Case 3:17-cv-05659-WHA Document 374-1 Filed 02/19/19 Page 1 of 30
`Case 3:17-cv-05659-WHA Document 374-1 Filed 02/19/19 Page 1 of 30
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`EXHIBIT A
`EXHIBIT A
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`Case 3:17-cv-05659-WHA Document 374-1 Filed 02/19/19 Page 2 of 30
`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 1 of 29
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
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`Plaintiff,
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`v.
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`BITDEFENDER INC., et al.,
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`Defendants.
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`Case No. 17-cv-04790-HSG
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`CLAIM CONSTRUCTION ORDER
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`On August 16, 2017, Plaintiff Finjan Inc. (“Finjan”) filed this patent infringement action
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`against Defendants Bitdefender Inc. and Bitdefender S.R.L. (collectively, “Bitdefender”). Dkt.
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`No. 1 (“Compl.”). The parties now seek construction of ten terms found in four patents: Patent
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`Nos. 6,804,780 (“the ’780 Patent”), 7,930,299 (“the ’299 Patent”), 8,141,154 (“the ’154 Patent”),
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`and 8,677,494 (“the ’494 Patent”) (collectively, “the Asserted Patents”). See Dkt. No. 73
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`(“JCCS”). This order follows claim construction briefing and a claim construction hearing. See
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`Dkt. Nos. 76 (“Op. Br.”), 81 (“Resp. Br.”), 84 (“Reply Br.”). The parties subsequently submitted
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`several requests for judicial notice regarding recently filed orders interpreting the Asserted
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`Patents. See Dkt. Nos. 90, 92–94.1
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`I. LEGAL STANDARD
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`Claim construction is a question of law to be determined by the Court. Markman v.
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`Westview Instruments, Inc., 517 U.S. 370, 384 (1996). “The purpose of claim construction is to
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`determine the meaning and scope of the patent claims asserted to be infringed.” O2 Micro Int’l
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`1 The Court GRANTS the requests for judicial notice. The existence and contents of those orders
`are “not subject to reasonable dispute” because they “can be accurately and readily determined
`from sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b).
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`Northern District of California
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`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 2 of 29
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`Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quotation omitted).
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`Generally, claim terms should be “given their ordinary and customary meaning”—in other
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`words, “the meaning that the term[s] would have to a person of ordinary skill in the art in question
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`at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
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`banc) (quotation omitted). There are only two circumstances where a claim is not entitled to its
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`plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
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`lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the
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`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
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`1365 (Fed. Cir. 2012).
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`When construing claim terms, the Federal Circuit emphasizes the importance of intrinsic
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`evidence such as the language of the claims themselves, the specification, and the prosecution
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`history. Phillips, 415 F.3d at 1312–17. The claim language can “provide substantial guidance as
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`to the meaning of particular claim terms,” both through the context in which the claim terms are
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`used and by considering other claims in the same patent. Id. at 1314. The specification is likewise
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`a crucial source of information. Id. at 1315–17. Although it is improper to read limitations from
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`the specification into the claims, the specification is “the single best guide to the meaning of a
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`disputed term.” Id. at 1315 (noting that “the specification is always highly relevant to the claim
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`construction analysis,” and that “[u]sually, it is dispositive” (quotation omitted)); see also Merck
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`& Co. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (explaining that “claims
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`must be construed so as to be consistent with the specification”).
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`Despite the importance of intrinsic evidence, courts may also consider extrinsic evidence—
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`technical dictionaries, learned treatises, expert and inventor testimony, and the like—to help
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`construe the claims. Phillips, 415 F.3d at 1317–18. For example, dictionaries may reveal what
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`the ordinary and customary meaning of a term would have been to a person of ordinary skill in the
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`art at the time of the invention. Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr
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`Inc., 744 F.3d 715, 722 (Fed. Cir. 2014) (“Terms generally carry their ordinary and customary
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`meaning in the relevant field at the relevant time, as shown by reliable sources such as
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`dictionaries, but they always must be understood in the context of the whole document—in
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`particular, the specification (along with the prosecution history, if pertinent).”). Expert testimony
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`can also help “to ensure that the court’s understanding of the technical aspects of the patent is
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`consistent with that of a person of skill in the art, or to establish that a particular term in the patent
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`or the prior art has a particular meaning in the pertinent field.” Phillips, 415 F.3d at 1318.
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`Extrinsic evidence is, however, “less significant than the intrinsic record in determining the legally
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`operative meaning of claim language.” Id. at 1317 (quotation omitted).
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`II. AGREED TERMS
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`The parties agree on the construction of three terms. JCCS at 1. In light of the parties’
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`agreement, the Court adopts the construction of these terms as set forth in the following table:
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`Patent
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`Claim Term
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`Agreed Construction
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`’494 Patent
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`“downloadable” [claims 1, 2, 5,
`6, 7, 10, 11, 14, 15, and 16]
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`’494 Patent
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`“database” [claims 1, 2, 10, and
`11]
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`’780 Patent
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`“downloadable” [claims 1, 2, 5,
`6, 9, 13, 14, and 18]
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`“an executable application program,
`which is downloaded from a source
`computer and run on the destination
`computer”
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`“a collection of interrelated data
`organized according to a database
`schema to serve one or more
`applications”
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`“an executable application program,
`which is downloaded from a source
`computer and run on the destination
`computer”
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`III. DISPUTED TERMS
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`A.
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`“suspicious computer operations” (’494 Patent)
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`Finjan’s Construction
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`Bitdefender’s Construction
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`No construction necessary – Plain and
`ordinary meaning. Plain and ordinary
`meaning of “suspicious” is “hostile or
`potentially hostile.”
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`Indefinite
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`Alternatively, “a subset of all possible
`computer operations that have been deemed
`suspicious prior to their inclusion in the
`list”
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`The Court adopts Finjan’s construction, finds the plain and ordinary meaning of
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`“suspicious” is “hostile or potentially hostile,” and accordingly construes the term
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`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 4 of 29
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`“suspicious computer operations” as “hostile or potentially hostile computer operations.”
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`The disputed term appears in independent claims 1 and 10, and dependent claims 6 and 15
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`of the ’494 Patent. JCCS at 1. Claim 1 is representative of how the term is used in the claim
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`language:
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`1. A computer-based method, comprising the steps of:
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`receiving an incoming Downloadable;
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`Claim 1
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`deriving security profile data for the Downloadable, including a list of suspicious
`computer operations that may be attempted by the Downloadable; and
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`storing the Downloadable security profile data in a database.
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`Finjan asks the Court to give “suspicious computer operations” its plain and ordinary
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`meaning, arguing that the plain meaning of “suspicious” in the context of the ’494 Patent is
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`“hostile or potentially hostile.” Op. Br. at 3–5; Reply Br. at 1–3. Starting with the specification,
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`Finjan notes that the ’494 Patent incorporates the ’780 Patent, which describes “suspicious”
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`computer operations as “Operations Deemed Potentially Hostile.” See Op. Br. at 3; see also ’494
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`Patent, 1:28–33 (incorporating the ’780 Patent by reference); ’780 Patent, 3:25–28 (“It is to be
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`understood that the term ‘suspicious’ includes hostile, potentially hostile, undesirable, potentially
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`undesirable, etc.”). Finjan further notes that the ’780 Patent discloses several examples of
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`potentially hostile computer operations. See Op. Br. at 3; see also ’780 Patent, 5:55–60 (“DSP
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`data 310 includes the list of all potentially hostile or suspicious computer operations that may be
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`attempted by a specific Downloadable 307, and may also include the respective arguments of
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`these operations. For example, DSP data 310 may include a READ from a specific file, a SEND
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`to an unresolved host, etc.”), 6:1–14 (providing “An Example list of Operations Deemed
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`Potentially Hostile”). According to Finjan’s expert, a person of ordinary skill in the art would,
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`after reading the patentee’s specification, understand the term to possess its plain meaning: “as
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`computer operations that are hostile or potentially hostile.” Dkt. No. 76-1 (“Medvidovic Decl.”)
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`¶¶ 12–14.
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`Bitdefender and its expert argue the term is indefinite because whether a computer
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`operation is “suspicious”—or “hostile,” for that matter—“is an inherently subjective matter of
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`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 5 of 29
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`opinion.” Resp. Br. at 1; Dkt. No. 81-3 (“Shaefer Decl.”) ¶ 17 (opining that “certain computer
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`operations may be welcome in one environment, but unsafe in another”). In Bitdefender’s view,
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`“suspicious” is just as subjective as terms previously found indefinite by the Federal Circuit.
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`Resp. Br. at 1–2 (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371–74 (Fed. Cir.
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`2014) (finding “in an unobtrusive manner” indefinite) and Datamize, LLC v. Plumtree Software,
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`Inc., 417 F.3d 1342, 1350–56 (Fed. Cir. 2005) (finding “aesthetically pleasing look and feel”
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`indefinite), abrogated by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). And as
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`to Finjan’s reliance on the examples of suspicious computer operations in the ’780 Patent,
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`Bitdefender responds that nonexclusive lists cannot render definite an otherwise subjective term.
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`Id.
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`Bitdefender alternatively argues that, if the Court finds the term definite, the Court should
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`construe it as “a subset of all possible computer operations that have been deemed suspicious prior
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`to their inclusion in the list.” Resp. Br. at 2. Bitdefender contends this would be consistent with
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`the ’780 Patent’s list of operations that are “deemed potentially hostile,” as well as representations
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`made by Finjan to the PTAB in Symantec Corp. v. Finjan, Inc., No. IPR2015-01892, 2017 WL
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`1041718 (P.T.A.B. Mar. 15, 2017) (“Symantec IPR”). Id. at 2-3.
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`The Court first finds the term is sufficiently definite. Contrary to Bitdefender’s arguments,
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`the term “suspicious computer operations,” when read in light of the specification and file history,
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`is not facially subjective to a person of ordinary skill in the art. As Finjan notes, to suggest that a
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`person skilled in computer security somehow cannot apply the term “suspicious computer
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`operations” without additional guidance is untenable. See Reply Br. at 1. The Court also finds
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`Bitdefender’s purportedly comparable cases unavailing. A system displaying content in an
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`“unobtrusive manner” or the look and feel of a kiosk screen being “aesthetically pleasing” are
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`categorically unlike “suspicious computer operations,” which a person of ordinary skill in the art
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`of computer security would have no issue objectively applying. See Medvidovic Decl. ¶¶ 12–14.
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`Cf. Interval Licensing LLC, 766 F.3d at 1371–74; Datamize, LLC, 417 F.3d at 1350–56.
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`The Court also finds that the term’s plain and ordinary meaning is “hostile or potentially
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`hostile.” As Finjan notes, the ’494 Patent incorporates the ’780 Patent, which in turn expressly
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`Case 3:17-cv-05659-WHA Document 374-1 Filed 02/19/19 Page 7 of 30
`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 6 of 29
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`states that “suspicious” operations are “hostile or potentially hostile.” Op. Br. at 3–5. And as
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`Finjan’s expert explains, a skilled artisan would view the term to carry that meaning. See
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`Medvidovic Decl. ¶¶ 12-14; Phillips, 415 F.3d at 1312–13 (instructing courts to typically give
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`terms their ordinary and customary meaning).
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`As to Bitdefender’s alternative proposal, the Court does not find that Finjan’s PTAB
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`representations amounted to a disclaimer because Finjan did not directly contradict its position
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`here. In the Symantec IPR, Finjan said, for instance, that there is “no a priori understanding of
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`what constitutes a suspicious computer operation, but rather, some subset of all possible computer
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`operations must first be deemed suspicious in order to derive a list of suspicious computer
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`operations for a Downloadable.” Adamson Decl. Ex. A, at 8–9 (quotations and alterations
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`removed). But that statement does not unambiguously contradict Finjan’s position here: that a
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`skilled artisan would understand the term “suspicious computer operations” to mean “hostile or
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`potentially hostile” when read in the context of the claims. See Reply Br. at 2–3.
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`Finally, the Court observes that other judicial decisions support the Court’s conclusions
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`here. See Finjan, Inc. v. Symantec Corp., No. 14-cv-02998-HSG, 2017 WL 550453, at *3 (N.D.
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`Cal. Feb. 10, 2017) (“The court considers the prior claim construction order for its persuasive
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`value, while still ultimately reaching its own independent judgment.”). For instance, in Finjan,
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`Inc. v. Blue Coat Systems, LLC, Judge Freeman articulated this claim term as including
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`“potentially hostile” operations. See No. 15-cv-03295-BLF, 2016 WL 7212322, at *2 (N.D. Cal.
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`Dec. 13, 2016) (Blue Coat II). And several other courts in this district have not found this term
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`indefinite when considering the ’494 Patent under 35 U.S.C. § 101. See Op. Br. at 4 (citing
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`Finjan, Inc. v. Sophos, Inc., 244 F. Supp. 3d 1016, 1055–1061 (N.D. Cal. Mar. 14, 2017)).
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`Construing U.S. Patent No. 6,092,194 (“the ’194 Patent”)—a parent of the ’494 Patent—a federal
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`district court in Delaware gave a plain and ordinary meaning to the term “a list of suspicious
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`computer operations that may be attempted by the Downloadable.” See Finjan, Inc. v. McAfee,
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`Inc., No. 10-cv-00593 (GMS), 2012 WL 12905833, at *1 & n.3 (D. Del. Feb. 29, 2012) (emphasis
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`added). In doing so, the court rejected the defendant’s proposed construction of this term as “a list
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`of all operations that may be attempted by the received Downloadable that have been determined
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`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 7 of 29
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`to be suspicious.” See id. at *1 n.3. The court found that Finjan had not “disavowed the plain and
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`ordinary meaning of this term through its patent specification and prosecution history to
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`distinguish it from the prior art.” Id. Most recently, in Finjan, Inc. v. Juniper Network, Inc.,
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`Judge Alsup rejected an argument that “suspicious computer operations” was indefinite for being
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`subjective—the very argument Bitdefender now advances. See No. C 17-05659 WHA, 2018 WL
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`4184338, at *6 (N.D. Cal. Aug. 31, 2018) (Juniper).2
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`B.
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`“Downloadable scanner coupled with said receiver, for deriving security profile
`data for the Downloadable” (’494 Patent)
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`Finjan’s Construction
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`Bitdefender’s Construction
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`No construction necessary – Plain and
`ordinary meaning.
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`This phrase should be construed pursuant to
`35 U.S.C. § 112(6) to cover the
`corresponding structure disclosed in the
`’494 patent, namely the code scanner
`referred to in the ’194 patent at 5:36–57,
`9:20–33, and Fig. 7, and equivalents.
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`Alternatively, “a code scanner that uses
`parsing techniques to decompose code into
`constituent operations and identifies
`specified operations or patterns of
`operations”
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`The Court construes this term as “Downloadable software that searches code to
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`identify suspicious patterns or suspicious computer operations, coupled with said receiver,
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`for deriving security profile data for the Downloadable.”
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`The disputed term appears in independent claim 10 of the ’494 Patent. JCCS at 1.
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`//
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`//
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`//
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`//
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`2 Judge Alsup also construed “list of” in “list of suspicious computer operations,” and construed
`that term as a whole to be “list of computer operations in a received Downloadable that are
`deemed hostile or potentially hostile.” 2008 WL 4174338, at *3. The parties here, however, do
`not ask this Court to construe the “list of” language.
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`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 8 of 29
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`10. A system for managing Downloadables, comprising:
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`a receiver for receiving an incoming Downloadable;
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`Claim 10
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`a Downloadable scanner coupled with said receiver, for deriving security profile data
`for the Downloadable, including a list of suspicious computer operations that may be
`attempted by the Downloadable; and
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`a database manager coupled with said Downloadable scanner, for storing the
`Downloadable security profile data in a database.
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`Finjan again argues that no construction is necessary, and that the Court can adopt the
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`term’s plain and ordinary meaning. See Op. Br. at 5–7; Reply Br. 3–5. Finjan highlights that the
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`parties have already agreed that the term “Downloadable” means an “executable application
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`program, which is downloaded from a source computer and run on the destination computer.” See
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`Op. Br. at 5. Finjan’s expert then opines that “a scanner is a well know[n] component in computer
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`security and software, and has an associated structure for scanning content such as
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`Downloadables.” See id. (citing Medvidovic Decl. ¶ 16). Finjan’s expert continues: “A scanner
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`connotes a structure that is directed to scanning a downloadable received by the receiver.
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`Moreover, reading the entire claim explains that it has three distinct steps: (1) a receiver receives
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`Downloadables, (2) a scanner scans those Downloadables, and (3) a database manager stores the
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`data obtained by the scanner in a database.” Medvidovic Decl. ¶ 17. Thus, in Finjan’s expert’s
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`opinion, “there is no need to look any further for the structure of this term.” Id.
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`Bitdefender argues this is a means-plus-function term subject to 35 U.S.C. § 112, despite
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`the absence of the word “means.” See Resp. Br. at 3. And it contends that the claim terms are
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`either purely functional (“deriving security profile data for the Downloadable”) or refer to the
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`scanner’s “relation to other parts in the system, not its structure” (for instance, “coupled with said
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`receiver”). Id. Bitdefender argues accordingly that the “Downloadable scanner” lacks sufficient
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`“internal structure” to render the term definite. Id. at 4–5. Finally, Bitdefender contends that “[t]o
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`the extent the Court finds that the features that Finjan attributed to the claims in order to defend
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`their validity in [other matters] impart sufficient structure to avoid application of § 112, ¶ 6,” the
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`Court should adopt the construction, “a code scanner that uses parsing techniques to decompose
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`code into constituent operations and identifies specified operations or patterns of operations.” Id.
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`Case 3:17-cv-05659-WHA Document 374-1 Filed 02/19/19 Page 10 of 30
`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 9 of 29
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`at 5.
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`In assessing whether a claim invokes Section 112(6), the Court must determine if the claim
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`limitation is drafted in the means-plus-function format. “The use of the term ‘means’ triggers a
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`rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term.” Robert Bosch,
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`LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014). Conversely, there is a general
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`presumption that the limitation does not invoke Section 112(6) where the claim language does not
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`recite the term “means.” Id.; Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007 (Fed. Cir. 2018).
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`This presumption is not strong, and it is rebuttable. Williamson v. Citrix Online, LLC, 792 F.3d
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`1339, 1349 (Fed. Cir. 2015). “The standard is whether the words of the claim are understood by
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`persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
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`structure.” Id. “When a claim term lacks the word ‘means,’ the presumption can be overcome and
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`§ 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite
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`sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for
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`performing that function.”’ Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
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`2000)).
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`The Court finds that this is not a means-plus-function term subject to Section § 112(6). To
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`begin, the claim term does not use the word “means.” “Presumptively, therefore, § 112, ¶ 6 does
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`not apply . . . .” See Zeroclick, LLC, 891 F.3d at 1007. Nor does the term contain an equivalent
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`nonce word for “means,” such as “module.” Cf. Williamson, 792 F.3d at 1350 (finding that
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`“[m]odule is a well-known nonce word that can operate as a substitute for ‘means’ in the context
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`of § 112, para. 6”); Zeroclick, LLC, 891 F.3d at 1008 (holding that a district court erred by
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`effectively treating “program” and “user interface code” as nonce words and thus as substitutes for
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`“means”).
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`Bitdefender relies on Media Rights Technologies, Inc. v. Capital One Financial Corp., 800
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`F.3d 1366, 1372 (Fed. Cir. 2015), for the proposition that “scanner” does not impart sufficient
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`“internal structure,” but that case is inapposite in several respects. See Resp. Br. at 3–4. First, the
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`Media Rights plaintiff did not dispute that the term to be construed—“compliance mechanism”—
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`had “no commonly understood meaning and is not generally viewed by one skilled in the art to
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`Case 3:17-cv-05659-WHA Document 374-1 Filed 02/19/19 Page 11 of 30
`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 10 of 29
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`connote a particular structure.” Media Rights, 800 F.3d at 1372. Here, in contrast, Finjan’s expert
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`opines that a “scanner” is recognized by those skilled in the art “as a structure for scanning a
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`Downloadable.” See Medvidovic Decl. ¶¶ 16–17. Second, unlike in Media Rights, where the
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`court found that the modifier “compliance” failed to impart additional structure to the term
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`“mechanism,” the parties here agree that a “Downloadable” is “an executable application program,
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`which is downloaded from a source computer and run on the destination computer.” Compare 800
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`F.3d at 1373 (citing Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir.
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`2006)), with JCCS at 1. Given the parties’ agreement that “Downloadable” has a tangible
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`meaning, the Court finds that a skilled artisan could derive the proper scope of the claim term from
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`the patent’s language.
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`The Court also rejects Bitdefender’s alternative construction, which not only reads out
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`several of the claim’s express elements—e.g., “Downloadable,” “security profile data,” and
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`“coupled with said receiver”—but also reads in elements that appear nowhere in the claim
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`language—e.g., “parsing” and “code.” For this construction, Bitdefender relies on technical
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`dictionaries and features of the incorporated ’194 Patent. See Resp. Br. at 5. But this Court
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`cannot sanction a wholesale reconstruction of a term on this basis, given the general proscription
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`against importing extrinsic limitations into the claim terms. See Phillips, 415 F.3d at 1312–13.
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`Although the Court agrees with Finjan that a skilled artisan could derive the proper scope
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`of the claim term from the patent’s language, the Court finds deficient Finjan’s proposal that no
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`construction is necessary. As Judge Freeman recently explained in construing “Downloadable
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`scanner” in this claim, “[p]resenting that the scanner has a plain and ordinary meaning will not aid
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`the jury.” Finjan, Inc. v. Cisco Sys., Inc., No. 17-cv-00072-BLF, 2018 WL 3537142, at *13 (N.D.
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`Cal. July 23, 2018) (Cisco). And as Judge Freeman detailed, the specification of the ’194
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`Patent—a parent of the ’494 Patent—disclosed that a code scanner “may search the code for any
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`pattern, which is undesirable or suggests that the code was written by a hacker.” Id. (citing ’194
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`Patent, 5:54–57). Because the scanner “may generate DSP data that includes suspicious computer
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`operations,” Judge Freeman ultimately reasoned that a skilled artisan would understand
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`“Downloadable scanner” to mean “software that searches code to identify suspicious patterns or
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`Northern District of California
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`United States District Court
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`Case 3:17-cv-05659-WHA Document 374-1 Filed 02/19/19 Page 12 of 30
`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 11 of 29
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`suspicious computer operations.” Id. (citing ’194 Patent, 5:50–54); see also Juniper, 2018 WL
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`4184338, at *7–8 (adopting Cisco’s construction). The Court agrees.
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`C.
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` “database manager” (’494 Patent)
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`Finjan’s Construction
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`Bitdefender’s Construction
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`No construction necessary – Plain and
`ordinary meaning. Plain and ordinary
`meaning of database manager is hardware
`and/or software that controls a database.
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`“A program or programs that control a
`database so that the information it contains
`can be stored, retrieved, updated, and
`sorted”
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`The Court adopts Bitdefender’s construction.
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`The disputed term appears in independent claim 10 and dependent claim 11 of the ’494
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`Patent. JCCS at 2. Claim 10 is representative of how the term is used in the claim language:
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`10. A system for managing Downloadables, comprising:
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`a receiver for receiving an incoming Downloadable;
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`Claim 10
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`a Downloadable scanner coupled with said receiver, for deriving security profile data for
`the Downloadable, including a list of suspicious computer operations that may be
`attempted by the Downloadable; and
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`a database manager coupled with said Downloadable scanner, for storing the
`Downloadable security profile data in a database.
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`Finjan again argues that no construction is necessary in view of the term’s plain and
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`ordinary meaning: hardware and/or software that controls a database. Op. Br. at 8; Reply Br. at
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`5–6. Finjan’s expert maintains that “database” is a well-known component in computer security
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`and software. See Medvidovic Decl. ¶ 19. Finjan also claims that the Sophos court construed the
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`term “database” consistent with its interpretation of “database manager” here. Op. Br. at 8; see
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`Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197-WHO, 2015 WL 890621, at *2–4 (N.D. Cal. Mar. 2,
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`2015). The Sophos court’s construction of “database” parallels the parties’ agreed-upon
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`construction of that term in this litigation. Compare id., with JCCS at 1 (agreeing that a
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`“database” is “a collection of interrelated data organized according to a database schema to serve
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`one or more applications”). And in construing “database,” the Sophos court stated that “[a]
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`database manager uses the database to retrieve security profile data for an incoming
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`Northern District of California
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`United States District Court
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`Case 3:17-cv-05659-WHA Document 374-1 Filed 02/19/19 Page 13 of 30
`Case 4:17-cv-04790-HSG Document 101 Filed 02/14/19 Page 12 of 29
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`Downloadable.” 2015 WL 890621, at *3. According to Finjan, it is undisputed that the
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`“[d]atabase manager is something that ‘controls” or “manages’ a database for storing and
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`retrieving information,” and thus any additional limitations are unnecessary. Op. Br. at 8.
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` Finjan’s focus on the database manager’s function, however, obscures the central dispute:
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`whether a database manager can encompass both hardware and software. Bitdefender contends
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`that covering both is an impermissible expansion of the term that contradicts the position taken by
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`Finjan and its expert in the Symantec IPR proceeding. Resp. Br. at 5. As Bitdefender notes,
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`Finjan insisted in that IPR that the “database manager must be a program or programs, not
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`hardware and/or software as it now contends.” Id. at 6 (quotations omitted). In Bitdefender’s
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`view, that “[p]rosecution disclaimer precludes Finjan’s about-face.” Id.
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`The Court agrees that Finjan’s position in the Symantec IPR sufficiently contradicted its
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`current position to meet the high threshold for disavowal. See Poly-America, L.P. v. API Indus.,
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`Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (“While disavowal must be clear and unequivocal, it
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`need not be explicit.”). In arguing for the patentability of the claimed “database manager” over
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`Morton Swimmer et al. Dynamic Detection and Classification of Computer Viruses Using General
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`Behaviour Patterns (“Swimmer”), Finjan stated:
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`[A] person skilled in the art at the time would understand the term
`database manager to mean a program or programs that control a
`database so that the information it contains can be stored, retrieved,
`updated and sorted, which definition is consistent with Dr.
`Davidson’s parenthetical definition of the term, a component that
`manages and controls the storage and retrieval of data in the database,
`but Swimmer does not have [such] a program or programs . . . .
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`Symantec IPR, 2017 WL 1041718, at *20 (quotations omitted). Similarly, under the heading
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`“Swimmer does not teach or suggest ‘database manager coupled with said downloadable scanner,
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`for storing the downloadable security profile data in a database,’” Finjan’s expert opined in a
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`declaration:
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`159. I understand Petitioner and Dr. Davidson identify Swimmer’s
`“audit system or a portion thereof” as the claimed “database
`manager.” A person skilled in the art at the time would understand
`database manager to mean “a program or programs that control a
`database so that the information it contains can be stored, retrieved,
`updated and sorted.
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