A U.S. District Court judge in San Diego, California transferred ESET LLC’s complaint seeking a declaratory judgement of non-infringement in a dispute with Finjan Holdings Inc. (FNJN) to federal court in San Francisco, where the case will be consolidated with Finjan's action filed there on July 1.
East Palo Alto, California-based Finjan, run by CEO Phil Hartstein, is one of the few patent licensing companies with a track record of winning awards in infringement actions in recent years. The cybersecurity and patent licensing company that this year won a $39.5 million award from Blue Coat Systems Inc. and a $15 million award against Sophos Inc. Others include Acacia Research Corp. (ACTG), which last week won a $22 million award against Apple Inc.
To be sure, Finjan and Acacia both face adversaries who are expected to appeal the awards they've won. Apple has been successful in throwing out a $368 million award as well as a $625.6 million award, both won by VirnetX Holding Corp. (VHC). The relatively small amount of the awards won by Finjan and Acacia may help them actually get paid.
Judge Cathy Ann Bencivengo’s decision means that the complaint East Palo Alto, California-based Finjan filed in federal court in San Francisco will now move forward. The action had been stayed by Judge James Donato while ESET’s complaint was heard.
Judge Bencivengo said factors such as, convenience, judicial economy, and the need to include all parties and all issues in a single action weighed in favor of dismissal of ESET’s action.
Moreover, the judge noted ESET’s original declaratory judgement complaint in the Southern District of California did not include its parent company, ESET, spol. s.r.o. and sought a declaration of non-infringement of only one of the six patents Finjan asserted against ESET and its parent, ESET SPOL in the Northern District of California.
“We are eager to prove the merits of our claims and seek fair compensation for ESET's continuing infringement of our patents,” said Julie Mar-Spinola, Finjan Holdings' Chief IP Officer in a statement.
Finjan said ESET's accused products include its small office protection products and business protection products, as well as ESET's home protection products, and ESET's accused services include ESET virus removal services and tune-up and virus remover service.
The cybersecurity technology licensing company filed its complaint against ESET on July 1, alleging ESET and its parent infringed U.S. Patent Nos. 6,154,844; 6,804,780; 7,975,305; 8,079,086; 9,189,621; and 9,219,755.
Finjan is seeking, among other things, a jury trial, damages of at least $44 million, injunctive relief, enhanced damages, and reasonable attorneys' fees and costs from ESET.
Also on July 1, Finjan filed a companion complaint against ESET for infringement of Finjan's European Patent No. EP 0965094 in the German Court of First Instance in Dusseldorf. In the German Action, ESET's answer is due Oct. 31, Finjan's Response is due Feb. 6, 2017, ESET's reply is due May 15, 2017, and the hearing is scheduled for July 6, 2017.
—To reach the reporter responsible for this story, please contact Dan Lonkevich at 707 318-7899 or email@example.com