1 2 UNITED STATES DISTRICT COURT 3 NORTHERN DISTRICT OF CALIFORNIA

4

5 FINJAN LLC, Case No. 14-cv-04908-PJH 6 Plaintiff,

7 v. ORDER DENYING MOTION TO

STRIKE AND DISMISS, AND

8 PALO ALTO NETWORKS, INC., REQUESTING CLARIFICATION RE

STIPULATION

9 Defendant. Re: Dkt. Nos. 120, 130 10

11 12 Plaintiff Finjan LLC has filed a motion to strike certain affirmative defenses and to 13 dismiss certain counterclaims of defendant Palo Alto Networks, Inc. See Dkt. 120. 14 Having read the parties’ papers and carefully considered their arguments and the 15 relevant legal authority, and good cause appearing, the court hereby DENIES the motion 16 to strike and dismiss (Dkt. 120) in its entirety. Although they are not binding, the court 17 finds persuasive the rulings by multiple other judges that the issues raised by Finjan’s 18 motion are more properly suited to a summary judgment motion, not a Rule 12 motion. 19 See, e.g., Finjan, Inc. v. Check Point Software Tech., Inc., 2019 WL 330912 at *6 (N.D. 20 Cal. Jan. 25, 2019) (“Finjan’s counterarguments speak to the weight of the evidence and 21 are not appropriate or persuasive at this stage in the litigation.”); Finjan, Inc. v. Juniper, 22 2018 WL 5454318 (N.D. Cal. Oct. 29, 2018); Finjan, Inc. v. Cisco Systems, Inc., 2018 23 WL 4361134 at *5 (N.D. Cal. Sept. 13, 2018) (“The court is unpersuaded by Finjan’s 24 arguments which may be more appropriately directed to a summary judgment motion”). 25 The hearing set for June 24, 2021 is VACATED. 26 The parties have also filed a “joint stipulation re dismissal of three patents-in-suit.” 27 See Dkt. 130. The stipulation explains that an opinion was issued by the U.S. District 1 invalid due to an indefinite claim term. Finjan has therefore agreed to dismiss three of 2 the patents in this suit which use the same claim term. 3 However, despite stating that the parties stipulate to dismissal of the ’780, ’926, 4 and ’494 patents from this case, the parties’ stipulation would leave intact certain 5 counterclaims related to the purportedly-dismissed ’494 patent. Specifically, the 6 stipulation states that counts 1, 2, 5, 6, 13, and 14 of the counterclaims are to be 7 dismissed, but does not make the same statement regarding count 15 of the 8 counterclaims or the portion of count 17 that relates to the ’494 patent. 9 Accordingly, the court requests clarification regarding the status of the 10 counterclaims related to the ’494 patent. The counterclaims cite the complaint as giving 11 rise to a justiciable controversy, but the complaint as it relates to the ’494 patent has now 12 been dismissed. The court is unclear as to why these counterclaims remain in the case, 13 and requests clarification from the parties on that issue. 14 Additionally, the parties’ proposed stipulation would have the court approve the 15 parties’ arrangement regarding tolling, which is an issue that the parties can agree upon 16 on their own without the need for court involvement. Moreover, the stipulation does not 17 make clear that Finjan would need to file a new action if the ’780 invalidity judgment is 18 reversed or vacated; it would not be permitted to revive this action once it is dismissed 19 and the case is closed. 20 For those reasons, the stipulation is DENIED in its current form. The court directs 21 the parties to file a revised stipulation that (1) clarifies the status of all of the ’494-related 22 counterclaims, and (2) removes the language regarding tolling and makes clear that 23 Finjan would need to file a new action if the ’780 invalidity judgment is reversed or 24 vacated on appeal. 25 IT IS SO ORDERED. 26 Dated: June 23, 2021 27 /s/ Phyllis J. Hamilton