Reexamination Claims”). Dkt. No. 44-3. The USPTO issued a final rejection of the Reexamination
`Claims (and only the Reexamination Claims) on August 24, 2016. Declaration of Aaron Frankel in
`Support of Finjan’s Opposition (“Frankel Decl.”) filed herewith, Ex. 1.1 The USPTO did not include
`Claims 3-4, 6-12, and 14-25 in this or any other reexamination. Finjan appealed the final rejection of
`the Reexamination Claims to the USPTO’s Patent Trials and Appeal Board (“PTAB”) on November
`22, 2016. Id. The PTAB affirmed the invalidation of the Reexamination Claims on July 2, 2018, six
`months before Qualys filed its first Answer in this action. Id. Finjan appealed the PTAB’s decision to
`the Federal Circuit on September 4, 2018, which affirmed the PTAB decision on September 6, 2019.
`Id. With the appeal concluded, on September 6, 2019, the USPTO carried out the ministerial act of
`publishing the reexamination certificate for the ‘305 Patent, reflecting the August 24, 2016 invalidation
`of the Reexamination Claims. Id.
`Notwithstanding the invalidation of the Reexamination Claims by the USPTO, the PTAB issued
`a final written decision in an inter partes review (IPR) declaring valid all challenged claims of the ‘305
`Patent, including all of the claims that Finjan is asserting in this action against Qualys: Claims 6-12, 14,
`
`
`1 Exhibit 1 is the Transaction History from the Reexamination File (Control No. 90/013,660) initiated
`December 11, 2015 for the ‘305 Patent, information downloaded from
`https://portal.uspto.gov/pair/PAIRPrintServlet.
`
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`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
`
`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 6 of 13
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`
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`and 17-25 (the “‘305 Asserted Claims”). ESET, LLC v. Finjan, Inc., No. IPR2017-01738, Paper 57
`(P.T.A.B. Jan. 24, 2019).
`
`B.
`
`Facts Relating to Qualys’ Purported Patent Exhaustion and Implied License
`Defenses
`Qualys’ purported patent exhaustion and implied license defenses are based on an alleged
`license between Trend Micro and Qualys, Qualys’ alleged incorporation of Trend Micro source code
`into its products under that license, and on Finjan’s patent license to Trend Micro (the “Agreement”).
`Under the Agreement,
`
`
`
`
`
`
`
`. Thus, no product accused in this case can be licensed.
`Qualys has long know of the Agreement. Finjan and Trend Micro executed the Agreement on
`June 29, 2018. Dkt. No. 43-4. Finjan publicly announced the Agreement on July 2, 2018 in a filing
`with the SEC and a press release that was picked up by major reporting firms. Frankel Decl., Exs. 2, 3,
`and 4. Finjan gave notice to Trend Micro of its intent and requirement to produce the Agreement to
`Qualys and requested Trend Micro’s consent to do so. On July 19, 2019, Finjan apprised Qualys of
`Trend Micro’s delays in approving production of the Agreement. Id., Ex. 5. Finjan put Qualys’
`counsel in direct contact with Trend Micro’s counsel to directly negotiate Trend Micro’s concerns
`regarding production, and then promptly produced the Agreement to Qualys, six months ago, on
`September 3, 2019 after receiving permission from Trend Micro to do so.
`While Qualys recently claimed to Finjan that it is incorporating Trend Micro source code into
`its products, Qualys has been unable to provide a copy of any license or other agreement between
`Trend Micro and Qualys authorizing Qualys to use Trend Micro’s source code, nor has Qualys
`produced invoices or any other documentary evidence establishing that it has a commercial relationship
`with Trend Micro. Dkt. No. 44-11.
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`AMEND ANSWER & AFFIRMATIVE DEFENSES
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`III. ARGUMENT
`The Court should deny Qualys’ motion for leave to amend because its proposed defenses are
`futile, Qualys unduly delayed in moving for leave to amend, and Qualys’ dilatory conduct is prejudicial
`to Finjan. ChriMar Sys., Inc. v. Cisco Sys., Inc., No. C 13-01300 JSW, 2014 WL 12628539, at *1 (N.D.
`Cal. Mar. 12, 2014).
`The Court Should Deny Qualys’ Motion as to its Proposed Preclusion Defense
`A.
`
`Qualys’ Proposed Preclusion Defense is Futile
`1.
`The Court should deny Qualys’ motion as to its proposed preclusion defense, which is futile
`because it is based on the fundamentally flawed premise that claims identical to those asserted in this
`case were found invalid by the USPTO. The opposite is true. “Futility of amendment can, by itself,
`justify the denial of a motion for leave to amend.” Outdoor Sys., Inc. v. City of Mesa, 997 F.2d 604,
`614 (9th Cir. 1993) (affirming the denial of a motion for leave to amend because it would be nothing
`more than an exercise in futility). As is the case here, “[w]here the legal basis for a cause of action is
`tenuous, futility supports the refusal to grant leave to amend.” Lockheed Martin Corp. v. Network
`Sols., Inc., 194 F.3d 980, 986 (9th Cir. 1999).
`Qualys alleges that Finjan should be precluded from asserting in the action the Asserted Claims
`from the ‘305 Patent because of the invalidation of the Reexamination Claims more than three years
`ago. Dkt. No. 44 at 5. Qualys’ preclusion defense requires Qualys to show that the issues in the
`reexamination were “identical” to the validity issues being litigated in this case and that Finjan, as “the
`party against whom estoppel is applied had a full and fair opportunity to litigate” the identical issue in
`the reexamination. Purdue Pharma L.P. v. Mylan Pharm. Inc., No. CV 15-1155-RGA-SRF, 2017 WL
`784989, at *4 (D. Del. Mar. 1, 2017) (quotation marks and citation omitted) (citing Blonder-Tongue
`Labs., Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971)), report and recommendation
`adopted, No. CV 15-1155-RGA-SRF, 2017 WL 2569604 (D. Del. June 13, 2017). Qualys “bears the
`burden of showing with clarity and certainty what was determined by the prior judgment.”
`Hydranautics v. FilmTec Corp., 204 F.3d 880, 885 (9th Cir. 2000) (quoting Offshore Sportswear, Inc.
`v. Vuarnet Int’l, B.V., 114 F.3d 848, 850 (9th Cir. 1997)).
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`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
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`Qualys cannot make this requisite showing. The Asserted Claims were not invalidated in the
`reexamination proceedings upon which Qualys relies. Thus, the issues are not identical and Finjan did
`not have “a full and fair opportunity to litigate” the validity of the Asserted Claims. For this reason
`alone, the Court should deny Qualys’ motion.
`To try to evade this dispositive fact, Qualys contends that the Asserted Claims are substantially
`identical to the invalidated Reexamination Claims. Dkt. No. 44 at 5. Qualys discusses only one claim
`as supposedly immaterially different from an invalidated claim, comparing dependent Claim 2 (found
`invalid in 2016 in the reexamination) against dependent Claim 14 (asserted in this action). Id. at
`6. Qualys ignores all of the other Asserted Claims, which vary in scope for the Reexamination Claims.
`For example, asserted Claims 3 and 15 recite the use of “deterministic finite automata,” and Claim 10
`requires receiving “POP3 content.” These requirements are not recited in any of the Reexmiantion
`Claims. Even as to Claim 14, the sole example Qualys relies upon, Qualys glosses over the fact that
`Claim 14 is dependent upon a different independent claim (Claim 13) than invalidated Claim 2 (which
`depends from Claim 1) and, thus, the breadth of Claim 2 is different from that of Claim 14. Id.
`That the USPTO’s findings do not imply that the Asserted Claims are invalid is further
`confirmed by the PTAB’s decision in 2017 (after the 2016 invalidation of the Reexamination Claims)
`to find valid all of the Asserted Claims in an IPR proceeding. Eset, LLC v Finjan, Inc., IPR2017-
`01738, Paper 57 at 2 (P.T.A.B. Jan. 24, 2019). This determination defeats any argument by Qualys that
`the prior reexamination determination has preclusive effect on the Asserted Claims here.
`Accordingly, Qualys cannot meet the high bar of showing that Finjan fully litigated and lost the
`identical issue of validity in the reexamination proceedings, and Qualys’ proposed preclusion defense
`should be denied as futile.
`Qualys briefly suggests in its motion that Finjan might be precluded from taking certain
`positions if an appeal in a different case is resolved against Finjan by the Federal Circuit. This is a
`hypothetical scenario, so there is no preclusion issue for Qualys to assert at this time. Moreover,
`Qualys has not shown that any issues in that appeal are identical to issues in this case, which is required
`for preclusion to apply. Purdue Pharma L.P., 2017 WL 784989, at *4. Finally, to the extent the
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`Federal Circuit eventually issues a decision that impacts this action, Qualys does not to have pleaded an
`open-ended preclusion defense to attempt to rely on that decision. Thus, the Court should deny Qualys’
`proposed preclusion defense as futile.
`
`2.
`
`Qualys Unduly Delayed in Seeking to Assert its Proposed Preclusion
`Defense
`Qualys unduly delayed in seeking to assert its proposed preclusion defense. Qualys’ preclusion
`defense is based on the 2016 invalidation of the Reexamination Claims by the USPTO. This decision
`was two years old when Finjan filed this case and almost three years old when Qualys filed its original
`Answer. The PTAB confirmed the invalidity of the Reexamination Claims in July 2018, nearly more
`than a year and a half ago. And the Federal Circuit confirmed the invalidity of the Reexamination
`Claims six months ago. Qualys does not provide any reason it needed to wait this long to present its
`belated defense.
`Qualys’ brief myopically focuses on the USPTO’s issuance of the Reexamination Certificate on
`January 29, 2020 to make it seem as though its defense is based on recent developments. Dkt. No. 44
`at 9. To the contrary, it is based on the 2016 invalidation of the Reexamination Claims. Moreover,
`Qualys undermines its own implication (it does not go as far as to say it could not have earlier asserted
`the defense) with its statement that “[i]n Patent Law, a final judgment of invalidity in a Patent Office
`proceeding has an immediate issue-preclusive effect on any pending or co-pending actions involving
`the patent.” Dkt. No. 44 at 5 (emphasis added, citations omitted).
`Thus, Qualys unreasonably and unduly delayed in presenting its preclusion defense, which is an
`additional reason that its motion should be denied. Chodos v. West Publ’s Co., 292 F.3d 992, 1003 (9th
`Cir. 2002) (amending the pleading caused undue delay when the party knew of the factual basis for the
`amendment prior to a previous amendment). Edwards Lifesciences LLC v. Cook Inc., No. C 03-03817-
`JSW, 2008 WL 913328, at *2 (N.D. Cal. Apr. 2, 2008) (“Courts do not look favorably upon the
`assertion of new legal theories, when the factual basis of those legal theories was known to the party for
`a significant amount of time prior to filing a motion for leave to amend.”); Acri v. Int’l Ass’n of
`Machinists & Aerospace Workers, 781 F.2d 1393, 1398 (9th Cir. 1986) (holding that “late amendments
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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 10 of 13
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`to assert new theories are not reviewed favorably when the facts and the theory have been known to the
`party seeking amendment since the inception of the cause of action”).
`
`3.
`
`Qualys’ Belated Assertion of its Proposed Preclusion Defense is Prejudicial
`to Finjan
`A further reason to deny Qualys’ motion for leave to assert a preclusion defense is that it will
`unfairly prejudice Finjan. Finjan elected its claims and provided infringement contentions nearly a full
`year ago, on April 19, 2019. To the extent Qualys intended to argue that Finjan was precluded, as a
`matter of law, from pursing the Asserted Claims, it was incumbent upon Qualys to timely pursue that
`theory so that Finjan could take it into account in selecting the claims for this case. Avago Techs. U.S.
`Inc. v. IPtronics Inc., No. 5:10-CV-02863-EJD, 2014 WL 12650655, at *7 (N.D. Cal. Dec. 10, 2014)
`(“The Ninth Circuit has held that permitting a party to amend a pleading to add new claims would
`unduly prejudice the other party where the new claims ‘would have required [the opposing party] to
`have undertaken, at a late hour, an entirely new course of defense.’”) (alteration in original) (citation
`omitted).
`Finjan and Qualys have been engaged in discovery for months operating on the asserted claims
`and defenses and to allow for a change of course at this stage would be unduly prejudicial to Finjan.
`Finjan should not bear the prejudice from Qualys dilatory approach to presenting this defense, and the
`Court should deny Qualys’ request for leave. Avago Techs., 2014 WL 12650655, at *7 (finding unfair
`prejudice in late amendment three months before the close of fact discovery).
`
`B.
`
`The Court Should Deny Qualys’ Motion as to its Proposed Patent Exhaustion and
`Implied License Defenses
`
`1.
`
`Qualys’ Proposed Patent Exhaustion and Implied License Defenses are
`Futile
`The Court should deny as futile Qualys’ motion for leave to assert proposed patent exhaustion
`and implied license defenses. Qualys’ defenses are entirely premised on the Agreement between Trend
`Micro and Finjan covering Qualys’ accused products. That premise fails as a matter of law,
`
`
`
`
`to
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`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
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`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 11 of 13
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`. Here, Qualys is infringing by selling its
`own products. Dkt. No. 1. Finjan is not asserting that Qualys infringes by reselling or white labelling
`Trend Micro’s products.
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`Qualys relies on the language in Quanta Comput., Inc. v. LG Elecs., Inc., 553 U.S. 617, 625
`(2008), that an authorized sale of a patented item terminates all patent rights to that time. Dkt. No. 44
`at 5. However, Quanta is inapposite because it involved a very different fact pattern.
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`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
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`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 12 of 13
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`. Thus, Finjan’s ability to assert its patents against Qualys’
`products has never been exhausted and
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`, defeating any implied license defense.
`Thus, the Court should deny Qualys’ motion for leave to assert patent exhaustion and implied
`license defenses.
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`2.
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`Qualys Unduly Delayed in Seeking to Assert its Proposed Patent Exhaustion
`and Implied License Defenses
`Qualys unduly delayed moving for leave to assert its proposed patent exhaustion and implied
`license defenses. Qualys does not rely on anything specific in the Agreement to support its putative
`defense (to the contrary, the specifics of the Agreement confirm it does not apply to Qualys). Instead,
`Qualys’ defenses are based on the bare allegations that Trend Micro has a license from Finjan and
`Qualys has a license from Trend Micro. Dkt. No. 44 at 7. Thus, Qualys could have come forward with
`this defense at any point after learning of Trend Micro’s license with Finjan. As set forth in Section
`II(B), Finjan’s license with Trend Micro has been a matter of public record since July 2018, and Finjan
`conferred with Qualys regarding the Trend Micro license agreement in July 2019, eight months ago.
`The Court should, therefore, deny Qualys’ motion on the additional ground that Qualys unduly delayed
`in bringing it. Chodos, 292 F.3d at 1003.
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`3.
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`Qualys’ Belated Assertion of its Proposed Patent Exhaustion and Implied
`License Defenses is Prejudicial to Finjan
`Qualys’ belated assertion of its proposed patent exhaustion and implied license defenses is
`prejudicial to Finjan. While Qualys has sat on its hands with its proposed license defense, Finjan has
`been proceeding with discovery. Finjan elected its asserted claims and served infringement contentions
`in April 2019, nine months after it publicly announced its license with Trend Micro. If Qualys had
`diligently pursued and disclosed this defense, Finjan could have taken it into account in selecting its
`claims and preparing its contentions. Qualys, not Finjan, should bear the consequences of Qualys’
`dilatory approach, and the Court should deny the motion. Avago Techs., 2014 WL 12650655, at *7.
`9
`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
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`CASE NO.: 4:18-cv-07229-YGR
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`Case 4:18-cv-07229-YGR Document 51-4 Filed 03/13/20 Page 13 of 13
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`IV. CONCLUSION
`For the reasons set forth above, the Court should deny Qualys’ Motion for Leave to Amend.
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`Dated: March 13, 2020
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`Respectfully submitted,
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`By: /s/ James Hannah
`Paul J. Andre (State Bar No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`Austin Manes (State Bar No. 284065)
`KRAMER LEVIN NAFTALIS
`& FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`amanes@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`FINJAN’S OPPOSITION TO MOTION FOR LEAVE TO
`AMEND ANSWER & AFFIRMATIVE DEFENSES
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`CASE NO.: 4:18-cv-07229-YGR
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