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`
` PAUL 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
`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.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`SAN DIEGO DIVISION
`FINJAN, INC., a Delaware Corporation,
`Case No. 3:17-cv-00183-CAB-BGS
`[REDACTED]
`MEMORANDUM OF POINTS AND
`AUTHORITIES IN SUPPORT OF
`PLAINTIFF FINJAN, INC.’S
`OPPOSITION TO DEFENDANTS ESET,
`LLC AND ESET, SPOL. S.R.O.’S
`MOTION FOR SUMMARY
`JUDGMENT OF UNENFORCEABILITY
`OF THE ‘621, ‘755, AND ‘086 PATENTS,
`AND OF INVALIDITY OF CLAIMS 1, 5,
`6, 7, 10, 11, 13, AND 14 OF THE ‘6321
`PATENT ON THE BASIS OF
`COLLATERAL ESTOPPEL
`
`Plaintiff,
`
`
`
`v.
`
`ESET, LLC, a California Limited
`Liability Corporation, and ESET SPOL.
`S.R.O., a Slovak Republic Corporation,
`
`Defendants.
`ESET, LLC, a California Limited
`Liability Corporation, and ESET SPOL.
`S.R.O., a Slovak Republic Corporation,
`
`Counterclaim-Plaintiffs,
`
`
`
`v.
`
`FINJAN, INC., a Delaware Corporation,
`
`Counterclaim-Defendant.
`
`Date: May 28, 2019
`Dept.: 4C
`Judge: Cathy Ann Bencivengo
`PER CHAMBERS RULES, NO ORAL
`ARGUMENT UNLESS ORDERED BY
`THE COURT
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`FINJAN’S OPP. TO ESET’S MOT. FOR
`SJ OF UNENFORCEABILITY AND COLLATERAL ESTOPPEL
`
`

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`Case 3:17-cv-00183-CAB-BGS Document 606 Filed 05/14/19 PageID.32772 Page 2 of 20
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`TABLE OF CONTENTS
`
`2.
`
`3.
`
`Page
`INTRODUCTION .................................................................................................. 1
`I.
`FACTUAL BACKGROUND ................................................................................. 1
`II.
`III. ARGUMENT .......................................................................................................... 1
`Eset Is Not Entitled to Summary Judgment of Unenforceability
`A.
`Based on Inequitable Conduct ...................................................................... 1
`1.
`There Is No Evidence of Inequitable Conduct During
`Prosecution of the ‘086 Patent ........................................................... 1
`There Is No Evidence of Inequitable Conduct During
`Prosecution of the ‘621 Patent ........................................................... 4
`Eset’s Conclusory Argument of Infectious
`Unenforceability Should Be Denied ................................................ 11
`Eset is Not Entitled to Summary Judgment Based on Collateral
`Estoppel Because the Issues Here are Distinct and Were Not
`Litigated ...................................................................................................... 11
`The ‘621 Patent is Not Identical to the ‘962 Patent ......................... 11
`1.
`The Issue Here Were Not Litigated and Decided ............................ 14
`2.
`It is Unknown Whether the Combination of HotJava and
`3.
`NAV95 Was Necessary to the Jury’s Verdict ................................. 14
`IV. CONCLUSION ..................................................................................................... 15
`
`B.
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`FINJAN’S OPP. TO ESET’S MOT. FOR
`SJ OF UNENFORCEABILITY AND COLLATERAL ESTOPPEL
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Application of Vogel,
`422 F.2d 438 (1970) ................................................................................................ 2, 12
`Asghari-Kamrani v. United Servs. Auto. Ass'n,
`252 F. Supp. 3d 562 (E.D. Va. 2017), aff'd, 737 F. App’x 542 (Fed. Cir.
`2018), cert. denied, No. 18-1088, 2019 WL 826207 (U.S. Apr. 1, 2019) ................... 3
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) ................................................................................ 3, 6
`Comair Rotron, Inc. v. Nippon Densan Corp.,
`49 F.3d 1535 (Fed. Cir. 1995) .................................................................................... 11
`Consol. Aluminum Corp. v. Foseco Int'l Ltd.,
`910 F.2d 804 (Fed. Cir. 1990) .................................................................................... 11
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009) .................................................................................... 1
`Ferring B.V. v. Barr Labs., Inc.,
`437 F.3d 1181 (Fed. Cir. 2006) .................................................................................... 4
`Finjan, Inc. v. Symantec Corp.,
`No. 10-cv-593 (GMS), 2012 WL 12905833 (D. Del. Feb. 29, 2012) ........................ 14
`Joao Control & Monitoring Sys. v. Dig. Playground, Inc.,
`No. 12-cv-6781, 2016 U.S. Dist. LEXIS 137658 (S.D.N.Y. Sept. 30, 2016) ............ 14
`Littlejohn v. United States,
`321 F.3d 915 (9th Cir. 2003) ...................................................................................... 11
`Nichia Corp. v. VIZIO, Inc.,
`No. CV 16-00545 SJO (MRW),
`2018 WL 1942413 (C.D. Cal. Mar. 29, 2018) ............................................................ 14
`Novartis Pharms. Corp. v. Abbott Labs.,
`375 F.3d 1328 (Fed. Cir. 2004) .................................................................................. 15
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`FINJAN’S OPP. TO ESET’S MOT. FOR
`SJ OF UNENFORCEABILITY AND COLLATERAL ESTOPPEL
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`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) .................................................................................. 14
`Outside the Box Innovations, LLC v. Travel Caddy, Inc.,
`695 F.3d 1285 (Fed. Cir. 2012)) ................................................................................... 9
`Presidio Components, Inc. v. Am. Tech. Ceramics Corp.,
`No. 14-cv-2061-H (BGS), 2016 WL 7319533 (S.D. Cal. Feb. 10, 2016) ................... 2
`Soverain Software, LLC v. Victoria’s Secret Direct Brand Mgmt., Inc.,
`778 F.3d 1311 (Fed Cir. 2015) ................................................................................... 14
`Therasense, Inc. v. Becton, Dickinson & Co.,
`649 F.3d 1276 (Fed. Cir. 2011) .................................................................... 2, 4, 10, 11
`United Access Techs., LLC v. Centurytel Broadband Servs. LLC,
`778 F.3d 1327 (Fed. Cir. 2015) ...................................................................... 11, 14, 15
`Worldwide Home Prod., Inc. v. Time Inc.,
`No. 11 CIV. 3633(LTS)(MHD),
`2013 WL 5477480 (S.D.N.Y. Sept. 30, 2013)) ............................................................ 9
`Rules
`Federal Circuit Rule 8 ........................................................................................................ 7
`Federal Rules of Appellate Procedure 8 ............................................................................ 7
`Federal Rule of Civil Procedure 36 ............................................................................... 5, 6
`Other Authorities
`Manual of Patent Examing Procedure § 1122 ............................................................... 2, 3
`Manual of Patent Examing Procedure § 804.02 ................................................................ 8
`
`
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`CASE NO. 3:17-cv-00183-CAB-BGS
`FINJAN’S OPP. TO ESET’S MOT. FOR
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`Case 3:17-cv-00183-CAB-BGS Document 606 Filed 05/14/19 PageID.32775 Page 5 of 20
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`I.
`
`INTRODUCTION
`Defendants Eset, LLC and Eset spol. s.r.o.’s (collectively, “Eset”) Motion for
`Summary of Judgment of Unenforceability of the ‘621, ‘755 and ‘086 Patents and
`Invalidity of the ‘621 Patent on the Basis of Collateral Estoppel (“Motion”) should be
`denied because (1) Finjan was forthcoming during prosecution of its patents and made
`no misrepresentations or omissions, let alone material misrepresentations or omissions,
`and, (2) at a minimum, Eset offers no evidence that the single most reasonable inference
`from Finjan and its prosecution counsel’s conduct was to intentionally deceive the
`patent examiner. Further, the claims of the ‘621 and ‘962 Patent are materially different
`thus precluding a finding of collateral estoppel. Thus, Eset’s Motion be denied and
`Finjan’s Motion for Summary Judgment of No Inequitable Conduct (Doc. No. 509,
`“Finjan’s Motion”) should be granted.
`II.
`FACTUAL BACKGROUND
`Finjan disagrees with Eset’s improperly argumentative purported “Summary of
`Undisputed Facts.” The relevant facts are set forth in Finjan’s Argument below.
`III. ARGUMENT
`A. Eset Is Not Entitled to Summary Judgment of Unenforceability Based
`on Inequitable Conduct
`1.
`There Is No Evidence of Inequitable Conduct During
`Prosecution of the ‘086 Patent
`Eset cannot demonstrate by clear and convincing evidence each of the elements
`of inequitable conduct are present.1
`No Evidence of a Misrepresentation or Omission. Eset cannot demonstrate by
`clear and convincing evidence a misrepresentation or omission during the prosecution of
`
`
`1 Inequitable conduct requires that (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 submitted false material information; and
`(2) the individual did so with a specific intent to deceive the PTO. Exergen Corp. v.
`Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009).
`1
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`the ’086 Patent because the claims of the ‘086 Patent were not the subject of the foreign
`application European Patent 0965094 B1 (the “EP ‘094”), such that Finjan’s
`Nonpublication Request submitted with the ‘086 Patent was accurate. See Doc. No.
`509, Ex. 1 at 8-11 (EP ‘094 claims); id., Ex. 2 at 24-26 (‘086 claims); id., Ex. 3 (Non-
`Publication Request) at 40. Eset concedes that the invention of a patent is defined by
`the patent’s claims. Mot. at 13 (“the invention (i.e., the claims”)); see also Application
`of Vogel, 422 F.2d 438, 441 (1970) (“A good test, and probably the only objective test,
`for ‘same invention,’ is whether one of the claims could be literally infringed without
`literally infringing the other. If it could be, the claims do not define identically the same
`invention.”). Thus, Eset’s claim against the ‘086 Patent fails because it cannot be
`disputed that the same claims were not disclosed in both applications. It is irrelevant
`that a different patent, U.S. Patent No. 6,092,194 (the “’194 Patent”), in the priority
`chain of the ‘086 Patent is an “also published as” patent relating to the EP ‘094. See
`Mot. at 13-14. At any rate, the relationship between the ‘194 Patent and the EP ‘094 is
`disclosed on the face of the EP ‘094—contrary to Eset’s claim that Finjan “selectively
`disclos[ed]” the ‘194 Patent to the PTO because it “bears no apparent connection to a
`foreign application.” Compare id. with Doc. No. 157-7, Ex. 4 at 2.
`No Evidence of Materiality. Eset also lacks clear and convincing evidence of
`materiality, which requires that but for an alleged misrepresentation, the PTO would not
`have issued the ‘086 Patent. See Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d
`1276, 1291 (Fed. Cir. 2011) (materiality requires but-for materiality.”); 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). Indeed, “[w]here [as here] a foreign or PCT
`application is filed first [e.g., EP ‘094], and a U.S. application [e.g., the application for
`the ‘086 Patent] is filed thereafter with an (improper) nonpublication request, the Office
`will not consider the U.S. application as abandoned for having made the
`nonpublication request.” Doc. No. 509, Ex. 11, MPEP § 1122 (emphasis added);
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`Asghari-Kamrani v. United Servs. Auto. Ass'n, 252 F. Supp. 3d 562, 587 (E.D. Va.
`2017), aff'd, 737 F. App’x 542 (Fed. Cir. 2018), cert. denied, No. 18-1088, 2019 WL
`826207 (U.S. Apr. 1, 2019) (citing MPEP § 1122 and finding no materiality established
`for allegedly false non-publication request). Thus, apart from the fact that Finjan’s
`Non-Publication Request was accurate, the Patent Office does not consider non-
`publication requests to be material to whether a patent ought to issue.2
`Further, Eset ignores that the examiner for the ‘086 Patent considered the EP
`‘094 application, and the ‘086 Patent issued regardless, such that the EP ‘094 has no
`material relationship whatsoever to the ‘086 Patent. See Doc. No. 509, Ex. 3 at 35
`(citing consideration of PCT01626 (the international application number for EP ‘094)).
`Eset’s cherry-picked quote from the Aventis case does not support its claim,
`because in Aventis, the patentee engaged in “selective manipulation” by intentionally
`withholding a known prior art reference, which a district later found to be invalidating.
`Mot. at 15; Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1334-35 (Fed. Cir.
`2012). In contrast, Eset has not identified any omission, much less a material one. The
`PTO had the ‘194 Patent and EP ‘094 before it, and issued the ‘086 Patent nonetheless.
`No Evidence of Intent. Although the Court need not analyze the element of
`intent given Eset’s failure to demonstrate a material omission or misrepresentation,
`Eset’s Motion is notably bereft of evidence on this point. In fact, Eset does not cite to a
`single document that even suggests that Finjan or its prosecution counsel at the time,
`Mr. Sophir, somehow deliberately acted to deceive the PTO. See Mot. at 13-15
`(containing no factual citations to the record for intent). Nor did Eset even attempt to
`depose Mr. Sophir in this case. Eset relies on pure, unsupported attorney argument,
`which cannot satisfy its burden to show by clear and convincing evidence that the
`“single most reasonable inference” from Finjan and Mr. Sophir’s conduct was a specific
`
`2 Notably, Eset cites only to Asghari-Kamrani for its ruling on a motion to strike, which
`is irrelevant given that the same court upon considering the merits of the claim later
`found a nonpublication request to be immaterial for the reasons above. See Mot. at 14.
`3
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`intent to deceive, which cannot be proven simply by reliance on a purported showing of
`materiality. See Therasense, 649 F.3d at 1290 (“Intent and materiality are separate
`requirements” and “specific intent to deceive must be the single most reasonable
`inference able to be drawn from the evidence,” which cannot be satisfied by negligence
`or even gross negligence). Even if only one other reasonable inference can be drawn
`from the facts, there is no intent to deceive. Id. at 1291-92 (citation omitted).
`The Ferring case that Eset cites is also distinguishable because, as shown above,
`Finjan did not make any false representation to the PTO. Further, in Ferring the
`examiner voiced concerns about an affiliation of the alleged inventors, who
`subsequently submitted declarations that deceptively excluded their CV or attached a
`doctored CV to hide the exact affiliation the examiner was concerned with, among other
`misleading statements. Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1191-93 (Fed.
`Cir. 2006). Eset has no such evidence of deceptive intent here. Thus, Eset should be
`denied summary judgment with respect to the ‘086 Patent.
`2.
`
`There Is No Evidence of Inequitable Conduct During
`Prosecution of the ‘621 Patent
`No Evidence of a Misrepresentation or Omission. Eset also cannot
`demonstrate by clear and convincing evidence that there was inequitable conduct
`relating to the ‘621 Patent, as Finjan and its current prosecution counsel Ms. Dawn-
`Marie Bey have more than complied with their disclosure obligations to the PTO.
`In 2010, Finjan asserted a subset of claims of U.S. Patent No. 6,480,962 (the
`“‘962 Patent”) in Delaware in Finjan, Inc. v. Symantec Corp., Case No. 10-cv-593
`(GMS) (D. Del. 2010) (the “Delaware Case”). On January 25, 2012, the U.S. Patent
`and Trademark Office (“PTO”) instituted reexamination proceedings on all claims 1-55
`of the ‘962 Patent (“the ‘962 Reexam”). Doc. No. 531-12, Ex. 8 at 2, 5-6. On
`December 21, 2012, while the ‘962 Reexam was pending, the court in the Delaware
`Case entered judgment that the asserted claims of the ‘962 Patent were invalid (the
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`“Delaware Decision”). Doc. No. 509, Ex. 4 at 2-3. Finjan appealed the Delaware
`Decision, and the Federal Circuit issued a one-word affirmance (“Affirmed”) pursuant
`to Federal Rule of Civil Procedure 36 on September 15, 2014 (the “’962 Affirmance”).
`Doc. No. 531-10, Ex. 6 at 5.
`Notably, Ms. Bey filed the application that would mature into the ‘621 Patent, on
`February 11, 2015 with an extensive Information Disclosure Statement (“IDS”) which
`Eset admits contained the Delaware Decision. Mot. at 2-3. That IDS also contained
`every piece of prior art that the Delaware jury might have used to invalidate the ‘962
`Patent, as well as Finjan’s Notice of Appeal. Doc. No. 509, Ex. 5 at 175-76, 186, 190,
`195-96, 198-99, 203-04, 207; id., Ex. 7 at 8, 10; id., Ex. 6 at 17-19.
`Finjan further disclosed litigation documents from the Delaware Case, including
`four post-trial briefs and a declaration which preceded the Delaware Decision and
`Finjan’s subsequent Notice of Appeal, and which contain testimony from the Delaware
`Case that Eset falsely and repeatedly alleges Finjan did not disclose. Compare Doc.
`No. 509, Ex. 5 at 183-84, 190 (together with the Delaware Decision and Notice of
`Appeal, the “Delaware Decision Disclosures”); see also id., Ex. 7 at 8, 10; id., Ex. 6 at
`17-19 with Mot. at 3-4. Eset never identified specific testimony from the Delaware
`Case that it contended would have been relevant to the ‘621 Patent prosecution. See,
`e.g., Doc. No. 509, Ex. 6 at 17-19; see generally Motion. Nonetheless, the Delaware
`Decision Disclosures, which contain post-trial briefing with extensive discussion of
`testimony and evidence, directly refute Eset’s fabricated “fact” that Finjan somehow did
`not disclose “testimony” from the Delaware Case.3 See Mot. at 3-4.
`Eset fabricates another “fact,” stating that Ms. Bey falsely represented to the PTO
`that invalidity of the ‘962 Patent was not final. Ms. Bey never represented any such
`thing, and Eset cites no supporting evidence except the very IDS in which Ms. Bey
`
`3 Eset’s plainly false representation to the Court is surprising, as the Delaware Decision
`Disclosures have been part of discovery and extensive briefing in this case. See, e.g.,
`Doc. No. 509, Ex. 6 at 17-19; Doc. No. 127-1 at 20-23; Doc. No. 157-1 at 16-21.
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`properly disclosed the extensive Delaware Decision Disclosures demonstrating the
`invalidity of certain claims of the ‘962 Patent. Mot. at 3. For these reasons, Eset has no
`evidence that Finjan made any misrepresentations to the PTO regarding the ‘621 Patent.
`No Evidence of Materiality. Notably, Eset cannot point to a single material
`prior art reference that Finjan allegedly withheld from the PTO, which is why it must
`resort to speculation about the ‘962 Affirmance. In particular, Finjan cited every
`relevant prior art reference to the ‘621 Patent in its fulsome IDS disclosures during
`prosecution—including every single piece of prior art that the jury in the Delaware Case
`could have used to invalidate the asserted claims of the ‘962 Patent at issue in Delaware.
`In fact, the Aventis case that Eset cites (Mot. at 5, 15) highlights the extent of Finjan’s
`diligence, because in Aventis the Federal Circuit found that prior art references withheld
`during prosecution and later proven to be invalidating in district court were “necessarily
`material.” Aventis, 675 F.3d at 1334. This is in stark contrast to Finjan’s robust
`disclosures from the Delaware Case and even other cases during the prosecution of the
`‘621 Patent. See Doc. No. 531, Ex. 7 at 5, 8, 10. Thus, Finjan has more than complied
`with the requirements for making material disclosures as articulated in Aventis, and
`Eset’s Motion should be denied because it cannot articulate any material omission or
`misrepresentation.
`Due to its inability to identify material prior art, Eset instead focuses on a
`cumulative one-word affirmance of the Delaware Decision that it alleges Finjan
`withheld. Yet Eset cannot demonstrate the requisite materiality of the ‘962 Affirmance
`because it contains no useful analysis and is entirely cumulative of the Delaware
`Decision Disclosures, which the examiner considered and still issued the ‘621 Patent.
`Eset cannot point to a single case requiring the citation of a Rule 36 affirmance
`during prosecution, particularly when all of the prior art from the district court case is
`provided to the examiner. There is no analysis involved in an affirmance pursuant to
`Rule 36. All of the pertinent prior art, holdings, and analysis are in the IDS, Delaware
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`Decision, and the related post-trial briefing, which incorporates the parties’ invalidity
`arguments and the testimony and evidence relied on at trial—all of which Finjan
`undisputedly submitted on the same day that it filed the application that would mature
`into the ‘621 Patent. Mot. at 2; see also Doc. No. 509, Ex. 5 at 175-76, 186, 190, 195-
`96, 198-99, 203-04, 207. Thus, Finjan was forthcoming in its disclosures, and from the
`outset of the ‘621 Patent prosecution the examiner already had detailed information
`available on the invalidity of the ‘962 Patent.
`Moreover, the ‘962 Affirmance could not be anything but cumulative because the
`Delaware Decision was a final and effective judgment unless and until Finjan secured a
`court order demonstrating otherwise. Filing a Notice of Appeal does not reverse or
`suspend the effect of a final judgment. See generally Fed. R. App. P. 8 (stays of
`execution of final judgment should be sought from the district court); Fed. Cir. R. 8
`(substantially similar requirement).4 Eset’s claim that without the ‘962 Affirmance, the
`examiner could have no knowledge of the fate of the ‘962 Patent is false and contrary to
`common sense. The examiner already had the invalidating Delaware Decision which
`was in effect, as well as the post-trial briefing containing the details of the Delaware
`invalidity analysis, and more importantly all the prior art that was used in the Delaware
`case. The ‘962 Affirmance did not modify or add to the judgment or analysis at all.
`Given that the examiner actually considered the Delaware Decision Disclosures,
`it is not only is it untrue that Finjan somehow buried the Delaware Decision in its IDS to
`allegedly avoid detection (see Mot. at 2), but it is contrary to all logic that a one-word
`affirmance of the same Delaware Decision that was already considered would by itself
`reverse the examiner’s decision to allow the patent. Specifically, the examiner issued a
`non-final rejection in which he lined through the Delaware Decision Disclosures
`
`
`4 It is unclear that a stay could be ordered as to invalidity at all, but the salient point is
`that the law does not recognize that there is an “open question” on an issue that has been
`fully and finally adjudicated. A lower court decision may be reversed or vacated, but it
`remains in effect barring a court order to the contrary.
`7
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`CASE NO. 3:17-cv-00183-CAB-BGS
`FINJAN’S OPP. TO ESET’S MOT. FOR
`SJ OF UNENFORCEABILITY AND COLLATERAL ESTOPPEL
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`because he did not consider them “printed publications per se,” and explicitly stated that
`“the court proceedings listed in the IDS have been given due consideration.” Doc.
`No. 509, Ex. 5 at 100-02, 134-35, 141 (emphasis added). Thus, he initially reviewed the
`Delaware Decision Disclosures.
`In response to the examiner, Finjan resubmitted the Delaware Decision
`Disclosures in a June 26, 2015 IDS. Id. at 75, 81, 98. Ms. Bey provided remarks on
`August 3, 2015, stating that “[n]umerous references cited in the IDS submissions were
`provided as part of correspondence in co-pending litigation involving parent patent
`matters. These references are provided to the Office in the manner provided to
`Applicant in the event a duty to provide even exists.” Id. at 58. The examiner
`responded that Finjan’s June supplemental IDS was in compliance and “[a]ccordingly,
`the information disclosure statement is being considered by the examiner.” Id. at 4
`(emphasis added). The examiner included a list of considered references with this
`correspondence, in which he did not strike through the Delaware Decision Disclosures
`and indicated that all references not struck were considered. Id. at 24, 30. In fact, to
`avoid even the slightest doubt, the Delaware Decision Disclosures are even listed in the
`“References Cited” portion on the face of the ‘621 Patent. Doc. No. 509, Ex. 7 at 8, 10.
`Thus, Eset’s contention that the ‘962 Affirmance would be material is no more than
`rank speculation because the Delaware Decision and all prior art in the Delaware case
`were disclosed.
`That the examiner for the ‘621 Patent issued a double patenting rejection does not
`demonstrate materiality. Mot. at 6-7. Ms. Bey responded to the rejection with a
`,
`terminal disclaimer, which
`which is the appropriate response to a double patenting rejection. Doc. No. 509, Ex. 10
`at 78:22-81:16; MPEP § 804.02. Ms. Bey’s terminal disclaimer also resolved the issue,
`such that Ms. Bey handled the totality of the examiner’s concerns with respect to the
`‘962 Patent. Ms. Bey properly addressed the examiner’s concern, which was only to
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`CASE NO. 3:17-cv-00183-CAB-BGS
`FINJAN’S OPP. TO ESET’S MOT. FOR
`SJ OF UNENFORCEABILITY AND COLLATERAL ESTOPPEL
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`Claim 22 of the ‘621 Patent, and the examiner proceeded to issue the ‘621 Patent. The
`‘962 Patent thus had no further relevance to the prosecution of the ‘621 Patent.
`Significantly, the examiner issued the ‘621 Patent in 2015 (Doc. No. 509, Ex. 7 at 2)
`well before the ‘962 Reexam was complete in 2016 (Doc. No. 531, Ex. 29 at 2, 15),
`even though the latter proceeding involved all the claims of the ‘962 Reexam. If
`resolving all outstanding issues of the parent patent was relevant, the examiner would
`not have issued the ‘621 Patent while the parent patent was undergoing reexamination
`for all 55 of its claims.
`Finally, Eset cannot manufacture materiality by claiming that Ms. Bey discussed
`the ‘962 Affirmance in the ‘962 Reexam, as in that situation the PTO was reexamining
`that same patent. See Mot. at 2-4 (citing Ms. Bey’s withdrawal of the affirmed invalid
`claims and submission of the ‘962 Affirmance). The fact that Ms. Bey submitted a
`document in one proceeding and not in another does not speak to either her intentions or
`that document’s materiality, since materiality requires that but for an alleged omission
`or misrepresentation, the patent would not have issued. In fact, Ms. Bey testified that
`
`. Doc.
`No. 509, Ex. 10 at 99:15-100:8, 103:18-104:5, 111:1-112:23. Eset cannot sidestep its
`burden by pointing to different proceedings.
`Eset’s case law is irrelevant because Ms. Bey never submitted a false affidavit or
`declaration stating that the ‘962 Patent was valid in the prosecution of the ‘621 Patent.
`See Mot. at 7 (citing Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d
`1285, 1294-96 (Fed. Cir. 2012)). In similar vein, Eset’s remaining case involved an
`attorney that withheld information about the physical configuration of the invention
`which the examiner could not have discovered was untrue from looking at the
`references submitted. Mot. at 7 (citing Worldwide Home Prod., Inc. v. Time Inc., No.
`11 CIV. 3633(LTS)(MHD), 2013 WL 5477480, at *8 (S.D.N.Y. Sept. 30, 2013)).
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`CASE NO. 3:17-cv-00183-CAB-BGS
`FINJAN’S OPP. TO ESET’S MOT. FOR
`SJ OF UNENFORCEABILITY AND COLLATERAL ESTOPPEL
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`No Evidence of Intent to Deceive. Wholly apart from the fact that there is no
`material omission or misrepresentation, Eset has again not demonstrated “clear and
`convincing evidence that [Finjan] knew of the reference, knew that it was material, and
`made a deliberate decision to withhold it.” Therasense, 649 F.3d at 1290. Eset did not
`point to a single deliberate decision to withhold the ‘962 Affirmance, nor a shred of
`evidence that Ms. Bey somehow knew it to be material (even though it was not). Given
`that the PTO acknowledged that it was well-aware of Ms. Bey’s disclosures relating to
`the invalidity findings for the ‘962 Patent, and that Ms. Bey submitted such disclosures
`twice, it is unreasonable to infer that Ms. Bey intended to deceive the PTO as to the
`invalidity of certain claims of the ‘962 Patent.
`Eset does not explain at all how Ms. Bey’s discussions with Finjan’s other
`counsel regarding the ‘962 validity proceedings while those proceedings were pending
`has anything to do with an intent to deceive the examiner of the ‘621 Patent. Mot. at 8.
`Indeed, there is not a single email logged in the stipulation that Eset cites that reflects a
`communication involving both the ‘621 Patent (i.e., Serial Application No. 14/619,363)
`and either the ‘962 Reexam (i.e., Reexam No. 95/001,836) or ‘962 Patent. See
`generally Doc. No. 531, Ex. 32. Eset’s claim that Ms. Bey’s submission of the Notice
`of Appeal was somehow intended to mislead the examiner is equally absurd because, as
`described above, the Notice of Appeal had no legal effect on the Delaware Decision and
`the examiner did not wait for all issues regarding the ‘962 Patent to be resolved before
`issuing the ‘621 Patent. Mot. at 7-8.
`At a minimum, an intent to deceive is not the sole reasonable inference to be