Late last year, Northern District of California Judge James Donato posted a minute order apologizing “for the misunderstanding with respect to the claim construction briefing” in one of the longest-running patent cases in the country. In 2014, Finjan, Inc. filed suit against Palo Alto Networks as part of its sole litigation campaign, over a subset of its portfolio of anti-malware patents. After reassignment in 2021 from former Chief Judge Phyllis J. Hamilton (who took senior status), the claim construction hearing in this case was set for October 13, 2021 and then for April 11, June 1, September 7, and October 25 in 2023. It was reset again, for January 18, 2024, but that date was also canceled because the court believed Finjan had missed the deadline to file an opening brief. The apparent disconnect here arose because that brief was filed nowhere close to the six-weeks prior mark—it was filed roughly 120 weeks ago.

A late 2022 Federal Circuit decision overturned a Southern District of California ruling that had invalidated five Finjan, Inc. patents asserted against ESET as indefinite. Back before District Judge Cathy Ann Bencivengo went the case, the parties presenting their arguments over three of those patents to a jury earlier this month. On September 11, that jury returned its verdict, answering “no” to every question asked of it, other than what amount in damages should be awarded, which answer it left blank. Judgment has been entered (again) in favor of ESET.

On February 21, 2023, Finjan, Inc. paid Juniper Networks nearly $6M in attorney fees after the Federal Circuit summarily affirmed an award by Northern District of California Judge William Alsup. Per the parties, that case is “ready to be closed”. Still active, however, are separate suits that Finjan filed against ESET, Palo Alto Networks, Qualys, Rapid7, and Sonic Wall, each of which has had to reckon, to varying degrees, with a different Federal Circuit decision, this one reversing an errant claim construction that had led to the temporary invalidity of multiple Finjan patents, patents that are now back in the litigation game.

The Federal Circuit has overturned a Southern District of California ruling that invalidated five Finjan, Inc. patents asserted against ESET as indefinite. In a November 1 precedential decision, the appellate court held that District Judge Cathy Ann Bencivengo erred in construing a common claim term to include a limitation present only in certain family members that had been incorporated by reference into the challenged patents. The Federal Circuit explained that while a patent incorporated by reference can provide context when construing shared language, it cannot be used to change the scope of the claimed invention in the “host” patent.

Delaware District Judge Richard G. Andrews has entered final judgment for Comcast in litigation filed by NexStep Inc., the latest in a series of setbacks suffered by the inventor-controlled plaintiff since late last year. In September, just four days before a scheduled trial, Judge Andrews threw out NexStep’s entire damages theory as based on a “rule of thumb” without sufficient linkage to the facts of the case—and later tossed an alternate, last-minute theory with a similar flaw. With no damages on the table, the trial proceeded to a liability-only verdict of infringement via the doctrine of equivalents. In May, however, Judge Andrews overturned that verdict in a post-trial order—a decision that will now proceed to the Federal Circuit along with those other rulings.

Courts tend to give patent litigants significant flexibility in crafting a damages theory, with the traditional Georgia-Pacific factors offering a variety of entry points for determining a reasonable royalty. However, as one plaintiff recently learned the hard way, a damages theory must have a sufficient connection to the relevant facts to approximate the results of a hypothetical negotiation between the parties. As recounted by RPX last week, Delaware District Judge Richard G. Andrews threw out the original damages case offered by plaintiff NexStep just before a scheduled trial earlier in the fall, ruling that a proposed 50-50 split of the cost savings with defendant Comcast was improperly based on a “rule of thumb” without sufficient linkage to the facts of the case.

Before the Thanksgiving holiday in the US, District of Delaware Judge Richard G. Andrews excluded a fact-based damages theory put together by inventor-controlled NexStep Inc. on the eve of its September 2021 trial against Comcast. That damages theory was so last minute because Judge Andrews had previously stricken from NexStep’s actual damages expert report a cost-savings approach, based on the expert’s “arbitrary” opinion that Comcast would have been willing to split any purported cost savings equally with NexStep, a choice that Judge Andrews found was “without support by facts specific to these parties” and thus was based on a “fundamentally flawed premise”. This ruling—throwing out a last-ditch damages theory after an earlier cost-savings approach was rejected—might sound familiar, as it echoes the circumstances now at the center of Finjan, Inc.’s appeal of an award of roughly $6M in attorney fees in its litigation against Juniper Networks.

Northern California District Judge Beth Labson Freeman has granted a joint request to sever and stay litigation as to three of the five patents that Finjan Holdings, Inc. has accused Cisco of infringing since January 2017. The order also “terminates” without prejudice a Cisco motion for invalidity of those patents, based on the application of collateral estoppel to an order from the Southern District of California case filed by Finjan against ESET that invalidated as indefinite five of the six anti-malware patents there in suit. Finjan has sought reconsideration of that SoCal order. Meanwhile, trial between Finjan and Cisco over the two remaining patents is set to begin up north on June 4, 2021.

The second West Texas trial between VLSI Technology LLC and Intel has ended in a verdict of noninfringement for the chipmaker, capping off a closely watched proceeding before District Judge Alan D. Albright in which the plaintiff—a Fortress Investment Group LLC subsidiary—had sought damages totaling over $3B. That April 21 verdict comes just under two months after a second jury reached the opposite conclusion for another set of patents in a second case between the same parties, finding infringement and awarding $2B in damages.

Finjan Holdings, Inc. has seen a new setback in its Southern District of California lawsuit against ESET (3:17-cv-00183), roughly a year after the first wave of the COVID-19 pandemic ended a trial in the case three days in. On March 23, District Judge Cathy Ann Bencivengo invalidated five of the six anti-malware patents-in-suit, ruling that “convenient” yet unsupported testimony from the plaintiff’s expert on the meaning of the term “downloadable” failed to overcome the defendant’s argument that the patents’ claims are indefinite. That ruling follows another notable decision against Finjan in January, when Northern District of California Judge William Alsup largely granted Juniper Networks’s request for attorney fees due to the NPE’s litigation conduct in a case that he deemed a “fiasco”.