Case 4:18-cv-07229-YGR Document 59-3 Filed 04/06/20 Page 1 of 8
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`Exhibit 1
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`Case 4:18-cv-07229-YGR Document 59-3 Filed 04/06/20 Page 2 of 8
`Case 1:18-cv-01519-MN Document 76 Filed 10/25/19 Page 1 of 77 PageID #: 4421
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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` v.
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`RAPID7, INC., a Delaware Corporation and
`RAPID7 LLC, a Delaware Limited Liability
`Company,
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`Defendants.
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`C.A. No. 18-1519-MN
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`JOINT CLAIM CONSTRUCTION BRIEF (TERMS 1-20)
`
`Philip A. Rovner (#3215)
`Jonathan A. Choa (#5319)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza
`P.O. Box 951
`Wilmington, DE 19899
`(302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Attorneys for Plaintiff
`Finjan, Inc.
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`Dated: October 25, 2019
`
`Richard L. Renck (#3893)
`DUANE MORRIS LLP
`222 Delaware Avenue,
`Suite 1600
`Wilmington, DE 19801-1659
`(302) 657-4900
`RLRenck@duanemorris.com
`
`Counsel for Defendants
`Rapid7, Inc. and Rapid7 LLC
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`

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`Case 4:18-cv-07229-YGR Document 59-3 Filed 04/06/20 Page 3 of 8
`Case 1:18-cv-01519-MN Document 76 Filed 10/25/19 Page 38 of 77 PageID #: 4458
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`Response to Office Action dated October 5, 2011, at 138. In contrast, various claims of the ‘289
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`Patent include an express requirement that the content is modified. See, e.g., Ex. A-4 (‘289 Patent,
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`at Claim 1) (“modifying the content….” “transmitting the modified content…”). The express
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`inclusion of this limitation in the ‘289 Patent claims confirms it should not be read into the claims
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`of the ‘154 Patent that do not include (and, in fact, removed) this limitation. Andersen Corp., 474
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`F.3d at 1369.
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`2.
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`Defendants’ Responsive Statement
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`Rapid7’s proposed construction was adopted by the Juniper II Court. Juniper II, 387
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`F.Supp.3d at 1013 (“this order construes the term ‘content processor’ as ‘a processor that processes
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`modified content.’”).
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`As noted above in connection with Term 5, the Federal Circuit has explained that the
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`asserted claims of the ’154 Patent “recit[e] a system or software program that executes a substitute
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`function,” which is the claimed “first function”. Palo Alto Networks, 752 F. Appx. at 1018. The
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`“first function” sends its input to the security computer for inspection once invoked. Ex. A-3, cl. 1
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`(“transmitting the input to the security computer for inspection, when the first function is invoked”);
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`Juniper II, 387 F.Supp.3d at 1011 (“The claimed ‘first function’ then clearly involves the ‘substitute
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`function,’ which sends the content’s input to the security computer for inspection once invoked.”).
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`This call to a substitute function only exists after the original content is modified at a gateway
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`device to include it. Ex. A-3 at 9:13-28 (“Content modifier 265 preferably modifies original content
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`received by gateway computer 205, and produces modified content, which includes a layer of
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`protection to combat dynamically generated malicious code.”). Thus, the claimed “content”
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`received by the claimed “content processor” is necessarily modified content since the claims require
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`it to “include[] a call to a first function”. Id. at cl. 1, 6.
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`Case 4:18-cv-07229-YGR Document 59-3 Filed 04/06/20 Page 4 of 8
`Case 1:18-cv-01519-MN Document 76 Filed 10/25/19 Page 39 of 77 PageID #: 4459
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`Indeed, as noted above, the “present invention” described in the ’154 Patent makes this
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`clear. Id. at 4:55-60 (“the present invention operates by replacing original function calls with
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`substitute function calls within the content, at a gateway computer, prior to the content being
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`received at the client computer.”).
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`Finjan’s argument that it amended a claim during prosecution to cure an antecedent basis
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`defect is irrelevant. The antecedent must use the same terminology, and Finjan curing an infirmity
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`in the claim language does not dictate the construction of “content processor”. Moreover, Finjan’s
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`attempt to rely on the ’289 Patent ignores the context of the claims. Claim 1 of the ’289 Patent is
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`directed to a gateway computer (“receiving at a gateway computer…”), while the asserted claims
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`of the ’154 Patent are directed to a client computer that receives modified content (i.e., from a
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`gateway computer), as set forth above.
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`Indeed, as the Juniper II Court found (acknowledging a prior analysis by the PTAB), the
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`context of the claims in the ’154 Patent plainly requires that the “content processor” receive content
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`that has been modified:
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`the ’154 patent specification to refers to ‘three categories of content’:
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`First, there is the “original content” that is scanned and modified at the gateway
`computer. Second, there is the “modified content” transmitted to, and received
`by, the client computer. Third is the “dynamically generated malicious content”
`that is generated at runtime and, thus, is undetected by the gateway computer in
`the “original content.”
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`The PTAB further noted that “[n]otwithstanding the variety of content
`described in the Specification, the term ‘content’ is recited broadly in all challenged
`claims as ‘content including a call to a first function’ ” (ibid.). It then explained that
`(id. at 10 (first emphasis and alteration in original, second emphasis added)):
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`Because the recited “first function” is the substituted function whose input is
`verified, the claimed “content,” in the context of the surrounding claim
`language, must refer to the modified content received at the client computer.
`See id. at 17:39–40 (“transmitting the input [of the first function call] to the
`security computer for inspection, when the first function is invoked”). The
`claimed content cannot refer to the “original content” that is received by the
`gateway computer and over the Internet because that content, according to the
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`Case 4:18-cv-07229-YGR Document 59-3 Filed 04/06/20 Page 5 of 8
`Case 1:18-cv-01519-MN Document 76 Filed 10/25/19 Page 40 of 77 PageID #: 4460
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`Specification, would be capable of generating the undetected dynamically
`generated malicious content from which the client computer is to be protected.
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`As such, the PTAB concluded that the claimed “content” refers to “data or
`information, which has been modified and is received over a network” (id. at 14
`(emphasis added)). This order agrees with the PTAB’s understanding to the extent
`that it found that the claimed “content” “has been modified.” Markman v. Westview
`Instruments, Inc., 517 U.S. 370, 389 (1996) (claims are to be construed “in a way
`that comports with the instrument as a whole”).
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`Juniper II, 387 F.Supp.3d at 1011-12. Thus, the claimed “content processor” receives modified
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`content.
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`3.
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`Plaintiff’s Reply Statement
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`The only dispute between the parties is if a construction is necessary to limit the term to
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`processing “modified” content, which is a rehash of the dispute over Term 5. Rapid7 argues the
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`content must be modified because the first and second function must be different, which is
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`incorrect for the reasons discussed above. Rapid7 ignores the Proofpoint Order, which explicitly
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`rejects its proposal that the content must be modified and the two other decisions (Bitdefender and
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`Symantec), noted in Finjan’s Opening Brief, that found no construction was necessary for this
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`term. Instead, Rapid7 asks the Court to follow the Federal Circuit’s Palo Alto Networks decision
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`and the Juniper II Order.
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`As discussed above, the Federal Circuit opinion upon which Rapid7 relies states in relevant
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`part only that “the ‘first function’ is the inspection step in which the content is assessed for safety,
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`and the ‘second function’ is when, having been deemed safe, the content is actually run.” Ex. F-
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`10 at 3. This fact is undisputed and does not require that the second function is different — i.e.,
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`the security computer can inspect the first function and confirm it is safe, and then the receiving
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`computer can safely run the same, non-inspected function.
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`The Juniper II Order relies on the statement in the specification that “Content modifier 265
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`preferably modifies original content received by the gateway computer 205, and produces
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`Case 1:18-cv-01519-MN Document 76 Filed 10/25/19 Page 41 of 77 PageID #: 4461
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`modified content, which includes a layer of protection to combat dynamically generated malicious
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`code.” Ex. A-3, ‘154 Patent at 9:13-28 (emphasis added). In relying on that embodiment to narrow
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`the claims, the Juniper II Court erred.3 First, that embodiment is just an example, as confirmed
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`by the use of the “preferably” modifier. Even preferred embodiments should not be used to limit
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`the scope of the claims where, as is the case here, they do not act to narrow the definition of
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`otherwise broad terms. Ex. D-4 at 2, Finjan, Inc. v. Proofpoint, Inc., No. 4:13-cv-05808-HSG,
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`Dkt. No. 267 (N.D. Cal. Dec. 3, 2015) (“it is improper to read limitations from the specification
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`into the claims”) (citation omitted). Second, the example in the specification discusses a “content
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`modifier,” while the claim term is a “content processor.” If the applicants intended to limit the
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`scope of the claims to require that the content be modified, they would have used the same “content
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`modifier” phrase from the specification. Instead, intending to require only that the first function
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`be processed to determine if it is safe (but not necessarily modified), the applicants drafted the
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`claim to recite “content processor.” This choice should be honored, and the claim should not be
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`rewritten through claim construction as Rapid7 urges. Laitram Corp., 163 F.3d at 1347. Finally,
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`as noted above, the term modify was specifically removed from the claim term during prosecution
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`further demonstrating that the applicant intended the term to have its plain and ordinary meaning.
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`4.
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`Defendants’ Sur-Reply Statement
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`Finjan misconstrues the Federal Circuit’s Order, and attempts to distinguish the Juniper II
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`Order by disagreeing with the underlying analysis, but the issue was identical, and Finjan lost.
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`The specification’s discussion of “content modifier 265” supports Rapid7. Indeed, the
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`specification explains that the content modifier is what modifies the content to include the
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`substitute function. Ex. A-3, 9:13-28; Figs. 2, 4. Once that modification has occurred, the gateway
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`3 This decision is on appeal to the Federal Circuit. Finjan, Inc. v. Juniper Networks, Inc., No.
`19-2405 (Fed. Cir. 2019).
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`36
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`Case 4:18-cv-07229-YGR Document 59-3 Filed 04/06/20 Page 7 of 8
`Case 1:18-cv-01519-MN Document 76 Filed 10/25/19 Page 42 of 77 PageID #: 4462
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`computer (which contains the content modifier) sends the modified content to the client computer,
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`which contains the claimed “content processor.” Thus, the “content processor” receives the
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`modified content over a network, “the content including a call to a first function,” as required by
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`every asserted claim. This is illustrated in every embodiment. Fig. 2 shows “content modifier
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`265” within “gateway computer 205” transmitting “modified content” to “client computer 210”
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`including “content processor 270”. Ex. A-3, Fig. 2. Likewise, Fig. 3 shows a “gateway computer”
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`that “replaces original function calls in content with substitute function calls” and transmits that
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`modified content to the client computer for processing. Id. at Fig. 3. Fig. 4 shows “gateway
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`computer 405” transmitting “modified content” to “client computer 410” containing “content
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`processor 470”. Id. at Fig. 4. Fig. 5 likewise shows a “gateway computer” that “replace(s) original
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`function calls with substitute function calls” at step 515 and then transmits the modified content to
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`the client for processing at step 520. Id. at Fig. 5.
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`The Bitdefender, Proofpoint, and Symantec Orders do not support Finjan’s argument. The
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`Bitdefender and Proofpoint Orders addressed whether “a content processor for (i) processing
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`content received over a network . . .” is a means-plus-function term. Ex. D-4 at 15; Ex. D-1 at 19.
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`Similarly, the Symantec Court addressed the issue of whether “content processor” means “software
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`that renders the content for interactive viewing on a display monitor.” Ex. D-5 at 16.
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`Term 7. “a call to a first function” (‘154 Patent, Claims 1, 4, 6, 10)
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`Plaintiff’s Proposed Construction
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`plain and ordinary meaning, which is “a
`call to a first function”
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`Defendants’ Proposed Construction
`a statement or instruction in the content, the
`execution of which causes the function to provide a
`service
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`1.
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`Plaintiff’s Opening Statement
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`The term “a call to a first function,” does not require construction, and should be given its
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`plain and ordinary meaning. The patentee did not act as a lexicographer and did not give any
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`37
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`Case 4:18-cv-07229-YGR Document 59-3 Filed 04/06/20 Page 8 of 8
`Case 1:18-cv-01519-MN Document 76 Filed 10/25/19 Page 77 of 77 PageID #: 4497
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`Dated: October 25, 2019
`
`OF COUNSEL:
`
`Paul J. Andre
`Lisa Kobialka
`James Hannah
`Hannah Lee
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`(650) 752-1700
`
`Aaron M. Frankel
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`(212) 715-9100
`
`OF COUNSEL:
`L. Norwood Jameson
`Matthew C. Gaudet
`David C. Dotson
`DUANE MORRIS LLP
`1075 Peachtree Street NE, Suite 2000
`Atlanta, GA 30309
`(404) 253-6900
`
`Jordana Garellek
`DUANE MORRIS LLP
`1540 Broadway
`New York, NY 10036-4086
`(212) 471-1829
`
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Philip A. Rovner
`Philip A. Rovner (# 3215)
`Jonathan A. Choa (#5319)
`Hercules Plaza
`P.O. Box 951
`Wilmington, DE 19899
`(302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Attorneys for Plaintiff
`Finjan, Inc.
`
`DUANE MORRIS LLP
`
`By: /s/ Richard L. Renck
`Richard L. Renck (# 3893)
`222 Delaware Avenue,
`Suite 1600
`Wilmington, DE 19801-1659
`(302) 657-4900
`RLRenck@duanemorris.com
`
`Counsel for Defendants
`Rapid7, Inc. and Rapid7 LLC
`
`72
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