Fortinet, Inc. v. Forescout Technologies, Inc.

Background

Fortinet and Forescout compete in the cybersecurity market. Forescout filed counterclaims alleging that Fortinet infringed six Forescout patents and tortiously interfered with Forescout’s business relations. Forescout alleged that Fortinet publicized its patent-infringement lawsuit, told an industry news source that Forescout had wrongfully incorporated Fortinet’s intellectual property, and told existing and potential customers that Forescout was on uncertain financial ground.

Fortinet moved under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a pleading does not state a legally sufficient claim. Fortinet argued that four Forescout patents—the ‘489, ‘116, ‘278, and ‘764 Patents—claimed subject matter that was not eligible for patent protection under 35 U.S.C. § 101. Fortinet also argued that the tortious-interference counterclaim should be dismissed for lack of subject-matter jurisdiction, federal patent-law preemption, and failure to state a plausible claim.

Patent eligibility

The court applied the two-part test from Alice Corp. v. CLS Bank International. First, it considered whether the patent claims were directed to an abstract idea. If so, it considered whether the claims nevertheless contained an inventive concept—an unconventional combination or application that went beyond routine computer activity.

For the ‘489 Patent, which concerns identifying network intruders by returning specially crafted false data and detecting when the data is later used, the court found that the patent plausibly described a specific technological solution to a computer-network problem. The specification provided more detail than the claim language alone, including false network services and identifiers intended to improve accuracy and reduce false alarms. The court held that it could not decide on a motion to dismiss whether those techniques were merely conventional.

For the ‘116 Patent, which concerns classifying network-connected devices using data from an installed agent and traffic data from an external system, the court declined to find the claims abstract at the first Alice step. The specification suggested that traffic analysis could confirm or refine device classifications and therefore involved more than simply collecting and combining information. The court also found a plausible argument that the combination provided an inventive concept.

For the ‘278 Patent, which concerns detecting and classifying devices, applying compliance rules, scanning the devices, and taking action based on their compliance levels, the court agreed that the claims were directed to an abstract idea at the first Alice step. But it found factual questions about whether the claimed combination— including standards-based compliance, policy-based network access control, automated and continuous scanning, and device-specific customization—was an inventive concept rather than routine activity. The court therefore denied dismissal of the ‘278 Patent claims.

For the ‘764 Patent, which concerns post-connection authentication using client certificates and restricted network access, the court found that the claims were directed to improvements in computer-network functionality rather than merely an abstract idea performed on a generic computer. The claimed post-connection approach could provide limited access while authentication was completed, and the patent also described a “fail-open” configuration for certain authentication failures. The court concluded that the ‘764 Patent recited patent-eligible subject matter under both Alice steps.

Tortious interference

The court first held that it had jurisdiction over Forescout’s tortious-interference claim. The claim and the patent claims shared a common set of facts because determining whether Fortinet had valid patent rights and whether infringement occurred could affect whether Fortinet’s communications were wrongful.

The court then considered federal patent-law preemption. It held that statements publicizing patent rights or notifying potential infringers are generally governed by federal patent law, unless the patentholder acted in bad faith. The court treated Fortinet’s statements about alleged infringement and the strength of its patent position as potentially protected patent-related communications. However, statements that Forescout was on “uncertain ground financially” did not assert a patent right and were not preempted on that basis.

The court found it premature to decide whether Fortinet acted in bad faith. Forescout identified specific prior-art references and alleged that Fortinet filed its lawsuit shortly before Forescout’s planned acquisition and intended to interfere with the acquisition and customer relationships. Those allegations were sufficient at the pleading stage to raise questions about objective and subjective bad faith.

Finally, the court held that Forescout plausibly alleged intentional interference with prospective economic advantage. Although Forescout did not name individual customers, it alleged interference with current and prospective customers for the specific FortiNAC product. The court found that sufficient under the applicable pleading standard. The court did not find a viable claim for intentional interference with an existing contract because Forescout had not identified a specific enforceable contract.

Disposition

The court denied Fortinet’s motion to dismiss. The order states that it disposes of Docket No. 115. Judge Edward M. Chen signed the order on November 29, 2021.