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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`
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`FINJAN, INC.,
`
`v.
`
`Plaintiff,
`
` Case No.: 3:17-cv-0183-CAB-(BGS)
`
`CLAIM CONSTRUCTION ORDER
`
`ESET, LLC, a California Limited Liability
`and ESET SPOL. S.R.O., a Slovak
`Republic Corporation,
`
`Defendants.
`
`On September 25 and 26, 2017, the Court held a hearing to construe certain terms
`
`and phrases of the following patents: U.S. Patent Nos. 6,154,844; 6,804,780; 8,079,086;
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`9,189,621; 9,219,755; and 7,975,305. The parties submitted briefing in accordance with
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`this District’s local patent rules and the case management order. A tutorial was presented
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`by both sides to assist the Court with the history and background of the patents.
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`
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`The Court requested further briefing regarding certain terms. Having now
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`considered all the submissions of the parties, the arguments of counsel and for the reasons
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`set forth at the hearing and herein, the Court hereby enters the claim constructions set
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`forth below.
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9078 Page 2 of 11
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`A. “Downloadable” in U.S. Patent Nos. 6,154,844; 6,804,780; 8,079,086;
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`9,189,621 and 9,219,755
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`The parties seek construction of the term Downloadable as it is used in five of the
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`patents at issue. This claim term can be traced through two branches of the family tree of
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`this patent (see Attachment A) with somewhat differing definitions. The Court however
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`concludes that the variations between the definitions can be reconciled and the
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`specifications in their entirety give notice of what is encompassed by the claim term
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`Downloadable to one of skill in the art.
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`Downloadable initially appears as a defined term in the specification of the
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`6,167,520 patent, and its continuation the 6,480,962 patent, as a small executable or
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`interpretable application program which is downloaded from a source computer and run
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`on a destination computer.
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`The specification of the 6,092,194 patent, and its continuation the ‘780 patent (which
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`is at issue in this litigation), define Downloadable as an executable application program
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`which is downloadable from a source computer and run on the destination computer. The
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`specification however provides as examples of a Downloadable, application programs
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`such as Java™ applets, known as little application programs in machine language, and
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`JavaScripts™ scripts, an interpretable application program. These examples are in accord
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`with the definition, incorporated by reference, set forth in the ‘520 patent. The ‘194 patent
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`and its progeny therefore conform to the ‘520 patent’s definition of Downloadable as small
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`executable or interpretable application programs through the use of the examples in the
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`specifications. The Court finds that one of skill in the art would be able to ascertain what
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`is claimed as a Downloadable in the context of these patents, and that in light of the
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`examples provided in the ‘194 patent specification, concludes that the meaning of
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`Downloadable is consistent with the definition provided in the ‘520 patent.
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`The ‘844 patent (which is at issue in this litigation) defines Downloadable as an
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`executable application program which is downloadable from a source computer and run
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`on the destination computer and also includes references to small executable and
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9079 Page 3 of 11
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`interpretable application programs as examples of a Downloadable. The ‘844 patent
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`incorporates by reference the ‘520 patent and ‘194 patent. The Court finds that the
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`definition of Downloadable based on the ‘844 patent specification, the examples provided
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`therein and the incorporation of the ‘520 patent and the ‘194 patent, informs one of skill in
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`the art with reasonable certainty the scope of the invention. The entirety of the
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`specification’s description would inform that Downloadable includes executable and
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`interpretable application programs, in accordance with the examples and incorporated
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`references.
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`The ‘822 patent is a Continuation in Part of both the ‘962 patent and ‘780 patent and
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`incorporates those patents by reference. Its continuation patents, including the ‘086 patent,
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`‘621 patent and ‘755 patent, which are at issue in this litigation, do not include a definition
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`of Downloadable in the specification but incorporate by reference the ’962 patent and the
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`‘780 patent, and their definitions and examples of a Downloadable.
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`The Court finds that the two branches of the family tree of the patents at issue inform
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`that a Downloadable in the context of these patents means a small executable or
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`interpretable application program which is downloaded from a source computer and run
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`on a destination computer. This construction comports with the plain definition set forth
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`in the ‘520 patent and the ‘962 patent, and is supported by the written description including
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`the definition and the examples set forth in the ‘194 patent and its progeny, and in the
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`entirety of specification of the ‘844 patent.
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`The Court therefore construes the term Downloadable in all five patents as a small
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`executable or interpretable application program which is downloaded from a source
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`computer and run on a destination computer.
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9080 Page 4 of 11
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`B. U.S. Patent No. 6,154,844
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`The parties sought construction of the following phrase appearing in various claims of
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`the ‘844 patent: before the web server makes the Downloadable available to web
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`clients. The Court’s construction for this term is: Before the Downloadable is available
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`on a web server to be called up or forwarded to a web client. (‘844 @ Col. 3:32-52; Col.
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`4:65 - Col. 5:13; Figure 1.)
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`C. U.S. Patent No. 6,804,780
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` The parties sought construction of the following terms and phrases appearing in
`
`various claims of the ‘780 patent. The Court’s constructions for these terms are:
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`Claim Term
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`COURT’S CONSTRUCTION
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`software components
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`components of code that the Downloadable is
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`required to be executed
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`required to execute
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`by the Downloadable
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`(agreed construction)
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`ID generator
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`Defendant’s request for application of 112 ¶6 denied.
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`“ID generator” is not a nonce term as advocated by
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`Defendant. It is a common name for a known
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`program construct that would be familiar to one of
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`skill in the art to perform a function further identified
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`by its modifier.
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`performing a hashing
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`performing a hashing function on the
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`function on the
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`Downloadable together with its fetched software
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`Downloadable and the
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`components
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`fetched software
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`(Adopting PTO Construction from the IPR of the
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`components to generate a
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`‘780 patent April, 2016.)
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`Downloadable ID
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9081 Page 5 of 11
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`D. U.S. Patent No. 7,975,305
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`The parties sought construction of the following phrase appearing in various claims
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`of the ‘305 patent, network interface, housed within a computer. Defendant’s proposed
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`construction that “housed within a computer” necessarily limits the structure of the network
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`interface to a hardware component is declined. The specification includes software
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`interface examples. The Court therefore finds in the context of the patent, the use of
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`“housed” in contrast to “stored” does not dictate that the claim be limited to hardware
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`components. To the extent clarification is required the Court construes this phrase as
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`network interface, contained within the computer.
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`The parties agreed construction for database, a collection of interrelated data
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`organized according to a database schema to serve one or more applications, is adopted.
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`E. U.S. Patent No. 8,079,086
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` The parties sought construction of the following terms appearing in various claims
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`of the ‘086 patent. The Court’s constructions for these terms are:
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`Claim Term
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`COURT’S CONSTRUCTION
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`appended Downloadable
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`a Downloadable with a representation of the
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`DSP data attached to the end of the
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`Downloadable
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`Declaration of Dr. Spafford, ¶¶36-39, and
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`references cited therein, that one skilled in the
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`art at the time would understand “append” to
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`mean attach or add to the end of the existing file.
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`The claim recites appending a representations of
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`the DSP data to the Downloadable indicating an
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`order.
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`destination computer
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`Separate computer receiving the appended
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`Downloadable
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`3:17-cv-0183-CAB-(BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9082 Page 6 of 11
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`file appender
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`Defendant’s request for application of 112 ¶ 6 is
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`denied. “File appender” is not a nonce term as
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`advocated by Defendant. It is a common name
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`for a known program construct that would be
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`familiar to one of skill in the art to perform a
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`function further identified by its modifier.
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`Transmitter
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`Defendant’s request for application of 112 ¶ 6 is
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`denied. “Transmitter” is not a nonce term as
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`advocated by Defendant. It a common name for
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`a known program construct that would be
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`familiar to one of skill in the art.
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`F. U.S. Patent No. 9,189,621
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` The parties sought construction of the following terms appearing in various claims
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`of the ‘621 patent. The Court’s constructions for these terms are:
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`Claim Term
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`COURT’S CONSTRUCTION
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`wherein the information
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`Defendant asserts that this phrase in indefinite as
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`pertaining to the
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`it is not possible to ascertain the meaning of
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`downloadable includes
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`“information pertaining to the operation of the
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`information pertaining to
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`downloadable that is distinct from information
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`operation of the
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`pertaining to the request.” The Court finds that
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`downloadable and distinct
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`in the context of the claim in its entirety and for
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`from information pertaining
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`the reasons set forth on the record, one of skill in
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`to the request
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`the art would understand the meaning and scope
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`of this claim language, and no further
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`construction is needed.
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`a response engine for
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`Defendant asserts that use of “response engine”
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`performing a predetermined
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`is the equivalent of “means for” claiming and is
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9083 Page 7 of 11
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`responsive action based on
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`limited to the structures disclosed in the ‘520
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`the comparison
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`Patent at Figs. 5 and 6, Steps 525, 530, 540 and
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`610-30. Plaintiff asserts that “engine” is a
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`common name for a known program construct
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`that would be familiar to one of skill in the art to
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`perform a function further identified by its
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`modifier, in this case “response.” The Court
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`agrees that “engine” is not a nonce term as
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`advocated by Defendant, and that the claim
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`provides sufficient structure for one skilled in
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`the art.
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`Defendant’s request for application of 112 ¶ 6 is
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`denied.
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`a response engine for
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`Defendant asserts that “response engine” is the
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`performing a predetermined
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`equivalent of “means for” claiming and no
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`responsive action based on
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`structure to perform this function is disclosed.
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`the comparison with the
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`Plaintiff asserts that “engine” is a common name
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`information pertaining to the
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`for a known program construct that would be
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`predetermined suspicious
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`familiar to one of skill in the art to perform a
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`downloadable
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`function further identified by its modifier, in this
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`case “response.” “Engine” is not a nonce term.
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`Defendant’s request for application of 112 ¶ 6 is
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`denied.
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`Database
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`a collection of interrelated data organized
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`according to a database schema to serve one or
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`more applications
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`(joint construction)
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9084 Page 8 of 11
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`The final construction at issue with regard to the ‘621 patent is a “means for”
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`limitation. An element of a claim may be expressed as a means for performing a specified
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`function without the recital of the structure and is construed to cover the corresponding
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`structure described in the specification or equivalents thereof. 35 U.S.C. § 112, ¶ 6. The
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`limitation at issue appears in claim 15, which is dependent on claim 10.
`
`Claim 10. A system for reviewing an operating system call issued by a
`downloadable, comprising:
`…
`a plurality of operating system probes for monitoring substantially in parallel
`a plurality of subsystems of an operating system during runtime for an event
`caused from a request made by a Downloadable, wherein the plurality of
`subsystems includes a network system;
`….
`Claim 15. The system of claim 10, wherein the plurality of operating system
`probes operating substantially in parallel for monitoring the operating system
`includes means for monitoring a request sent to a downloadable engine.
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`
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`The parties agree that the “means for” element of claim 15 is governed by 35 U.S.C.
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`§ 112, ¶ 6. The patent specification must disclose with sufficient particularity the
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`corresponding structure for performing the claimed function and clearly link that structure
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`to the function. Triton Tech of Tx., LLC. V. Nintendo of Am., Inc., 753 F.3d 1375, 1378
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`(Fed. Cir. 2014). The claimed function is “monitoring a request sent to a downloadable
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`engine.” After the claim construction hearing, the Court requested supplemental briefing
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`from the parties identifying with sufficient particularity the corresponding structure in the
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`specification for performing the claimed function. [Doc. 178-1.]
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`The plaintiff refers to the specification of the ‘962 patent [Doc. No. 138-9],
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`incorporated by reference in the ‘621 patent, for the corresponding structure that supports
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`this “means for” claim. Plaintiff directs the Court to the component identified in the
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`specification as the request broker 306 described at Col. 4:12-18, Figs. 3 and 4 [id. at 6-7,
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`12] as the corresponding structure providing the function in the system of monitoring a
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`request sent to a downloadable engine. [See Doc. No. 183 at 3.]
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`3:17-cv-0183-CAB-(BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9085 Page 9 of 11
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`The specification describes the system for monitoring requests made by a
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`Downloadable 140 to a downloadable engine 250 at Col. 3:51 – Col. 5:48. [Doc. No. 138-
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`9, at 6-7, 12-13.] In the examples provided (see Figs. 3 and 4), extensions 304, 404, 405,
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`406 examine a Downloadable’s request for access to classes 302 of a Java™ Virtual
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`Machine (the downloadable engine 250) or to message calls 401, DDE calls 402 and DLL
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`calls 403 of a ActiveX™ platform (the downloadable engine 250). The Downloadable’s
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`request to the downloadable engine may be interrupted by the extension which then notifies
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`the request broker 306 of the Downloadable’s request. The request broker 306 in turn
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`forwards the request to the event router 308. [Id.]
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`The extensions 304, 404, 405, 406 monitor requests made to the downloadable engine
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`250. Col. 5:40-49 (the extensions recognize a request made by a Downloadable to the
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`downloadable engine, interrupt the processing of the request and generate and forward a
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`message identifying the incoming Downloadable to request broker which forwards the
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`message to the event router.); Col. 4:10-15 (each extension 304 manages a respective one
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`of the Java™ classes, interrupts the request and generates a message to the request broker
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`306); Col. 5:23-38 (each extension 404, 405, 406 recognizes a call to an ActiveX™
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`platform 401, 402, 403, and generates a message to the request broker 306). The request
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`broker 306 forwards the request on for further analysis and response. The structures
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`identified in the specification corresponding to a means for monitoring a request sent to
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`a downloadable engine, are the Java Class extensions 304, the Message Extension 404,
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`the Dynamic-Data-Exchange Extension 405 and Dynamically-Linked-Library Extension
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`406, and their equivalents.
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9086 Page 10 of 11
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` F. U.S. Patent No. 9,219,755
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` The parties sought construction of the following terms appearing in various claims
`
`of the ‘755 patent. The Court’s constructions for these terms are:
`
`Claim Term
`
`COURT’S CONSTRUCTION
`
`a downloadable engine for
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`Defendant asserts that “downloadable engine” is
`
`intercepting a request
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`the equivalent of “means for” claiming and the
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`message being issued by a
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`disclosed structures disclosed to perform this
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`downloadable to an operating
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`function are a Java Virtual Machine 250 or
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`system
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`Active X Platform 250 (‘960 patent, Col. 3:54-
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`56; Fig. 3; Col. 5:25-27; Fig. 4). Plaintiff asserts
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`that “engine” is a common name for a known
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`program construct that would be familiar to one
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`of skill in the art to perform a function further
`
`identified by its modifier, in this case “response.”
`
`The Court agrees that “engine” is not a nonce
`
`term as advocated by Defendant, and that the
`
`claim provides sufficient structure for one skilled
`
`in the art.
`
`Defendant’s request for application of 112 ¶ 6 is
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`denied.
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`intercepting an operating
`
`stopping a request message before the request
`
`system call being issued by
`
`message is received by the operating system
`
`the downloadable to an
`
`
`
`operating system
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`a response engine for
`
`Defendant asserts that use of “response engine”
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`receiving a violation message
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`is the equivalent of “means for” claiming and is
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`from the runtime
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`limited to the structures disclosed in the ‘520
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`10
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`3:17-cv-0183-CAB-(BGS)
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`Case 3:17-cv-00183-CAB-BGS Document 195 Filed 11/14/17 PageID.9087 Page 11 of 11
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`environment … and blocking
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`Patent, at Figs. 5 and 6, Steps 525, 530, 540 and
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`… and allowing ….
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`610-30. Plaintiff asserts that “engine” is a
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`common name for a known program construct
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`that would be familiar to one of skill in the art to
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`perform a function further identified by its
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`modifier, in this case “response.” The Court
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`agrees that “engine” is not a nonce term as
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`advocated by Defendant, and that the claim
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`provides sufficient structure for one skilled in the
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`art. Defendant’s request for application of 112 ¶6
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`is denied.
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`It is SO ORDERED.
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`Dated: November 14, 2017
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`11
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`3:17-cv-0183-CAB-(BGS)
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`