Coronavirus Forces Mistrial In Finjan Patent Case

By Jack Queen
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Law360 (March 16, 2020, 10:38 PM EDT) -- A California federal court cited the "extraordinary circumstances" of the coronavirus pandemic in declaring a mistrial in a patent infringement lawsuit on Monday after three days of proceedings, pausing the fight between software makers Finjan and ESET until the national emergency has passed.

Israeli software maker Finjan accused rival ESET of infringing a half-dozen of its patents for anti-malware software, but the dispute is on hold indefinitely as courts across the country grapple with the impacts of COVID-19 by restricting building access, delaying proceedings and even shuttering entirely.

"With the agreement of counsel, the court deems a mistrial based upon the current state of extraordinary circumstances due to the Coronavirus/COVID-19 Pandemic," U.S. District Judge Cathy Ann Bencivengo said. "The court will contact counsel upon the conclusion of the national state of emergency for further scheduling of court proceedings."

An ESET attorney told Law360 the court made the right call.

"No doubt ESET was disappointed by the need to discontinue trial in view of the coronavirus concerns, however, the health and safety of the San Diego community, including the jurors, is paramount," Nicola Pisano of Eversheds Sutherland said. "ESET looks forward to resolving this matter seasonably when the current health crisis abates."

Attorneys for Finjan did not immediately respond to requests for comment.

Finjan claimed in its July 2016 complaint that ESET infringed six of its patents for software, including ThreatSense, LiveGrid and Exploit Blocker, which detect and protect computer systems against malicious code. The company demanded "no less than $40 million" in damages.

Finjan's patents cover software that uses behavioral analysis to monitor operating systems and filter out malware, according to the complaint. The company claimed several ESET products, including the EST Small Business Security Pack.

ESET shot back with claims that Finjan would only license the patents-in-suit to ESET if the company also took a license for a European patent, saying Finjan was using the lawsuit and a separate patent action in Germany to broaden the geographic scope of its U.S. patents.

ESET also claimed Finjan misled examiners at the U.S. Patent and Trademark Office by withholding information about a Federal Circuit decision affirming that its U.S. Patent No. 9,189,621 patent was unenforceable.

Both parties filed a total of 28 complex motions as the case ground on, building up a mountain of paper that Judge Bencivengo described as "exhausting" in an October 2019 order, when she ruled that all the disputes should go before a jury.

"The court provided no limitations regarding the number of dispositive motions that could be filed or total page limitations," Judge Bencivengo said. "The parties took extreme advantage of this … putting before the court an extraordinary number of issues."

The patents in suit are U.S. Patent No. 9,189,621; 9,219,755; 8,079,086; 7,975,305; 6,804,780 and 6,154,844.

Finjan is represented by Benu C. Wells, Paul J. Andre, Aaron M. Frankel, Cristina L. Martinez, Gregory C. Proctor, Hannah Y. Lee, Hien K. Lien, James R. Hannah, Kristopher B. Kastens, Linjun Xu, Lisa Kobialka, Michael H. Lee, Phuong D. Nguyen and Yuridia Caire of Kramer Levin Naftalis & Frankel LLP.

ESET is represented by Nicola A. Pisano, Christopher C. Bolten, Jose L. Patiño, Justin E. Gray, Kadmiel E. Perez, Regis C. Worley Jr. and Scott A. Penner of Eversheds Sutherland.

The case is Finjan Inc. v. ESET LLC et al., case number 3:17-cv-00183 in U.S. District Court for the Southern District of California.

--Editing by Haylee Pearl.

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