CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

OF THE ‘844, ‘780, AND ‘494 PATENTS BASED ON COLLATERAL ESTOPPEL

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

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D. Stuart Bartow (CA SBN 233107)

dsbartow@duanemorris.com

Nicole E. Grigg (CA SBN 307733)

negrigg@duanemorris.com

DUANE MORRIS LLP

2475 Hanover Street

Palo Alto, CA 94304-1194

Telephone: 650.847.4146

Facsimile: 650.847.4151

Additional attorneys on signature page 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA, 

(SAN JOSE DIVISION) 

FINJAN LLC, a Delaware Limited Liability 

Company, 

Plaintiff, 

,. 

CISCO SYSTEMS, INC., a California 

Corporation, 

Defendant. 

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

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 759 Filed 04/19/21 Page 1 of 9
1 

CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

OF THE ‘844, ‘780, AND ‘494 PATENT BASED ON COLLATERAL ESTOPPEL 

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

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Defendant Cisco Systems, Inc. (“Cisco”) seeks judgment that the ’844 and ’780 Patents are 

invalid based on the ESET Order and that the ’494 Patent is invalid based on the same “issue” 

resolved against Finjan in the ESET Order. For the ’494 Patent, Federal Circuit law is clear that 

the ESET Order applies with equal force to patents whose intrinsic record presents the same 

“issue” that led to the invalidity ruling. The ’494 Patent satisfies this test because it is a 

continuation of a patent found invalid in the ESET Order (the ’086 Patent), with the same 

“Downloadable” term, the same specification, and the same intrinsic record on which the ESET 

Order relied (in fact, the same intrinsic record on which the ESET Order relied to invalidate all 

five related patents). Based on the reasoning of the ESET Order and the collective treatment of 

those five patents, the ’494 Patent unquestionably would have been found invalid in that case had 

Finjan asserted it there. The Federal Circuit case law confirms that this is a distinction without a 

difference; the patent holder is estopped with respect to all patents that present the same “issue.” 

The law is equally clear that Cisco’s prior positions in this case do not protect Finjan from the 

impact of the ESET Order on the ’494 Patent. Collateral estoppel renders the ’494 Patent invalid, 

regardless of what has previously occurred in this case. 

I. BACKGROUND 

On March 23, 2021, Judge Bencivengo issued a summary judgment order invalidating the 

’844 and ’780 Patents, along with U.S. Patent Nos. 8,079,086 (“’086 Patent”); 9,189,621 (“’621 

Patent”); and 9,219,755 (“’755 Patent”) (collectively, “Invalidated Patents”), as indefinite based 

on the term “Downloadable.” Finjan, Inc. v. ESET, LLC, Case No. 3:17-cv-0183-CAB-BGS, Dkt. 

No. 864 (“ESET Order,” attached as Ex. A) at 8. Judge Bencivengo based her decision on her 

construction of “Downloadable” as “a small executable or interpretable application program which 

is downloaded from a source computer and run on a destination computer,” which is the express 

definition set forth in U.S. Patent Nos. 6,167,520 (“’520 Patent”) and 6,480,962 (“’962 Patent”) 

that the Invalidated Patents incorporate by reference. Id. at 4-5. 

The ‘494 Patent is a direct continuation (with the identical specification) of the ’086 

Patent, which the ESET Order invalidated. Dkt. No. 1-5 (’494 Patent) at 1:7-11. Every claim of 

the ’494 Patent contains the now-indefinite term “Downloadable.” Just like each of the 

Case 5:17-cv-00072-BLF Document 759 Filed 04/19/21 Page 2 of 9
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CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

OF THE ‘844, ‘780, AND ‘494 PATENT BASED ON COLLATERAL ESTOPPEL 

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

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Invalidated Patents, the ’494 Patent incorporates by reference the subject matter of the ’520 and 

’962 Patents that served the basis of the ESET Court’s indefiniteness decision. Id. at 1:43-55. 

II. GOVERNING LAW FOR COLLATERAL ESTOPPEL 

“To foreclose relitigation of an issue under collateral estoppel, four conditions must be 

met: ‘(1) the issue at stake was identical in both proceedings; (2) the issue was actually litigated 

and decided in the prior proceedings; (3) there was a full and fair opportunity to litigate the issue; 

and (4) the issue was necessary to decide the merits.’” Arista Networks, Inc. v. Cisco Sys., Inc., 

No. 16-CV-00923-BLF, 2017 WL 6102804, at *11 (N.D. Cal. 10/10/17) (quoting Oyeniran v. 

Holder, 672 F.3d 800, 806 (9th Cir. 2012)). Under Ninth Circuit law, a summary judgment order 

satisfies the requirement of a “final judgment” for the purpose of collateral estoppel, regardless of 

whether it is appealable yet. Abbott Diabetes Care Inc. v. Roche Diagnostics Corp., C04-

02123MJJ, 2007 WL 1239220, at *12 (N.D. Cal. 4/27/07) (“Under Ninth Circuit law, to be ‘final’ 

for collateral estoppel purposes, a decision need not possess ‘finality’ in the sense of 28 U.S.C. 

§ 1291. Instead, a final judgment for purposes of collateral estoppel is any prior adjudication of an 

issue in another action that is determined to be ‘sufficiently firm’ to be accorded preclusive 

effect.” (internal citations omitted)). Even “the pendency of an appeal in the Federal Circuit ‘does 

not suspend the operation of an otherwise final judgment as res judicata or collateral estoppel.’” 

Gonzalez v. Tagged, Inc., 16-cv-00574-YGR, 2016 WL 3257734, at *2 (N.D. Cal. 6/14/16) 

(quoting Convergence Corp. v. Videomedia, 539 F. Supp. 760, 762 (N.D. Cal. 1981)). 

III. THE ‘844 AND ’780 PATENTS ARE INVALID 

The ESET Order satisfies the four elements for collateral estoppel for the ’844 and ’780 

Patents and already qualifies as a “final judgment” for purposes of collateral estoppel. Id. This 

Court therefore should enter judgment of invalidity. 

IV. THE ’494 PATENT IS ALSO INVALID 

The ESET Order also satisfies the four collateral estoppel elements for “Downloadable” in 

the ’494 Patent. The first element (“identical issue”) is met for the reasons discussed below. The 

ESET Order on its face confirms the last three elements: the issue (whether the claim term 

“Downloadable” is indefinite on this intrinsic record) was litigated and decided in the ESET 

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CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

OF THE ‘844, ‘780, AND ‘494 PATENT BASED ON COLLATERAL ESTOPPEL 

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

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Order; Finjan had a “full and fair opportunity” to litigate it; and the issue was necessary to decide 

the merits of invalidity. Finjan’s arguments about why it disagrees with the ESET Order are 

irrelevant; the “full and fair opportunity” prong is a limited inquiry. Stevenson v. Sears, Roebuck 

& Co., 713 F.2d 705, 709 (Fed. Cir. 1983) (“it is clear from the case law that has developed since 

Blonder-Tongue that an inappropriate inquiry is whether the prior finding of invalidity was 

correct; instead, the court is only to decide whether the patentee had a full and fair opportunity to 

litigate the validity of his patent in the prior unsuccessful suit”). 

A. The ’494 Patent Is Invalid Based on the “Identical Issue” as the ESET Order 

Although the ‘494 Patent is not referenced in the ESET Order (because it was not asserted 

against ESET), the same indefinite term (“Downloadable”) appears in every claim of the ’494 

Patent, and the ’494 Patent has the same intrinsic record on which the ESET Order relied. In other 

words, every basis for the ESET Order exists and applies with equal force to the ’494 Patent. To 

bring this issue into clear focus, if Finjan had asserted the ’494 Patent in the ESET case, the ESET 

Order already would have held the ’494 Patent invalid. 

The Blonder-Tongue principle therefore applies equally to the ’494 Patent. Ohio Willow 

Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (“Our precedent does not limit 

collateral estoppel to patent claims that are identical. Rather, it is the identity of the issues that 

were litigated that determines whether collateral estoppel should apply.”). In cases applying the 

“same issue” principle from Ohio Willow, the Federal Circuit has used collateral estoppel to 

invalidate a related patent (i.e., a different patent than the patent on which collateral estoppel 

arises) as a matter of law, where the “issue” was the same -- and the Federal Circuit did so even 

where the issue was raised for the first time on appeal: 

It is undisputed that the claims at issue in the two appeals use the term “aseptic” (or its 

related variation “aseptically disinfecting”) in a similar fashion. Compare ’468 patent, col. 

26 l. 20 . . . with ’013 patent, col. 16 ll. 36-62 . . . . More critically, the two patents also 

provide identical lexicography for the term ‘aseptic’ in their specifications... Neither party 

has pointed to any material difference between the two patents or their prosecution 

histories that would give rise to claim construction issues in this appeal different from 

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CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

OF THE ‘844, ‘780, AND ‘494 PATENT BASED ON COLLATERAL ESTOPPEL 

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

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those raised in the prior appeal. Accordingly, Steuben Foods has had a full and fair 

opportunity to litigate the issue of claim construction during the prior appeal. 

Nestlé USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1351-52 (Fed. Cir. 2018). See also Papst 

Licensing GMBH & Co. v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1252-53 (Fed. Cir. 2019) 

(“The ’144 Patent Aytac Decision resolved against Papst the claim construction and Aytacteaching issues now before us [on the ’437 Patent], and those resolutions were essential to the 

Board's decision.. . . . Issue preclusion therefore applies . . . .”) 

Any difference in surrounding claim language is irrelevant; it is the identity of the “issue” 

(i.e., whether the term “Downloadable” is indefinite based on the ESET Court’s claim 

construction) that is controlling. Arunachalam v. Presidio Bank, 801 F. App’x 750, 752-53 (Fed. 

Cir. 2020) (“As to the first condition for applying collateral estoppel (identical issue), we find that 

the remaining claims in the ’500, ’492, and ’158 patents all rely on at least one of the claim terms 

found indefinite, not enabled, or failing written description by JPMorgan and that these remaining 

claims do not significantly alter the analysis of those terms.”). 

B. The Details of the Earlier Proceedings In This Case Are Irrelevant 

Finjan seeks to avoid the application of collateral estoppel to the ’494 Patent based on 

Cisco’s stipulation to a different construction of the term “Downloadable” in this case, but that 

stipulation is no more relevant to the invalidity of the ’494 Patent than it is to the ’844 and ’780 

Patents. In applying collateral estoppel in this context, a court simply determines whether the 4-

factor test is met, and does not revisit whether it agrees with the other court’s ultimate decision on 

invalidity or the sub-issues that led to the invalidity finding. Crossroads Sys. (Tex.), Inc. v. Dot 

Hill Sys. Corp., 2006 WL 1544621, at *5 (W.D. Tex. 5/31/06) (“the overwhelming weight of 

authority suggests that the ‘issue’ that is to be given issue-preclusive effect to a judgment in the 

patent context is the ultimate determination on patent validity itself, not the sub-issues or the 

individual pieces of evidence and arguments that may have been necessary to support the validity 

determination”). Under Ohio Willow, the “issue” for all three patents is the same, i.e., the 

invalidity of the patents arising from the indefiniteness of the term “Downloadable” based on the 

same intrinsic record. Just like the ’844 and ’780 Patents, the earlier stipulation in this case on the 

Case 5:17-cv-00072-BLF Document 759 Filed 04/19/21 Page 5 of 9
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CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

OF THE ‘844, ‘780, AND ‘494 PATENT BASED ON COLLATERAL ESTOPPEL 

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

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’494 Patent is legally irrelevant. Indeed, the doctrine would apply even if Cisco had previously 

lost the issue of validity at trial. Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1579-80 Fed. 

Cir. 1994). 

 Cisco’s stipulation on the underlying issue of the construction of “Downloadable” cannot 

change the outcome that the ’494 Patent is now invalid. Regardless of what happened earlier in 

this case, the doctrine of collateral estoppel does not allow the ’494 Patent to be invalid when 

asserted against the rest of the world, but still valid against Cisco. Indeed, in Mendenhall, the 

Federal Circuit reversed a district court’s refusal to apply collateral estoppel where the defendant 

seeking to apply the invalidity ruling from another case (i.e., the party situated like Cisco here) 

had itself already tried and lost the issue of invalidity, and then after that trial a different court 

found the patent to be invalid: 

[O]ur precedent holds that the defense of collateral estoppel based on a final judgment of 

patent invalidity in another suit can “be timely made at any stage of the affected 

proceedings.” . . . [A]ppellants’ defense of collateral estoppel is not untimely. 

Id. at 1579-80. A district court has rejected the materially identical argument that Finjan makes: 

Quest also contends that collateral estoppel should not apply because A.Hak has stipulated 

to definitions of certain claim terms that are different than the constructions applied by 

Judge Robinson. That, however, is an issue of claim construction that does not alter the 

preclusive effect of Judge Robinson's express findings that specific patent claims at issue 

in this action are invalid. The Court finds that collateral estoppel applies . . . . 

Quest Integrity USA, LLC v. A.Hak Indus. Servs. US, LLC, No. C14-1971-RAJ, 2017 U.S. Dist. 

LEXIS 119821, at *10-11 (W.D. Wash. 7/31/17), vacated on other grounds by agreement of the 

parties, 2:14-cv-01971 RAJ, 2019 U.S. Dist. LEXIS 79571, at *1 (W.D. Wash. 5/10/19). The 

Federal Circuit has likewise repeatedly held that a defense of collateral estoppel based on a final 

judgment of patent invalidity in another suit can “be timely made at any stage of the affected 

proceedings.” Dana Corp. v. NOK, Inc., 882 F.2d 505, 507 (Fed. Cir. 1989). See also ThompsonHayward Chem. Co. v. Rohm & Hass Co., 745 F.2d 27, 32-33 (Fed. Cir. 1984) (applying estoppel 

to invalidity judgment on appeal even though infringer did not challenge validity at trial). 

Case 5:17-cv-00072-BLF Document 759 Filed 04/19/21 Page 6 of 9
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CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

OF THE ‘844, ‘780, AND ‘494 PATENT BASED ON COLLATERAL ESTOPPEL 

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

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Dated: April 19, 2021 Respectfully Submitted, 

DUANE MORRIS LLP

By: /s/ Nicole E. Grigg 

D. Stuart Bartow (CA SBN 233107) 

dsbartow@duanemorris.com 

Nicole E. Grigg (CA SBN 307733) 

negrigg@duanemorris.com 

2475 Hanover Street 

Palo Alto, CA 94304-1194 

Telephone: 650.847.4146 

Facsimile: 650.847.4151 

L. Norwood Jameson (admitted pro hac vice) 

Email: wjameson@duanemorris.com 

Matthew C. Gaudet (admitted pro hac vice) 

Email: mcgaudet@duanemorris.com 

Robin L. McGrath (admitted pro hac vice) 

Email: rlmcgrath@duanemorris.com 

David C. Dotson (admitted pro hac vice) 

Email: dcdotson@duanemorris.com 

John R. Gibson (admitted pro hac vice) 

Email: jrgibson@duanemorris.com 

Jennifer H. Forte (admitted pro hac vice) 

Email: jhforte@duanemorris.com 

Alice E. Snedeker (admitted pro hac vice) 

Email: aesnedeker@duanemorris.com 

1075 Peachtree Street, Ste. 2000 

Atlanta, GA 30309 

Telephone: 404.253.6900 

Facsimile: 404.253.6901 

Joseph A. Powers (admitted pro hac vice) 

Email: japowers@duanemorris.com 

Jarrad M. Gunther (admitted pro hac vice) 

Email: jmgunther@duanemorris.com 

30 South 17th Street 

Philadelphia, PA 19103 

Telephone: 215.979.1000 

Facsimile: 215.979.1020 

Attorneys for Defendant 

CISCO SYSTEMS, INC. 

Case 5:17-cv-00072-BLF Document 759 Filed 04/19/21 Page 7 of 9
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CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

OF THE ‘844, ‘780, AND ‘494 PATENT BASED ON COLLATERAL ESTOPPEL 

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

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CERTIFICATE OF SERVICE 

The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served on April 19, 2021 to all counsel of record who are deemed to have 

consented to electronic service via the Court’s CM/ECF system. 

 /s/ Nicole E. Grigg 

 Nicole E. Grigg 

 

Case 5:17-cv-00072-BLF Document 759 Filed 04/19/21 Page 8 of 9
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CISCO SYSTEMS, INC.’S MOTION FOR JUDGMENT OF INVALIDITY

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

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[PROPOSED] ORDER 

Upon consideration of all pleadings, papers, and arguments submitted in support of and 

opposition to Defendant Cisco Systems, Inc.’s Motion for Judgment of Invalidity of the ’844, 

’780, and ’494 Patents Based on Collateral Estoppel (“Cisco’s Motion”), and good cause 

appearing therefor, the Court hereby GRANTS Cisco’s Motion and enters judgment that the ’844, 

’780, and ’494 Patents are invalid for the reasons set forth in Cisco’s Motion. 

Dated: ______________ _________________________________ 

Hon. Beth Labson Freeman 

United States District Court Judge 

Case 5:17-cv-00072-BLF Document 759 Filed 04/19/21 Page 9 of 9