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Regulation360 (Might 11, 2020, 10:32 PM EDT) —
The Federal Circuit on Monday upheld a Patent Trial and Attraction Board determination that ESET LLC did not show Finjan pc antivirus patent is invalid, dismissing ESET’s argument that it confronted “undeserved prejudice” from the board, a declare Finjan referred to as “merely nonsense.”
In a one-line abstract affirmance after the case was submitted on the briefs Wednesday with out oral argument, the appeals court docket affirmed the PTAB’s January 2019 discovering that earlier patents cited by ESET don’t render Finjan’s patent invalid as apparent.
The case is the primary one through which the Federal Circuit has determined a case on the briefs after canceling oral arguments because of the pandemic after which issued a abstract affirmance. In all different circumstances the place the court docket has not heard arguments, it has issued a full opinion.
On attraction, ESET had argued that the board’s determination upholding the patent, considered one of a number of Finjan has accused it of infringing, was primarily based on an incorrect declare building, and sequence of occasions early within the case indicated that the PTAB judges have been biased in opposition to it.
ESET challenged the patent on two grounds, however the PTAB initially solely instituted evaluation on considered one of them and made clear that it thought ESET had a weak case on the opposite one.
However after the U.S. Supreme Court docket‘s SAS Institute determination in April 2018 held that the PTAB should situation a ultimate determination on all claims and grounds within the petition, the board instituted evaluation on all claims, however not earlier than asking ESET to contemplate dropping the bottom it had beforehand rejected.
ESET advised the Federal Circuit that it refused and was “searching for solely to make use of the [inter partes review] processes to which it was entitled.” It mentioned it did so “regardless of the danger of incurring the board’s wrath,” which it mentioned the board displayed by in the end upholding the patent.
ESET advised the appeals court docket that the board’s ultimate determination deserted the board’s authentic declare building for one superior by Finjan, a transfer ESET mentioned “resulted from undeserved prejudice” in opposition to ESET for its refusal to drop one of many grounds.
Finjan didn’t mince phrases in its appraisal of ESET’s argument in its response, telling the Federal Circuit that to simply accept it, the court docket must consider that the board “engaged in a conspiracy to institute trial on each floor requested within the petition simply in order that it might harbor a private grudge in opposition to ESET.”
“This baseless conspiracy concept is unprofessional, strains credulity, and is solely nonsense,” it mentioned.
The U.S. Patent and Trademark Workplace intervened within the case to defend the board, telling the Federal Circuit that it did nothing unsuitable in making clear to ESET that it believed one of many grounds was weak, and that its determination to evaluation all of the grounds within the petition truly favored ESET.
“ESET subsequently fails to ascertain any arbitrary motion by the board or determine any hurt on account of the board’s motion,” the workplace mentioned.
Because it affirmed the choice to uphold the patent with out opinion, the Federal Circuit didn’t opine on these points.
The patent is considered one of six that Finjan has accused ESET of infringing in a swimsuit within the Southern District of California. A jury trial within the case bought underway March 10 on 5 of the patents, excluding the one at situation in Monday’s determination, since that a part of the case was stayed pending the end result of the attraction.
However after three days of proceedings, throughout which Finjan mentioned it was searching for $40 million in damages, U.S. District Choose Cathy Ann Bencivengo referred to as a mistrial and dismissed the jury after President Donald Trump declared the COVID-19 pandemic a nationwide emergency.
The Federal Circuit has been canceling oral argument in lots of circumstances throughout the pandemic and reaching choices on the briefs. This case was distinctive in that the court docket did that and issued a abstract affirmance.
The court docket has lengthy had a observe of solely issuing abstract affirmances when oral argument is held, and offering written opinions when it isn’t, in order that the events have a possibility to listen to the court docket’s views somehow.
The abstract affirmance on this case signifies the court docket might not try this in all circumstances the place arguments have been canceled because of the pandemic.
Counsel for ESET and Finjan couldn’t instantly be reached for remark Monday. The USPTO doesn’t touch upon litigation.
The patent-in-suit is U.S. Patent No. 7,975,305.
U.S. Circuit Judges Alan Lourie, Richard Linn and Evan Wallach sat on the panel for the Federal Circuit.
ESET is represented by Nicola A. Pisano, Jose L. Patiño and Justin E. Grey of Eversheds Sutherland.
Finjan is represented by Paul Andre, James Hannah and Jeffrey Value of Kramer Levin Naftalis & Frankel LLP.
The USPTO is represented by Michael Forman, Thomas Krause, Farheena Yasmeen Rasheed and Maureen Donovan Queler of the company’s workplace of the solicitor.
The case is ESET LLC v. Finjan Inc., case quantity 19-1716, within the U.S. Court docket of Appeals for the Federal Circuit.
–Modifying by Abbie Sarfo.
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