Case 4:18-cv-07229-YGR Document 177-1 Filed 03/25/21 Page 1 of 9
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`Exhibit A
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`Case 4:18-cv-07229-YGR Document 177-1 Filed 03/25/21 Page 2 of 9
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
` Case No.: 3:17-cv-0183-CAB-BGS
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`ORDER ON DEFENDANTS’
`RENEWED MOTION FOR
`SUMMARY JUDGMENT OF
`INDEFINITENESS
`[Doc. No. 806]
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`Plaintiff,
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`FINJAN, INC.,
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`v.
`ESET, LLC, a California Limited Liability
`and ESET SPOL. S.R.O., a Slovak
`Republic Corporation,
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`Defendants.
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`Before the Court is the renewed motion of Defendants ESET, LLC and ESET spol.
`s.r.o (collectively “ESET”) for summary judgment to invalidate Plaintiff Finjan’s United
`States Patent Nos. 6,154,844; 6,804,780; 8,079,086; 9,189,621; and 9,219,755 (“the
`patents at-issue”) as indefinite pursuant to 35 U.S.C. § 112 based on this Court’s
`construction of the claim term “Downloadable.” The motion is fully briefed, and the Court
`deems it suitable for submission without oral argument.
`Background
`I.
`This motion has an unusual history. ESET filed a motion for summary judgment
`asserting that the patents at-issue are indefinite at the close of fact discovery in this case,
`and the Court held argument on September 26, 2019. Finding that there were factual
`disputes regarding what a skilled artisan in 1997 would have understood constituted a
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`Case 4:18-cv-07229-YGR Document 177-1 Filed 03/25/21 Page 3 of 9
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`“Downloadable” based on the Court’s construction of that term, the Court denied the
`motion without prejudice. [Doc. No. 699.] It was anticipated that trial testimony would
`establish what was generally understood in the art in 1997 as a “Downloadable” and such
`testimony would inform the scope of infringement. [Doc. No. 697, at 22:3-15.]
`A jury trial commenced in this case on March 10, 2020. After three trial days the
`Court was forced to vacate the remainder of the trial, excuse the jury and declare a mistrial
`due to the COVID-19 pandemic and the issuance of the State of California’s stay-home
`order. [Doc. No. 783.] This District’s continuing moratorium on civil jury trials and
`backlog of criminal jury trials currently precludes scheduling a new trial in this matter.
`Having heard testimony from Finjan’s expert during the vacated trial on this issue,
`however, the Court permitted ESET to renew this motion in consideration of the testimony
`that was taken. Although Finjan’s patents have been the subject of much litigation, and
`the term “Downloadable” has been construed by other courts, the issue raised in ESET’s
`current motion does not appear to have been addressed by any prior constructions.
`Finjan is the owner of a large family tree of patents for security systems and methods
`of detecting malware in computer programs. Finjan has litigated many of their patents,
`including some of the patents at-issue in this motion, in other district courts. Many have
`also been subject to inter partes review by the Patent and Trademark Office (PTO). The
`Federal Circuit has issued at least nine opinions, precedential and non-precedential, on
`appeals from district courts and the PTO regarding Finjan patents. Yet none of these orders
`or opinions discuss how earlier references incorporated into the patents at-issue inform the
`construction of the term “Downloadable.”
`II. The Construction of “Downloadable”
`In 2017, Finjan filed this litigation against defendants ESET asserting infringement
`of the patents at-issue, and United States Patent No. 7,975,305.1 Finjan claims priority for
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`1 The ‘305 patent is not subject to this motion as it does not include the claim term “Downloadable.”
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`Case 4:18-cv-07229-YGR Document 177-1 Filed 03/25/21 Page 4 of 9
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`the patents at-issue back to an application filed on November 8, 1996, Provisional
`Application 60/030639. [Doc. No. 139-24.] The application is directed at “a system and
`method for protecting computers from hostile Downloadables,” described as executable
`application programs automatically downloaded from a source computer and run on the
`destination computer that might carry computer “viruses.” [Id., at 5-6.] The claim term
`“Downloadable” is presented as a capitalized term in the provisional application and all the
`patents at-issue, signaling it is a specifically defined term. The definition of
`“Downloadables,” however, is not consistent throughout Finjan’s subsequently issued
`patents. The explicit definitions include:
`• “applets” (little applications) described in the 1990s as small interpreted or
`executable programs. See Provisional Application 60/030639 (filed
`November 8, 1996) [Id. at 5-6.]
`• “Downloadables (i.e., applets)” as “a small executable or interpretable
`application program which is downloaded from a source computer and run
`on a destination computer,” in conformity with the original provisional
`application. See U.S. Patent No. 6,167,520, at Col. 1:31-34 (application filed
`January 29, 1997); U.S. Patent No. 6,480,962, at Col. 1:38-41 (filed April 18,
`2000).
`• “an executable application program which is downloaded from a source
`computer and run on a destination computer” (without “i.e., applet,” “small”
`or “interpretable” included in the definition but using applets and
`interpretable programs as examples of a “Downloadable” and incorporating
`the earlier definition by reference). See U.S. Patent No. 6,092,194, at Col.
`1:44-55 (filed November 6, 1997); U.S. Patent No. 6,804,780 at Col. 1:50-60
`(filed March 30, 2000).
`Other district courts have determined that “Downloadable” lacked ordinary meaning
`when the patents were filed and construed it as “an executable application program which
`is downloaded from a source computer and run on a destination computer,” applying the
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`Case 4:18-cv-07229-YGR Document 177-1 Filed 03/25/21 Page 5 of 9
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`explicit definition from the ‘194 patent. [Doc. No. 139-10, at 3; Doc. No. 138-4, at 2-5 (the
`term was not amenable to plain and ordinary meaning and the patent applicant intended to
`act as the lexicographer of this term, therefore the specification definition controls).] None
`of these orders, however, discussed the significance of the ‘520 patent’s definition
`incorporated into the ‘194 patent and its continuations. One district court, without
`explanation, applied the broader definition from the ‘194 patent specification to the
`construction of the term “Downloadable” in the ‘962 patent as “the same” definition [id.,
`at 3, fn. 4], disregarding the fact the ‘962 patent explicitly defines “Downloadable” as “a
`small executable or interpretable application program which is downloaded from a source
`computer and run on a destination computer.” See U.S. Patent No. 6,480,962, at Col. 1:39-
`41 (emphasis added).
`Incorporation by reference provides a method for integrating material from various
`documents into a host document by citing such material in a manner that makes clear that
`the material is effectively part of the host document as if it were explicitly contained
`therein. See Trustees of Columbia Univ. v. Symantec, 811 F.3d 1359, 1365-66 (Fed. Cir.
`2016) (citing Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir.
`2000) (provisional applications incorporated by reference are effectively part of the
`specification as though it was explicitly contained therein.)). By incorporating the earlier
`definition of “Downloadable” from the ‘520 Patent into the ‘194 Patent and subsequent
`continuations (including the patents at-issue), the scope of the term is limited to “small
`executable or interpretable application programs,” and not all executable application
`programs (emphasis added). See Symantec, 811 F.3d at 1365 (rejecting a broad
`interpretation of a claim term in part because a provisional application incorporated by
`reference the same term more narrowly defined.) Inconsistent language used later cannot
`support a broad claim construction when the explicit definition is incorporated from earlier
`patents in the family tree.
`In this case, the Court concluded that based on its incorporation by reference in all
`the patents at-issue, the explicit definition of “Downloadables” from the ‘520 patent and
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`Case 4:18-cv-07229-YGR Document 177-1 Filed 03/25/21 Page 6 of 9
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`the ‘962 patent, which is supported by the examples provided in the specification, is the
`proper construction of “Downloadables” – “a small executable or interpretable application
`program which is downloaded from a source computer and run on a destination computer.”
`[Doc. No. 195.]
`III. The Indefiniteness Determination
`The Court’s claim construction, not unexpectedly, resulted in the present dispute as
`to the scope of the modifier “small.” ESET argues that “small” is a term of degree with
`not technical meaning or defined boundaries and there is insufficient information in the
`intrinsic record for a skilled artisan to have clear notice of what constitutes a “small
`executable or interpretable application program.” They further argue that this is
`demonstrated by the inability of Finjan’s experts to come to a consistent opinion as to what
`objective boundaries constitute a small application program. [806-1, at 5, 17.]
`The definiteness requirement of paragraph 2 of 35 U.S.C. §112 requires that the
`“specification shall conclude with one or more claims particularly pointing out and
`distinctly claiming the subject matter which the applicant regards as his invention.” The
`definiteness requirement focuses on whether “a patent’s claims, viewed in light of the
`specification and prosecution history inform those skilled in the art about the scope of the
`invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
`898, 910 (2014). The inquiry “trains on the understanding of a skilled artisan at the time
`of the patent application.” Id. at 911.
`Terms of degree must provide sufficient certainty to one of skill in the art to afford
`clear notice of what is claimed and what is still open to the public. See Biosig Instruments,
`Inc. v. Nautilus, Inc., 738 F.3d 1374, 1378 (Fed. Cir. 2015) (“When a ‘word of degree’ is
`used, the court must determine whether the patent provides ‘some standard for measuring
`that degree.’”); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014)
`(the definiteness standard must allow for a modicum of uncertainty but must also require
`clear notice of what is claimed thereby apprising the public of what is still open to them).
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`Case 4:18-cv-07229-YGR Document 177-1 Filed 03/25/21 Page 7 of 9
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`Finjan’s contention that the claim term “Downloadable” cannot be indefinite simply
`because the Court was able to construe it by adopting the explicit definition provided by
`the inventor in the ‘520 patent fails to address the issue raised by ESET. A defined term is
`still indefinite if a person of ordinary skill in the art cannot translate the definition into
`meaningfully precise claim scope. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
`1244, 1251 (Fed. Cir. 2008). The issue therefore is whether a skilled artisan in 1997 would
`have understood with reasonable certainty based on the specification and prosecution
`history what the inventor meant by a “small” application program and therefore understood
`what comes within the scope of the claims.
`The ‘510 patent, incorporated into all the later patents, describes a Downloadable as
`an “applet,” a small interpretable or executable application program, and provides that “a
`Downloadable is used in a distributed environment such as the Java™ distributed
`environment produced by Sun Microsystems or in the Active X™ distributed environment
`produced by Microsoft Corporation.” See ‘520 Patent, at Col. 1:31-32, 34-38. Because
`such examples existed in the 1990s, there should be an objective standard for the size of a
`“small” program. While “absolute or mathematical precision” was not required, some
`objective boundary should be identifiable from the disclosed embodiments. See Biosig
`Instruments, 738 F.3d at 1381.
`Finjan opposed ESET’s initial motion for summary judgment for indefiniteness as
`to the scope of “small” on the grounds that a numerical limitation or cut-off is not necessary
`because a skilled artisan could determine if an application is “small” from the examples in
`the ‘962 patent and based on the context. Finjan, however, did not provide an explanation
`as to how that skilled artisan would therefore interpret “small” or the context that would
`apply. [Doc. No. 610, at 8 and 15.]2
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`2 Finjan has also argued that the Court should reconsider its incorporation of “small” into the construction
`of Downloadable and disregard that modifier as other district courts have done to avoid this definiteness
`issue. [Doc. No. 812, at 6.] This solution may resolve Finjan’s problem with defining “small,” but the fact
`that the Court’s construction results in indefiniteness is not a basis for reconsideration.
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`ESET argued then, as it does now, that Finjan’s experts did not provide any objective
`boundaries for a “small” application program based on what a skilled artisan would have
`understood was upper end of “small” in the context of application programs being
`downloaded from a source computer to run on a destination computer at the time the
`application was filed. [Doc. No. 816, at 5.] Finjan’s contention that the understanding of
`what is “small” depends on the context is not supported by the intrinsic evidence or even
`extrinsic evidence of the state of the art at the relevant time. It amounted to “unpredictable
`vagaries of any one person’s opinion” and therefore failed to provide sufficient notice as
`to the scope of the term. Interval Licensing, 766 F.3d at 1371 (“[A] term of degree fails to
`provide sufficient notice of its scope if it depends on the unpredictable vagaries of any one
`persons’ opinion.”)
`ESET contends that the trial testimony of Finjan expert Dr. Eric Cole did not remedy
`this defect.3 Dr. Cole presented an explanation how a skilled artisan would interpret
`“small” that was neither disclosed in his previous declaration to the Court (small meant “a
`few megs … something that is not multiple gigs or really large” [Doc. No. 806-1, at 17])
`or anchored to the specification or prosecution history. Rather than providing a range of
`application size that would have been construed as “small” by an artisan in 1997, Dr. Cole
`testified on Finjan’s behalf that an application would be understood to be small if it “did
`not require installation” and opined that “small” depends not on size but on the function.
`Dr. Cole testified that a small executable is an application that does not require installation
`is “self-contained” and is “just running automatically” which is “typical if you go to any
`website nowadays,” whereas an executable that is not small “requires installation” and has
`“a lot of shared libraries and dlls and other programs” in order to run. [Doc. No. 812, at
`12.] Dr. Cole testified that regardless of time period, Internet speed and other factors related
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`3 Although the trial was terminated early due to the pandemic, Dr. Cole’s testimony was completed. Finjan
`suggests that Dr. Cole’s testimony at a future trial will replace his completed testimony, but a subsequent
`trial is not an opportunity for Dr. Cole to change his opinions or supplement them with support he did not
`provide on the record at the first trial. [Doc. No. 816, at 11.]
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`to capacity, what fits the criteria of “small” may change but this distinction (installed or
`not installed) is constant. Dr. Cole did not however provide support from the specification,
`the prosecution history, or from any extrinsic sources in the relevant time period, for this
`new explanation that a skilled artisan in 1997 would understand “small” to be “uninstalled”
`or “not requiring installation.”
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`In sum, Finjan never offered evidence of a reasonable range for the size of a small
`executable or interpretable application program as understood by a skilled artisan in 1997
`based on examples provided in the patent specification. Instead, Finjan elected at trial to
`offer a new understanding without reference to the size of the application as the objective
`boundary of a “small” application. Finjan’s new definition is not supported by the
`specification or prosecution history. It may be convenient to support Finjan’s
`infringement contentions against ESET’s accused devices, but Finjan’s new explanation
`does provide clear notice of what constitutes a “small executable or interpretable
`application program.”
`IV. Conclusion
`For the foregoing reasons, the Court finds that the term “Downloadable” as used
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`in the patents at-issue is indefinite. Accordingly, it is hereby ORDERED that ESET’s
`motion for summary judgment of invalidity of Finjan’s United States Patent Nos.
`6,154,844; 6,804,780; 8,079,086; 9,189,621; and 9,219,755 for indefiniteness is
`GRANTED.
`It is SO ORDERED.
`Dated: March 23, 2021
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