Finjan, Juniper Each Cry Foul After Malware Detection IP Trial
By Dani Kass
Law360 (April 1, 2019, 6:29 PM EDT) -- Nearly four months after a California federal jury found that Juniper Networks Inc. didn't infringe Finjan Inc.'s malware detection patent, the two cybersecurity firms have accused each other of misconduct.
Juniper on Thursday asked for sanctions against Finjan, accusing the company of lying, failing to support its own case and pushing "overreaching" theories, particularly about damages. Then on Friday, Finjan asked for the verdict to be set aside, saying Juniper withheld incriminating evidence until two months after trial.
The big dispute at the December trial was how to define the word "database," as the term is used in claim 10 of the patent-in-suit. Juniper had argued its allegedly infringing products had an "interface," but no "database" as the court and the parties had agreed to define it. The jury ruled in Juniper's favor, and that ruling was backed by U.S. District Judge William Alsup.
But in February, Juniper provided documents that allegedly showed its Sky ATP program did in fact use a database as defined in the patent, Finjan said Friday. This information involves malware analysis company Joe Sandbox, but much of the related information was redacted in the motion. Juniper had 10 months before trial to produce those documents, and the discovery search terms should have turned it up, the motion said.
"While Juniper's representation that it did not have any technical documents or information regarding the operations of Joe Sandbox seemed strange, Finjan had no choice but to rely upon such representations," Finjan said. "Indeed, Finjan could not move to compel documents that Juniper repeatedly stated it did not have."
Juniper's motion for sanctions has many prongs, but much of it revolves around Finjan's conduct at one of Judge Alsup's showdowns. The judge ordered Juniper to select Finjan's weakest claim and Finjan its own strongest claim to head to an early summary judgment and, if needed, an expedited trial, with the possibility of sanctions or an injunction for the losing party.
The claim Finjan picked was infringement of a patent that had expired eight months before it sued, Juniper said Thursday. While Finjan could still have been eligible for pre-suit damages, it had to prove certain things, which it failed to do, the motion said.
For example, Juniper said it had no notice of infringement, as companies that licensed the patent from Finjan didn't mark their products with the patent number. Then, when Finjan executive John Garland called Juniper to provide notice of infringement, he didn't actually mention the allegedly infringing product, Sky ATP, and only admitted to the omission after Juniper brought out a recording of the call, the motion said.
"According to Finjan, if Mr. Garland thought about Sky ATP in his mind when speaking with [Juniper] by phone, the call was sufficient to provide actual notice to Juniper that its Sky ATP product was being accused of infringement," the motion said. "But this is nonsense; there is no legal or logical support for Finjan's 'telepathic notice' theory."
Finjan had also argued during the litigation that the licensees didn't use the patent. But Juniper said that's directly contrary to positions the company has taken elsewhere, including when suing some 20 companies for patent infringement, defending the patent at the Patent Trial and Appeal Board eight times and accepting millions of dollars in licensing payments. At the patent office, Finjan had used the sales of its licensees as proof of commercial success, according to the motion.
The patent owner had then offered a few different types of damages theories, all of which were unacceptable, Juniper said. For example, it requested $70 million in "reasonable royalties" but only made $1.8 million off Sky ATP during the alleged infringement period, Juniper said.
Finjan then offered a few different amounts it would have sought during a licensing agreement, including a flat $20 million, an $8 per use rate and a 32 cents per scan rate, none of which would have held up, Juniper said.
During the showdown, Juniper had moved for summary judgment that three of its products didn't infringe yet another Finjan patent. Finjan's response defended its own argument on only two of these products. It shouldn't have brought that third claim if it couldn't defend it, Juniper said.
"Finjan's decision to advance this meritless theory was unreasonable and warrants sanctions," the motion said.
Juniper asked the court for sanctions to compensate it for wasting resources on "improper infringement, validity and damages positions." While it didn't list a specific monetary amount, the company said it would be willing to provide the court with a proposal.
Counsel for both companies didn't respond to requests for comment Monday.
The patents-in-suit are U.S. Patent Nos. 8,677,494 and 6,804,780.
Finjan is represented by Paul J. Andre, Lisa Kobialka, James Hannah and Kristopher Kastens of Kramer Levin Naftalis & Frankel LLP.
Juniper is represented by Jonathan S. Kagan, Rebecca Carson, Alan Heinrich, Josh Glucoft and Kevin Wang of Irell & Manella LLP.
The case is Finjan Inc. v. Juniper Network Inc., case number 3:17-cv-05659, in the U.S. District Court for the Northern District of California.
--Additional reporting by Mike LaSusa. Editing by Marygrace Murphy.
