United States: Prior Art Take 2: Finjan And Sophos Gear Up For A Second Battle On Whether Prior Art Was Publicly Available

Last Updated: September 13 2016
Article by Gabriel M. Ramsey and Johanna Jacob

Order Denying Finjan, Inc.'s Motion for Summary Judgment, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick)

In a battle that likely felt like déjà vu for the parties, Finjan for the second time argued its patents were valid over Sophos's prior art because Sophos failed to produce sufficient evidence of public availability. The first time was in a 2010 Delaware action, when Finjan unsuccessfully made this same argument with respect to similar patents and similar prior art. Those patents were ultimately held invalid based on the prior art. In the present case, Sophos's invalidity case survived yet again. But Sophos could have had a more resounding victory had it adequately disclosed all of its prior art earlier in the case.

The Finjan patents-in-suit relate to software for protecting a computer against malware. Sophos's key prior art was a "combined product" comprising two components known as SWEEP and InterCheck. In the 2010 action, a jury found that the asserted claims of two Finjan patents were anticipated by the combination of particular versions of SWEEP and InterCheck, namely SWEEP v. 2.72 and InterCheck v. 2.11 ("2.72/2.11 Combination"). The Delaware district court, in denying Finjan's post-trial motion for judgment as a matter of law, found there was substantial evidence that the 2.72/2.11 Combination was on sale in the United States before the patents' priority date.

In the present action, Sophos's invalidity contentions listed other combinations of SWEEP and InterCheck versions, but not the 2.72/2.11 Combination.  Later, though, Sophos submitted an expert report that relied in part on the 2.72/2.11 Combination.  Sophos then moved for summary judgment that the 2.72/2.11 Combination was publicly available prior to a particular date and that it anticipated some or all limitations of the asserted claims of one of Finjan's patents, arguing that Finjan was collaterally estopped from asserting otherwise based on the result in the 2010 action.  Sophos also relied on collateral estoppel in opposing Finjan's summary judgment motion, by which Finjan sought a ruling that its patent was not invalid over any SWEEP-InterCheck combinations.

In a May 24, 2016 ruling, Judge Orrick rejected Sophos's collateral estoppel argument and struck the 2.72/2.11 Combination from the case because Sophos had failed to adequately disclose that combination in its invalidity contentions. Dkt. 201, at 12-17. Judge Orrick also ruled that collateral estoppel could not apply to other SWEEP-InterCheck combinations because the judgment in the 2010 action only decided the public availability of the 2.72/2.11 Combination. Judge Orrick stated that he could have granted Finjan's summary judgment motion with respect to all SWEEP-InterCheck combinations because Sophos did not present any opposition argument other than collateral estoppel. Nevertheless, he permitted the parties to submit supplemental briefing and evidence on the public availability of one of the SWEEP-InterCheck version combinations that Sophos had disclosed in its invalidity contentions.

With its supplemental briefing, Sophos submitted two declarations and contemporaneous evidence purportedly showing that the combination of SWEEP v. 2.72 and InterCheck v. 2.01 was publicly available. Although the "corroborating evidence could be stronger," Judge Orrick denied Finjan's motion for summary judgment because he felt Finjan's identification of weak points in Sophos's evidence was best made to a jury. It remains to be seen whether this second matchup between the parties will lead to a different result than in Delaware.

Sophos may have been able to put itself in a much stronger position in the current lawsuit had it adequately disclosed the 2.72/2.11 Combination in its invalidity contentions. It is always important to adequately disclose prior art in accordance with Patent L.R. 3-3, and failure to do so can have severe consequences. As Judge Orrick found, this requires disclosing prior art with a fair amount of specificity. It was not enough that Sophos had disclosed "Sophos SWEEP-InterCheck Product & Software, 1994-2005," a description that encompassed approximately 100 different version combinations. Sophos was allowed to pursue an invalidity defense only where it had identified combinations of specific SWEEP-InterCheck version numbers.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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