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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`FINJAN, INC., a Delaware )
`Corporation, )
` )
` Plaintiff and Counter- ) Case No. 17CV0183-CAB
` Defendant, )
` )
` vs. )
` )
`ESET, LLC, a California Limited )
`Liability Corporation, and ESET )
`SPOL. S.R.O., a Slovak Republic )
`Corporation, )
` )
` Defendants and Counter-)
` Plaintiffs. )
`
`
`
`
`Reporter's Transcript of Claims Construction Hearing
`Volume 2, pages 1-198
`Before The Honorable Cathy Ann Bencivengo
`Tuesday, September 26, 2017, 9:00 a.m.
`San Diego, California
`
`
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`
`Proceedings recorded by stenography, transcript produced by
`computer assisted software
`____________________________________________________________
`
`Mauralee Ramirez, RPR, CSR No. 11674
` Federal Official Court Reporter
`ordertranscript@gmail.com
`
`
`
`Case 3:17-cv-05659-WHA Document 360-6 Filed 01/24/19 Page 3 of 18
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`Appearances:
`For The Plaintiff:
` Kramer Levin Naftalis & Frankel, LLP
` Paul Andre
` James Hannah
` 990 Marsh Road
` Menlo Park, California 94025
`
`For The Defendants:
` Foley & Lardner LLP
` Nicola A. Pisano
` Scott A. Penner
` Wendy Cheung
` 3579 Valley Center Drive, Suite 350
` San Diego, California 92130
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`San Diego, California; Tuesday, September 26, 2017; 9:00 a.m.
`THE CLERK: All right. We're on record this morning
`on 17CV0183-CAB-BGS, Finjan Incorporated versus ESET, LLC, et
`al., on calendar for day 2 of claim constructions.
`Counsel, please state your appearances.
`MR. ANDRE: Good morning, your Honor. Paul Andre and
`James Hannah for Finjan. And with us is our client
`representative Julie Mar-Spinola.
`THE COURT: Thank you.
`MR. PISANO: Good morning, your Honor. Nicola Pisano.
`With me is Scott Penner, senor counsel, and Wendy Cheung,
`associate counsel of Foley & Lardner, and today we have the
`client representative, general counsel Alexandra Albro.
`THE COURT: Thank you. Good morning.
`Okay. So I went home last night and spent more time
`reading about "before the web server makes the Downloadable
`available to web clients." And at the end of the day, I may
`not be fully appreciating or understanding what the plaintiffs
`are trying to do here, but claim 1 is about the inspector. It
`is not about the network gateway. It is not about the
`subsequent investigation that some other computer might do of
`the Downloadable.
`My understanding of the '844 patent is that it
`essentially is an efficiency that Downloadables get this
`inspection before they're made available to the web so that
`
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`when somebody calls it up and says I want to download this, the
`network gateway computer can look at it and say it's already
`been inspected. It's got its UL, its Good Housekeeping Seal of
`Approval; or it's got these issues, and we need to further
`inspect it; or none of this happened, and we have to do it
`ourselves, which was what was going on before, they had to
`inspect everything that was going through. And this created
`this inefficiency to say this Downloadable has already been
`inspected, it has this profile link to it, here are the issues
`with it; under our policies, it's okay, it can come in; or
`under our policies, it's not okay, it can't come in; or we need
`to do further inspection with it.
`But the inspector discussion of claim 1 is all
`happening before there has been a call to download this
`Downloadable by a web client. It's happening before it goes to
`the web server to make it available to web clients, and so the
`Court is reading claim 1 not to cover something that is done by
`a network protection engine or a computer protection engine
`subsequently after the Downloadable has been called up to be
`forwarded, but before that.
`And so I'm not quite sure in terms of construing the
`claim, other than to just say "before the web server makes the
`Downloadable available to web clients" means before the
`Downloadable is available on a web server to be called up or
`forwarded to a web client. That's when that step in the method
`
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`is happening.
`And you have two minutes to put your objection on the
`record and we're moving on, because I have read all I'm going
`to read about this, and we're not going to play ping-pong like
`Judge Brewster used to do. It was like last man standing.
`So go ahead.
`MR. ANDRE: Your Honor, I am going to put my objection
`on the record. We have three judges in Northern California
`that have done construction on this --
`THE COURT: Has the Federal Circuit construed it?
`MR. ANDRE: I argued on this two weeks ago to the
`Federal Circuit, and it was not appealed. The previous
`construction of Judge Freeman's of what this meant was not
`appealed. The parties accepted it and just didn't appeal claim
`construction. So it's not before the Federal Circuit on
`appeal. I guess appeal was waived of Judge Freeman's order.
`I have another trial in front of Judge Freeman coming
`up at the end of October in which she has construed this
`contrary to what your Honor is construing now. I have a trial
`in front of Judge Gilliam in April, that he has also construed
`contrary to your Honor.
`I understand why the defendants wanted to move the
`case out of Northern California and come down here, and this is
`the risk we face when you have multiple jurisdictions, you have
`inconsistent constructions. So this is going to lead to some
`
`
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`issues.
`
`THE COURT: Well, I understand that I may not just be
`following their lead, but that's my fair reading of the patent,
`of the prosecution history, where the patent holder came in and
`said no, what's different about this patent is that it is not
`the work being done at the network gateway where it all had to
`be done before, it's being done prior to that by this
`investigator. That is, again, streamlining and creating an
`efficiency here.
`And the words "investigator" were specifically
`included into that claim specifically with the language that
`this happens before it's made available, and it is consistent
`with the rest of the claims where subsequent investigation or
`review of the Downloadable is done where each of those -- it
`says that the Downloadable was linked to a Security Profile
`before the web server made it available to the web client.
`And that's in the Network Gateway System claim 32.
`It's in 41, it's in 42.
`And so that's one of the fun things about being a
`district judge, I can listen to what other district judges have
`to say, but I don't have to follow it. Until the Federal
`Circuit says it means something else, I'm on my own.
`MR. ANDRE: That's correct. And I'm not saying there
`is anything binding from those other district court judges. I
`guess what I'm asking is -- I will respect your Honor's
`
`
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`decision obviously. We would like to file a motion for
`reconsideration, so we ask to brief this issue out. The
`construction that you just provided was not contemplated or not
`proposed by the defendants or anyone. This is a new
`construction that we have not had a chance to deal with, so we
`will have to, with all due respect, file a motion for
`reconsideration if that's your order on this.
`I think the misapprehension here is how the computer
`systems look what it means before the web server makes it
`available to the web client. We tried to explain that
`yesterday, but I understand that we weren't convincing to your
`Honor, so I will put that in a -- we'll make our objection now
`and file a motion for reconsideration when the order comes out.
`THE COURT: That's fair. You asked for the
`construction. I'm not sure my construction comports with what
`you wanted.
`It's not your construction, which I found a little
`more confusing.
`But, in essence, the concern the defendants had was
`when is this step being practiced, and it's the Court's
`determination based on the language of the claims, all the
`claims together, and the prosecution history, and the
`specification that this investigation that is done by the
`investigator happens before the Downloadable is made available
`on the web server to be called up or forwarded to a web client.
`
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`MR. PISANO: That's consistent with our position, your
`
`Honor.
`
`THE COURT: All right. And if you want to show me
`that that's clear error later, then you can file a motion for
`me to reconsider. Claim construction is always open to further
`discussion, I suppose.
`MR. ANDRE: I have actually had the Federal Circuit
`rule that precisely. They encourage courts to keep an open
`mind. Thank you, your Honor.
`THE COURT: All right. The other one that I think I
`may have messed up on yesterday is the "software components
`required to be executed by the Downloadable." And I guess in
`part having gone back and looked at that again when I was
`taking up my notes, I recognized that the plaintiffs argued
`something that is different than what the Court understood.
`The plaintiffs simply said that "while those skilled
`in the art understand this term simply described components of
`code that the Downloadable is required to execute." And that's
`at page 15 of the plaintiff's Opening Claim Construction Brief.
`And the defendants wanted to add additional language
`that I wasn't sure was necessary, and then I got sort of
`sidetracked who exactly was doing the executing, and so I want
`to just go back and revisit the defendants' proposed
`construction on that.
`This is on the '780. You had this section about code
`
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`portions contained in a file different from the Downloadable,
`and I'm not sure. So could you just explain to me what the
`significance of that is? Because that's the only difference
`really, because otherwise you both agree that it's just
`"components of code that the Downloadable is required to
`execute."
`MR. PENNER: Yes, your Honor. I think we made that
`clear in our opening brief on page 13 and 14. We did strike
`out the "containing any file different from the Downloadable."
`So we agree that that shouldn't be part of the construction.
`And then in our responsive brief on this term at page 4, we
`pointed out that with those words struck out, it matches nearly
`identically as to what was listed as the quote/unquote "plain
`and ordinary meaning" that was provided by Finjan in their
`brief.
`
`THE COURT: Okay.
`MR. PENNER: So that's why, as we proposed in our
`responsive brief, we think the term is now in agreement between
`the parties what it should mean.
`THE COURT: All right. To the extent I said something
`to the contrary yesterday, the Court is taking that back and
`I'm going to use the definition to the extent -- I don't know
`that it adds anything, other than just the recognition that the
`plain and ordinary meaning would mean to a person of skill in
`the art "components of code that the Downloadable is required
`
`
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`to execute."
`Are plaintiffs okay with that?
`MR. HANNAH: That's fine, your Honor.
`THE COURT: It's your language, so hopefully not.
`Okay. Then we left off with the performing a hashing
`function on the Downloadable and the fetched software
`components to generate a Downloadable ID. The Court did look
`at the PTO's construction in the IPR for the '780 that was
`published in April of 2016. And that is at Docket 138-14 at
`page 9.
`And the Court is adopting the construction that the
`PTO applied to the extent it clarified performing the function
`on the Downloadable and the software components' needs
`together. So "performing a hashing function on the
`Downloadable together with its fetched software components." I
`think that reflects what's going on there.
`MR. PENNER: Your Honor, one question on the
`construction. Does "together with" mean temporally? We
`believe "together" means combined, as physically combined
`together as opposed to temporally where they are Hashed
`independently. So we think that's why the PTO put "together"
`with the italics. That's why we tried to explain that. We
`meant it to be physical combination, physical togetherness as
`opposed to the temporal togetherness.
`THE COURT: Well, when you say "combined," see, I get
`
`
`
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`into just as a layperson and not a person of skill in the art
`that combined suggests meshing as opposed to together, which
`could be -- and for those of you on record, I'm using hand
`gestures here. But combined would be like crossing your
`fingers together in a clasp where you're sort of integrating
`things as opposed to just saying these things were done in
`tandem or together, one and then the other, but they're
`attached in some way. And so I don't know from a technical
`point of view if this -- I don't believe that the hashing is
`done by combining in the sense that you integrate them.
`MR. PISANO: All we mean is done in tandem. You get
`separate files feeding them in, and the bit stream comes in.
`THE COURT: Right. But it's done as one unit. The
`way I am interpreting what they meant by together is that it's
`done as one unit.
`MR. PENNER: That's exactly what we meant, your Honor.
`MR. HANNAH: Your Honor, we disagree with that. They
`do not have to meet the string in order to create a single file
`that has one Hash that's going to be together. The IPR, the
`Patent Board, simply adopted Judge Sleet's construction and his
`order. And during that trial, like my tutorial I gave, I was
`completely consistent with what I presented that if you had a
`web page and if you had software component and perform a Hash
`on those and then you store those together, then that's going
`to be the ID for that web page and those software components.
`
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`That increases the efficiency because if you have another
`software component that might later come down the pike, then
`you can perform the analysis on that.
`So that's where the claim construction came from. It
`came from Judge Sleet's order with "put together with," and
`that's what was adopted and understood in that analysis.
`THE COURT: In the decision in the IPR, the Patent
`Office looked at the petitioner's petition saying that a person
`of skill in the art would have understood that the resulting
`series of separate Hashes could collectively comprise the
`unique identifier for the Downloadable. And that so if it's
`collective, it's being done together.
`MR. HANNAH: Right. Exactly, your Honor.
`THE COURT: Well, they rejected your argument, not
`yours personally, but whoever was representing Finjan at the
`IPR that said that that was putting an unnecessary limitation
`into the claim and said no, that means together, that it's done
`together.
`So the idea that you're going to do one and then do
`the other and do something else, I don't think comports with
`what they're saying here. They're saying all of this is done
`together in a collective.
`MR. HANNAH: So technically, it can be done in the
`collective if you have the same hashing function that's going
`to be performed on two different components, and you're going
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`to generate resulting Hashes on those components that's
`together. That's exactly how we proved it in front of Judge
`Sleet.
`
`In the IPR, what we were arguing was in the broadest
`reasonable interpretation, you didn't need to put that
`limitation in. It was under a different claim construction
`standard. So that's where that argument came from. But they
`adopted Judge Sleet's analysis and his claim construction word
`for word, which said that if you have like an HTML file with a
`software component, such as an applet, and you generate a Hash
`on each of those, and then you perform an hashing function on
`those, and then you have an ID that identifies both of those
`components, then that's together.
`In the IPR, we just simply argued that the plain and
`ordinary meaning was broader because you went with the broadest
`reasonable interpretation which was broader understanding. But
`we have not disagreed --
`THE COURT: So wait. If I adopt this "together with,"
`we're going to have to construe "together with." We're
`construing the construction then. Because the argument here
`was "together with" is -- I'm sorry. I'm getting this
`backwards.
`So the petitioner wanted something else, and the IPO
`just adopted the district court's construction that performing
`the hashing function is together with the fetched software
`
`
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`components, but then didn't shed any light on what "together
`with" means. But I mean, "together with" means together. So,
`again, I don't know. What are we disagreeing about what
`"together with" means?
`MR. HANNAH: I don't know, your Honor. I think that
`they're trying to introduce their claim construction again into
`your order saying that it has to be the single file. I think
`that's exactly what they're trying to do, and trying to get
`something on the record that is putting words into the claim
`construction that it has to be a single file as to acclimated
`together in order to generate this ID, and that position has
`been explicitly rejected with Judge Sleet and with every other
`court that has heard that argument. It does not have to be a
`single file. So that's the argument that they're trying to
`make saying that oh, "together with" really means a single
`file, and that's not true. That's just technically inaccurate.
`MR. PISANO: We are not saying it's a single file. So
`let's get that straight. We're saying it could be multiple
`files. But as you said, they are together hashed. So you get
`the bit stream, you get file A, it's fed in; file B is fed in
`after that; file C is fed in after that; so with the fetched
`components, that whole thing is hashed. You get a Hash.
`Now what I heard him just say is that he wants to
`argue is that if I take A and do a Hash and then I do B and do
`a Hash, and then I take those two Hashes and do a Hash, then I
`
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`get a Hash. That's not what the patent says. It says you put
`them together and you get a Hash.
`THE COURT: They're saying that's not what they're
`
`saying.
`
`Honor.
`
`MR. HANNAH: That's not what we're saying at all.
`MR. PENNER: That is exactly what they said, your
`
`THE COURT: Okay. Because that I would agree and I
`think they're agreeing that this is not a Hash of a Hash. You
`have two components or you have two types of components. You
`have the Downloadable and the two fetched software components,
`and they are Hashed together resulting in this ID. So it's all
`going do be done together. And it's not they're not integrated
`or combined, it's just done as a unit.
`MR. HANNAH: That's what we're trying to say, your
`Honor. Is that it's not a single ID, and that's what they keep
`trying to argue. We'll adopt the Court's claim construction.
`We have lived with that in the past.
`THE COURT: Wait. Well, when you say it's not, I
`mean, it generates a Downloadable ID.
`MR. HANNAH: Yes, it downloads it.
`THE COURT: But that's an ID for that Downloadable
`with the fetched software components hashed together.
`MR. HANNAH: Yes, they're both hashed together.
`THE COURT: All right. I'm going to leave that for
`
`
`
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`now. We may have to revisit that in the context of summary
`judgment, understanding that the Court is appreciating that
`this construction means that when you're hashing, you're taking
`the Downloadable and the software components and you're hashing
`them together to come out with an ID, a Downloadable ID for
`that joint process. Good. Okay.
`That leaves us where we left off yesterday. And just,
`again, the under submission outstanding things, whether or not
`Downloadable, which I would note the Patent Office in the '780,
`again, confirmed that a Downloadable is the definition that is
`set forth in the specification, and found no ambiguities in the
`history or anything, and just said it's an executable
`application program which is Downloadable from a source
`computer and run on a destination computer.
`And that is the definition of Downloadable that the
`Patent Office accepted and the Court is, again, accepting that
`for the '844, '780, and the '086.
`And there's an open question about the '621 and the
`'755. You were going to give me the current IPR on that by the
`end of this week, and then you have a week to respond.
`MR. HANNAH: Correct, your Honor.
`MR. PISANO: Okay, your Honor. I was just a little
`confused when we left yesterday. It may be the fog of my
`residual cold. But "executable" means -- I thought where we
`left was there was a definition of "executable". There's
`
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`Case 3:17-cv-05659-WHA Document 360-6 Filed 01/24/19 Page 18 of 18
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`in front of Judge Skomal and you need intervention or he's not
`reaching them, I might step in just to get them done. So,
`okay. thank you.
`MR. ANDRE: Thank you, your Honor.
`MR. PISANO: Thank you, your Honor.
`(Court in recess at 3:56 p.m.)
`*** End of requested transcript ***
`CERTIFICATE OF OFFICIAL REPORTER
`I, Mauralee Ramirez, Federal official Court Reporter,
`in and for the United States District Court for the Southern
`District of California, do hereby certify that pursuant to
`Section 753, Title 28, United States Code that the foregoing is
`a true and correct transcript of the stenographically reported
`proceedings held in the above-entitled matter and that the
`transcript page format is in conformance with the regulations
`of the Judicial Conference of the United States.
`
`
` Dated this 9th day of October 2017.
`/S/ Mauralee Ramirez________________
`Mauralee Ramirez, CSR No. 11674, RPR
`Federal Official Reporter
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