Case 3:17-cv-00183-CAB-BGS Document 818 Filed 09/25/20 PageID.39873 Page 1 of 9
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`NICOLA A. PISANO, CA Bar No. 151282
` NicolaPisano@eversheds-sutherland.com
`JOSE L. PATIÑO, CA Bar No. 149568
`
`JosePatino@eversheds-sutherland.com
`JUSTIN E. GRAY, CA Bar No. 282452
`
`JustinGray@eversheds-sutherland.com
`SCOTT A. PENNER, CA Bar No. 253716
` ScottPenner@eversheds-sutherland.com
`EVERSHEDS SUTHERLAND (US) LLP
`12255 EL CAMINO REAL, SUITE 100
`SAN DIEGO, CALIFORNIA 92130
`TELEPHONE:
`858.252.6502
`FACSIMILE:
`858.252.6503
`Attorneys for Defendants and Counter-Plaintiffs
`ESET, LLC and ESET, SPOL. S.R.O.
`
`FINJAN, INC.,
`
`Plaintiff,
`
`v.
`ESET, LLC, et al.,
`Defendants.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
` Case No. 3:17-cv-00183-CAB-BGS
`ESET, LLC AND ESET, SPOL. S.R.O.’S
`REPLY BRIEF IN SUPPORT OF
`RENEWED MOTION FOR PARTIAL
`SUMMARY JUDGMENT REGARDING
`THE EFFECTIVE FILING DATE OF
`U.S. PATENT NO. 6,154,844
`
`Judge: Hon. Cathy Ann Bencivengo
` PER CHAMBERS RULES, NO ORAL
`ARGUMENT UNLESS SEPARATELY
`ORDERED BY THE COURT
`
`AND RELATED COUNTERCLAIMS.
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`Case 3:17-cv-00183-CAB-BGS Document 818 Filed 09/25/20 PageID.39874 Page 2 of 9
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`I.
`
`OVERVIEW
`The ’844 patent does not include an operative priority claim to the provisional
`’639 application, and is entitled to an earliest effective filing date no earlier than
`December 22, 1997. The layers of obfuscation presented in Finjan’s Opposition cannot,
`in the end, obscure that Finjan’s claim of priority to the ’639 provisional was defective.
`That defect served as an independent basis – in addition to the lack of written description
`– upon which the PTAB denied the ’844 patent any earlier effective filing date. The
`PTAB’s reasoning was sound, addressed all of Finjan’s tired arguments, and should
`guide a similar determination in this action.
`II.
`FINJAN’S “FACTS” ARE INCORRECT AND INCOMPLETE.
`Finjan asserts as a “fact” that “the ‘844 [sic] Patent claims the benefit of the 1996
`Application” and that the “PRIORITY REFERENCE TO RELATED APPLICATIONS”
`includes the words “[t]his application claims benefit of” the 1996 provisional ’639
`application. See D.I. 814 (“Opp.”) at 1:23-2:6. That assertion omits critical facts, and
`was considered and rejected by the PTAB. Instead, the PTAB expressly found that “the
`‘PRIORITY REFERENCE TO RELATED APPLICATIONS’ section of the ’844 patent
`fails to satisfy [37 C.F.R. § 1.78(a)(2)’s] requirement, because it does not ‘indicat[e] the
`relationship’ of the ’639 provisional, ’388 application, and ’097 application to the ’844
`patent” and therefore “the challenged claims are not entitled to any earlier priority date.”
`D.I. 809-3 at 35-36. That determination was independent of, and in addition to, the
`PTAB’s determination that the ’388 application also lacked written description support
`in the ’639 provisional.
`Finjan contends that it filed a Certificate of Correction for the ’844 patent to
`address its defective priority claim. Opp. at 2. Finjan’s contention fails to recognize that
`the PTAB found that “the Office denied that Request [for a Certificate of Correction] in
`relevant part, stating that the Request was improper” and that Finjan’s request “was an
`improper attempt to perfect a claim of priority that was not found in the original
`application.” D.I. 809-3 at 36.
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`Case 3:17-cv-00183-CAB-BGS Document 818 Filed 09/25/20 PageID.39875 Page 3 of 9
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`Finjan’s Opposition is replete with attorney argument about prior litigations, in
`which Finjan claims Abadi was asserted against the ’844 patent, either alone or in
`combination with other prior art. ESET was not a party to any of those of litigations,
`which also involved different claim constructions. Opp. at 3. Collateral estoppel does
`not apply to preclude re-litigation of an issue where the party against whom the estoppel
`is sought did not have a full and fair opportunity to litigate the issue. Kendall v. Visa
`U.S.A., Inc., 516 F.3d 1042, 1050 (9th Cir. 2008) (one requirement for collateral
`estoppel is “the person against whom collateral estoppel is asserted in the present action
`was a party or in privity with a party in the previous action”). Unlike Finjan, which had
`a full and fair opportunity to litigate the priority date of the ’844 patent before the
`PTAB, ESET has not yet had its day in Court. See, e.g., Monolithic Power Sys. Inc. v.
`O2 Micro Int’l Ltd., 476 F. Supp. 2d 1143, 1150-51 (N.D. Cal. 2007) (defendant not
`collaterally estopped from litigating patent validity when defendant’s customer litigated
`the issue in prior litigation).
`III.
`IT IS UNDISPUTED THAT THE PTAB DETERMINED THAT THE ’844
`PATENT’S PRIORITY DATE IS ITS ACTUAL FILING DATE.
`Finjan does not dispute that the PTAB found that the ’844 patent is not entitled to
`a priority date any earlier than its actual filing date of December 22, 1997. Rather, it
`wants this Court to ignore the PTAB’s well-reasoned analysis so Finjan can have yet
`another bite at the apple.
`A.
`Finjan Does Not Deny That the ’844 Patent Fails to Comply with the
`Requirements of 37 CFR § 1.78.
`As set forth in ESET’s opening brief, the ’844 patent fails to comply with 37
`C.F.R. § 1.78(a)(2). This is a standalone reason for concluding that the challenged
`claims are not entitled to a priority date any earlier than its filing date, and is entirely
`independent of lack of written description support, as the PTAB also found. See D.I.
`808-1 at 11-12; see also Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 1315 (Fed.
`Cir. 2018) (a patent application must comply with 37 C.F.R. § 1.78 when referencing an
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`application to which a claim of priority is sought); MPEP § 1481.03 (to claim benefit to
`a prior provisional application “all requirements set forth in 37 CFR 1.78(a)(1) and
`(a)(2) must have been met in the application which became the patent to be corrected”).
`The PTAB relied on this exact reasoning as “an independent basis for concluding that
`the challenged claims are not entitled to any earlier priority date.” D.I. 809-3 at 35-36.
`When a party fails to rebut a fact, the Court properly may consider that fact
`undisputed and may grant a motion for summary judgment. Fed. R. Civ. P. 56(e); see
`also Franklin v. Smalls, No. 09CV1067-MMA (RBB), 2013 U.S. Dist. LEXIS 33450, at
`*15-16 (S.D. Cal. Mar. 8, 2013). Here, Finjan’s Opposition does not address that the
`’844 patent fails to comply with 37 C.F.R. § 1.78(a)(2). Instead, Finjan concedes that
`fact as if it doesn’t matter. See Opp. at 2-3 (“Notably, the PTAB did not dispute that the
`‘844 Patent claimed priority to the 1996 Application, ‘194 Patent, or the ‘520 Patent
`under 35 U.S.C. § 120, just that Finjan had not complied with 37 C.F.R. § 1.78(a)(2)
`(1997) by not indicating the relationship of the ‘194 and ‘520 Patents to the ‘844
`Patent.”) (emphasis added); see also D.I. 809-3 at 35-36 (noncompliance with 37 C.F.R.
`§ 1.78(a)(2)’s requirements is an independent basis for concluding that the challenged
`claims of the ’844 patent are not entitled to any earlier priority date).
`It does matter. Because an application must comply with 37 C.F.R. § 1.78 in
`order to claim priority to an earlier application’s filing date, and it is undisputed that the
`’844 patent does not comply with 37 C.F.R. § 1.78, the ’844 patent is not entitled to a
`priority date earlier than its actual filing date of December 22, 1997. The Court need not
`even consider the extensive arguments in Finjan’s Opposition regarding its contention
`that the ’639 provisional contains written description support for the claims of the ’844
`patent. It does not, as discussed in ESET’s opening brief and further below, but whether
`or not it does is simply irrelevant. The priority claim is valid for failure to comply with
`37 C.F.R. § 1.78(a)(2).
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`Case 3:17-cv-00183-CAB-BGS Document 818 Filed 09/25/20 PageID.39877 Page 5 of 9
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`B.
`
`The PTAB’s Well-Reasoned Analysis Found No Written Support
`Earlier Than the December 22, 1997 Filing Date.
`The PTAB determined that the challenged claims of the ’844 patent lack written
`description support in the ’639 provisional. D.I. 809-3 at 32-33.
`Finjan zealously argued to the PTAB – much of which it retreads in its Opposition
`at 9-12 – that Dr. Jaeger opines that the claims of the ’844 patent have written support in
`the ’639 provisional. See, e.g., D.I. 809-3 at 33-34. The PTAB disagreed with Finjan’s
`arguments pointing to Dr. Jaeger’s analysis that a “web server” is disclosed in the ’639
`provisional, concluding that Finjan “does not identify a web server that makes the
`Downloadable available to web clients after such linking, as required by the challenged
`claims.” Id. at 34. Failure to support that critical limitation of the ’844 patent claims
`puts an end to the dispute.
`That Dr. Jaeger opined he could find other claim limitations in the ’639
`provisional is irrelevant because the PTAB was “not persuaded that the ’639 provisional
`demonstrates possession by the inventors of linking a DSP to the Downloadable ‘before
`a web server makes the Downloadable available to web clients.’” D.I. 809-3 at 35.
`Finjan strives to obscure that requirement by regurgitating Dr. Jaeger’s opinion that the
`“code scanner performs linking and that the linking can be performed before the
`Downloadable is provided to the client.” Opp. at 9. But the PTAB rejected that
`argument as well, finding “by the time that the DSP has been linked to the
`Downloadable (e.g., by code scanner 325, in Patent Owner’s mapping), we understand
`that the Downloadable has already been received—and hence ‘made available’—by
`the web server.” D.I. 809-3 at 35 (emphasis added). These observations led to the
`PTAB’s unescapable decision:
`In conclusion, therefore, we are not persuaded that the inventors were in
`possession of the subject matter of the challenged claims at any time prior to
`the December 22, 1997, filing date of the ’648 application.
`
`Id.
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`Finjan also cites Dr. Jaeger to concoct support for the linking element in the ’194
`and ’520 patents, but those arguments also rely on the “code scanner” disclosure rejected
`by the PTAB. Opp. at 11-12. Specifically, Dr. Jaeger cites to FIG. 3 of the ’194 patent
`as supporting his opinion that “the code scanner 325 is able to determine the DSP data
`for a Downloadable (and thus links the Downloadable security profile to the
`Downloadable).” D.I. 608-7 (Jaeger Rpt.) at ¶ 658. But that figure shows the system
`receiving the downloadable before it is sent to the code scanner 325. Id. Thus, the
`PTAB’s conclusion applies equally to the disclosure of the ’194 patent because “by the
`time that the DSP has been linked to the Downloadable (e.g., by code scanner 325, in
`Patent Owner’s mapping) … the Downloadable has already been received—and hence
`‘made available’—by the web server.” D.I. 809-3 at 35 (emphasis added).
`The PTAB persuasively reasoned that there is no evidence that the inventors of
`the ’844 patent possessed the claimed invention any time before December 22, 1997.
`Because the ’844 inventors did not have possession of the claimed linking of a DSP to
`the Downloadable “before a web server makes the Downloadable available to web
`clients,” none of the thread-worn arguments in Finjan’s Opposition creates a genuine
`triable issue that precludes summary judgment.
`C. The Priority Date Determination Was Critical to the PTAB’s Analysis.
`At the September 26, 2019 Motions hearing, the Court stated that it believed “that
`the Patent Office shut the door on the ’844 claiming priority to the provisional
`application.” D.I. 809-5 at 51:21-24. Finjan argued that the priority date issue was
`under review in IPR2019-00026. Id. at 34:18-23. The Court requested supplemental
`briefing “[b]ecause this appeared to be dispositive to [the Court] on the ’844 issue that
`the Patent Office had ruled it was not supported … by the earlier date and so the filing
`date of the ’844, December 22nd, 1997 is its priority date.” Id. at 38:1-9. The PTAB
`concluded that the earliest effective filing date for the ’844 patent was December 22,
`1997, and that conclusion was critical to its invalidity analysis.
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`Finjan argues that it should not be estopped from re-litigating the priority date by
`the PTAB’s ruling because it did not have a full and fair opportunity to litigate that
`issue, but moreover, the PTAB’s decision was not necessary to the decision in the
`Juniper IPR. During IPR2019-00026, the PTAB conclusively determined that claims 1,
`15, and 41 of the ’844 patent “were not entitled to a priority date any earlier than the
`December 22, 1997, filing date of the application for the ’844 patent.” D.I. 809-3 at 20-
`21. That determination was a necessary threshold determination for the PTAB’s
`consideration “whether Abadi is properly considered as prior art.” Id.
`Finjan also had ample opportunity to fully and fairly advocate its priority date
`position during the IPR, as well as during post-institution briefing, and the PTAB
`repeatedly rejected Finjan’s arguments. See id. (“Following consideration of the parties’
`respective arguments, we concluded that the challenged claims were not entitled to a
`priority date any earlier than the December 22, 1997, filing date of the application for
`the ’844 patent … Having considered [Finjan’s post-institution] additional arguments,
`we remain unpersuaded … that the challenged claims are entitled to any earlier priority
`date.”). The PTAB’s determination that the ’844 patent was entitled to an earliest
`effective filing date of December 22, 1997 was necessary to the PTAB’s determination
`that Abadi was prior art. Under these circumstances, collateral estoppel applies to
`preclude Finjan from re-litigating, yet again, the same priority date issue. See Finjan,
`Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2016 U.S. Dist. LEXIS 49202, at *22-24
`(N.D. Cal. Apr. 12, 2016); Abbott GMBH & Co., KG v. Centocor Ortho Biotech, Inc.,
`870 F. Supp. 2d 206, 222-23 (D. Mass. 2012) (finding that USPTO decisions have
`preclusive effect).
`D. There Is No Evidence of Constructive Reduction to Practice.
`Finjan argues that the ’844 patent was constructively reduced to practice by the
`filing of the 1996 provisional application. Opp. at 8. The PTAB’s determination that
`the ’639 provisional lacks written description support dooms Finjan argument. As
`soundly reasoned by the PTAB, there is no written description support in the ’639
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`Case 3:17-cv-00183-CAB-BGS Document 818 Filed 09/25/20 PageID.39880 Page 8 of 9
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`provisional for “linking” a DSP to the Downloadable “before a web server makes the
`Downloadable available to web clients.” D.I. 809-3 at 35.
`IV. FINJAN’S SUMMARY JUDGMENT MOTION IS UNAUTHORIZED AND
`INCORRECT AS A MATTER OF LAW.
`Finjan’s Opposition includes – without leave of Court – a one-paragraph cross
`motion for partial summary judgment. Opp. at 12-13.1 Finjan appears to suggest that
`ESET be collaterally estopped from relying on Abadi, but cites no legal authority for its
`position. It is hornbook law that to invoke collateral estoppel, the party against whom
`the estoppel is applied must have been a party to the prior litigation, as well as having
`been afforded an opportunity to fully and fairly litigate the issue to final determination,
`etc. Kendall, 518 F.3d at 1050. ESET was not a party to IPR2019-00026 and did not
`have an opportunity to advocate its position regarding Abadi. Moreover, the issues
`litigated by Juniper in that IPR differ from those presented in Dr. Spafford’s expert
`testimony. For at least these reasons, Finjan’s unauthorized “motion” has no merit, and
`ESET requests that the Court strike Finjan’s unauthorized motion.
`V. CONCLUSION
`For all of the reasons explained in the PTAB’s decision in IPR2019-00026, some
`of which Finjan does not and cannot dispute, such as failure to comply with 37 C.F.R. §
`1.78(a)(2), the ’844 patent is entitled to an earliest filing date no earlier than December
`22, 1997.
`
`
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`1 Should Finjan file a reply on its unauthorized “cross motion,” that filing would be a de
`facto sur-reply to this paper, and a flagrant violation of this Court’s Local Rules. See
`CivLR 7.1(e); Moriarty v. Cty. of San Diego, No. 17cv1154-LAB (AGS), 2019 U.S.
`Dist. LEXIS 65828 (S.D. Cal. Apr. 17, 2019).
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`Case 3:17-cv-00183-CAB-BGS Document 818 Filed 09/25/20 PageID.39881 Page 9 of 9
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`Dated: September 25, 2020
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`Respectfully submitted,
`EVERSHEDS SUTHERLAND (US) LLP
`
`
`
`
`
`/s/ Nicola A. Pisano
`NICOLA A. PISANO, CA Bar No. 151282
` NicolaPisano@eversheds-sutherland.com
`JOSE L. PATIÑO, CA Bar No. 149568
`
`JosePatino@eversheds-sutherland.com
`JUSTIN E. GRAY, CA Bar No. 282452
`
`JustinGray@eversheds-sutherland.com
`SCOTT A. PENNER, CA Bar No. 253716
` ScottPenner@eversheds-sutherland.com
`12255 EL CAMINO REAL, SUITE 100
`SAN DIEGO, CALIFORNIA 92130
`TELEPHONE:
`858.252.6502
`FACSIMILE:
`858.252.6503
`Attorneys for Defendants and Counter-Plaintiffs
`ESET, LLC and ESET, SPOL. S.R.O.
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