Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 1 of 21
`
`
`
`PAUL ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`
`
`Plaintiff,
`
`
`FINJAN, INC., a Delaware Corporation,
`
`
`
`v.
`
`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`Defendant.
`
`
`
`Case No.: 3:17-cv-05659-WHA
`
`PLAINTIFF FINJAN, INC.’S REPLY CLAIM
`CONSTRUCTION BRIEF
`
`Date: TBD
`Time: 8:00 a.m.
`Courtroom: Courtroom 12, 19th Floor
`Before:Hon. William Alsup
`
`
`
`
`
`
`FINJAN’S REPLY CLAIM CONSTRUCTION BRIEF
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`CASE NO. 3:17-cv-05659-WHA
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`I.
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 2 of 21
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`TABLE OF CONTENTS
`ARGUMENT .................................................................................................................... 1
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`A.
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`Terms in the ‘633 Patent ................................................................................................... 1
`
`Term 1.
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` “mobile protection code” (‘633 Patent, Claims 1, 8, 14 and 19) .......................... 1
`
`Term 2.
`
` “A computer program product, comprising a computer usable medium
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`having a computer readable program code therein, the computer
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`readable program code adapted to be executed for computer security,
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`the method comprising:” (‘633 Patent, Claim 14) ................................................ 3
`
`Term 3.
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` “information-destination/downloadable-information destination”
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`(‘633 Patent, Claims 1, 8, 14 and 19) ................................................................... 5
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`Term 4.
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` “if the downloadable-information is determined to include executable
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`code / determining, by the computer, whether the downloadable
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`information includes executable code” (‘633 Patent, Claims 1 and 8) ................. 7
`
`B.
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`Terms in the ‘844 Patent ................................................................................................... 8
`
`Term 5.
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` “inspector” (‘844 Patent, Claims 1, 15 and 41) ........................................ 8
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`Term 6.
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` “before a web server makes the Downloadable available to
`
`web clients” (Claims 1, 15, and 41) ........................................................ 10
`
`C.
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`Terms in the ‘926 Patent ................................................................................................. 11
`
`Term 7.
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` “a transmitter coupled with said receiver, for transmitting
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`the incoming Downloadable and a representation of the
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`retrieved Downloadable security profile data to a
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 3 of 21
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`destination computer, via a transport protocol transmission”
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`(‘926 Patent, Claim 22) ...................................................................... 11
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`D.
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`Terms in the ‘154 Patent ................................................................................................. 13
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`Term 8.
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`“A content processor (i) for processing content received
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`over a network the content including a call to a first
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`function, and the call including an input, and (ii) for
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`invoking a second function with the input, only if a security
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`computer indicates that such invocation is safe” (‘154
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`Patent, Claim 1) ..................................................................................................13
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`Term 9
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`“invoking a second function with the input”
`
` (‘154 Patent, Cl. 1) .............................................................................................14
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`Term 10.
`“safe” (‘154 Patent, Claim 1) .........................................................15
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`Conclusion ...................................................................................................................... 15
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`
`
`II.
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`
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 4 of 21
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`
`
`Federal Cases
`
`TABLE OF AUTHORITIES
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`
`
`Page(s)
`
`Accent Packaging, Inc. v. Leggett & Platt, Inc.,
`707 F.3d 1318 (Fed. Cir. 2013)................................................................................................... 12, 14
`
`Aventis Pharms. Inc. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013).................................................................................................. passim
`
`Avid Tech., Inc. v. Harmonic, Inc.,
`812 F.3d 1040 (Fed. Cir. 2016)................................................................................................... 7, 8, 9
`
`In re Beauregard,
`53 F.3d 1583 (Fed. Cir. 1995)......................................................................................................... 4, 5
`
`Cadence Pharm. Inc. v. Exela PharmSci Inc.,
`780 F.3d 1364 (Fed. Cir. 2015)......................................................................................................... 12
`
`CBT Flint Partners, LLC v. Return Path, Inc.,
`654 F.3d 1353 (Fed. Cir. 2011)....................................................................................................... 3, 4
`
`Edwards Life Sciences LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009)......................................................................................................... 15
`
`EPOS Techs. Ltd. v. Pegasus Techs. Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014)......................................................................................................... 12
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`879 F.3d 1299 (Fed. Cir. 2018)......................................................................................................... 10
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 13-cv-03999-BLF, 2014 WL 5361976 (N.D. Cal. Oct. 20, 2014)................................... 3, 4, 5, 6
`
`Finjan, Inc. v. Cisco Systems, Inc.,
`No. 17-cv-00072-BLF, 2018 WL 3537142 (N.D. Cal. July 23, 2018) ............................................. 11
`
`Finjan, Inc. v. Proofpoint, Inc.,
`No. 13-cv-05808-HSG, 2015 WL 7770208 (N.D. Cal. Dec. 3, 2015) ......................................... 5, 15
`
`IPXL Holdings, LLC v. Amazon.com, Inc.,
`430 F.3d 1377 (Fed. Cir. 2005)....................................................................................................... 3, 5
`
`Medtronic Inc. v. Boston Scientific Corp.,
`695 F.3d 1266 (Fed. Cir. 2012)......................................................................................................... 12
`
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 5 of 21
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`
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`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) .................................................................................................................... 3, 5
`
`Novo Indus., L.P. v. Micro Molds Corp.,
`350 F.3d 1348 (Fed. Cir. 2003)........................................................................................................... 4
`
`Rembrandt Wireless Tech LP v. Samsung Elecs. Co., Ltd.,
`853 F.3d 1370 (Fed. Cir. 2017)......................................................................................................... 15
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)........................................................................................................... 9
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)............................................................................................................. 2
`
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 6 of 21
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`Finjan’s constructions reflect the true meaning of the claim terms in view of the intrinsic record
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`as understood by a person having ordinary skill in the art (“PHOSITA”) at the time of the invention.
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`In contrast, Juniper’s newly minted constructions ignore the plain meaning of the terms and try to
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`change the meaning of the terms from what was written, a clear violation of tenants of claims
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`construction that the “plain and ordinary meaning” of the terms as written should apply. Juniper
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`improperly imports limitations by mischaracterizing the prosecution history and raising arguments that
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`have already been rejected by other Judges in this District. Therefore, the Court should adopt Finjan’s
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`proposed constructions and reject Juniper’s constructions.
`I. ARGUMENT
`
`A.
`
` Terms in the ‘633 Patent
`
`Term 1.
`
`
`
`“mobile protection code” (‘633 Patent, Claims 1, 8, 14 and 19)
`
`Juniper’s Proposed Construction
`Finjan’s Proposed Construction
`Code that itself, at runtime, monitors or
`Code that, at runtime, monitors or intercepts
`intercepts actually or potentially malicious
`actually or potentially malicious code operations
`without modifying the executable code
`code operations
`The parties’ dispute concerning mobile protection code (“MPC”) centers on the language: (1)
`“without modifying the executable code” and (2) “itself.” First, Finjan’s proposed construction
`includes the limitation of “without modifying the executable code,” because that is consistent with the
`
`claim language, how the patent is described on the background section as being distinguished from
`
`other art in the field, and the intrinsic evidence as explained in Finjan’s Opening Brief. Br. at 4-5.
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`Further, this construction has already been adopted in this District by Judge Gilliam and Judge
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`Freeman. Id. Indeed, Juniper appears to concede that this understanding of “without modifying the
`
`executable code” has been adopted by several courts, and does not provide any basis for omitting the
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`phrase “without modifying the executable code.” Opp. Br. at 4-5.
`Second, Finjan’s proposed construction does not include the term “itself” because the term
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`“itself” adds confusion and conflicts with the claim language. As explained in Finjan’s Opening Brief,
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`MPC typically does not run on a computer by “itself,” as there is always—and this is true for every
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`program run on a computer system—intermediary programs such as the operating system, drivers, and
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 7 of 21
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`other programs. ‘633 Patent at Col. 8, ll. 27-46. Juniper concedes that MPC must interact with other
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`code when monitoring or intercepting potentially malicious code. Opp. Br. at 5. In its Opposition,
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`Juniper tries to walk away from what it meant from including the term “itself.” Now, Juniper contends
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`that “itself” imports even more limitation and couches its limitation in the negative, that the inclusion
`of this language was intended to make clear that this term imputes that code that does not “directly do
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`any monitoring or intercepting––such as the operating system or configurations parameters––are not
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`MPC within the meaning of the claim.” Juniper’s argument confirms that its construction is flawed
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`because it fails to explain what it means for “the code itself” to directly monitor or intercept potentially
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`malicious code. For example, the operating system, which is used by every computer program to
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`affect all actions in the computer system, interacts with MPC. Juniper’s construction will confuse a
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`jury on what it means for the code “itself” to directly monitor for malicious code when the operating
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`system is used by MPC to affect such actions. Neither the claims nor the specification require that
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`MPC “itself,” without interaction with other code, to monitor or intercept potentially malicious code.
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`Thus, Juniper’s construction of “itself”, a construction within a construction, adds additional terms for
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`the factfinder––not clarity.
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`The lack of clarity in Juniper’s construction is further demonstrated in the portion of the
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`specifications that Juniper quotes to explain what it means to “directly” monitor Downloadables.
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`Juniper contends that “the MPC sandbox is code that is actually monitoring and intercepting the
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`operations of the Downloadable being analyzed.” Opp. Br. at 5. The specification explains, however,
`that “[p]rotection engine processing also enables MPC to effectively form a protection ‘sandbox’
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`around Downloadable . . . to monitor Downloadable.” See ‘633 Patent at Col. 17, ll. 28-42. In other
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`words, Juniper admits MPC interacts with other code (protection monitoring engine) to form a sandbox
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`and it is not clear where the line Juniper is asking to draw between directly or indirectly.
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`Additionally, as explained in Finjan’s Opening Brief, there is nothing in the claim that would
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`limit MPC to only operating in this manner. See Claims 1, 8, 14, and 19; Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (when construing claims, courts “look to the
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`words of the claims themselves.”) The ‘633 Patent specifically describes how monitoring and
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 8 of 21
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`intercepting is performed by the MPC in conjunction with other resident programs (like the operating
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`system). See, e.g., ‘633 Patent at Col. 18, ll. 1-24 (describing how the operating system initializes the
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`MPC).
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`As such, Juniper’s proposed inclusion of “code by ‘itself’” should be rejected and the Court
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`should adopt Finjan’s proposed construction.
`Term 2.
`“A computer program product, comprising a computer usable medium
`
`having a computer readable program code therein, the computer readable
`program code adapted to be executed for computer security, the method
`comprising:” (‘633 Patent, Claim 14)
`
`Finjan’s Proposed Construction
`The typographical error in the preamble is corrected to
`read:
`
`Juniper’s Proposed Construction
`IPXL
`Indefinite
`under
`(mixed
`statutory classes) and/or Nautilus
`
` A
`
` computer program product, comprising a computer
`usable medium having a computer readable program
`code therein, the computer readable program code
`adapted to be executed for computer security,
`comprising: providing a system…
`Finjan asks that the typographical error in this claim be corrected so that the words “the
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`method” are removed. Juniper incorrectly contends that this Court has no authority to correct the
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`claim language. To the contrary, the Federal Circuit has expressly held that a district court can correct
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`obvious errors in a patent claim if “(1) the correction is not subject to reasonable debate based on
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`consideration of the claim language and the specification and (2) the prosecution history does not
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`suggest a different interpretation of the claims.” CBT Flint Partners, LLC v. Return Path, Inc., 654
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`F.3d 1353, 1358 (Fed. Cir. 2011) (reversing the district court’s summary judgment of invalidity based
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`on indefiniteness because the court could have corrected an obvious error within the claim) (citing
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`Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003) (establishing a two-part
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`test to correct obvious errors). As such, this Court has the authority to correct a typographical error.
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`Indeed, Courts in this District have already found that this obvious error can be corrected as
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`Finjan requests here. Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-cv-03999-BLF, 2014 WL 5361976, at
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`*7-8 (N.D. Cal. Oct. 20, 2014). Juniper incorrectly contends that the Court in Blue Coat did not
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`determine whether the preamble contained a correctable error and instead the “sole controversy over
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`the preamble is whether it is sufficiently definite.” To the contrary, the Court in Blue Coat Systems
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`specifically confirmed there was a typographical error that should be corrected and the definiteness
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`issue would be deferred to summary judgment:
`the Court accepts Finjan’s proposal to correct the typographical error in
`the preamble to Claim 14 of the ’633 Patent so that it shall read: “A
`computer program product, comprising a computer usable medium having
`a computer readable program code therein, the computer readable program
`code adapted to be executed for computer security, comprising: providing
`a system, ...”. Decision on Blue Coat’s indefiniteness argument will be
`deferred until summary judgment….
`2014 WL 5361976, at *8 (emphasis added). In other words, the Court determined that Claim 14 can
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`be corrected, as Finjan proposes here.
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`Juniper’s contention that Finjan does satisfy the Novo test because the proposed correction is
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`subject to reasonable debate is conclusory and hinges on a flawed reading of the law. In CBT Flint
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`Partners the Federal Circuit found that the claims could be corrected even where there were three
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`reasonable alternative approaches to correct the claims. The Federal Circuit distinguished Novo where
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`“corrections were substantively significant and required guesswork as to what was intended by the
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`patentee in order to make sense of the patent claim.” 654 F.3d at 1359. That is not the case here,
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`where Finjan only asks that two words that are no relevant to the rest of the claim be removed.
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`In fact, the correction is obvious in light of the language of the claims, specifications and
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`prosecution history. For example, during prosecution, the applicant amended the claim to remove and
`replace the entire preamble, but inadvertently left in the word “method.” Carson Decl.1 Ex. 9 at p. 6.
`As corrected, Claim 14 sets forth a Beauregard claim (directed to computer usable medium) that is
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`understandable to one of ordinary skill in the art (and would apply to dependent claims). A
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`Beauregard claim—named after In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)—is a claim to a
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`computer readable medium (e.g., a disk, hard drive, or other data storage device) containing program
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`instructions for a computer to perform a particular process. Such claims are well known and use
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`functional language–hence the typographical error in referring to “method.” Indeed, during
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`proceedings before the PTAB, neither the PTAB nor Dr. Rubin (Juniper’s expert for early summary
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`1 Declaration of Rebecca Carson in Support of Juniper’s Reply Claim Construction Brief.
`4
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 10 of 21
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`judgment) disputed that this term was indefinite in IPR. See generally, Kastens Decl.2 Ex. 6 (IPR
`2015-01974, Final Written Decision); id., Ex. 8 (Rubin Decl.) at pages 63, 67-68 (not disputing
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`whether the term is indefinite). Under Nautilus, Judge Freeman concluded that this term, as corrected,
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`“can be reasonably interpreted to set forth a computer readable program code that, when executed,
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`performs the limitations of the claim.” 2014 WL 5361976, at *7-8 (citing Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 134 S. Ct. 2120, 2124 (2014)). As such, Juniper’s contention that this Court cannot
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`correct his obvious error is without merit.
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`Additionally, Juniper does not contend that the corrected claim is invalid under IPXL. Opp. Br.
`
`at 9; IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005). Indeed, this
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`result would not change even without such correction because unlike the claim at issue in IPXL, this
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`preamble does not contain mixed system method claims. Rather, it is a Beauregard claim that
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`describes “capability” of the code to be executed for computer security. Thus, similar to MasterMine
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`Software, Inc. v. Microsoft Corp., where the Federal Circuit distinguished IPXL and the use of function
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`language, this Court should also find this claim not indefinite. 874 F.3d 1307, 1316 (Fed. Cir. 2017).
`Term 3.
`“information-destination/downloadable-information destination” (‘633
`
`Patent, Claims 1, 8, 14 and 19)
`
`Finjan’s Proposed Construction
`
`Juniper’s Proposed
`Construction
`User/client device
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`Plain and ordinary meaning.
`
`The plain and ordinary meaning of the terms “information-destination”
`and “downloadable-information destination” is a device or process that
`is capable of receiving and initiating or otherwise hosting a mobile
`code execution.
`Finjan’s proposed construction reflects the plain and ordinary meaning for “information-
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`destination of the downloadable-information” and “downloadable- information destination.” See ‘633
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`Patent at Col. 7, ll. 58–62. Further, Finjan’s proposed construction is consistent with this Court’s prior
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`construction of this term in the Proofpoint action. See Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-
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`05808-HSG, 2015 WL 7770208, at *5 (N.D. Cal. Dec. 3, 2015)(construing this term as “a device or
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`process that is capable of receiving and initiating or otherwise hosting a mobile code execution”)
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`2 Declaration of Kristopher Kastens in Support of Finjan’s Opening Claim Construction Brief.
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 11 of 21
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`(citing Vitronics, 90 F.3d at 1582 (“The specification acts as a dictionary when it expressly defines
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`terms used in the claims or when it defines terms by implication.”)); see also Blue Coat Sys., Inc., 2014
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`WL 5361976, at *2 (adopting the parties’ construction on these terms). As such, Finjan’s construction
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`should be adopted because it is supported by the intrinsic record and prior claim construction orders
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`from this Court.
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`Juniper contention that the novelty of the ‘633 Patent is sending MPCs to the user/client
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`computer oversimplifies the invention to improperly import limitations that excludes preferred
`embodiments. For example, by limiting the construction to a “user/client device,” Juniper does not
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`account for sending MPCs to “processes” such as an email or web browser, and does not sufficiently
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`explain that a “user device [can] operat[e] as a firewall/server” which is explicitly provided in the
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`specification. See, e.g., ‘633 Patent at Col. 7, ll. 47–62; see also id. at Col. 3, ll. 22–25. Indeed, Juniper
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`admits that a process can be a destination and thus, should not be limited to a user/client device. Opp.
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`Br. at 7. Accordingly, the ‘633 Patent discloses a broad interpretation of an “information-destination”
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`encompassing components that are not “user/client devices.”
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`Finally, Juniper’s contention that its construction should be adopted because during prosecution
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`the applicant described a Downloadable as having an intended destination were examples and did not
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`limit the scope of the claim to a user/client device. Carson Decl. Ex. 10 at 14, 15 (“Based upon the
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`determination, transmitting from the [MPC] to at least one information-destination . . . to include
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`executable code.”); id. at 17-18 (“In distinction with the claimed invention, Golan operates solely on
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`the client, and does not describe the gateway aspects of the ‘633 Patent, including the claimed
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`receiving and transmitted operations.”). To the contrary, a Downloadable may be intentionally sent to
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`other servers such as a “‘re-communicator’ (e.g. ISP server…)” (‘633 Patent at Col. 7, ll. 1-4) or
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`components “operating as a firewall/server, or other information-supplier or intermediary (i.e., as a ‘re-
`communicator’ or ‘server’”). Id. at Col. 7, ll. 50-54.3 Accordingly, the destination may include
`servers and processes other than the user/client device.
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`3 Juniper’s analogy to a highway and rest stop is inapplicable. In computer networks data cannot
`simply stop along the path like a car on the road. Opp. Br. at 7.
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 12 of 21
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`Term 4.
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`“if the downloadable-information is determined to include executable code /
`determining, by the computer, whether the downloadable information
`includes executable code” (‘633 Patent, Claims 1 and 8)
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`Finjan’s Proposed Construction
`Plain and ordinary meaning.
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`Juniper’s Proposed Construction
`Distinguishing between two alternative possibilities:
`executable code is included in the downloadable-
`information and executable code is not included in the
`downloadable-information
`This term does not require construction and should be given its plain and ordinary meaning
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`because it is readily understood by a PHOSITA as generally describing a process broad enough to
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`describe detecting content that is likely to be of an executable type that can carry executable content.
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`Aventis Pharms. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (presumption that
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`plain and ordinary meaning applies). In response, Juniper mischaracterizes the prosecution history to
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`improperly limit the scope of the claims as described below.
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`The intrinsic record of the ‘633 Patent, however, confirms that Finjan’s construction of plain
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`and ordinary meaning is correct. For example, the specification states that determining whether a file
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`includes executable code is achieved when “[f]ile type detector 502 receives and determines whether
`the potential-Downloadable (likely) is or includes an executable file type” and by looking at indicators
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`to show that the file is likely to have executable code. Id. at Col. 14, ll. 58–Col. 15, l. 8 (emphasis
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`added). In other words, the determination need not simply distinguish between two alternative
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`possibilities, but can indicate whether the Downloadable is likely to be executable because of its file
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`type of other indicators.
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`Juniper cannot overcome the high burden of limiting the scope of the claims to “two alternative
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`possibilities” based on the prosecution history, especially where Juniper relies on selective quotes
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`taken out-of-context. Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016) (“When
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`the prosecution history is used solely to support a conclusion of patentee disclaimer, the standard for
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`justifying the conclusion is a high one.”) For example, Juniper quotes a statement from PTAB
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`proceeding where the applicant explained that the prior art reference Ji “does not make the binary
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`executable code vs. no-executable code determination as required.” Carson Decl. Ex. 5 at 63. In its
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`proper context, the PTAB proceeding made clear that the applicant distinguished the Ji reference
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 13 of 21
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`because Ji made no determination:
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`Carson Decl. Ex. 5 at 61 (highlighting added).
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`Id. at 62 (highlighting added).
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`Accordingly, Juniper reliance on its mischaracterization of the prosecution history cannot serve
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`to limit the scope of the claims and is not a clear an unmistakable disclaimer. Avid Tech., 812 F.3d at
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`1045 (“When the prosecution history is used solely to support a conclusion of patentee disclaimer, the
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`standard for justifying the conclusion is a high one.”). Thus, the Court should adopt the plain and
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`ordinary meaning of this term as understood in the context of the patent.
`B.
` Terms in the ‘844 Patent
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`Term 5.
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`“inspector” (‘844 Patent, Claims 1, 15 and 41)
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`Finjan’s Proposed Construction
`Plain and ordinary meaning
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`Juniper’s Proposed Construction
`A content inspection engine located within an
`external computer network, that is separate from
`the network gateway
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`Case 3:17-cv-05659-WHA Document 187 Filed 08/27/18 Page 14 of 21
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`The term “inspector,” which appears in claims 1, 15, and 41, does not require construction and
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`should be given its plain and ordinary meaning of a component that inspects Downloadables, as
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`“inspector” is readily understood by those of ordinary skill in the art, or even a layperson. Aventis
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`Pharms., 715 F.3d at 1373 (presumption that plain and ordinary meaning applies). Juniper cannot
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`satisfy the high burden of limiting the scope of the claims based on the prosecution history and did not
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`identify any arguments that could be considered an unmistakable disclaimer. Avid Tech., 812 F.3d at
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`1045 (“When the prosecution history is used solely to support a conclusion of patentee disclaimer, the
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`standard for justifying the conclusion is a high one.”)
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`As explained in Finjan’s Opening Brief, the inspector is described in the ‘844 Patent as
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`something that can perform one or more types of inspections and its location is not limited, stating that
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`“[t]he present invention provides a method . . . comprising the steps of receiving a Downloadable,
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`generating a first Downloadable security profile for the received Downloadable, and linking the first
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`Downloadable security profile to the Downloadable.” Id. at Col. 2, ll. 49–53.
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`Juniper incorrectly relies on selective quotes from the prosecution history to contend that the
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`content inspection engine must be located within an external network. That is not accurate. In
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`describing the Ji reference as using a network on the gateway, the applicant did not state that the
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`invention was limited to using an external network. See Carson Decl. Ex. 11 at 5. Avid Tech., Inc. v.
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`Harmonic, Inc., 812 F.3d 1040, 1045-46 (Fed. Cir. 2016) (to limit the meaning of a claim term, the
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`Court must find that the statements are both “a clear and unambiguous” disavowal of claim scope); see
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`also Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012) (“There are
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`only two exceptions to [the] general rule [of ordinary meaning]: (1) when a patentee sets out a
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`definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a
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`claim term either in the specification or during prosecution.”)(cita