FINJAN’S OPPOSITION TO CISCO’S MOTION TO DISMISS Case No. 5:17-cv-00072-BLF

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PAUL ANDRE (State Bar No. 196585)

pandre@kramerlevin.com

LISA KOBIALKA (State Bar No. 191404)

lkobialka@kramerlevin.com

JAMES HANNAH (State Bar No. 237978)

jhannah@kramerlevin.com

KRAMER LEVIN NAFTALIS & FRANKEL LLP

990 Marsh Road

Menlo Park, CA 94025

Telephone: (650) 752-1700

Facsimile: (650) 752-1800

Attorneys for Plaintiff

FINJAN, INC.

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

FINJAN, INC., a Delaware Corporation,

Plaintiff,

v.

CISCO SYSTEMS, INC., a California 

Corporation,

Defendant. 

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

PLAINTIFF FINJAN, INC.’S 

OPPOSITION TO DEFENDANT CISCO 

SYSTEMS, INC.’S MOTION TO DISMISS 

Date: June 8, 2017

Time: 9:00 a.m.

Dept.: Courtroom 3, 5th Floor

Judge: Honorable Beth Labson Freeman

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TABLE OF CONTENTS

Page

I. INTRODUCTION ....................................................................................................................... 1

II. STATEMENT OF ISSUE TO BE DECIDED............................................................................. 1

III. STATEMENT OF FACTS AND PROCEDURAL BACKGROUND........................................ 1

A. Finjan's FAC Provides Detailed Allegations of Cisco's Continued

Infringement Despite Knowledge of the Patents in Suit...................................................1

B. Finjan Amended Its Original Complaint After It Met and Conferred with Cisco 

Regarding The Allegations In Its Original Complaint......................................................3

IV. ARGUMENT............................................................................................................................... 3

A. Finjan Pleads More Than Sufficient Facts to Allege a Claim for Willful 

Infringement of the Patents-in-Suit, Particularly Under Halo’s Lowered Bar .................3

1. The FAC Sufficiently Alleges That Cisco Knew of the Patents-in-Suit. ............ 6

2. The FAC Sufficiently Alleges Additional Facts Beyond Knowledge

to Support a Finding That Cisco’s Infringement Was Willful or Egregious. ...... 9

3. Cisco’s Arguments Regarding the 2014 NDA Are Irrelevant

and Unfounded................................................................................................... 11

B. In the Alternative, Finjan Should Be Allowed to Amend the Complaint.......................12

V. CONCLUSION.......................................................................................................................... 12

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TABLE OF AUTHORITIES

Page(s)

Cases

Avocet Sports Tech., Inc. v. Garmin Int’l, Inc.,

No. C 11-04049 JW, 2012 WL 2343163 (N.D. Cal. June 5, 2012)............................................5, 6, 7

Bell Atlantic Corp. v. Twombly,

550 U.S. 544 (2007)..............................................................................................................3, 4, 9, 10

Blitzsafe Texas LLC v. Volkswagen Group of Am., Inc.,

Nos. 2:15-cv-1274-JRG-RSP, 2:15-cv-1278-JRG-RSP,

2016 WL 4778699 (E.D. Tex. Aug. 19, 2016) ...........................................................................5, 6, 8

Elm 3DS Innovations, LLC v. Samsung Elecs. Co.,

No. 14-1430-LPS-CJB, 2015 WL 5725768 (D. Del. Sept. 29, 2015)............................................5, 7

Finjan, Inc. v. ESET, LLC,

No. 3:17-CV-0183-CAB-(BGS), 2017 WL 1063475 (S.D. Cal. Mar. 21, 2017)...........................4, 5

Halo Elecs., Inc. v. Pulse Elecs., Inc.,

136 S. Ct. 1923, 1933-35 (2016)............................................................................................... passim

Irori Techs., Inc. v. Luminex Corp.,

No. 13-CV-2647-BEN (NLS), 2014 WL 769435 (S.D. Cal. Feb. 25, 2014) .....................................5

Longitude Licensing v. Apple Inc,

No. C-14-04275-EDL, 2015 WL 1143071 (N.D. Cal. Mar. 13, 2015) ..............................................9

Malibu Boats, LLC v. Mastercraft Boat Co.,

No. 3:16-cv-82-TAV-HBG, 2016 U.S. Dist. LEXIS 183202

(E.D. Tenn. Oct. 28, 2016)..................................................................................................................8

McMahon v. Take-Two Interactive Software, Inc.,

640 F. App’x 669 (9th Cir. 2016) ...................................................................................................4, 6

McZeal v. Sprint Nextel Corp.,

501 F.3d 1354 (Fed. Cir. 2007)...........................................................................................................4

Mentor Graphics Corp. v. EVE-USA, Inc.,

851 F.3d 1275 (Fed. Cir. 2017).........................................................................................................11

Nanosys, Inc. v. QD Vision, Inc.,

No. 16-CV-01957-YGR, 2017 WL 35511 (N.D. Cal. Jan. 4, 2017)........................................4, 9, 10

Nanosys, Inc. v. QD Vision, Inc.,

No. 16-cv-01957-YGR, 2016 WL 4943006 (N.D. Cal. Sept. 16, 2016)..........................................12

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Potter Voice Techs., LLC v. Apple Inc.,

24 F. Supp. 3d 882 (N.D. Cal. 2014)..............................................................................................7, 8

Raytheon Co. v. Cray, Inc.,

No. 2:16-CV-00423-JRG-RSP, 2017 WL 1362700 (E.D. Tex. Mar. 13, 2017) ..........................5, 11

Seoul LaserDieboard Sys. Co. v. Serviform, S.R.L.,

957 F. Supp. 2d 1189 (S.D. Cal. 2013)...............................................................................................5

Spherix Inc. v. Juniper Networks, Inc.,

Civ. No. 14-578-SLR, 2015 WL 1517508 (D. Del. Mar. 31, 2015)...................................................9

St. Clair Intellectual Prop. Consultants, Inc. v. Hewlett–Packard Co.,

C.A. No. 10-425-LPS, 2012 WL 1134318 (D. Del. 2012).................................................................7

Traffic Info., LLC v. Yahoo! Inc.,

No. 2:09-CV-246-TJW-CE, 2010 WL 2545500 (E.D. Tex. Apr. 13, 2010)......................................4

Walker Digital, LLC v. Facebook, Inc.,

852 F. Supp. 2d 559 (D. Del. 2012)....................................................................................................7

Windy City Innovations, LLC v. Microsoft Corp.,

193 F. Supp. 3d 1109 (N.D. Cal. 2016)............................................................................................12

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I. INTRODUCTION

Finjan has more than adequately pled its willfulness claim in its First Amended Complaint 

(Dkt. No. 26) (“FAC”). Finjan’s FAC provides specific factual allegations detailing the longstanding 

collaborative relationship that Finjan and Cisco have had since the 1990’s and the multiple substantial 

investments that Cisco has made in Finjan over the years. It further explains that during the course of 

that extensive relationship, Cisco gained knowledge of Finjan’s proprietary technology and patents, 

which includes the patents asserted here. Finjan’s FAC even specifies the manner of how and when 

Cisco gained this information, including when it invested in Finjan, through presentations that Finjan 

gave to Cisco, as well as by virtue of Cisco having a representative attend Finjan’s Board of Directors 

meetings. Despite this knowledge, as alleged in the FAC, Cisco proceeded with its infringement, 

including acquiring and incorporating into its products technology that infringes the asserted patents. 

These allegations in the FAC are more than adequate to plead willfulness, particularly under 

the flexible standard recently adopted by the Supreme Court in Halo Elecs., Inc. v. Pulse Elecs., Inc., 

136 S. Ct. 1923, 1933-35 (2016), which considers the totality of the circumstances as opposed to rigid 

criteria for proving willfulness and enhanced damages. Cisco’s motion mischaracterizes the 

allegations in Finjan’s FAC, ignores reasonable inferences to be drawn from those allegations and 

misstates the law that this Court should apply under Halo. For these reasons, as explained further 

below, Cisco’s motion should be denied.

II. STATEMENT OF ISSUE TO BE DECIDED

Whether Finjan’s FAC alleges facts sufficient to state a claim for willful infringement.

III. STATEMENT OF FACTS AND PROCEDURAL BACKGROUND

A. Finjan's FAC Provides Detailed Allegations of Cisco's Continued Infringement 

Despite Knowledge of the Patents in Suit 

Finjan filed its FAC on March 27, 2017, setting forth detailed allegations in support of Finjan’s

infringement and willfulness claims. The FAC explains that Finjan was a pioneer in developing 

proactive technologies capable of detecting previously unknown online security threats or “malware,” 

and that Finjan has been awarded various patents covering these innovations. FAC at ¶¶ 7-8. The 

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FAC alleges that certain Cisco products infringe the following five of these patents: U.S. Patent Nos. 

6,154,844 (“the ‘844 Patent”), 6,804,780 (“the ‘780 Patent”), 7,647,633 (“the ‘633 Patent”), 8,141,154 

(“the ‘154 Patent”) and 8,677,494 (“the ‘494 Patent”) (collectively the “Patents-in-Suit”).1 FAC at ¶ 

45. The FAC provides the following further factual allegations supporting Finjan’s claims that Cisco 

willfully infringes each of the Patents-in-Suit:

• “In the late 1990’s, the parties entered into an original equipment manufacturer agreement 

that allowed Cisco to incorporate Finjan’s technology into Cisco’s products.” FAC at ¶¶ 9, 

57, 72, 88, 103, 114.

• “Cisco made multiple substantial financial investments in Finjan as early as 2004. At the 

time of these investments, Cisco knew of Finjan’s patent portfolio and patented 

technology.” FAC at ¶¶ 9, 57, 72, 88, 103, 114.

• “Cisco continued to gain knowledge about Finjan and its patents and patented technology 

after investing in Finjan. For example, pursuant to the parties’ agreement, Cisco had an 

observer attend Finjan’s board of director meetings.” FAC at ¶¶ 9, 57, 72, 88, 103, 114. 

• “Cisco also attended presentations by Finjan in which Finjan discussed its issued and

pending patents and its patented technology.” FAC at ¶¶ 9, 57, 72, 88, 103, 114.

• “As of June 2013, when Finjan became a publicly traded company, Cisco was the beneficial 

owner of shares of Finjan, and currently maintains ownership of shares of Finjan.” FAC at 

¶¶ 9, 57, 72, 88, 103, 114.

• “Throughout the years Cisco and Finjan maintained an amicable relationship and 

consistently collaborated together on cybersecurity.” FAC at ¶ 9.

• “[I]n the second half of 2013, Cisco acquired the company Sourcefire, Inc. (“SourceFire”) 

and integrated that company’s appliances and technology into Cisco’s own product lines. 

Finjan patents cover technology acquired in the SourceFire deal, along with other 

unlicensed technologies that Cisco has implemented over the years.” FAC at ¶ 9. 

The FAC further states that despite this extensive relationship and knowledge of the Patents-inSuit, Cisco “has sold and continues to sell the accused products and services in complete disregard of 

Finjan’s patent rights.” FAC at ¶¶ 58, 73, 89, 104, 115. 

 1

 In December 1997, Finjan filed the patent application for the ‘844 Patent, which issued in November 

2000. FAC at ¶ 10; Dkt. No. 26-1 at 4 (Ex. 1 to FAC). In March 2000, Finjan filed the patent 

application for the ‘780 Patent, which issued in October 2004. FAC at ¶ 13; Dkt. No. 26-2 at 2 (Ex. 2 

to FAC). In June 2005, Finjan filed the patent application for the ‘633 Patent, which issued in January 

2010. FAC at ¶ 16; Dkt. No. 26-3 at 6 (Ex. 3 to FAC). In June 2010, Finjan filed the patent application 

for the ‘154 Patent, which issued in March 2012. FAC at ¶ 19; Dkt. No. 26-4 at 2 (Ex. 4 to FAC). In 

November 2011, Finjan filed the patent application for the ‘494 Patent, which issued in March 2014. 

FAC at ¶ 22; Dkt. No. 26-5 at 2 (Ex. 5 to FAC).

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B. Finjan Amended Its Original Complaint After It Met and Conferred with Cisco 

Regarding The Allegations In Its Original Complaint 

Finjan’s FAC reflects amendments to Finjan’s factual allegations in support of its willfulness 

claim. In its original complaint, Finjan included allegations in part on certain discussions between 

Finjan and Cisco that occurred after the parties entered into a Non-Disclosure Agreement in 2014 (the 

“NDA”). Dkt. No. 1 at ¶ 9. On March 6, 2017, Cisco filed its Answer and Counterclaims against 

Finjan, alleging, inter alia, a counterclaim for “breach of contract,” claiming that Finjan’s reliance on 

these discussions violated the NDA. Dkt. No. 24 at 19-21. However, this counterclaim did not state a 

plausible claim for relief because the NDA only restricted use of “Proprietary Information,” and Finjan 

did not include any “Proprietary Information” in its complaint. For this reason, Finjan intended to seek 

to dismiss Cisco’s breach of contract counterclaim under Rule 12(b)(6). Declaration of B. Wells in 

Support of Finjan’s Opposition to Cisco’s Motion to Dismiss (“Wells Decl.”) filed herewith, ¶ 2. 

During the parties' meet and confer in advance of Finjan’s anticipated motion to dismiss, it 

became apparent that the parties' dispute regarding the counterclaim could be resolved if Finjan 

provided different instances of notice to Cisco of Finjan's patents, as opposed to those based on 

discussions following the NDA. Id. Thus, while Finjan disputed Cisco's breach of contract claim, 

Finjan had various bases for its willfulness claim not limited to these discussions, and thus Finjan was 

willing to amend its complaint to reflect these other bases and avoid burdening the Court with a 

dispute over Cisco's counterclaim. Id. Accordingly, on March 27, 2017, Finjan filed the FAC 

removing all references to the NDA. 

IV. ARGUMENT

A. Finjan Pleads More Than Sufficient Facts to Allege a Claim for Willful 

Infringement of the Patents-in-Suit, Particularly Under Halo’s Lowered Bar

Finjan’s detailed FAC easily passes muster under the standard for pleading willfulness. “[A] 

complaint should not be dismissed for failure to state a claim unless it appears beyond doubt that the 

plaintiff can prove no set of facts in support of his claim which would entitle him to relief.” Bell 

Atlantic Corp. v. Twombly, 550 U.S. 544, 546 (2007) (citation omitted). It “does not require ‘detailed 

factual allegations,’” but need only contain “enough fact to raise a reasonable expectation that 

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discovery will reveal evidence.” See Traffic Info., LLC v. Yahoo! Inc., No. 2:09-CV-246-TJW-CE, 

2010 WL 2545500, at *3 (E.D. Tex. Apr. 13, 2010) (quoting Twombly, 550 U.S. at 555-56); see also 

Finjan, Inc. v. ESET, LLC, No. 3:17-CV-0183-CAB-(BGS), 2017 WL 1063475, at *7 (S.D. Cal. Mar. 

21, 2017) (“The complaint states sufficient facts to allege ESET’s continued sales are willful. ESET 

may introduce evidence of its response to Finjan’s notice of infringement and the steps it took to 

address those contentions”). “[A] patentee need only plead facts sufficient to place the alleged 

infringer on notice as to what he must defend.” McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1375 

(Fed. Cir. 2007) (citing Twombly, 550 U.S. at 565 n.10). In resolving Cisco’s motion to dismiss under 

Rule 12(b)(6), the court must accept Finjan’s allegations of material fact as true and construe them in a 

light most favorable to Finjan. See McMahon v. Take-Two Interactive Software, Inc., 640 F. App’x 

669, 671 (9th Cir. 2016) (reversing the district court’s decision for erring by failing to construe 

plaintiff’s allegations in the light most favorable to plaintiffs).

Here, Finjan’s allegations of willful infringement are more than sufficient to put Cisco on 

notice of Finjan’s willfulness claims. In 2016, the Supreme Court lowered the bar to prove willfulness, 

eliminating the requirement that the infringer must have acted despite an objectively high likelihood 

that its actions constituted infringement of a valid patent. Halo, 136 S. Ct. at 1933-35. Thus, it is 

sufficient to show that the risk of infringement was either known to the accused infringer or so obvious 

that it should have been known. Id. The Supreme Court in Halo adopted a flexible approach to 

determining whether a court should award enhanced damages: “As with any exercise of discretion, 

courts should continue to take into account the particular circumstances of each case in deciding 

whether to award damages, and in what amount. . . . [S]uch punishment should generally be reserved 

for egregious cases typified by willful misconduct.” Id. at 1933-34; see also Nanosys, Inc. v. QD 

Vision, Inc., No. 16-CV-01957-YGR, 2017 WL 35511, at *1 (N.D. Cal. Jan. 4, 2017) (applying Halo’s 

totality of circumstance approach and finding patentee’s allegations of willfulness sufficient). Thus, 

there is no “heightened standard for willfulness” requiring egregiousness to be plead as an additional

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element under Halo, as Cisco misrepresents. Motion at 7. Rather, willful infringement typifies

egregious conduct that would justify an award of enhanced damages.2 

Numerous cases, including post-Halo cases, recognize that all that is required to adequately 

plead a claim for willfulness is an allegation of direct infringement coupled with “the barest factual 

assertion of knowledge.” Seoul Laser Dieboard Sys. Co. v. Serviform, S.r.l., 957 F. Supp. 2d 1189, 

1196-97 (S.D. Cal. 2013) (internal quotation and citation omitted); see also ESET, 2017 WL 1063475, 

at *7 (denying to dismiss willful infringement claims based solely on the defendant’s knowledge of the 

asserted patent because “[w]illfulness is measured by reference to the knowledge of the accused 

infringer at the time of the challenged conduct”), quoting Halo, 136 S. Ct. at 1933; Raytheon Co. v. 

Cray, Inc., No. 2:16-CV-00423-JRG-RSP, 2017 WL 1362700, at *9 (E.D. Tex. Mar. 13, 2017) 

(“Because [the plaintiff’s] allegations concerning knowledge of the patents-in-suit are sufficient, a 

proper claim for willfulness has been made”) (citation omitted)3; Avocet Sports Tech., Inc. v. Garmin 

Int’l, Inc., No. C 11-04049 JW, 2012 WL 2343163, at *3 (N.D. Cal. June 5, 2012) (finding 

“allegations make out the ‘barest factual assertion’ that [defendant] had knowledge of the patent at 

issue, which is sufficient to plead a claim for willful infringement”) (citation omitted); Elm 3DS 

Innovations, LLC v. Samsung Elecs. Co., No. 14-1430-LPS-CJB, 2015 WL 5725768, at *2 (D. Del. 

Sept. 29, 2015) (holding that it was plausible that defendant had pre-suit knowledge based on a 

presentation made to defendant regarding related patents and the fact that the patent-in-suit was well 

known in the semiconductor industry); Irori Techs., Inc. v. Luminex Corp., No. 13-CV-2647-BEN 

(NLS), 2014 WL 769435, at *2 (S.D. Cal. Feb. 25, 2014) (“courts have denied motions to dismiss 

where the [plaintiff] couples an allegation of direct infringement with ‘the barest factual assertion’ of 

knowledge”) (citation omitted); Blitzsafe Texas, LLC v. Volkswagen Group of Am., Inc., Nos. 2:15-cv1274-JRG-RSP, 2:15-cv-1278-JRG-RSP, 2016 WL 4778699, at *6 (E.D. Tex. Aug. 19, 2016) 

 2 Also, willful infringement is not necessary to an award of enhanced damages. Halo, 136 S. Ct. at 

1933-34. 3 Notably, Raytheon Co. found that even “[p]ost-complaint knowledge is sufficient under Halo” to state 

the claims of willful infringement. Raytheon, 2017 WL 1362700, at *5 (citation omitted).

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(denying motion to dismiss willful infringement claims and finding that accused infringer’s knowledge 

of a patent application was all that was required).

1. The FAC Sufficiently Alleges That Cisco Knew of the Patents-in-Suit. 

The FAC goes far beyond alleging the “barest factual assertions” that Cisco had knowledge of 

the Patents-in-Suit, which is all it must do to state a claim for willfulness. It alleges that Cisco knew of 

Finjan and its technology since the late 1990’s when Cisco entered into an original equipment 

manufacturer agreement with Finjan. FAC at ¶¶ 9, 57, 72, 88, 103, 114. The FAC also alleges 

multiple factual bases for Cisco's knowledge of the Patents-in-Suit, including that Cisco knew of 

Finjan's patents based on multiple substantial financial investments that Cisco made in Finjan as early 

as 2004. Id. The FAC also alleges that Cisco knew of Finjan's patents based on attendance by a Cisco 

representative at Finjan board meetings and Cisco’s attendance at presentations where Finjan’s 

pending and issued patents and its patented technology were discussed. Id.

It can be readily inferred from these allegations that Cisco knew of Finjan’s patents that had 

issued during this period, which specifically includes the ‘844 and ‘780 Patents, as well as the pending 

application for the ‘633 Patent. The FAC alleges the particular manner in which Cisco gained 

knowledge of these patents, and it need not and should not include specific evidence to support these 

allegations. See Avocet, 2012 WL 2343163, at *3 (finding “allegations make out the ‘barest factual 

assertion’ that [defendant] had knowledge of the patent at issue, which is sufficient to plead a claim for 

willful infringement”) (citation omitted). Rather, Finjan properly alleged these facts based on its good 

faith investigation in preparing its FAC, and these allegations should be accepted as true for the 

purposes of this Motion. See McMahon, 640 F. App’x at 671.

Finjan further alleges that Cisco has been a beneficial owner of shares of Finjan as of June 

2013 when Finjan became a publicly-traded company. FAC at ¶¶ 9, 57, 72, 88, 103, 114. Thus, 

Cisco’s claim that Finjan has not alleged any “interactions between Finjan and Cisco that post-date 

2009” (Motion at 4) is entirely untrue. There is also no basis for Cisco’s arbitrary distinction 

throughout its Motion between Finjan’s patents that issued before 2009 (i.e., the ‘844 and ‘780 Patents) 

and those that issued later (i.e., the ‘633, ‘154 and ‘494 Patents) when Finjan sold its assets but 

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retained its patents. As set forth in the FAC, Finjan and Cisco’s relationship has been continuous since 

the 1990’s. It is reasonable to infer that after 2009, Cisco—as an owner of shares of Finjan with a long 

history of investment in Finjan and knowledge of Finjan’s patents, including pending patent 

applications, and proprietary technology—would continue to remain apprised of Finjan’s patents and 

would have known of the ‘633, ‘154 and ‘494 Patents. 

These allegations in Finjan’s FAC are more than sufficient to plead Cisco’s pre-suit knowledge 

of the Patents-in-Suit. See, e.g., Avocet, 2012 WL 2343163, at *3 (willfulness adequately pled by 

allegation that defendant “discussed” plaintiff’s patented devices at certain “trade shows”); Elm 3DS, 2015 

WL 5725768, at *2 (holding that it was plausible that defendant had pre-suit knowledge based on a 

presentation made to defendant regarding related patents and the fact that the patent-in-suit was well 

known in the semiconductor industry); Walker Digital, LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 

564-68 (D. Del. 2012) (finding the patentee met the pre-suit knowledge requirement for willfulness 

claims based on the following allegation: “It is believed that Zappos was on notice of the ′056 patent 

and Walker Digital's claims prior to April 11, 2011 through Zappos' interactions with representatives 

of Walker Digital.”) (citation omitted); St. Clair Intellectual Prop. Consultants, Inc. v. Hewlett–

Packard Co., C.A. No. 10-425-LPS, 2012 WL 1134318, at *3 (D. Del. 2012) (ruling that the plaintiff 

properly pled willful infringement by alleging the patents-in-suit were often called to the attention of 

HP personnel and representatives); Potter Voice Techs., LLC v. Apple Inc., 24 F. Supp. 3d 882, 887 

(N.D. Cal. 2014) (inferring the accused infringer’s pre-suit knowledge of the asserted patent based on 

statements of circumstantial evidence).

Potter Voice Techs is particularly instructive here. In Potter Voice Techs, the plaintiff alleged 

the defendant’s knowledge of the asserted patent based on the fact that the defendant acquired a 

company and its employees, including an inventor of a patent that listed the asserted patent as one of 

many prior art references in its prosecution history. The Court rejected the defendant’s argument that 

these facts do not satisfy the willfulness claims’ knowledge requirement because the asserted patent 

was only one of many references that were alleged prior art. In so doing, the Court stated that such 

argument of the defendant “go[es] to the weight of the evidence rather than the sufficiency of [the 

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plaintiff’s] allegations. At the motion to dismiss stage, the Court does not undertake a full evaluation 

of ‘probability,’ but simply asks for ‘more than a sheer possibility that a defendant has acted 

unlawfully.’” Potter Voice Techs., 24 F. Supp. 3d at 887. Here, Finjan’s allegations of Cisco’s 

knowledge of the Patents-in-Suit are more specific than those in Potter Voice Techs and provides the 

grounds for “more than a sheer possibility” of Cisco’s willful infringement. For example, the FAC’s 

allegations that Cisco’s representative attended Finjan’s Board of Director meetings and learned about 

the patent portfolio which included the Patents-in-Suit and applications is a more direct allegation of 

Cisco’s knowledge than that in Potter Voice Techs. 

Cisco does not (and cannot) dispute that Finjan has adequately pled that Cisco had knowledge 

of the ‘844 and ‘790 Patents. Moreover, there is no merit to Cisco’s claim that Finjan cannot allege 

knowledge of the ‘633, ‘154 or ‘494 Patents because at the time of notice they were still pending or 

only identified as part of a larger patent portfolio. Contrary to Cisco’s statement of the law, there are 

no bright line rules regarding what constitutes knowledge for willful infringement, particularly in view 

of Halo’s flexible approach. See, e.g., Blitzsafe, 2016 WL 4778699, at *6 (denying to dismiss willful 

infringement claims and finding that accused infringer’s knowledge of a patent application was all that 

was required); see also Malibu Boats, LLC v. Mastercraft Boat Co., No. 3:16-cv-82-TAV-HBG, 2016 

U.S. Dist. LEXIS 183202, at *8 (E.D. Tenn. Oct. 28, 2016) (denying motion to dismiss willful 

infringement claims and holding that “pre-patent conduct may also be used to support a finding of 

willfulness”) (citations omitted). 

Rather, post-Halo courts apply broad discretion to assess the claims of willfulness by 

considering the totality of allegations. See Halo, 136 S. Ct. at 1934 (“[W]e eschew any rigid formula 

for awarding enhanced damages under § 284.”). As Cisco itself acknowledges, “the specific facts of a 

given case will determine whether the alleged infringement was an ‘egregious case[] of misconduct 

beyond typical infringement.’” Motion at 7. Here, Cisco was intimately aware of Finjan’s patent 

portfolio—which has consisted of at most 30 U.S. patents during the relevant time frame (between the 

late 1990s to the present)—over years of collaborating with and investing in Finjan. The cases that 

Cisco relies upon are clearly distinguishable, where such a relationship did not exist and far larger 

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patent portfolios were involved, such as SanDisk’s hundreds of patents as well as more than 6,000 

patents that were at issue in Spherix Inc. See Spherix Inc. v. Juniper Networks, Inc., Civ. No. 14-578-

SLR, 2015 WL 1517508, at *2 (D. Del. Mar. 31, 2015) (“The court declines to infer knowledge of four 

specific patents from defendant's participation in a bidding process on a portfolio containing over 

6,000 patents”) (citation omitted); Longitude Licensing v. Apple Inc, No. C-14-04275-EDL, 2015 WL 

1143071, at *3 (N.D. Cal. Mar. 13, 2015) (“[N]either the breadth of SanDisk's patent portfolio nor its 

licensing revenue show that Apple had knowledge of the specific patents-in-suit before this lawsuit 

was filed.”).

Thus, the FAC sets forth ample factual allegations to support Cisco’s knowledge of the Patentsin-Suit. 

2. The FAC Sufficiently Alleges Additional Facts Beyond Knowledge to 

Support a Finding That Cisco’s Infringement Was Willful or Egregious.

The FAC provides further allegations beyond just knowledge to support its claim that Cisco’s 

infringement is willful or egregious. In particular, the FAC explains that despite the extensive 

relationship and knowledge of the Patents-in-Suit, Cisco “has sold and continues to sell the accused 

products and services in complete disregard of Finjan’s patent rights.” FAC at ¶¶ 58, 73, 89, 104, 115. 

And the FAC specifically provides as a further support of this allegation that in late 2013, Cisco 

acquired SourceFire and integrated that company’s appliances and technology that are covered by 

Finjan’s patents, including the Patents-in-Suit, into Cisco’s own product lines. FAC at ¶ 9. These 

factual allegations are specific and more than enough to raise a reasonable expectation that discovery 

will reveal evidence to support an egregious case warranting enhanced damages. Twombly, 550 U.S. 

at 556; see also Nanosys, 2017 WL 35511, at *1 (applying Halo’s totality of circumstance approach 

and finding that the patentee’s allegations of willfulness constituted “more than mere knowledge and 

are, at this [motion to dismiss] stage, sufficient to support a claim for willful infringement.”) (internal 

quotations omitted). 

Cisco misses the mark by relying upon cases decided prior to the Supreme Court’s Halo case 

that apply a rigid approach to determining willfulness. Indeed, the only post-Halo case Cisco relies 

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upon, Nanosys, Inc. v. QD Vision, Inc. supports that Finjan’s FAC meets Halo’s lowered bar for 

alleging willful infringement claims. See Motion at 8 (citing Nanosys, 2017 WL 35511, at *1). In 

Nanosys, the Court found “egregiousness” of the infringement based on the allegations that the 

accused infringer’s founder was also one of the co-founders of Nanosys and that the accused infringer 

“availed itself of [the co-founder]’s knowledge of the claimed inventions and Nanosys’s technology to 

develop and market its infringing products.” Id. Here, Finjan pled far more than mere “interactions” 

between Finjan and Cisco, as Cisco baselessly claims. Motion at 2. Finjan’s FAC alleges that Cisco 

and Finjan had been in a longstanding relationship since the late 1990’s when the parties collaborated 

on cybersecurity together, and Cisco was allowed to implement Finjan’s technology and sit in Finjan’s 

board meetings where Cisco gained knowledge of Finjan’s patents and proprietary business and 

technical information. FAC at ¶¶ 9, 57, 72, 88, 103, 114. And yet, Cisco went ahead and incorporated 

SourceFire’s infringing technology into its own products. Id. at ¶ 9. This is the kind of betrayal of 

confidence that the Court in Nanosys based its decision in finding “egregiousness” there.

Instead of addressing Finjan’s specific factual allegations, Cisco asserts various red herrings in 

its Motion that the Court need not consider. For instance, Cisco claims that Finjan’s FAC does not 

allege that Finjan notified Cisco that its products infringe, related the patents to Cisco's products, 

proposed a license or accused Cisco of copying. However, none of this is necessary to plead or prove 

willfulness. Also, contrary to Cisco’s claims, Finjan is not required at the pleading stage to set forth 

the “details” of evidence such as the presentations referred to in the FAC (Motion at 3). See Twombly, 

550 U.S. at 555-56 (complaint “does not need detailed factual allegations) (citation omitted). Also, 

Cisco's argument that Finjan cannot allege willfulness of the ‘844 and ‘780 Patents because Cisco did 

not purchase the infringing Sourcefire technology until 2013 is nonsensical. The fact that Cisco knew 

of these patents and proceeded to purchase and sell products with the infringing Sourcefire technology 

is more than sufficient to establish willfulness. 

Thus, Finjan has more than adequately plead allegations from which egregiousness of Cisco’s 

actions can be found, including allegations regarding Cisco’s extensive relationship and collaboration 

with Finjan, Cisco’s knowledge of Finjan’s patents and covered products including specific patents 

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asserted here, and Cisco’s continued infringement, including by the purchase of SourceFire technology

and sale of infringing products (to this day4) despite knowledge of Finjan’s patents. 

3. Cisco’s Arguments Regarding the 2014 NDA Are Irrelevant and 

Unfounded.

In its Motion, Cisco argues that Finjan’s decision to amend its complaint after a meet and 

confer with Cisco somehow bears on the adequacy of Finjan’s willfulness claims in the FAC. As an 

initial matter, this argument incorrectly characterizes the NDA and provides a disingenuous account of 

the parties' communications leading up to this motion. As Finjan previously explained to Cisco during 

the parties’ meet and confers, Finjan disputed Cisco’s counterclaim that Finjan breached the NDA 

because Finjan never disclosed “Proprietary Information” under the NDA. For this reason, Finjan 

planned to file a motion to dismiss Cisco's counterclaim claim under Rule 12(b)(6) as not stating a 

plausible claim for relief. However, because Finjan had additional bases to establish Cisco’s pre-suit 

knowledge of the Patents-in-Suit, Finjan offered instead to amend its complaint to avoid burdening the 

Court and the parties with a dispute over Cisco’s counterclaim. Cisco has no basis to infer that the 

factual allegations set forth in the FAC for Cisco’s knowledge of the Patents-in-Suit are somehow 

weaker than those based on the NDA discussions set forth in Finjan’s original complaint. Rather, the 

parties’ positions regarding the NDA are irrelevant to the issue here – the sufficiency Finjan’s factual 

allegations in the FAC that are entirely independent from any discussions pursuant to the NDA. For 

the reasons set forth above, Finjan’s allegations in the FAC are more than adequate to state a claim for 

willfulness.

 4 The filing of Finjan’s original complaint may also be sufficient to establish Cisco’s knowledge of the 

Patents-in-Suit. As the Supreme Court recently held, the patent laws “allow[ ] district courts to punish 

the full range of culpable behavior . . . free from the inelastic constraints of the Seagate test.” Halo, 

136 S. Ct. at 1933-35. The Federal Circuit Court’s recent decision in Mentor Graphics Corp. v. EVEUSA, Inc., further confirms that courts no longer apply a bright-line rule that patentees must seek a 

preliminary injunction before seeking to present evidence of post-filing willful infringement. 851 F.3d 

1275, 1296 (Fed. Cir. 2017) (applying Halo and finding that there is no rigid rule that a patentee must 

seek a preliminary injunction in order to seek enhanced damages.) (internal quotations and citations 

omitted); see also Raytheon, 2017 WL 1362700, at *9 (“[p]ost-complaint knowledge is sufficient 

under Halo” to state the claims of willful infringement.) (citation omitted).

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B. In the Alternative, Finjan Should Be Allowed to Amend the Complaint

In the event that the Court determines that Finjan did not adequately plead willful infringement, 

Finjan requests leave to amend its Complaint to include additional allegations. See Nanosys, Inc. v. 

QD Vision, Inc., No. 16-cv-01957-YGR, 2016 WL 4943006, at *7-8 (N.D. Cal. Sept. 16, 2016) 

(granting leave to amend willfulness claim); see also Windy City Innovations, LLC v. Microsoft Corp., 

193 F. Supp. 3d 1109, 1117 (N.D. Cal. 2016) (same). Amendment is appropriate here because, as 

demonstrated above, Finjan established the plausibility of its claims. 

V. CONCLUSION

For the reasons stated above, Finjan respectfully requests that the Court denies Cisco’s motion 

to dismiss Finjan’s Willful Infringement Claims. 

DATED: May 10, 2017

Respectfully submitted,

By: /s/ Lisa Kobialka

Paul J. Andre (State Bar. No. 196585)

Lisa Kobialka (State Bar No. 191404)

James Hannah (State Bar No. 237978)

KRAMER LEVIN NAFTALIS

 & FRANKEL LLP

990 Marsh Road

Menlo Park, CA 94025

Telephone: (650) 752-1700

Facsimile: (650) 752-1800

pandre@kramerlevin.com

lkobialka@kramerlevin.com

jhannah@kramerlevin.com

Attorneys for Plaintiff

FINJAN, INC.

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