Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7797 Page 1 of 11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`FINJAN, INC.,
`
`v.
`
`Plaintiff,
`
`ESET, LLC and ESET SPOL. S.R.O.,
`
`Defendants.
`
` Case No.: 17-cv-00183-CAB-BGS
`
`ORDER DENYING MOTION TO
`STRIKE AMENDED AFFIRMATIVE
`DEFENSES AND DISMISS
`COUNTERCLAIMS
`
`
`[Doc. No. 157]
`
`On July 24, 2017, the Court granted, with leave to amend, a motion to strike
`
`affirmative defenses and dismiss counterclaims filed by Plaintiff Finjan, Inc. (“Finjan”).
`
`[Doc. No. 137.] Finjan now moves to strike the most of the same affirmative defenses and
`
`to dismiss the same counterclaims, along with a new counterclaim, as pled in the amended
`
`answers and counterclaims filed by Defendants ESET, LLC and ESET SPOL. S.R.O.
`
`(collectively, “ESET”), respectively. The motion has been fully briefed, and the Court
`
`deems it suitable for submission without oral argument. As discussed below, the motion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`is denied.
`
`25
`
`26
`
`27
`
`28
`
`I.
`
`Background
`
`Finjan is the owner of six patents which protect computers and networks from
`
`malicious code that may exist in content downloaded from the internet. [Doc. No. 1 ¶¶ 10-
`
`27.] Finjan alleges ESET has infringed on those patents and filed a complaint asserting
`
`1
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7798 Page 2 of 11
`
`
`
`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
`
`direct and indirect infringement of each of the six patents at issue here (collectively the
`
`“patents in suit”): U.S. Patent Nos. 6,154,844 (the “‘844 Patent”); 6,804,780 (the “‘780
`
`Patent”); 7,975,305 (the “‘305 Patent”); 8,079,086 (the “‘086 Patent”); 9,189,621 (the
`
`“‘621 Patent”); and 9,219,755 (the “‘755 Patent”).
`
`The Court granted Finjan’s motion to strike certain of ESET’s affirmative defenses
`
`and to dismiss certain counterclaims, but the Court gave ESET leave to file an amended
`
`answer and counterclaims. [Doc. No. 137.] ESET filed an amended answer and
`
`counterclaims, and Finjan now moves to strike or dismiss many of the same counterclaims
`
`and affirmative defenses that were at issue in its prior motion.
`
`II. Motion to Strike Affirmative Defense of Acquiescence
`
`A. Legal Standard
`
`A motion to strike an affirmative defense is allowable under Federal Rule of Civil
`
`Procedure 12(f), which provides that “a court may strike from a pleading an insufficient
`
`defense or any redundant, immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P.
`
`12(f). “The key to determining the sufficiency of pleading an affirmative defense is
`
`whether it gives plaintiff fair notice of the defense.” Simmons v. Navajo Cty., 609 F.3d
`
`1011, 1023 (9th Cir. 2010). “Fair notice generally requires that the defendant state the
`
`nature and grounds for the affirmative defense.” Nguyen v. HOVG, LLC, No. 14cv837,
`
`2014 WL 5361935, at *1 (S.D. Cal. Oct. 20, 2014) (citation omitted). “It does not,
`
`however, require a detailed statement of facts.” Id.
`
`Motions to strike are generally disfavored and “should not be granted unless it is
`
`clear that the matter to be stricken could have no possible bearing on the subject matter of
`
`the litigation.” Neveu v. City of Fresno, 392 F.Supp. 2d 1159, 1170 (E.D. Cal. 2005)
`
`(citation omitted). “[C]ourts often require a showing of prejudice by the moving party
`
`before granting” a motion to strike, and “[u]ltimately, whether to grant a motion to strike
`
`lies within the sound discretion of the district court.” Cal. Dept. of Toxic Substances
`
`Control v. Alco Pac., Inc., 217 F. Supp. 2d 1028, 1033 (C.D. Cal. 2002) (citation omitted).
`
`In exercising its discretion, the court views the pleadings in the light most favorable to the
`
`2
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7799 Page 3 of 11
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`non-moving party, and “resolves any doubt as to the relevance of the challenged allegations
`
`or sufficiency of a defense in the defendant’s favor.” Id. “Even when the defense under
`
`attack presents a purely legal question, courts are reluctant to determine disputed or
`
`substantial questions of law on a motion to strike.” SEC v. Sands, 902 F. Supp. 1149, 1166
`
`(C.D. Cal. 1995).
`
`B. Analysis
`
`Finjan moves to strike ESET’s amended eleventh affirmative defense of
`
`acquiescence. Finjan moved to strike the acquiescence defense that appeared in the
`
`original answer and counterclaims on the grounds that it did not provide fair notice of the
`
`defense. [Doc. No. 127-1 at 9.] In the original answer, ESET’s eleventh affirmative
`
`defense provided in its entirety: “Plaintiff’s claims and requested relief under Title 35 of
`
`the United States Code are barred by the equitable doctrine of acquiescence.” [Doc. No.
`
`118 at 24.] The Court agreed with Finjan, finding that this defense did not provide fair
`
`notice because it was a “mere reference to a legal doctrine. . . [which does not] provide []
`
`fair notice of an affirmative defense absent some fact or argument explaining the defense.”
`
`[Doc. No. 137 at 5]; Stevens v. Corelogic, Inc., No. 14-cv-1158-BAS-JLB, 2015 WL
`
`7272222, at *4 (S.D. Cal. Nov. 17, 2015) (quoting Baker v. Ensign, No. 11-cv-2060-BAS
`
`(WVG), 2014 WL 4161994, at *4 (S.D. Cal. Aug. 20, 2014)).
`
`In the amended answers, ESET included additional allegations with its acquiescence
`
`defense. This time around, Finjan moves to strike the defense not because it does not
`
`provide fair notice, but because it is “facially implausible.” [Doc. No. 157-1 at 8.] Facial
`
`implausibility, however, is akin to the standard for dismissal of a claim pursuant to Rule
`
`12(b)(6); it is not grounds for striking an affirmative defense. As discussed above, to strike
`
`an affirmative defense, the Court must find that it does not give the plaintiff fair notice of
`
`25
`
`the defense.1 Finjan does not even argue that the amended answer does not provide fair
`
`26
`
`27
`
`28
`
`
`
`1 District courts in the Ninth Circuit have reached different conclusions with respect to whether the
`pleading standards set by the Supreme Court in Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007),
`
`3
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7800 Page 4 of 11
`
`
`
`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
`
`notice, and the Court finds that the additional allegations are sufficient to provide Finjan
`
`fair notice of ESET’s acquiescence defense. Accordingly, Finjan’s motion to strike this
`
`defense is denied.
`
`III. Motion to Dismiss Counterclaims
`
`A. Legal Standard
`
`Under Rule 12(b)(6), a party may file a motion to dismiss based on the failure to
`
`state a claim upon which relief may be granted. A Rule 12(b)(6) motion challenges the
`
`sufficiency of a complaint as failing to allege “enough facts to state a claim to relief that is
`
`plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A facial
`
`plausibility standard is not a “probability requirement” but mandates “more than a sheer
`
`possibility that a defendant has acted unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678
`
`(2009) (internal quotations and citations omitted). For purposes of ruling on a Rule
`
`12(b)(6) motion, the court “accept[s] factual allegations in the complaint as true and
`
`construe[s] the pleadings in the light most favorable to the non-moving party.” Manzarek
`
`v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). “[D]ismissal may
`
`be based on either a lack of a cognizable legal theory or the absence of sufficient facts
`
`alleged under a cognizable legal theory.” Johnson v. Riverside Healthcare Sys., 534 F.3d
`
`1116, 1121 (9th Cir. 2008) (internal quotations and citations omitted).
`
`
`
`and Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), apply to affirmative defenses. See generally J & J Sports
`Prods., Inc. v. Scace, No. 10CV2496-WQH-CAB, 2011 WL 2132723, at *1 (S.D. Cal. May 27, 2011)
`(discussing split and ultimately holding that the fair notice standard still applies). In cases since Twombly
`and Iqbal, however, the Ninth Circuit has at least implied that the fair notice standard still applies to the
`pleading of affirmative defenses. See, e.g., Kohler v. Flava Enter., Inc., 779 F.3d 1016, 1019 (9th Cir.
`2015) (noting when discussing whether an affirmative defense had been adequately pled that “the ‘fair
`notice’ required by the pleading standards only requires describing the defense in ‘general terms.’”); see
`also Bruno v. Equifax Information Servs., Inc., No. CV 2:17-0327 WBS EFB, 2017 WL 2833393, at *2
`(E.D. Cal. June 30, 2017) (“This court [] has generally understood Kohler to have held that the “fair
`notice” standard applies to affirmative defenses.“); Roe v. City of San Diego, 289 F.R.D. 604, 608 (S.D.
`Cal. 2013) (“[T]he Ninth Circuit has continued to recognize the ‘fair notice’ standard of affirmative
`defense pleading even after Twombly and Iqbal.”) (citing Simmons, 609 F.3d at 1023, and Schutte &
`Koerting, Inc. v. Swett & Crawford, 298 Fed. Appx. 613, 615 (9th Cir. 2008)). Accordingly, the Court
`applies the fair notice standard here.
`
`4
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7801 Page 5 of 11
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`Even under the liberal pleading standard of Rule 8(a)(2), under which a party is only
`
`required to make “a short and plain statement of the claim showing that the pleader is
`
`entitled to relief,” a “pleading that offers ‘labels and conclusions’ or ‘a formulaic recitation
`
`of the elements of a cause of action will not do.’” Iqbal, 556 U.S. at 678 (quoting Twombly,
`
`550 U.S. at 555). The court must be able to “draw the reasonable inference that the
`
`defendant is liable for the misconduct alleged.” Id. at 663. “Determining whether a
`
`complaint states a plausible claim for relief . . . [is] a context-specific task that requires the
`
`reviewing court to draw on its judicial experience and common sense.” Id. at 679.
`
`B. Counterclaim 13 (Affirmative Defense 12): Prosecution Laches
`
`Finjan moves to dismiss ESET’s amended counterclaim for declaratory judgment of
`
`unenforceability of the ‘305, ‘086, ‘621, and ‘755 patents due to prosecution laches. [Doc.
`
`No. 127-1 at 13.] “The doctrine [of prosecution laches] ‘may render a patent
`
`unenforceable when it has issued only after an unreasonable and unexplained delay in
`
`prosecution’ that constitutes an egregious misuse of the statutory patent system under the
`
`totality of the circumstances.” Cancer Research Tech. Ltd. v. Barr Labs., Inc., 625 F.3d
`
`724, 728 (Fed. Cir. 2010) (quoting Symbol Techs., Inc. v. Lemelson Med., Educ. &
`
`Research Found., 422 F.3d 1378, 1385-86 (Fed. Cir. 2005)). It also requires a showing of
`
`prejudice, which in turn requires “evidence of intervening rights, i.e., that either the
`
`accused infringer or others invested in, worked on, or used the claimed technology during
`
`the period of delay.” Id. at 729. “[T]here are no strict time limitations for determining
`
`whether continued refiling of patent applications is a legitimate utilization of statutory
`
`provisions or an abuse of those provisions. The matter is to be decided as a matter of
`
`equity, subject to the discretion of [the] district court . . . .” Symbol Techs., 422 F.3d at
`
`24
`
`1385.
`
`25
`
`
`
`The first time around, the Court dismissed this counterclaim because ESET’s
`
`26
`
`27
`
`28
`
`allegations of unreasonable and unexplained delay were limited to a recitation of the
`
`number of years that lapsed between the time Finjan filed its application for the parent
`
`patent and the applications for the four patents at issue here. [Doc. No. 137 at 5-7] The
`
`5
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7802 Page 6 of 11
`
`
`
`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
`
`amended counterclaim for prosecution laches contains additional allegations about why
`
`Finjan’s delay in filing the patents at issue was unreasonable. [Doc. No. 142 at ¶¶ 67-10.]
`
`Nevertheless, Finjan argues that these additional allegations are “entirely unsupported.”
`
`[Doc. No. 157-1 at 10.] As ESET points out, Finjan’s arguments are more appropriate to
`
`a motion for summary judgment than to a motion to dismiss. Whether the evidence will
`
`support Finjan’s prosecution laches claim is not at issue here. Because ESET has
`
`sufficiently alleged why Finjan’s delay was unreasonable, Finjan’s motion to dismiss this
`
`counterclaim (and to strike the related defense) is denied.
`
`C. Counterclaim 14 (Affirmative Defense 5): Patent Misuse
`
`Patent misuse is “the patentee’s act of ‘impermissibly broaden[ing] the “physical or
`
`temporal scope” of the patent grant with anticompetitive effect.’” Princo Corp. v. Int’l
`
`Trade Comm’n, 616 F.3d 1318, 1328 (Fed. Cir. 2010) (alteration in original) (quoting
`
`Windsurfing Int’l, Inc. v. AMF, Inc., 782 F.2d 995, 1001 (Fed. Cir. 1986)). “[T]he basic
`
`rule of patent misuse [is] that the patentee may exploit his patent but may not ‘use it to
`
`acquire a monopoly not embraced in the patent.’” Id. at 1327 (quoting Transparent-Wrap
`
`Mach. Corp. v. Stokes & Smith Co., 329 U.S. 637, 643 (1947)). Patent misuse is an
`
`affirmative defense to patent infringement and an “accused infringer may invoke the
`
`doctrine of patent misuse to defeat the patentee’s claim.” Id. at 1328. However, the Federal
`
`Circuit has emphasized the “narrow scope of the doctrine” and clarified that even otherwise
`
`unlawful anticompetitive conduct does not establish patent misuse “unless the conduct in
`
`question restricts the use of that patent and does so in one of the specific ways that have
`
`been held to be outside the otherwise broad scope of the patent grant.” Id. at 1329.
`
`ESET’s original counterclaim for declaratory judgment of unenforceability of the
`
`patents in suit due to patent misuse was based on allegations pertaining to a lawsuit Finjan
`
`filed in Germany for infringement of a European patent and allegations that Finjan “tied”
`
`a license to the European patent to licenses for the patents in suit. [Doc. No. 118 ¶¶ 72-
`
`73.] In the order dismissing this counterclaim, the Court held that “ESET’s allegation that
`
`Finjan will not license the patents in suit unless it includes a license to Finjan’s European
`
`6
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7803 Page 7 of 11
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`patent fails to state a claim because ESET has not alleged any restraint on competition.”
`
`[Doc. No. 137 at 9.]
`
`In its amended counterclaim, ESET clarifies that its patent misuse claim is based on
`
`Finjan’s demand of “payment of royalties on Defendants’ worldwide sales of products that
`
`are not covered by any intellectual property of Plaintiff,” which, according to ESET
`
`constitutes per se misuse. [Doc. No. 142 at ¶ 81.] In other words, ESET is arguing that
`
`Finjan is impermissibly broadening the territorial scope of its patents by tying a worldwide
`
`license on sales of products that may be covered by a patent in some territories (either in
`
`the United States or Europe), but not worldwide, to licenses for the patents in suit. A
`
`product patented only in Europe would effectively be unpatented outside of Europe, so
`
`demanding a license based on sales in countries where the patent does not apply would
`
`constitute exploitation of the patent by using it “to acquire a monopoly not embraced in the
`
`patent.” Princo Corp., 616 F.3d at 1327 (quoting Transparent–Wrap Mach. Corp. v.
`
`Stokes & Smith Co., 329 U.S. 637, 643 (1947)). At this stage, the Court finds that ESET
`
`has sufficiently alleged patent misuse based on this theory. If ESET can prove that Finjan
`
`tied licenses to the patents in suit to sales of products in jurisdictions where Finjan does
`
`not hold any patents, ESET may have a claim for patent misuse. Accordingly, Finjan’s
`
`18
`
`motion to dismiss this claim is denied.
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`D. Counterclaims 15-17: Inequitable Conduct
`
`1.
`
`Legal Standards
`
`Finjan moves to dismiss ESET’s amended fifteenth, sixteenth, and seventeenth
`
`counterclaims for declaratory judgment of unenforceability of the ‘621 patent, the ‘086
`
`patent, and the ‘755 patent, respectively, due to inequitable conduct. [Doc. No. 157-1 at
`
`1.] “Inequitable conduct is an equitable defense to patent infringement that, if proved, bars
`
`enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276,
`
`1285 (Fed. Cir. 2011) (en banc). The elements of “inequitable conduct are: (1) an
`
`individual associated with the filing and prosecution of a patent application made an
`
`affirmative misrepresentation of a material fact, failed to disclose material information, or
`
`7
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7804 Page 8 of 11
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`submitted false material information; and (2) the individual did so with a specific intent to
`
`deceive the [Patent and Trademark Office (“PTO”)].” Exergen Corp. v. Wal-Mart Stores,
`
`Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009).
`
`“Intent and materiality are separate requirements.” Therasense, 649 F.3d at 1290.
`
`The intent element requires a showing that “the patentee acted with the specific intent to
`
`deceive the PTO. A finding that the misrepresentation or omission amounts to gross
`
`negligence or negligence under a ‘should have known’ standard does not satisfy this intent
`
`requirement.” Id. (internal citation omitted). Specific intent to deceive means an “intent
`
`to deceive must be ‘the single most reasonable inference able to be drawn from the
`
`10
`
`evidence.’” Id.
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`“[T]he materiality required to establish inequitable conduct is but-for materiality.”
`
`Id. at 1291. “A misrepresentation or omission is but-for material ‘[i]f the PTO would not
`
`have allowed a claim had it been aware’ of the undisclosed information or the falsity of the
`
`representation.” Presidio Components, Inc. v. Am. Tech. Ceramics Corp., No. 14-CV-
`
`2061-H (BGS), 2016 WL 7319533, at *15 (S.D. Cal. Feb. 10, 2016) (alteration in original)
`
`(quoting Therasense, 649 F.3d at 1291). In cases of alleged omissions of submissions of
`
`prior art to the PTO, “the court must determine whether the PTO would have allowed the
`
`claim if it had been aware of the undisclosed reference.” Therasense, 649 F.3d at 1291.
`
`“An inequitable conduct counterclaim must be pled with ‘particularity’ under
`
`Federal Rule of Civil Procedure 9(b).” Presidio, 2016 WL 7319533, at *15. Rule 9(b)
`
`states: “In alleging fraud or mistake, a party must state with particularity the circumstances
`
`constituting fraud or mistake.” In cases of inequitable conduct, the “particularity” in Rule
`
`9(b) requires “identification of the specific who, what, when, where, and how of the
`
`material misrepresentation or omission committed before the PTO.” Exergen, 575 F.3d at
`
`25
`
`1327.
`
`26
`
`27
`
`28
`
`Moreover, although “knowledge” and “intent” may be averred generally, a
`pleading of inequitable conduct under Rule 9(b) must include sufficient
`allegations of underlying facts from which a court may reasonably infer that
`a specific individual (1) knew of the withheld material information or of the
`
`8
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7805 Page 9 of 11
`
`
`
`
`
`falsity of the material misrepresentation, and (2) withheld or misrepresented
`this information with a specific intent to deceive the PTO.
`
`Id. at 1328-29. “A reasonable inference is one that is plausible and that flows logically
`
`from the facts alleged, including any objective indications of candor and good faith.” Id.
`
`at 1329 n.5.
`
`2.
`
`The ‘621 patent
`
`ESET’s inequitable conduct counterclaim for the ‘621 patent is premised on Finjan’s
`
`alleged concealment from the PTO of all of the details surrounding a decision in the District
`
`of Delaware (the “Delaware Decision”) that invalidated a patent held by Finjan (the “‘962
`
`patent”) that was in the priority chain for the ‘621 patent. The Court dismissed this
`
`counterclaim the first time around for two reasons. First, the Court found that Finjan was
`
`under no obligation to explain the significance the Delaware Decision to the PTO. Second,
`
`the Court held that ESET had failed to allege how either the fact that the Delaware Decision
`
`was later affirmed by the Federal Circuit or the “testimony or exhibits” from the Delaware
`
`Decision were material.
`
`Finjan again moves to dismiss this counterclaim arguing that this counterclaim is
`
`facially implausible because it does not plead that Finjan or its counsel withheld material
`
`information from the patent examiner or that it did so with the intention to deceive the
`
`PTO. The Court is not persuaded. In the amended counterclaim, ESET more clearly
`
`articulates the alleged facts on which it premises this counterclaim. ESET alleges that
`
`Finjan never disclosed that the Federal Circuit had affirmed the invalidation of a claim in
`
`the ‘926 patent, even when the patent examiner had rejected a claim from Finjan’s
`
`application for the ‘621 patent on the ground of “nonstatutory obviousness-type double
`
`patenting,” noting that the claim in question from the ‘621 patent was not patentably
`
`distinct from the invalidated claim from the ‘926 patent. [Doc. No. 142 at ¶ 121.] ESET’s
`
`allegations that Finjan proceeded with its patent application, including the submission of a
`
`terminal disclaimer, without informing the PTO that the Federal Circuit had affirmed the
`
`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
`
`9
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7806 Page 10 of 11
`
`
`
`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
`
`invalidity of a claim that the examiner had found not patentably distinct from a claim in
`
`the ‘621 patent, or without making any effort to distinguish the new claim from the invalid
`
`claim, plausibly state a claim for inequitable conduct. The fact that Finjan included the
`
`Delaware Decision and other information related thereto amongst the materials it submitted
`
`to the examiner goes to the merits of whether the omitted information was material or
`
`whether there was an intent to deceive, but it does not justify dismissal of the inequitable
`
`conduct counterclaim. Accordingly, Finjan’s motion to dismiss this counterclaim is
`
`denied.
`
`
`
`3.
`
`The ‘086 patent
`
`ESET’s amended filing includes a new counterclaim for inequitable conduct related
`
`to the ‘086 patent. Finjan first argues that this counterclaim is untimely and improper
`
`because ESET was required to seek leave to add an entirely new counterclaim, as opposed
`
`to an amendment that only attempted to remedy the deficiencies in the counterclaims that
`
`were dismissed. Whether Finjan may be technically correct is irrelevant because even if
`
`the Court’s July 24, 2017, order giving ESET leave to file an amended answer and
`
`counterclaim did not already permit the inclusion of this new counterclaim, the Court
`
`would have granted a separate motion for leave to include this counterclaim.
`
`As for the substance of this counterclaim, ESET alleges that Finjan filed a
`
`Nonpublication Request during the prosecution of the application from which the ‘086
`
`patent issued. The Nonpublication Request certified that “the invention disclosed in the
`
`attached application has not and will not be the subject of an application filed in another
`
`country, or under a multilateral international agreement, that requires publication at
`
`eighteen months after filing.” [Doc. No. 142 at ¶ 91.] In fact, according to ESET, the
`
`invention had been the subject of a patent application filed in Europe (the “EP ‘094
`
`patent”). [Id. at ¶ 98.] ESET alleges that Finjan made this false statement so that
`
`competitors could not submit prior art challenging the claims of the application for the ‘086
`
`27
`
`patent.
`
`28
`
`10
`
`17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 177 Filed 10/02/17 PageID.7807 Page 11 of 11
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Finjan argues that the Nonpublication Request was not a misrepresentation because
`
`the invention disclosed in the application was different from the EP ‘094 patent, and
`
`because ESET does not allege materiality or intent to deceive. These arguments amount
`
`to a dispute as to whether the Nonpublication Request was in fact false, whether it was in
`
`fact material, and whether it was in fact made with the intent to deceive. Finjan is free to
`
`contest these allegations on summary judgment or at trial, but its arguments do not support
`
`dismissal of the counterclaim, which plausibly alleges these elements of inequitable
`
`conduct. Accordingly, Finjan’s motion to dismiss ESET’s inequitable conduct for the ‘086
`
`patent is denied.
`
`10
`
`11
`
`
`
`4.
`
`The ‘755 patent
`
`In its amended counterclaim for inequitable conduct for the ‘755 patent, ESET
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`alleges that because the ‘755 patent is a continuation of the ‘086 patent and a divisional of
`
`the ‘621 patent, which are themselves unenforceable for the reasons alleged (and discussed
`
`herein), the ‘755 patent is also unenforceable as the fruit of the poisonous tree and under
`
`the doctrine of infectious unenforceability. [Doc. No. 142 at ¶ 144.] Finjan argues only
`
`that this counterclaim should be dismissed because ESET did not state claims for
`
`inequitable conduct related to the ‘621 patent and ‘086 patent. Thus, because the Court
`
`has already found that ESET’s inequitable conduct counterclaims for the ‘621 patent and
`
`‘086 patent survive dismissal, Finjan’s motion to dismiss this counterclaim is denied as
`
`20
`
`well.
`
`21
`
`IV. Conclusion
`
`22
`
`
`
`For the reasons set forth above, it is HEREBY ORDERED that Finjan’s motion to
`
`23
`
`strike the amended affirmative defenses and dismiss amended counterclaims is DENIED.
`
`24
`
`
`
`IT IS SO ORDERED.
`
`25
`
`Dated: October 2, 2017
`
`
`
`26
`
`27
`
`28
`
`
`
`11
`
`17-cv-00183-CAB-BGS
`
`