But the stories never stop
Fed. Circ. Iffy On Finjan Notice Argument In Malware IP Fight
By Britain Eakin
Law360 (October 7, 2020, 9:34 PM EDT) -- Finjan Inc.'s argument Wednesday that a California federal judge wrongly determined it didn't properly notify rival Juniper Networks Inc. that it allegedly infringed one of three malware patents and couldn't recover damages as a result met some resistance from members of a Federal Circuit panel.
Finjan appealed various aspects of its loss on all three patents in its case against Juniper, but the panel on Wednesday focused nearly all of its questions on the notice issue.
Juanita Brooks of Fish & Richardson PC, the attorney representing Finjan, told the panel during a remote hearing that a jury — not U.S. District Judge William Alsup — should have decided whether the substance of licensing negotiations and mention of the patent in a presentation during those talks were enough to satisfy the notice requirement.
Judge Alsup also erred, Brooks said, by faulting Finjan for not supplying an infringement claim chart for U.S. Patent No. 6,804,780 showing how Juniper's malware detection products allegedly infringed in determining that the cybersecurity company didn't meet the notice requirement.
Two panel judges, however, appeared unpersuaded by that contention.
"Where in the summary judgment order did the district court conclude you were required to, but did not, supply a claim chart?" U.S. Circuit Judge Evan J. Wallach said.
Brooks said it could be inferred from the order and that Judge Alsup told Finjan during a hearing that it would lose the summary judgment motion without a claim chart for the patent.
U.S. Circuit Judge Kara Farnandez Stoll chimed in here, saying she saw no reference to a claim chart in Judge Alsup's actual order.
Brooks pointed to a portion of the order saying that Finjan "attempted to cobble together a showing of actual notice," and since it specifically called out the two other patents at issue in the suit in the licensing negotiations and presentation, it should have done so for the third patent.
Judge Stoll pushed back again, noting the presentation mentioned roughly 17 patents.
"So, your point is that, even though it's one of 17 [patents], a reasonable jury could have thought that that was notice?" the judge added.
Brooks said that even if the licensing negotiations and presentation were not sufficient to establish notice, "it's a question of fact for the jury to decide."
U.S. Circuit Judge Sharon Prost pressed Juniper attorney Jonathan Kagan of Irell & Manella LLP about Finjan's assertion when it was his turn to argue, noting there were documents in the record to support Finjan's notice argument.
"Why isn't that really … a jury question and not one for the judge to decide on summary judgment?" Judge Prost asked.
Kagan said Finjan's presentation did not highlight the patent as one infringed by a security software company Juniper acquired in 2017, but as one that others had infringed. He went on to say that for Finjan to meet the notice requirement, it should have been more clear that Cyphort, the company Juniper acquired, was potentially infringing the patent, and since it wasn't clear, Judge Alsup didn't err.
Finjan accused Juniper in 2017 of infringing a bevy of patents, but only one of them — U.S. Patent No. 8,677,494 — made it to trial. A jury determined the following year that Juniper's malware detection products did not infringe.
The parties moved in August 2019 to voluntarily dismiss what was left of the suit, leaving district court decisions on just three of the patents at issue in Finjan's appeal.
The appeals court also grappled Wednesday with the question of damages. Finjan argued that Judge Alsup wrongly excluded certain Juniper products that should have been included in the damages base.
Juniper, meanwhile, argued that those products were rightfully excluded from the damages base because they did not infringe as sold.
The patents-in-suit are U.S. Patent Nos. 8,141,154; 6,804,780; and 8,677,494.
U.S. Circuit Judges Sharon Prost, Evan J. Wallach and Kara Farnandez Stoll sat on the panel.
Finjan is represented by Juanita Brooks of Fish & Richardson PC.
Juniper is represented by Jonathan Kagan of Irell & Manella LLP.
The cases are Finjan Inc. v. Juniper Networks Inc., case numbers 19-1837 and 19-2405, before the U.S. Court of Appeals for the Federal Circuit.
--Additional reporting by Mike LaSusa. Editing by Abbie Sarfo.
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