Case 3:17-cv-00183-CAB-BGS Document 801 Filed 07/16/20 PageID.39039 Page 1 of 6
`
`
`
`PAUL ANDRE (SBN 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (SBN 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (SBN 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.
`
`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
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`SAN DIEGO DIVISION
`Case No. 3:17-cv-00183-CAB-BGS
`FINJAN, INC., a Delaware Corporation,
`
`
`LETTER BRIEF TO THE COURT
`REGARDING THE STATUS OF THE
`’305 PATENT
`
`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.
`
`STATUS UPDATE REGARDING
`THE ’305 PATENT
`
`
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 801 Filed 07/16/20 PageID.39040 Page 2 of 6
`
`
`
`
`
`In response to the Court’s May 12, 2020 Minute Order (Doc. No. 786), Finjan
`submits its brief regarding the status of the ’305 Patent and other issues that should be
`addressed prior to trial. The parties are awaiting a new trial date after the previous trial
`was terminated on March 16, 2020 due to health and safety concerns in the midst of the
`COVID-19 pandemic.
`I.
`Trial Should Proceed with All Asserted Patents for Efficiency Reasons
`Finjan seeks relief from the Court and requests that the Court lift the stay and
`open discovery relating to Eset’s infringement of U.S. 7,975,305 (“the ’305 Patent”) so
`that all asserted patents can be tried in a single jury trial when rescheduled.
`On May 7, 2018, the Court ordered a stay of any proceedings related to the ’305
`Patent “until the issuance of the Board’s decision.” Doc. No. 251 at 4 (staying the ’305
`Patent until there was a Final Written Decision). Technically, the stay lifted on January
`24, 2019, when the Patent Trial and Appeal Board (“PTAB”) issued its Final Written
`Decision on Eset’s IPR, finding that Eset had not shown by a preponderance of the
`evidence claims 1-25 of the ’305 Patent to be unpatentable. See Eset, LLC v. Finjan,
`Inc., No. IPR2017-01738, 2019 WL 328479, at *16 (P.T.A.B. Jan. 24, 2019). The
`Court should formally lift the stay on the ’305 Patent issues, so discovery regarding
`Eset’s infringement of the ’305 Patent can be completed in time for the retrial.
`Including all pending causes of action in a single trial would greatly reduce the
`resources required by the Court and the parties. Significant judicial resources will be
`unnecessarily consumed by two separate trials, which can lead to two separate appeals.
`Many of the same experts and witnesses will have to testify in two cases if they proceed
`separately, including regarding issues of damages on products that overlap with the
`other patents at issue in the case. Since Eset’s invalidity challenge on all claims of the
`’305 Patent resulted in a finding that all such claims are patentable, it is collaterally
`estopped from challenging the ’305 Patent again. Furthermore, this case has already
`gone on for four years, and requiring a separate trial for the ’305 Patent after the retrial
`1
`
`
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`STATUS UPDATE REGARDING
`THE ’305 PATENT
`
`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
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 801 Filed 07/16/20 PageID.39041 Page 3 of 6
`
`
`
`would delay resolution of the case for several more years and greatly prejudices Finjan
`with increased costs and delay.
`II. The Validity of the Asserted Claims of the ’305 Patent have been Upheld
`Finjan is currently asserting claims 3, 4, 6, 7, 11, 21, 23, and 25 of the ’305
`Patent against Eset in this case. Of these, claims 3, 4, 7, 21, and 23 of the ’305 Patent
`were deemed patentable and are not currently being challenged in any procedurally
`valid Patent Office proceeding.
`The Court’s stay of the ’305 Patent lifted on January 24, 2019 when the PTAB
`issued a Final Written Decision on Eset’s IPR challenging the patentability of all claims
`of the ’305 Patent. See Eset, 2019 WL 328479, at *16; see also Doc. No. 251 at 4. The
`Final Written Decision held that Eset failed to show that any claims of the ’305 Patent
`are unpatentable. Eset, 2019 WL 328479, at *16. On May 11, 2020, the U.S. Court of
`Appeals affirmed the Final Written Decision upholding the patentability of all the
`claims that Eset challenged. Eset, LLC v. Finjan, Inc., 809 F.Appx. 1005, 1006 (Fed.
`Cir. May 11, 2020).
`No other resolved or pending actions before the Patent Office undermine the
`opening of discovery into the ’305 Patent. First, while third-party Proofpoint Inc. filed
`an Ex Parte Reexamination (Reexamination No. 90/013,660) against the ’305 Patent
`that resulted in a Reexamination Certificate canceling claims 1, 2, 5, and 13, this is
`irrelevant because Finjan is not asserting those claims. Second, while Eset filed an Ex
`Parte Reexamination request (Control Number 90/014,535), on June 19, 2020,
`challenging the patentability of claims 3-4, 7-8, 10, 14-16, and 18-24, this request was
`procedurally invalid and should be denied outright. This request relies only on prior art
`that was known to Eset when it filed its IPR petition, meaning that Eset is estopped
`from raising this art against the ’305 Patent. See attached Ex. 1. The Patent Office has
`not yet issued a decision on whether to grant Eset’s request for Reexamination. This
`procedurally invalid Ex Parte Reexamination request was filed less than one month ago
`2
`
`
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`STATUS UPDATE REGARDING
`THE ’305 PATENT
`
`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
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 801 Filed 07/16/20 PageID.39042 Page 4 of 6
`
`
`
`and is a blatant attempt by Eset to further delay these proceedings. Any further delay
`unjustifiably and prejudicially costs Finjan time and resources. Third, while there is a
`separate pending request for Ex Parte Reexamination, it should not cause the Court to
`exclude the ’305 Patent from the upcoming retrial. The Ex Parte Reexamination
`request was filed by Rapid7 and SonicWall (Control Number 90/014,477) and
`challenges the patentability of claims 6, 9, 11-12, 17, and 25, and is currently under
`review by the Patent Office. However, asserted claims 3, 4, 7, 21, and 23 were not
`challenged, meaning that even if this challenge was successful, a trial on any
`unchallenged claims would still go forward.
`III. Limited Additional Discovery Would be Needed
`Only limited additional discovery would be necessary to try the ’305 Patent along
`with the other five patents. Specifically, Finjan would need discovery for damages,
`Eset’s production of technical documents, interrogatory responses, and one 30(b)(6)
`deposition. Finjan anticipates such discovery could be concluded within two months of
`opening discovery. Furthermore, Finjan would rely on the same experts for the ’305
`Patent as for the other patents already at issue for the retrial, saving time and resources
`for the Court and the parties.
`IV. Other Trial Issues
`Finjan is unaware of any other trial issues that need to be addressed by the Court
`at this time.
`
`
`
`
`
`STATUS UPDATE REGARDING
`THE ’305 PATENT
`
`3
`
`
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`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
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 801 Filed 07/16/20 PageID.39043 Page 5 of 6
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: s/ Lisa Kobialka
`Paul Andre (State Bar. No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`DATED: July 16, 2020
`
`
`
`
`
`
`STATUS UPDATE REGARDING
`THE ’305 PATENT
`
`4
`
`
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`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
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 801 Filed 07/16/20 PageID.39044 Page 6 of 6
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that I electronically filed the foregoing with the Clerk of the
`Court using the CM/ECF system which will send a Notice of Electronic Filing via
`electronic mail to counsel of record.
`
`DATED: July 16, 2020
`
`
`
`
`
`
`
`By: s/ Lisa Kobialka
`Lisa Kobialka
`
`
`
`STATUS UPDATE REGARDING
`THE ’305 PATENT
`
`5
`
`
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`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
`
`