Finjan LLC v. Eset, LLC

Case: 21-2093 Document: 52 Page: 1 Filed: 11/01/2022

United States Court of Appeals for the Federal Circuit ______________________

FINJAN LLC, Plaintiff-Appellant

v.

ESET, LLC, ESET SPOL. S.R.O., Defendants-Appellees ______________________

2021-2093 ______________________

Appeal from the United States District Court for the Southern District of California in No. 3:17-cv-00183-CAB- BGS, Judge Cathy Ann Bencivengo. ______________________

Decided: November 1, 2022 ______________________

JUANITA ROSE BROOKS, Fish & Richardson P.C., San Diego, CA, argued for plaintiff-appellant. Also represented by JASON W. WOLFF; ROBERT COURTNEY, Minneapolis, MN.

NICOLA ANTHONY PISANO, Eversheds Sutherland (US) LLP, San Diego, CA, argued for defendants-appellees. Also represented by JUSTIN EDWIN GRAY, JOSE L. PATINO, SCOTT PENNER, REGIS CALVIN WORLEY, JR. ______________________

Before PROST, REYNA, and TARANTO, Circuit Judges. Case: 21-2093 Document: 52 Page: 2 Filed: 11/01/2022 2 FINJAN LLC v. ESET, LLC

REYNA, Circuit Judge. Appellant Finjan, Inc. appeals the U.S. District Court for the Southern District of California’s grant of summary judgment of invalidity. The district court construed the claim term “Downloadable” in the asserted patents to be restricted to “small” executable or interpretable applica- tion programs based on the definition of “Downloadable” provided by a patent in the same family that was incorpo- rated by reference into the asserted patents. The district court determined that the asserted claims were indefinite and thus invalid. We reverse the district court’s claim con- struction, vacate its grant of summary judgment, and re- mand for further proceedings. BACKGROUND In 2017, Finjan, Inc. (“Finjan”) filed suit against ESET, LLC (“ESET”) in the Southern District of California, as- serting that ESET infringed U.S. Patent Nos. 6,154,844 (“the ’844 Patent”); 6,804,780 (“the ’780 Patent”); 8,079,086 (“the ’086 Patent”); and 9,189,621 (“the ’621 Patent) (collec- tively, “the asserted patents” or “the patents-at-issue”). Finjan, Inc. v. ESET, LLC, 2017 WL 5501338, at *¹ (S.D. Cal. Nov. 14, 2017) (Claim Construction Order). The as- serted patents, which are all expired, are part of a family of patents directed to systems and methods for detecting computer viruses in a “Downloadable” through a security profile. See, e.g., ’844 Patent col. 1 ll. 23–27. Finjan claims priority for each of the asserted patents back to provisional application No. 60/030,639 (“the ’639 application”), filed November 8, 1996. The family’s chain of priority and in- corporation by reference relationships are as follows:

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J.A. 13. On September 25 and 26, 2017, the district court held a Markman hearing. Claim Construction Order at *1. The court focused on the meaning of the term “Downloadable” and requested further briefing on that term.

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“Downloadable” appears in the claims of all asserted patents. The ’639 application first defines “Downloadable” as “an executable application program which is automati- cally downloaded from a source computer and run on the destination computer. Examples of Downloadables include applets designed for use in the Java™ distributing envi- ronment . . . .” J.A. 1863. Non-asserted U.S. Patent Nos. 6,167,520 (“the ’520 Pa- tent”) and 6,480,962 (“the ’962 Patent”) define Down- loadables as “applets” and as “a small executable or interpretable application program which is downloaded from a source computer and run on a destination com- puter.” ’520 Patent col. 1 ll. 31–34; ’962 Patent col. 1 ll. 38–41 (emphasis added). Two of the asserted patents, the ’844 and ’780 patents, define a Downloadable as “an exe- cutable application program, which is downloaded from a source computer and run on the destination computer.” ’844 Patent col. 1 ll. 44–47; ’780 Patent col. 1 ll. 50–53. The patents list as examples Java applets and JavaScripts scripts. Id. Both patents incorporate the ’520 patent by reference. ’844 Patent col. 1. ll. 14–18; ’780 Patent col. 1. ll. 19–23. The three remaining asserted patents, the ’086, ’621, and ’755 patents, do not include a definition of “Down- loadable” but incorporate the ’962 and ’780 patents by ref- erence. ’086 Patent col. 1. ll. 24, 34–35; ’621 Patent col. 1 ll. 40–41, 58; ’755 Patent col. 1. ll. 44, 58–59. The district court construed the term “Downloadable” to mean “a small executable or interpretable application program which is downloaded from a source computer and run on a destination computer.” Claim Construction Order at *2 (emphasis added). The court based its construction on the incorporation by reference of the ’520 Patent. 1 Id.

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(Fed. Cir. 2020). The Ninth Circuit reviews a grant of sum- mary judgment de novo. Id. (citation omitted). “Summary judgment is proper when, drawing all justifiable inferences in the non-movant’s favor, ‘there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.’” Azko Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1338–39 (Fed. Cir. 2016) (quot- ing Fed. R. Civ. P. 56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, (1986)). The Court reviews a district court’s claim construction de novo and its underlying factual determinations for clear error. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 325–26, (2015). “Whether and to what extent material has been incorporated by reference into a host document is a question of law.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000) (citing Quaker City Gear Works, Inc. v. Skil Corp., 747 F.2d 1446, 1453–54 (Fed. Cir. 1984)). “We review [a] district court’s indefiniteness determi- nation de novo.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1317 (Fed. Cir. 2015) (citation omit- ted). A claim is invalid for indefiniteness under 35 U.S.C. § 112 if its language, when read in light of the specification and prosecution history, fails to inform skilled artisans about the scope of the invention with reasonable certainty. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909–911 (2014). DISCUSSION Finjan makes two arguments on appeal: (1) the district court erred by construing the term “Downloadable” to be limited to “small” executable application programs and (2) the district court erred by finding that the word “small” rendered the claims indefinite and thus, invalid. We ad- dress each issue in turn below.

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Finjan argues that the district court erred in its con- struction and that the word “small” should not be read into the definition of “Downloadable.” Appellant’s Br. 27–28. We agree. Claims must be read in light of the specification. Phil- lips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). That includes any patents incorporated by refer- ence. Patents that are incorporated by reference are “effec- tively part of the host [patents] as if [they] were explicitly contained therein.” X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in original) (citations omitted). Incorporation by reference of a patent “renders ‘the entire contents’ of that patent’s disclosure a part of the host patent.” Id. at 1363 (citing Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed. Cir. 1997); Manual of Pa- tent Examining Procedure § 608.01(p) (6th ed. 1996)). Ac- cordingly, definitions in any incorporated patents or references are a part of the host patent. Yet, “incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent.” Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1553 (Fed. Cir. 1996), abrogated on other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en banc). Ra- ther, the disclosure of the host patent provides context to determine what impact, if any, a patent incorporated by reference will have on construction of the host patent claims. See, e.g., X2Y Attenuators, 757 F.3d at 1363. “The disclosures of related patents may inform the construction of claim terms common across patents, but it is erroneous to assume that the scope of the invention is the same such that disclaimers of scope necessarily apply across pa- tents. . . .” Id. at 1366 (J. Reyna, concurring). The district court erred because it viewed the differing definitions throughout the patent family as competing and

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determined that the asserted patents should be limited to the most restricted definition of the term. We disagree. Here, it is not necessary to limit the asserted patents be- cause the two definitions are not competing. The use of a restrictive term in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference. Modine Mfg., 75 F.3d at 1553 (finding that a grandparent patent defining “relatively small” to be “0.07 inches or less” did not incorporate this definition into the parent and child applications that deleted the definition). The ’520 Patent, which defines a Downloadable as “small,” represents a subset of the patent family claiming an invention capable of downloading only small executable or interpretable application programs. That is because the disclosure in the ’520 Patent focuses on applets as small executable or interpretable application programs. See, e.g., ’520 Patent col. 1 ll. 31–32. The ’520 Patent summarizes the invention as “a system for protecting a client from hos- tile Downloadables. The system includes security rules . . . and security policies defining the appropriate re- sponsive actions to rule violations such as terminating the applet, limiting the memory or processor time available to the applet, etc.” ’520 Patent col. 1 l. 66 to col. 2 l. 6 (empha- ses added). The definition of “Downloadable” that does not include a size requirement refers to executable or interpretable ap- plication programs of all sizes, including, but not limited to, “small” executable or interpretable application pro- grams. Because these two definitions can exist in harmony within the patent family, we do not necessarily have to ap- ply the ’520 Patent’s definition to the asserted patents. The ’844 and ’780 Patents describe a Downloadable as “an executable application program, which is downloaded from a source computer and run on the destination com- puter.” ’844 Patent col. 1 ll. 45–47; ’780 Patent col. 1 ll.

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51–53. This definition is not limited to “small” executable application programs. The ’844 and ’780 Patents list exam- ples of Downloadables, including “JavaTM applets,” “Ac- tiveXTM controls,” “JavaScriptTM scripts,” and “Visual Basic scripts.” ’844 Patent col. 1 ll. 63–65; ’780 Patent col. 2 ll. 3–4. These examples expand upon the sole example listed in the ’520 Patent—applets. The ’844 and ’780 Patents de- fine Downloadable to contemplate a broader functionality of the claimed invention not limited to downloading only “small” executable application programs, and the examples in the ’844 and ’780 Patents provide further support. Hence, in the ’844 and ’780 Patents, “Downloadable” should not be construed to include the term “small.” As noted, the ’086, ’621, and ’755 Patents do not ex- pressly define Downloadable but incorporate patents by reference that include both the ’520 Patent’s restricted def- inition of Downloadable with the word “small” and the broader definition without it. Similar to the ’844 and ’780 Patents, the ’086, ’621, and ’755 Patents include examples expanding upon the ’520 Patent’s focus on “small” executa- ble or interpretable application programs like applets as well. For example, the ’086 patent recites: “JavaTM applets and JavaScript™ scripts, ActiveX™ controls, Visual Basic, add-ins, and/or others . . . Trojan horses, multiple com- pressed programs such as zip or meta files.” ’086 Patent col. 2 ll. 3–9; ’621 Patent col. 2 ll. 36–40; ’755 Patent col. 2 ll. 36–40. Based on the context provided by the ’086, ’621, and ’755 Patents, the term “Downloadable” should not be restricted to “small” executable application programs. In sum, the term “Downloadable” as used in the ’844, ’780, ’086, ’621, and ’755 Patents means “an executable or interpretable application program, which is downloaded from a source computer and run on the destination com- puter.” We therefore reverse the district court’s claim con- struction.

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Because we reverse the district court’s claim construc- tion, we need not to review the entirety of the district court’s determination of invalidity due to indefiniteness. CONCLUSION We reverse the district court’s claim construction and determine that Downloadable should be construed as “an executable or interpretable application program, which is downloaded from a source computer and run on a destina- tion computer.” We vacate the district court’s grant of sum- mary judgment based on invalidity due to indefiniteness and remand for further proceedings consistent with our claim construction. REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED COSTS No costs.

Footnotes

[1] The asserted patents also incorporate the ’962 Pa- tent by reference. The ’962 Patent is substantially similar FINJAN LLC v. ESET, LLC 5 at *1–2. The district court reasoned that the patent family contained “somewhat differing definitions” that “can be reconciled.” Id. at *1. The court found that based on the definitions and examples included throughout the various patents in the family tree, the term Downloadable in the patents-at-issue should be construed to include the word “small” as defined in the ’520 Patent. Id. at *2. On April 23, 2019, ESET moved for summary judgment of invalidity based on indefiniteness. Finjan, Inc. v. ESET, LLC, 2021 WL 1241143, at *1 (S.D. Cal. Mar. 29, 2021). The court held oral argument and determined that there were genuine disputes of material fact over what a skilled artisan would have understood “Downloadable” to mean as of the effective filing date in 1997. Id. The court denied the motion without prejudice. On March 10, 2020, the case went to trial. Three days later, the court vacated the remainder of the trial due to California’s COVID-19 stay-home order. Id. On August 21, 2020, ESET renewed its motion for sum- mary judgment in light of the testimony from Finjan’s ex- pert during the trial. Id. On March 29, 2021, the district court granted the motion, finding the asserted patents in- definite based on the word “small” as used in the court’s construction of “Downloadable.” Id. at *5. Finjan timely appealed. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). STANDARD OF REVIEW The Federal Circuit reviews a district court’s grant of summary judgment under the standard applied in the re- spective regional circuit, in this case the Ninth Circuit. See Neville v. Found. Constructors, Inc., 972 F.3d 1350, 1355 to the ’520 Patent. Reference to the ’520 Patent definition throughout the opinion also applies to the ’962 Patent.