FINJAN’S OPPOSITION TO CISCO’S MOTION 

FOR JUDGMENT OF INVALIDITY 

Case No. 5:17-cv-00072-BLF-SVK 

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Juanita R. Brooks (CA SBN 75934); brooks@fr.com 

Roger A. Denning (CA SBN 228998); denning@fr.com 

Frank J. Albert (CA SBN 247741); albert@fr.com 

Megan A. Chacon (CA SBN 304912); chacon@fr.com 

K. Nicole Williams (CA SBN 291900); nwilliams@fr.com 

Oliver J. Richards (CA SBN 310972); ojr@fr.com 

Jared A. Smith (CA SBN 306576); jasmith@fr.com 

Tucker N. Terhufen (CA SBN 311038); terhufen@fr.com

FISH & RICHARDSON P.C. 

12860 El Camino Real, Suite 400 

San Diego, CA 92130 

Telephone: (858) 678-5070 

Facsimile: (858) 678-5099 

Aamir Kazi (Admitted Pro Hac Vice); kazi@fr.com 

Alana C. Mannige (CA SBN 313341); mannige@fr.com 

FISH & RICHARDSON P.C. 

1180 Peachtree Street NE, 21st Floor 

Atlanta, GA 30309 

Telephone: (404) 892-5005 

Facsimile: (404) 892-5002 

Attorneys for Plaintiff 

FINJAN LLC 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

(SAN JOSE DIVISION) 

FINJAN LLC, a Delaware Limited Liability 

Company, 

 

 Plaintiff, 

v. 

CISCO SYSTEMS, INC., a California 

Corporation, 

 Defendant. 

Case No. 5:17-cv-00072-BLF-SVK 

FINJAN LLC’S OPPOSITION TO CISCO 

SYSTEMS, INC.’S MOTION FOR 

JUDGMENT OF INVALIDITY OF THE 

’844, ’780 AND ’494 PATENTS BASED ON 

COLLATERAL ESTOPPEL 

Case 5:17-cv-00072-BLF Document 762 Filed 04/26/21 Page 1 of 7
1 FINJAN’S OPPOSITION TO CISCO’S MOTION 

FOR JUDGMENT OF INVALIDITY

Case No. 5:17-cv-00072-BLF-SVK

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I. INTRODUCTION 

 Finjan’s Motion for Reconsideration of the ESET Court’s summary judgment order (the 

“ESET Order”) is currently pending, having been filed on April 12, 2021. If granted, the decision 

will undo the invalidity determination for the ’844 and ’780 Patents, and those patents could then 

be included in the upcoming trial in this case. However, until that motion is ruled upon, the ESET 

Order is not “sufficiently firm” to be accorded conclusive effect. And from a practical standpoint, 

applying collateral estoppel now to find those patents invalid in this case runs the risk of having to

reverse course, should the Court in ESET grant the Motion for Reconsideration. 

The ’494 Patent was not asserted in ESET, so it is not addressed in the ESET Order. 

Moreover, this Court has construed the term “downloadable” in the ’494 Patent in a manner that 

does not include the term “small,” which was the basis for the ESET Court’s indefiniteness 

determination as to the ’844 and ’780 Patents. And while Cisco argues collateral estoppel should 

apply to the ’494 Patent, the decision to do so is completely within this Court’s discretion. 

II. BACKGROUND 

 Multiple courts—including in Finjan’s cases against McAfee, Blue Coat, Proofpoint, 

Symantec, SonicWall, and Rapid7—have construed the term “downloadable” identical to the 

Court’s construction in this case. Indeed, in this Court’s first Blue Coat trial, the jury found that 

Blue Coat infringed claims of the ’844 and ’780 Patents by applying the Court’s construction of 

“downloadable.” (See Exh.1

 A at 2-3.) The Federal Circuit affirmed those findings on appeal. Finjan, 

Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1306-07 (Fed. Cir. 2018). With this track record of courts 

consistently construing “downloadable” to have the same meaning, it is not surprising Cisco 

stipulated to that same construction in this case (ECF 85 at 1), and that this Court adopted the 

stipulated construction on July 23, 2018. (ECF 134 at 5.) 

In contrast, the construction of “downloadable” by the Court in ESET stands alone. It is the 

only court that inserted the word “small” in the construction, as set out in the ESET Court’s claim 

 

1

 All exhibits cited herein are attached to the declaration of K. Nicole Williams ISO Finjan’s Opp’n 

to Mot. For Judgment of Invalidity, filed contemporaneously herewith. 

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2 FINJAN’S OPPOSITION TO CISCO’S MOTION 

FOR JUDGMENT OF INVALIDITY

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construction order on November 14, 2017. (See Exh. B at 3.) Yet even after the Court in ESET

entered its outlier construction, Cisco continued to urge this Court to adopt a construction that did 

not include the word “small.” In the Joint Claim Construction and Pre-Hearing Statement, the 

parties jointly requested that this Court construe “downloadable” without the word “small.” (ECF 

85 at 1.) Cisco maintained that position in its claim construction briefing, in which, despite using 

the term “downloadable” 285 times, Cisco never once used the word “small.” (ECF 112.) This 

Court held a Markman hearing, and again Cisco did not withdraw its agreed-upon construction. 

(ECF 132.) In July 2018, this Court construed the term “downloadable” as jointly requested by the 

parties and in the same way the term had been construed in every case except ESET. (ECF 134 at 

5.) 

 In Finjan’s action against ESET, a jury trial commenced on March 10, 2020, which was 

halted shortly thereafter due to the COVID-19 pandemic. (See Exh. C.) On a renewed motion for 

summary judgment following the mistrial, the ESET Court found that “Finjan never offered 

evidence of a reasonable range for the size of a small executable” and held five Finjan patents invalid 

as indefinite, including the ’780 and ’844 Patents asserted here. (See Exh. D at 8.) On April 12, 

2021, Finjan moved for reconsideration of the ESET Order because there was clear error in shifting 

the burden to Finjan to prove patent validity and the order was manifestly unjust since, at the time 

of the mistrial, neither party had presented evidence on whether downloadable was indefinite. (See 

generally Exh. E.) 

III. LEGAL STANDARDS 

 Collateral estoppel is considered under the law of the regional circuit. RF Del., Inc. v. Pac. 

Keystone Techs., Inc., 326 F.3d 1255, 1261 (Fed. Cir. 2003). In the Ninth Circuit, collateral estoppel 

applies in a patent case if: “(1) the issue necessarily decided at the previous proceeding is identical 

to the one which is sought to be re-litigated; (2) the first proceeding ended with a final judgment on

the merits; and (3) the party against whom collateral estoppel is asserted was a party or in privity 

with a party at the first proceeding.” Droplets, Inc. v. Yahoo! Inc., 2019 WL 5781915, at *2 (N.D. 

Cal. Oct. 15, 2019) (citing Hydranautics v. FilmTec Corp., 204 F.3d 880, 885 (9th Cir. 2000)). The 

party asserting issue preclusion bears the burden of showing these elements are met. Hydranautics,

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204 F.3d at 885. A “final judgment” for purposes of issue preclusion can be any prior adjudication 

of an issue in another action that is determined to be “sufficiently firm” to be accorded conclusive 

effect. Elan Microelectronics Corp. v. Apple, Inc., 2010 WL 4510909, at *3 n.3 (N.D. Cal. Nov. 1, 

2010). The Ninth Circuit has set forth several factors that should be considered when determining 

whether an order is “sufficiently firm” including “whether the parties were fully heard.” See Abbott 

Diabetes Care Inc. v. Roche Diagnostics Corp., 2007 WL 1239220, at *12-*13 (N.D. Cal. Apr. 27, 

2007) (citing Luben Indus., Inc. v. United States, 707 F.2d 1037, 1040 (9th Cir. 1983)). 

 Even when all three elements are met, whether to apply the collateral estoppel bar is solely 

within the court’s discretion. United States v. Geophysical Corp. of Alaska, 732 F.2d 693, 697 (9th 

Cir. 1984). This broad discretion to trial courts allows them “to take potential shortcomings or 

indices of unfairness into account when considering whether to apply . . . issue preclusion, even 

where the above-listed standard prerequisites are met.” Syverson v. Int’l Bus. Machines Corp., 472 

F.3d 1072, 1078-79 (9th Cir. 2007); see also Neev v. Alcon, 2016 WL 9051170 at *12-13 (C.D. Cal. 

Dec. 22, 2016), aff'd sub nom. Neev v. Alcon Lensx Inc., 774 F. App’x 680 (Fed. Cir. 2019) 

(declining to apply collateral estoppel to claim construction where it would neither promote 

uniformity nor judicial efficiency). 

IV. ARGUMENT 

A. Collateral Estoppel Is Not Yet Applicable As To The ‘844 and ‘780 Patents 

Cisco has failed to meet its burden to show that collateral estoppel applies because the ESET 

Order as to the ’844 and ’780 is not “sufficiently firm,” under Hydranautics. A Motion for 

Reconsideration is pending and the ESET Court has not ruled upon that motion nor entered final 

judgment. 

The ESET Court’s original finding of indefiniteness as to the ’844 and ’780 was based on 

an incomplete presentation of the evidence—the testimony of one expert who addressed 

infringement on only one of the five patents before a mistrial was declared. (See Exh. E at 5-12.) 

ESET, the party with the burden of proof on invalidity, had not even begun its case. The judge and 

jury had yet to hear that ESET’s expert on invalidity had never opined that, in his opinion, the term 

“small” rendered the claims indefinite. Nor had they heard that ESET’s invalidity expert had no 

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problem understanding and applying the term when analyzing the prior art. (See Exh. E at 5-7; Exh. 

F at 5-8.) The ESET Court also did not account for the testimony of Finjan’s expert on validity, 

who—but for the mistrial—would have explained in rebuttal how a person of ordinary skill in the 

art would understand the objective bounds of the claim term “downloadable.” (See Exh. F at 1-5.) 

Given that the original ESET Order was entered before the parties were “sufficiently heard” and 

Finjan’s Motion for Reconsideration is still pending, finding the ’844 and ’780 patents invalid in 

this case now would be premature. The Finjan action against ESET has not ended with final 

judgment on the merits, and is insufficiently firm to create a preclusive effect. See, e.g., Rambus 

Inc. v. Hynix Semiconductor Inc., 569 F. Supp. 2d 946, 968 (N.D. Cal. 2008) (finding issue 

preclusion did not apply to prior claim constructions where judgment in prior case was not final). 

B. The Court Should Decline to Apply Collateral Estoppel To The ’494 Patent 

The Court has discretion to decline to apply collateral estoppel, even if it finds the Ninth 

Circuit factors are satisfied. Here, considerations of fairness and uniformity counsel against applying 

the collateral estoppel bar to the ’494 Patent. See, e.g., Neev, 2016 WL 9051170 at *12-13; see also 

Syverson, 472 F.3d at 1078-79. 

First, the ’494 Patent was not before the ESET Court; therefore there has been no finding of 

invalidity as to that patent. Second, this Court has construed the term “downloadable” in the claims 

of the ’494 Patent the same way seven of the eight courts have construed that term, i.e., one that 

does not include the term “small.” The construction of “downloadable” in the ESET case stands in 

contrast to each of the other cases, and the ESET Court’s indefiniteness finding is predicated on that

outlier construction. This Court is not bound by the ESET Court’s construction and, in fact, has said 

that it does not intend to change the construction which the parties agreed to and have been operating

under throughout this case. 

In light of all of the above, applying collateral estoppel to the ’494 Patent would be counter 

to the very rationale for the doctrine itself. Collateral estoppel is meant to prevent inefficient relitigation of identical issues and promote uniformity in the treatment of a given patent and prior 

decisions. See Neev, 2016 WL 9051170 at *12-13. Applying estoppel here would treat the ’494 

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Patent inconsistently with six other cases – in which the courts’ construction has not created any 

problems for juries, judges, or the parties. 

In addition, from a fairness perspective, Cisco has consistently advocated for the 

construction of “downloadable” that this Court adopted, even after the ESET Court entered its 

outlier construction. Cisco is now seizing on the ESET Order, which is contrary to Cisco’s own 

proposed construction, to try to avoid trial on the ’494, which was not before the court in ESET and 

therefore, not the subject of the ESET Order. Finjan submits the fair path is for this Court to exercise 

its discretion and decline to apply the collateral estoppel bar to the ‘494 Patent. See Syverson, 472 

F.3d at 1079. 

None of Cisco’s cited cases require a different result. For example, Ohio Willow Wood

does not support Cisco’s sweeping conclusion that a court must apply the collateral estoppel bar if 

the collateral estoppel factors are met. In that case, the defendant timely moved for summary 

judgment based on collateral estoppel, the district court chose to grant the motion, and the Federal 

Circuit affirmed. Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1341-43 (Fed. Cir. 

2013). Likewise, in the Nestle USA and Papst Licensing cases, the Federal Circuit affirmed PTAB 

claim construction decisions where collateral estoppel was applied. See Nestle USA, Inc. v. 

Stueben Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2018); Papst Licensing GMBH & Co. v. 

Samsung Elecs. Am., Inc., 924 F.3d 1243, 1252-53 (Fed. Cir. 2019). Finally, in Arunachalam v. 

Presidio Bank, 801 F. App’x 750 (Fed. Cir. 2020), the Federal Circuit merely affirmed the lower 

court’s exercise of its discretion in choosing to apply the collateral estoppel bar. Id. at 753-54. 

None of these cases suggest that this Court must apply collateral estoppel, or that the Federal 

Circuit would fault this Court if, in considering fairness and uniformity, this Court chooses to 

exercise its discretion and decline to apply the collateral estoppel bar to the ’494 Patent. 

V. CONCLUSION 

For the foregoing reasons Finjan respectfully requests the Court deny Cisco’s Motion as to 

the ’844 and ’780 Patents unless and until final judgment is entered by the ESET Court and deny 

Cisco’s motion as to the ’494 Patent and allow that patent to proceed to trial. 

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6 FINJAN’S OPPOSITION TO CISCO’S MOTION 

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Dated: April 26, 2021 FISH & RICHARDSON P.C. 

By: /s/ Juanita R. Brooks

 Juanita R. Brooks 

Attorneys for Plaintiff 

FINJAN LLC 

Case 5:17-cv-00072-BLF Document 762 Filed 04/26/21 Page 7 of 7