Finjan, Inc. v. Cisco Systems, Inc., Case
No. 17-cv-00072-BLF (N.D. Cal. Sept. 13, 2018), reminds us that
representations to the PTAB can have consequences in district court
litigation, even outside the estoppel context.
In the patent infringement dispute, which concerned computer and
network security, defendant Cisco sought leave to amend its Answer
to add several affirmative defenses, including an allegation that
one of the patents in suit was unenforceable due to Finjan's
inequitable conduct in connection with a previous IPR proceeding.
Specifically, Cisco alleged that Finjan misrepresented to the PTAB
the inventorship of the patent during the previous IPR.
To plead inequitable conduct, a party must plead, with
specificity, that (1) an individual associated with the filing and
prosecution of a patent application made an affirmative
misrepresentation of a material fact, failed to disclose material
information, or submitted false material information; and (2)
