Finjan Wants Fed. Circ. To Reverse Cisco Cybersecurity IP Win
By Tiffany Hu
Law360 (November 26, 2019, 2:48 PM EST) -- Cybersecurity firm Finjan is asking the Federal Circuit to overturn a Patent Trial and Appeal Board decision invalidating parts of its malware detection patent challenged by Cisco, notably arguing that the board was inconsistent in its analysis of “similarly situated claims.”
In an opening brief filed Friday, Finjan sought to flip the PTAB’s May decision finding all but one of the disputed claims in its patent invalid over a combination of prior art. The board had upheld the validity of a single claim based on its interpretation that the term “executable code” requires that the code not be modified, ruling that Cisco's prior art disclosed modification of the code.
But the PTAB should have interpreted the invalidated claims the same way, Finjan said, adding that the parties had already agreed in district court litigation that the term “mobile protection code” as recited in those claims also requires that the code not be modified.
“Because the claims should be construed the same way for both invalidity and infringement, and affirming the board’s decision would lead to inconsistent outcomes for similarly situated claims, the board should reverse the board’s finding that [the invalidated claims] are unpatentable,” Finjan wrote in its brief.
Cisco in late 2017 requested inter partes review of the patent-at-issue, which covers “a system and a method for protecting network-connectable devices from undesirable downloadable operations,” according to filings.
In June 2018, the PTAB agreed to review the patent after finding a “reasonable likelihood” that Cisco could show that at least one of the challenged claims was unpatentable.
The patent is among several involved in an ongoing patent lawsuit Finjan lodged in California federal court over Cisco’s cybersecurity software products, citing Cisco’s failure to enter a licensing agreement despite knowledge of Finjan’s patent portfolio.
Finjan contended the companies had a longstanding relationship dating back to the 2000s. Cisco invested in Finjan and they worked together on cybersecurity projects, but the relationship began to sour in 2013 when Cisco acquired a company called Sourcefire Inc., and incorporated its technology into its own products, the complaint said.
Finjan said it spent about two years attempting to negotiate a licensing agreement with Cisco for patents that cover the technology acquired in the Sourcefire deal. But Cisco continued to sell the accused products — products that contain its Advanced Malware Protection, among others — without regarding Finjan’s IP rights, according to the complaint.
Cisco responded to the lawsuit with a counterclaim alleging Finjan committed a breach of contract by using information from a nondisclosure agreement to support its willfulness claims. Finjan then filed a first amended complaint that altered its willfulness allegations, and Cisco followed up with a motion to dismiss claiming Finjan failed to state a claim for willful infringement.
The district judge in November 2017 granted Cisco’s dismissal bid by finding there wasn’t evidence of willful infringement, but gave Finjan leave to amend its allegations.
Months after the PTAB’s May ruling, both sides agreed in October to withdraw certain infringement allegations with regard to the patent-at-issue, keeping Cisco’s assertion that one claim in the patent is invalid for lack of written description, according to filings.
Counsel for both parties did not immediately respond to requests for comment Tuesday.
The patent-at-issue is U.S. Patent No. 7,647,633.
Finjan is represented by Paul J. Andre, James Hannah and Jeffrey Price of Kramer Levin Naftalis & Frankel LLP.
Cisco is represented by Patrick D. McPherson and Patrick C. Muldoon of Duane Morris LLP.
The case is Finjan Inc. v. Cisco Systems Inc., case number 19-2074, in the U.S. Court of Appeals for the Federal Circuit.
--Additional reporting by Daniel Siegal. Editing by Abbie Sarfo.
