Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 1 of 15
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`Case No. 15-cv-03295-BLF
`
`
`
`ORDER DENYING FINJAN'S MOTION
`FOR A PRELIMINARY INJUNCTION
`
`
`
`FINJAN, INC.,
`
`Plaintiff,
`
`v.
`
`BLUE COAT SYSTEMS, LLC,
`
`Defendant.
`
`
`
`
`
`
`
`Plaintiff Finjan, Inc. (“Finjan”) seeks a preliminary injunction to prevent Defendant Blue
`
`Coat Systems, LLC (“Blue Coat”) from making, using, offering to sell, or selling within the
`
`United States, or importing into the United States, the Dynamic Real-Time Rating component
`
`(“DRTR”) of Blue Coat’s WebPulse product due to the alleged infringement of claims 10, 16, and
`
`18 of U.S. Patent No. 8,677,494 (the “’494 patent”). For the reasons set forth below, the Court
`
`DENIES Finjan’s motion.
`
`I. BACKGROUND
`
`Finjan owns a large portfolio of computer security patents, which it has vigorously
`
`defended in patent infringement actions across this district and others. Although, at its founding,
`
`Finjan produced and sold its own computer security products, it suspended its product offering
`
`activities in 2009 as a result of a merger agreement with M86 Security (subsequently acquired by
`
`Trustwave, which was subsequently acquired by Singtel). See Exh. 51 to Mot. at 292:12-301:25,
`
`ECF 71-56. Since then, one of Finjan’s “core businesses” has been licensing its patented
`
`technology. Mot. 19. Finjan has “entered into a number of licenses for its patents” to date and is
`
`“in active discussions with over twenty other companies related to negotiations for a license to its
`
`patents.” Hartstein Decl. ¶ 4, ECF 71-2. Recently, however, Finjan’s business has diversified. In
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 2 of 15
`
`
`
`March 2015, Finjan’s agreement to suspend product development expired and it resumed product
`
`development activities. Exh. 51 to Mot. at 286:23-290:11, ECF 71-56. Since then, it has released
`
`Finjan Mobile Secure Brower, which it offers for free on the iOS App Store and Google Play.
`
`Exh. G to Opp., ECF 112-12; see also Opp. 5, ECF 112.
`
`Finjan owns the ’494 patent, which is entitled “Malicious Mobile Code Runtime
`
`Monitoring System and Methods.” The ’494 patent was filed on November 7, 2011 and issued on
`
`March 18, 2014. However, it is subject to a terminal disclaimer pursuant to 35 U.S.C. § 154(b),
`
`which limits its term to that of U.S. Patent No. 6,167,520 (the “’520 patent”), set to expire on
`
`January 29, 2017. The ’494 patent claims a method and system for managing potentially
`
`malicious “Downloadables,” which involve receiving a Downloadable, building security profile
`
`data for the Downloadable, and storing the profile in a database. ’494 patent, col. 21 ll. 19-25, col.
`
`22 ll. 8-17. Security profile data can include, among other things, a list of suspicious computer
`
`operations that may be attempted by the Downloadable. Id., col. 18 l. 56-col. 19 l. 2, col. 21 ll.
`
`22-23, col. 22 ll. 13-14. Independent claim 10 recites:
`
`10. A system for managing Downloadables, comprising:
`a receiver for receiving an incoming Downloadable;
`a Downloadable scanner coupled with said receiver, for deriving
`security profile data for the Downloadable, including a list of
`suspicious computer operations that may be attempted by the
`Downloadable; and
`a database manager coupled with said Downloadable scanner, for
`storing the Downloadable security profile data in a database.
`
`Id., col. 22 ll. 8-17. Claim 16 additionally requires that the security profile data include a URL.
`
`Id., col. 22 ll. 31-34. Claim 18 adds that the Downloadable scanner comprise a disassembler. Id.,
`
`col. 22 ll. 37-39.
`
`Blue Coat is a technology company that offers internet security products and services to
`
`consumers and enterprise companies. One of its products, WebPulse, is a cloud-based
`
`infrastructure that categorizes web pages and runs background processes, “some of which look for
`
`evidence of malware activity.” Runald Decl. ¶¶ 3-4, ECF 111-7. WebPulse contains a real-time
`
`content analyzer called the Dynamic Real-Time Rating component (“DRTR”), which it uses to
`
`categorize previously-undiscovered websites and collect relevant metadata. Exh. 9 to Mot. at 4,
`
`2
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 3 of 15
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`ECF 71-13. WebPulse operates as part of Blue Coat’s Global Intelligence Network (“GIN”),
`
`which “offers real-time rating of new content, identification of new applications and deployment
`
`of new defenses across the global infrastructure.” Exh. B to Opp. at 1, ECF 112-7. GIN is
`
`available to Blue Coat’s customers worldwide, and is hosted on eight different data centers across
`
`the globe. Runald Decl. ¶ 3, ECF 111-7.
`
`Blue Coat also offers protection for mobile devices through its Mobile Device Security
`
`(“MDS”) product. MDS is not a stand-alone product, but is instead offered as a part of Blue
`
`Coats’s larger Web Security product suite, which must be purchased for a price. Exh. C to Opp. at
`
`2, ECF 112-8.
`
`The parties in this dispute are neither unfamiliar with each other nor this Court. On August
`
`28, 2013, Finjan initiated a first patent infringement action, Case No. 5:13-CV-03999-BLF
`
`(“Finjan I”), against Blue Coat, alleging that Blue Coat infringed U.S. Patent Nos. 6,154,844 (the
`
`“’844 patent”); 6,965,968 (the “’968 patent”); 7,418,731 (the “’731 patent”); 6,804,780 (the “’780
`
`patent”), 7,058,822 (the “’822 patent”), and 7,647,633 (the “’663 patent”). The parties tried all six
`
`patents before a jury who, on August 4, 2015, found that Blue Coat infringed the ’844, ’968,’731,
`
`’633, and ’780 patents and awarded Finjan a total of $39,528,487 in lump-sum damages. Finjan I,
`
`ECF 438 at 2-3, 6-7. $24 million of the jury’s award was for Blue Coat’s infringement of the ’844
`
`patent, which the jury found to be infringed by the same DRTR component that Finjan currently
`
`seeks to enjoin. Id. at 2. The Court entered final judgment on July 18, 2016. Finjan I, ECF 556.
`
`On July 7, 2015, five days before the beginning of trial in Finjan I, Finjan initiated the
`
`instant suit, asserting the ’844, ’968, ’731, and ’494 patents, as well as six others. ECF 1. Ten
`
`days after the court entered final judgment in Finjan I (and approximately one year after it filed
`
`suit), on July 28, 2016, Finjan filed the instant motion, seeking to enjoin Blue Coat’s alleged
`
`infringement of the ’494 patent through the DRTR component. ECF 71. Finjan noticed the
`
`hearing date for November 10, 2016 and did not seek relief on an accelerated schedule. Id.
`
`II. LEGAL STANDARD
`
`“A preliminary injunction is a ‘drastic and extraordinary remedy that is not to be routinely
`
`granted.’” National Steel Car, Ltd. v. Canadian P. Ry., Ltd., 357 F.3d 1319, 1324 (Fed. Cir. 2004)
`
`3
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 4 of 15
`
`
`
`(quoting Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993)). It “is not a
`
`preliminary adjudication on the merits but rather a device for preserving the status quo and
`
`preventing the irreparable loss of rights before judgment.” Sierra On-Line, Inc. v. Phoenix
`
`Software, Inc., 739 F.2d 1415, 1422 (9th Cir. 1984). As such, the basic function of a preliminary
`
`injunction is “to preserve the relative positions of the parties until a trial on the merits can be
`
`held.” Univ. of Texas v. Camenisch, 451 U.S. 390, 395 (1981).
`
`A party seeking a preliminary injunction must show: “(1) it is likely to succeed on the
`
`merits; (2) it is likely to suffer irreparable harm if the injunction is not granted; (3) the balance of
`
`hardships weighs in its favor; and (4) an injunction is in the public interest.” Apple v. Samsung,
`
`695 F.3d 1370, 1373-74 (Fed. Cir. 2012) (quoting Winter v. Natural Res. Def. Council, Inc., 555
`
`U.S. 7, 20 (2008)). The plaintiff bears the burden of making a clear showing on these elements
`
`and on entitlement to this extraordinary remedy. Earth Island Inst. v. Carlton, 626 F.3d 462, 469
`
`(9th Cir. 2010).
`
`III. DISCUSSION
`
`The Court looks to each of the four Winter factors to determine whether Finjan has met its
`
`moving burden. The Court finds for the reasons below that Finjan fails to establish at least two of
`
`the four elements, rendering a preliminary injunction inappropriate.
`
`A. Likelihood of Success on the Merits
`
`For the purposes of this motion, Finjan accuses Blue Coat of infringing claims 10, 16, and
`
`18 of the ’494 patent through its DRTR component. Its technical expert, Dr. Eric Cole, provided a
`
`detailed declaration setting forth how every element of each of the asserted claims appears in
`
`DRTR. Cole Decl. ¶¶ 38–80, ECF 70-5. In response, Blue Coat submitted a detailed declaration
`
`from its own technical expert, Dr. Azer Bestavros, describing how claims 10 and 16 are not
`
`infringed by DRTR. Bestavros Decl. ¶¶ 38–50, ECF 111-5. Blue Coat also argues that Finjan’s
`
`claims are barred by several of its affirmative defenses and that the ’494 patent is invalid. The
`
`Court addresses each of these issues in turn.
`
`i.
`
`Infringement
`
`To prevail on infringement, Finjan must show that the DRTR component “meets every
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 5 of 15
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`claim limitation either literally or under the doctrine of equivalents.” Pfizer, Inc. v. Teva Pharm.,
`
`USA, Inc., 429 F.3d 1364, 1376 (Fed. Cir. 2005). Neither party contends that any of the terms of
`
`the ’494 require construction, so, for the purposes of this analysis, the Court gives all claim terms
`
`their ordinary meaning. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (“[T]he
`
`words of a claim are generally given their ordinary and customary meaning.”) (internal quotations
`
`omitted).
`
`After considering the evidence, the Court finds that there is a high likelihood that Finjan
`
`will prevail in showing that DRTR infringes independent claim 10. In Finjan I, the jury found that
`
`DRTR infringed claim 1 of the ’844 patent, and claim 10 only differs from claim 1 in its final two
`
`limitations. It seems likely that DRTR satisfies both. With respect to the second to last limitation,
`
`which recites “a Downloadable scanner coupled with said receiver, for deriving security profile
`
`data for the Downloadable, including a list of suspicious computer operations that may be
`
`attempted by the Downloadable,” the Court is persuaded by Dr. Cole’s detailed description of how
`
`certain scanning modules within the DRTR identify suspicious operations and derive security
`
`profile data. Cole Decl. ¶¶ 55-59, ECF 70-5. Blue Coat, through Dr. Bestavros, responds that the
`
`identified “security profile data” does not actually contain a listing of suspicious computer
`
`operations, Bestavros Decl. ¶¶ 40-41, ECF 111-5, but, given that DRTR appears to use computer
`
`operations in assessing security risk, it seems likely that Finjan will be able to prove this element
`
`at least under the doctrine of equivalents, if not literally. With respect to the last limitation, which
`
`recites “storing the Downloadable security profile data in a database,” the Court is persuaded by
`
`Dr. Cole’s identification of several databases which DRTR uses to store the results of its analyses.
`
`Cole Decl. ¶¶ 61-66, ECF 70-5. Blue Coat responds that certain of the identified databases do not
`
`actually store what Dr. Cole identifies as the alleged “security profile data,” Bestavros Decl. ¶¶
`
`47-48, ECF 111-5, but Blue Coat does not appear to dispute the more general point that there are
`
`databases that store the security profiling data it collects. Accordingly, at the very least, there
`
`appears to be a substantial question as to whether DRTR practices this limitation. Taken as a
`
`whole, Finjan’s chances of proving that Blue Coat infringes claim 10 at trial seem high.
`
`There is also a high likelihood that Blue Coat infringes the dependent claims. With respect
`
`5
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 6 of 15
`
`
`
`to claim 16, WebPulse keeps track of the security ratings that it assigns to URLs, so it seems likely
`
`that Finjan will be able to identify “Downloadable security profile data” that “includes a URL
`
`from where the Downloadable originated.” See Cole Decl. ¶¶ 67-73, ECF 70-5. Blue Coat does
`
`not appear to disagree that claim 18’s additional limitation is infringed by DRTR, so it also seems
`
`likely that Finjan will prevail in proving that this claim is infringed.
`
`In sum, the Court agrees with Finjan that there is a high likelihood that it will prevail on
`
`infringement.
`
`ii. Affirmative Defenses
`
`Blue Coat nevertheless argues that Finjan’s claims are barred by several of its affirmative
`
`defenses: res judicata, its assertion that Finjan has already been fully compensated for
`
`infringement in Finjan I, and patent misuse. These arguments do not seem persuasive. As an
`
`initial matter, Blue Coat’s assertion that Finjan has already been fully compensated is only a bar to
`
`the damages that Finjan may be able to recover in this case. It does not, however, diminish
`
`Finjan’s chances of prevailing on infringement. Accordingly, it does not impact the Court’s
`
`consideration of likelihood of success here.
`
`With respect to Blue Coat’s remaining defenses, res judicata and patent misuse, the Court
`
`notes that these defenses are currently no longer part of this case, as it has granted Finjan’s motion
`
`to strike them with leave to amend. ECF 140. However, even if Blue Coat amends its Answer to
`
`allege these defenses with the particularly required by Federal Rule of Civil Procedure 8(b), the
`
`Court is not persuaded that either of these defenses would diminish Finjan’s chances of prevailing.
`
`The ’494 patent was not asserted in Finjan I, and, because “[e]ach patent asserted raises an
`
`independent and distinct cause of action,” Kearns v. General Motors Corp., 94 F.3d 1553, 1555-
`
`57 (Fed. Cir. 1996), res judicata would not likely bar Finjan’s ability to sue Blue Coat on this
`
`patent. This is particularly true for the ’494 patent because it issued during the pendency of Finjan
`
`I; thus, it was not possible for Finjan to include these claims in its first action. See id. (“A possible
`
`basis for barring the different suit is that the causes of action should have been litigated
`
`together.”). In addition, because the ’494 patent imparts new and separate property rights to
`
`Finjan, it seems unlikely that Finjan’s assertion of this patent could be deemed “misuse” of the
`
`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 7 of 15
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`patents asserted in Finjan I. Finjan is merely asserting the rights imparted by the ’494 patent
`
`grant, not attempting to “impermissibly broaden[] the physical or temporal scope of the patent
`
`grant” for the patents asserted in Finjan I. Princo Corp. v. Int’l Trade Comm’n, 616 F.3d 1318,
`
`1328 (Fed. Cir. 2010). Accordingly, Finjan’s likelihood of prevailing on the merits is not
`
`diminished by Blue Coat’s affirmative defenses.
`
`iii. Validity
`
`Blue Coat also argues that the ’494 patent is invalid. At trial, Blue Coat will bear the
`
`burden of overcoming the statutory presumption of validity with clear and convincing evidence.
`
`At this stage, however, the Court need “not resolve the validity question, but rather must . . . make
`
`an assessment of the persuasiveness of [Blue Coat’s evidence]” recognizing that further evidence
`
`favoring either side may be presented at trial. Titan Tire Corp. v. Case New Holland, Inc., 566
`
`F.3d 1372, 1377 (Fed. Cir. 2009). The Federal Circuit directs the Court to “first weigh the
`
`evidence both for and against validity” as available at the preliminary injunction stage, then to
`
`assess whether there is a “substantial question” concerning the validity of the patent, “meaning
`
`that the alleged infringer has presented an invalidity defense that the patentee has not shown lacks
`
`substantial merit . . . .” Id. at 1379.
`
`The only evidence of invalidity that Blue Coat offers1 is that (1) the Patent Trial and
`
`Appeal Board (“PTAB”) has instituted inter partes review (“IPR”) for claim 10, Exhs. Ex. M & N
`
`to Opp., ECF 112-18 & 112-19; and (2) Blue Coat has requested further IPR of claims 16 and 18
`
`(among others) Exh. O to Opp., ECF 112-20. As an initial matter, the fact that Blue Coat has
`
`unilaterally requested IPR does not mean that its request is meritorious. So, without more, the
`
`Court is not persuaded that there is a “substantial question” concerning the validity of claims 16
`
`and 18. With respect to claim 10, the fact that IPR has been instituted may indicate that there is a
`
`
`1 The Court notes that Blue Coat additionally alleges that the ’494 patent invalid because it is not
`directed to patent-eligible subject matter pursuant to 35U.S.C § 101. Blue Coat has filed a motion
`for judgment on the pleadings on this issue, ECF 104, and the Court’s decision is forthcoming. At
`this stage, the Court takes no position on this motion. Although granting this motion would
`eviscerate Finjan’s likelihood of success on the merits, the Court need not reach this issue to
`decide the instant motion because, as discussed below, even if Finjan has a high likelihood of
`success on the merits, a preliminary injunction is inappropriate here.
`7
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 8 of 15
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`“substantial question” concerning validity, id. at 1379, since, by statute, IPR may be instituted if
`
`“there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a). However, only one of the references upon
`
`which IPR has been instituted (the Swimmer reference) is named in Blue Coat’s invalidity
`
`contentions, and Finjan, in its motion, identified several reasons why Swimmer does not anticipate
`
`or render obvious the ’494 patent, and Blue Coat did not specifically rebut these. Compare Mot.
`
`15-16, ECF 71, with Opp. at 10-11, ECF 112. Moreover, the ’494 patent was examined by
`
`another court in this district in Finjan, Inc. v. Sophos, Inc., No. 14-cv-1197-WHO, and the Court
`
`determined that the ’494 patent was not invalid. Id., ECF 407. Accordingly, on balance, it seems
`
`unlikely that there is a “substantial question” regarding the validity of the ’494 patent.
`
`In sum, because Finjan is likely to succeed in showing that the ’494 patent is infringed and
`
`Blue Coat is unlikely to succeed in its affirmative defenses or showing the ’494 patent is invalid (§
`
`101 issues aside), Finjan’s likelihood of success is high.
`
`B.
`
`Irreparable Harm
`
`However, even though it seems likely that Finjan will prevail on the merits, other eBay
`
`factors counsel against granting a preliminary injunction. In addition to success on the merits, a
`
`plaintiff seeking a preliminary injunction “must make a clear showing that it is at risk of
`
`irreparable harm, which entails showing a likelihood of substantial and immediate irreparable
`
`injury.” Apple Inc., 695 F.3d at 1374. In addition, in patent cases, a patentee must establish that
`
`“a sufficiently strong causal nexus relates the alleged harm to the alleged infringement.” Id.
`
`Finjan has failed to make this showing. The Court acknowledges, that, as owner of the
`
`’494 patent, Finjan possesses the right to exclude others from practicing that invention.
`
`Infringement of one’s patent right is injury, and the Court appreciates that Finjan has diligently
`
`sought to enforce its rights in the ’494 patent. Nevertheless, the Federal Circuit has made clear
`
`that, under eBay, “the patentee’s right to exclude alone cannot justify an injunction.” Robert
`
`Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1149 (Fed. Cir. 2011). Even though, prior to
`
`eBay, it was presumed that continuing infringement would result in irreparable harm if there was a
`
`strong showing of likelihood of success on the merits, this presumption no longer exists. Id.
`
`8
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 9 of 15
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Now, courts must consider the right to exclude along with other evidence of injury and assess
`
`whether, in general, there is irreparable harm. See id.
`
`In its briefing, Finjan advances several theories of irreparable harm: First, Finjan argues
`
`that Blue Coat’s alleged infringement is causing irreparable harm because Finjan and Blue Coat
`
`are direct competitors, both as manufacturers of mobile security products (Finjan’s Mobile Secure
`
`Browser and Blue Coat’s MDS, respectively) and as licensors of technology. Mot. 17-18, ECF
`
`71. Second, Finjan argues that the companies are indirect competitors because Finjan’s licensees
`
`and technology successor (Trustwave/Singtel) directly compete with Blue Coat. Mot. 19, ECF 71.
`
`Finally, Finjan argues that Blue Coat’s infringement has harmed its goodwill and reputation
`
`because Blue Coat is misrepresenting Finjan’s innovations as its own. Mot. 19, ECF, 71.
`
`None of these theories is persuasive. With respect to direct competition, although the
`
`Federal Circuit has recognized that “[d]irect competition in the same market is certainly one factor
`
`suggesting strongly the potential for irreparable harm without enforcement of the right to
`
`exclude,” Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 702 F.3d 1351, 1363 (Fed. Cir.
`
`2012), such is not the case here. First, Finjan does not directly compete with Blue Coat in the
`
`mobile security product space. Finjan’s Mobile Secure Browser is a free mobile application that
`
`consumers can download from the iOS App Store and Google Play. Exh. G to Opp., ECF 112-12;
`
`see also Opp. 5. By contrast, Blue Coat’s MDS is a mobile application targeted towards enterprise
`
`customers that is only available to those who have purchased its Web Security product suite. Exh.
`
`C to Opp. at 12, ECF 112-8. On their face, the products seem to operate in different segments of
`
`the market. Moreover, Finjan has not presented evidence that its Mobile Secure Browser has lost
`
`(or is unable to gain) market share because customers have instead chosen Blue Coat’s MDS.
`
`Accordingly, Finjan cannot be said to directly compete with Blue Coat in the mobile security
`
`market.
`
`Second, Blue Coat and Finjan do not directly compete as technology licensors. Like the
`
`mobile security space, it appears that, in the licensing space, the companies operate in separate
`
`spheres: Blue Coat sells licenses to its anti-malware engines, Exh. 50 to Mot. at 2, ECF 71-55,
`
`while Finjan sells licenses to its patents. Finjan presents no evidence that any prospective
`
`9
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 10 of 15
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`licensees have declined a license to Finjan’s patents because they have purchased a license to Blue
`
`Coat’s anti-malware services instead. As such, there does not seem to be any direct competition
`
`between Finjan and Blue Coat in the licensing market.
`
`With respect to indirect competition, although it appears that Finjan and Blue Coat do
`
`indirectly compete through Finjan’s licensees and technology successor (a point which Blue Coat
`
`does not appear to dispute), Finjan has not concretely shown that it stands to suffer immediate
`
`irreparable harm. As an initial matter, the Federal Circuit has made clear that “[n]othing in eBay
`
`eliminates the requirement that the party seeking a permanent injunction must show that it has
`
`suffered an irreparable injury.” Voda v. Cordis Corp., 536 F.3d 1311, 1329 (Fed. Cir. 2008)
`
`(internal quotation marks and citation omitted) (emphasis added). Thus, harm sustained by
`
`Finjan’s licensees or technology successor is not relevant to the irreparable harm inquiry. That
`
`said, harm sustained by Finjan as a result of the impact of Blue Coat’s alleged infringement on
`
`these companies is relevant. See, e.g., Robert Bosch, 659 F.3d at 1153-54 (finding irreparable
`
`harm based on indirect competition through mass merchandisers, automotive specialty retailers,
`
`and original equipment manufacturers); Mytee Prod., Inc. v. Harris Research, Inc., 439 F. App’x
`
`882, 888 (Fed. Cir. 2011) (finding irreparable harm based on indirect competition through
`
`franchisees). On this point, Finjan argues that Blue Coat’s infringement has undermined the value
`
`of the licenses it offers because this value depends on whether licensees would get an advantage
`
`over their competitors by having a license. Mot. 19, ECF 71; Reply 12, ECF 125. However,
`
`Finjan has not offered any specific evidence that the value of its patents have declined (e.g.,
`
`potential licensees have been less willing to pay the same price for license) as a result of Blue
`
`Coat’s alleged infringement. Moreover, this argument overlooks the fact that, regardless of
`
`whether Finjan’s licenses offer technological advantages over the competition, prospective
`
`licensees would still be motivated to purchase a license to avoid costly litigation. Accordingly,
`
`this theory is speculative at best.
`
`With respect to reputation and goodwill, the Court also finds that the alleged harm to
`
`Finjan is speculative. Finjan asserts that “Blue Coat is misrepresenting Finjan’s innovations as its
`
`own,” Mot. 19, ECF 71; however, Finjan provides no evidence that Blue Coat’s alleged
`
`10
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 11 of 15
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`misrepresentation has actually hurt its reputation by, for example, causing consumers to think that
`
`Finjan’s technology is of lower quality. Although the Federal Circuit has recognized that the
`
`association of one’s technologies with less innovative companies can harm one’s reputation as an
`
`innovator, see, e.g., Douglas Dynamics, LLC v. Buyers Prod. Co., 717 F.3d 1336, 1344 (Fed. Cir.
`
`2013), Finjan presents only high-level assertions, not specific evidence, that such is the case here.
`
`Further, developments in Finjan’s financing seem to only reflect the fact that Blue Coat has not yet
`
`paid damages from Finjan I, not loss of reputation or goodwill in the market. Accordingly, Finjan
`
`has not sufficiently demonstrated that it stands to suffer immediate, irreparable harm to either its
`
`reputation or goodwill.
`
`Taken together, Finjan’s arguments that it will suffer irreparable harm are speculative at
`
`best. This is not enough to justify the extraordinary relief of a preliminary injunction. In addition,
`
`several other considerations counsel against finding irreparable harm in this case:
`
`First, Finjan has a long history of granting non-exclusive licenses to it patents. As the
`
`Federal Circuit has recognized, “the irreparable harm inquiry seeks to measure harms that no
`
`damages payment, however great, could address.” Celsis In Vitro, Inc. v. CellzDirect, Inc., 664
`
`F.3d 922, 930 (Fed. Cir. 2012). For example, “[p]rice erosion, loss of goodwill, damage to
`
`reputation, and loss of business opportunities are all valid grounds for finding irreparable harm.”
`
`Id. Prospective harm that can already be priced is not. Accordingly, when a patentee
`
`demonstrates a willingness to license patented technology on a nonexclusive basis, courts have
`
`considered this a factor against finding irreparable harm because the patentee has shown itself
`
`“willing to forgo its patent rights for compensation,” which means that “any injury suffered . . .
`
`would be compensable in damages assessed as part of the final judgment in the case.” High Tech
`
`Medical Instrumentation, Inc. v. New Image Industries, Inc., 49 F.3d 1551, 1557 (Fed. Cir. 1995);
`
`see also Celgard, LLC v. LG Chem, Ltd., 624 F. App’x 748, 753 (Fed. Cir. 2015) (affirming denial
`
`of a preliminary injunction where patentee admitted that “in the past, it licensed [the accused
`
`infringer] to perform the same coating process that it now accuses of infringement”).
`
`Such is the case here. In its own words, one of Finjan’s “core businesses since the late
`
`1990s is licensing its technology.” Mot. 19, ECF 71. The ’494 patent is part of this business. To
`
`11
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:15-cv-03295-BLF Document 149 Filed 11/22/16 Page 12 of 15
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`date, Finjan has granted licenses for the ’494 patent to 12 companies, and has engaged in
`
`discussions with many more. Opp. 19, ECF 112. Accordingly, it cannot be said that Blue Coat’s
`
`practicing the’494 patent harms Finjan in a way that could not be prospectively priced. Moreover,
`
`Finjan has already demonstrated an ability to quantify the value of its ’494 patent rights with
`
`respect to Blue Coat, as it offered to license the ’494 patent to Blue Coat during settlement
`
`negotiations and, according to Finjan’s corporate witness, the offer is still open. Exh. J to Opp. at
`
`81:11-12, ECF 111-11; Hrg. Tr. at 10:23-11:7, 40:17-41:4, ECF 139. The Court appreciates that a
`
`party’s willingness to make a settlement offer does not mean that all prospective harm is
`
`quantifiable. However, the facts that Finjan still stands willing to license the ’494 patent and has a
`
`proven track record of doing so with other companies makes it highly unlikely that Finjan is not
`
`able to quantify prospective harm in this case. This weighs heavily against finding irreparable
`
`harm.
`
`Second, Finjan waited nearly one year after it filed this lawsuit to seek a preliminary
`
`injunction. Although some delay in seeking injunctive relief may be reasonable while a party
`
`investigates its infringement claims, Finjan’s lack of urgency at least suggests that the status quo
`
`was not so damaging that it feared immediate, irreparable injury. See High Tech Medical
`
`Instrumentation, Inc., 49 F.3d at 1557 (“Absent a good explanation, not offered or found here, 17
`
`months is a substantial period of delay that militates against the issuance of a preliminary
`
`injunction by demonstrating that there is no apparent urgency to the request for injunctive relief.”);
`
`Nutrition 21 v. U.S., 930 F.2d 867, 872 (Fed. Cir. 1991) (“[D]elay[] for a substantial period of
`
`time before seeking a preliminary injunction at least suggests that the status quo does