Case 3:17-cv-00183-CAB-BGS Document 812 Filed 09/11/20 PageID.39653 Page 1 of 21
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`PAUL ANDRE (SBN 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (SBN 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (SBN 237978)
`jhannah@kramerlevin.com
`KRAMER LEVIN NAFTALIS
`& FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`SAN DIEGO DIVISION
`Case No. 3:17-cv-00183-CAB-BGS
`FINJAN, INC., a Delaware Corporation,
`
`
`MEMORANDUM OF POINTS AND
`AUTHORITIES IN SUPPORT OF
`PLAINTIFF FINJAN, INC.’S
`OPPOSITION TO DEFENDANT’S
`RENEWED MOTION FOR
`SUMMARY JUDGMENT OF
`INVALIDITY BASED ON
`INDEFINITENESS OF THE TERM
`“DOWNLOADABLE”
`
`Judge: Hon. Cathy Ann Bencivengo
`
`PER CHAMBERS RULES, NO ORAL
`ARGUMENT UNLESS ORDERED BY
`THE COURT
`
`
`
`Plaintiff,
`
`v.
`
`
`
`
`ESET, LLC, a California Limited
`Liability Corporation, and ESET SPOL.
`S.R.O., a Slovak Republic Corporation,
`
`
`Defendants.
`ESET, LLC, a California Limited
`Liability Corporation, and ESET SPOL.
`S.R.O., a Slovak Republic Corporation,
`
`
`Counterclaim-Plaintiffs,
`
`v.
`
`
`
`FINJAN, INC., a Delaware Corporation,
`
`
`
`Counterclaim-Defendant.
`
`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`CASE NO. 3:17-cv-00183-CAB-BGS
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`TABLE OF CONTENTS
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`I. 
`II. 
`
`C. 
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`D. 
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`Page
`INTRODUCTION ................................................................................................... 1 
`PROCEDURAL BACKGROUND ......................................................................... 2 
`A. 
`This Court Construed “Downloadable” to Include “Small” ......................... 2 
`B.  Dr. Spafford and Eset Understood and Applied the Term Downloadable
`And “Small” During Discovery .................................................................... 3 
`Finjan’s Experts Understood and Applied the Term Downloadable And
`“Small” During Discovery ............................................................................ 4 
`The Court Denied Eset’s Summary Judgment Motion On Indefiniteness
`Pending Trial Testimony ............................................................................... 4 
`III.  ARGUMENT ........................................................................................................... 6 
`A.  Dr. Cole’s Testimony Does not Support Indefiniteness ............................... 7 
`1. 
`Dr. Cole’s Mistrial Testimony Clearly Explains “Small” And Is
`Consistent With The Patent Specifications ......................................... 8 
`Dr. Cole’s Mistrial Testimony Is Consistent With Finjan’s Experts’
`Deposition Testimony ......................................................................... 9 
`Eset’s Has No Expert Testimony to Rebut Finjan’s Experts and has Itself
`Demonstrated that Downloadable can be Applied as Construed ................ 13 
`To the Extent Any Issue Surrounding “Small” Remains, It Is An Issue of
`Fact .............................................................................................................. 16 
`IV.  CONCLUSION ...................................................................................................... 16 
`
`2. 
`
`B. 
`
`C. 
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Acumed v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007) ............................................................................ 16
`BASF Corp. v. Johnson Matthey Inc.,
`875 F.3d 1360 (Fed. Cir. 2017) ................................................................ 6, 12, 15
`Biosig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374 (Fed. Cir. 2015) ...................................................................... 6, 11
`Cox Commc’ns, Inc. v. Sprint Commc’n Co.,
`838 F.3d 1224 (Fed. Cir. 2016) .......................................................................... 13
`DDR Holdings,LLC v Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) .......................................................................... 11
`Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc.,
`214 F.3d 1302 (Fed. Cir. 2000) .......................................................................... 12
`Enzo Biochem, Inc. v. Applera Corp.,
`599 F.3d 1325 (Fed. Cir. 2010) .......................................................................... 11
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 13-cv-3999-BLF, 2014 WL 5361976 (N.D. Cal.) ......................................... 2
`Finjan, Inc. v. McAfee, Inc.,
`No. 10:cv-00593-GMS, 2012 WL 12905833 (D. Del.) ....................................... 2
`Finjan, Inc. v. Proofpoint, Inc.,
`No. 13-cv-5808-HSG, 2015 WL 7770208 (N.D. Cal. Dec. 3, 2015) ................... 2
`Finjan, Inc. v. Symantec Corp.,
`No. 14-CV-02998-HSG, 2017 WL 550453 (N.D. Cal. Feb. 10, 2017) ............... 2
`Honeywell Int’l Inc. v. Universal Avionics Sys. Corp.,
`488 F.3d 982 (Fed. Cir. 2007) ............................................................................ 15
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014) .......................................................................... 12
`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`424 F.3d 1374 (Fed. Cir. 2005) .......................................................................... 11
`Liqwd, Inc. v. L’Oréal USA, Inc.,
`720 Fed. Appx. 623 (Fed. Cir. 2018) ............................................................ 13, 14
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .................................................................................... 6, 8, 11
`PPG Industries v. Guardian Industries Corp.,
`156 F.3d 1351 (Fed. Cir. 1998) .......................................................................... 16
`Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC,
`824 F.3d 999 (Fed. Cir. 2016) .................................................................... 1, 7, 12
`Sonix Tech. Co. v. Publ’ns. Int’l, Ltd.,
`844 F.3d 1370 (Fed. Cir. 2017) .............................................................. 12, 14, 15
`X One, Inc. v. Uber Techs., Inc.,
`No. 16-CV-06050-LHK, 2017 WL 3581184 (N.D. Cal. Aug. 18, 2017) ............ 6
`Rules
`Fed. R. Civ. P. 37(c)(1) ............................................................................................ 15
`Other Authorities
`Finjan Software Ltd. v. Secure Computing Corp.,
`No. 06-cv-369, Dkt. No. 142 (D. Del. Dec. 11, 2007) ......................................... 2
`Finjan, Inc. v. Sophos, Inc.,
`No. 14-cv-1197-WHO, Dkt. No. 54 (N.D. Cal.) .................................................. 2
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`IPR2016-00165, Paper No. 7 (P.T.A.B. Apr. 21, 2016) ...................................... 2
`
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` 
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`INTRODUCTION
`Defendants’ Eset, LLC and Eset SPOL. S.R.O. (collectively “Defendants” or
`“Eset”) Renewed Motion for Summary Judgment of Invalidity Based on Indefiniteness
`of the Term “Downloadable” (“Eset’s Motion”) should be denied because Eset cannot
`establish by clear and convincing evidence the term cannot be applied with a reasonable
`level of certainty.
`First, the evidence shows that both Finjan and Eset, and their respective experts
`are able to understand and apply the phrase “Downloadable,” including where the term
`was construed to include the word “small” with at least a “reasonable certainty,” which
`is all that is required under the law. Finjan’s expert Dr. Cole testified during March
`2020 mistrial in a manner confirming the definiteness of this term, explaining that a
`small executable is one that does not require installation. Eset’s own expert Dr.
`Spafford never opined that Downloadable is indefinite, and instead applied the term for
`his analysis. As such, Eset does not have any expert testimony supporting its position
`that the term cannot be applied as construed. Eset also undercuts its position in its
`invalidity contentions, where Eset applied the term as construed and includes no claim
`that Downloadable is indefinite.
`Second, Downloadable should not be found to be indefinite because claims
`should be construed to preserve their validity when amenable to more than one
`construction. Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, 824 F.3d
`999, 1004 (Fed. Cir. 2016) (a claim should be construed to preserve its validity). As
`multiple other Courts have construed the term “Downloadable” without including the
`term “small,” this shows that the term is amenable to interpretations without the
`inclusion of this term. Therefore, if inclusion of “small” raises an indefiniteness issue, it
`should be construed in a manner consistent with these other courts’ constructions.
`Third, at a minimum, the Court should not rule on this Motion without a complete
`trial record, which it indicated it stated it wanted to see before reaching a decision. Eset
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`apparently seeks to avoid given the timing of its Motion, since additional Finjan experts
`and Eset’s own Dr. Spafford, would provide trial testimony showing that this term is
`readily understandable within a reasonable certainty.
`II.
`PROCEDURAL BACKGROUND
`A. This Court Construed “Downloadable” to Include “Small”
`In its November 14, 2017 Claim Construction Order, this Court construed
`Downloadable as “a small executable or interpretable application program which is
`downloaded from a source computer and run on a destination computer.” Doc. No. 195
`at 2. Multiple other courts and the Patent Trial and Appeal Board (PTAB) have all
`construed Downloadable in multiple cases and IPRs without the word “small” and
`without any issue regarding definiteness. See, e.g., Finjan Software Ltd. v. Secure
`Computing Corp., No. 06-cv-369, Dkt. No. 142 (D. Del. Dec. 11, 2007) (construing
`Downloadable as “an executable application program, which is downloaded from a
`source computer and run on the destination computer”); Finjan, Inc. v. Symantec Corp.,
`No. 14-CV-02998-HSG, 2017 WL 550453, at *2 (N.D. Cal. Feb. 10, 2017) (same);
`Finjan, Inc. v. McAfee, Inc., No. 10:cv-00593-GMS, 2012 WL 12905833 (D. Del.)
`(same); Finjan, Inc. v. Sophos, Inc., No. 14-cv-1197-WHO, Dkt. No. 54 (N.D. Cal.)
`(same); Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-5808-HSG, 2015 WL 7770208 (N.D.
`Cal. Dec. 3, 2015) (same); Palo Alto Networks, Inc. v. Finjan, Inc., IPR2016-00165,
`Paper No. 7 (P.T.A.B. Apr. 21, 2016) (same); Juniper Networks, Inc. v. Finjan, Inc.,
`No. IPR2019-00026, Paper 7 (P.T.A.B. Apr. 9, 2019) (same); Blue Coat Sys. LLC v.
`Finjan, Inc., IPR2017-00997, Paper 7 (P.T.A.B. Sept. 5, 2017) (same); Finjan, Inc. v.
`Blue Coat Sys., Inc., No. 13-cv-3999-BLF, 2014 WL 5361976 (N.D. Cal.) (adopting
`agreed upon construction of Downloadable for ‘844 Patent).
`
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`B. Dr. Spafford and Eset Understood and Applied the Term
`Downloadable And “Small” During Discovery
`Eset and its expert Dr. Spafford understood and applied the term Downloadable
`during discovery, including the term “small.” Dr. Spafford submitted invalidity and
`noninfringement reports on November 30, 2018, and February 15, 2019, respectively.
`Dr. Spafford offered no opinion in these reports in support of Eset’s contention that the
`term Downloadable or “small” are indefinite. Dr. Spafford has also never provided any
`non-infringement position based on “small.” To the contrary, Dr. Spafford understood
`the term Downloadable and in particular the term “small,” as evidenced in his reports
`where he explains that various programs and applications are “small” and he cites to
`dictionaries and references using the term “small”:
`
` “… API calls with internal SymEvent routines, called ‘stubs.’ The stubs are
`small routines that examine the incoming requests….” Doc. No. 609, Ex. 2
`(Spafford Inv. Rpt.) ¶ 538 (emphasis added).
`
` “An applet typically is a small program residing on a server ….” Id., Ex. 2
`(Spafford Inv. Rpt.) at Exhibit B-1 p. 3 (emphasis added).
`
` “… a computing device (e.g., first computer 210, third computer, etc.) can
`download ‘[a]pplets, which are small programs compiled to an intermediate
`form.’” Id., Ex. 2 (Spafford Inv. Rpt.) at Exhibit A-3 p. 16 (emphasis added).
`
` “… one ordinarily skilled in the art at the time of the alleged invention: ‘a
`small application program that can be called up for use while working in
`another application.’” Id., Ex. 2 (Spafford Inv. Rpt.) at Exhibit D-1 p. 13
`(emphasis added).
`
` “A person of ordinary skill in the art would have understood that …any form
`of executable, to Java applications/code as specifically referenced, and other
`form of small applications as well….” Id., Ex. 2(Spafford Inv. Rpt.) at Exhibit
`D-6 at p. 11 (emphasis added).
`Thus, Eset’s expert contradicts Eset’s contention that a skilled person cannot determine
`whether an executable or interpretable application is “small.”
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`OPP. RE: DOWNLOADABLE
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`Eset’s Invalidity Contentions assert various references that use the term “small”
`application (similar to Dr. Spafford’s report), and without claiming any indefiniteness,
`which further demonstrates that persons skilled in the art understand with reasonable
`certainty the meaning of a “small” program. Doc. No. 610-12 (Third Amended
`Invalidity Contentions) at Exhibit B-4, pp. 1-2, 5-6. Thus, Eset, like its technical expert,
`understood the term and was able to apply this Court’s construction of the term.
`
`C.
`
`Finjan’s Experts Understood and Applied the Term Downloadable
`And “Small” During Discovery
`Finjan’s experts, including Drs. Cole, Mitzenmacher, Medvidovic and Goodrich,
`consistently testified at their depositions about their understanding of Downloadable and
`“small” as skilled artisans in the technology of Finjan’s patents. These experts
`explained that based on their understanding of the term in view of the specification,
`strict numerical limits cannot be placed on “small,” and that instead, determining
`whether an executable is small under the patents depends on the context. In response to
`questions seeking examples of “small,” they explained that certain examples would be
`“small,” such as embedded web-based content (which does not require installation), and
`certain examples would not be small, such as Microsoft Word (which requires
`installation). Doc. No. 478-5 (Cole Tr.) at 171:15-172:20, Doc. No. 478-7 (Medvidovic
`Tr.) at 116:12-117:13, Doc. No. 478-6 (Mitzenmacher Tr.) at 71:12-72:5; 72:15-73:10;
`Doc. No. 478-8 (Goodrich Tr.) at 103:7-105:1.
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`D. The Court Denied Eset’s Summary Judgment Motion On
`Indefiniteness Pending Trial Testimony
`Eset first raised its claim that Downloadable is indefinite based on “small” in its
`April 23, 2019 summary judgment motion seeking invalidity on this basis. On October
`16, 2019, the Court denied Eset’s summary judgment motion, noting that Eset would
`need to “demonstrat[e] this invalidity defense at trial.” Doc. No. 699 at 6. During the
`summary judgment hearing, the Court explained:
`4
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`I’m going to reserve on this motion…[Eset has] a clear and convincing
`evidence standard on this issue, and I may revisit this after I hear testimony
`and cross-examination on what these – it’s kind of hard to read this in the
`context of everybody’s cross-opinions. But without an invalidity – or I’m
`sorry, a noninfringement opinion that specifically states that no one can
`understand where the scope of this is, and maybe it’s in there and you can
`point that out when your expert testifies, I’m not convinced by clear and
`convincing evidence that a person of ordinary skill in the art would not
`understand based on the examples provided in the patent what we’re
`talking about
`in
`terms of
`these kinds of programs
`that are
`downloadable…”
`
`Wells Ex. 11 (Sept. 26, 2019 Hr’g Tr.) at 22:3-15 (emphasis added). As noted
`above, Eset’s expert Dr. Spafford never offered an opinion in his expert reports that
`Downloadable was indefinite as construed by the Court.
`During the March 2020 trial, Finjan’s infringement expert Dr. Cole provided clear
`testimony—consistent with his and other Finjan experts’ deposition testimony—
`explaining that a small executable is one that does not require installation. See Wells Ex.
`2 (Day 2 Trial Tr.) at 314:5-333:3. Following Dr. Cole’s testimony and the partial
`testimony of another Finjan infringement expert Dr. Mitzenmacher, the Court declared a
`mistrial based on the coronavirus pandemic. Doc. No. 783. As a result, Finjan had not
`rested its case-in-chief or presented all of its evidence. Dr. Mitzenmacher did not
`complete his testimony, and Finjan’s remaining infringement expert Dr. Medvidovic did
`not testify at all. No Finjan validity expert testified. While Dr. Cole did testify, one of
`the few witnesses to do so, he will be testifying again at the future trial, replacing his
`testimony from the March 2020 mistrial.
`Additionally, no Eset rebuttal witnesses testified. In particular, Dr. Spafford,
`Eset’s expert regarding infringement and validity issues, did not testify. Furthermore,
`                                                            
`1 Unless otherwise noted, all exhibits are attached to the Declaration of Benu Wells in
`support of this opposition.
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`OPP. RE: DOWNLOADABLE
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`and as discussed above, he has no basis to set forth an indefiniteness opinion on the term
`anyway. As such, the Court did not hear complete “testimony and cross-examination,”
`which was the Court’s basis for reserving on Eset’s original motion.
`
`III. ARGUMENT
`Eset’s Motion should be denied because Eset falls far short of raising clear and
`convincing evidence to show that Downloadable is indefinite, and Downloadable is
`amenable to constructions not including “small.” At a minimum, there are disputes as
`to material facts, particularly when viewed in the light most favorable to Finjan, which
`preclude summary judgment. Fed. R. Civ. P. 56(a).
`First, Eset’s unsupported contention that Finjan’s patent specifications do not
`inform a skilled artisan what is meant by “small” goes against all of the evidence,
`including Finjan’s experts’ testimony, Eset’s invalidity expert opinion and Eset’s
`positioning in the case. Thus, as discussed in detail below, Eset does not come close to
`satisfying the clear and convincing evidence standard necessary for establishing
`indefiniteness. Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377 (Fed. Cir.
`2015) (indefiniteness must be proven by clear and convincing evidence). At a
`minimum, the meaning of “small” meets the Supreme Court’s test for §112, ¶ 2 in
`Nautilus, only requiring “that 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); see, e.g., BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1368 (Fed. Cir.
`2017) (finding the term “effective to catalyze” definite where a “skilled artisan would be
`informed by the specification’s numerous examples”); X One, Inc. v. Uber Techs., Inc.,
`No. 16-CV-06050-LHK, 2017 WL 3581184, at *26 (N.D. Cal. Aug. 18, 2017) (“[T]he
`Court finds that the ‘stranded motorist or hiker’ embodiment does inform the meaning
`of ‘use-specific group’ because it gives a concrete example of a ‘group’”). At the very
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`least, there are factual disputes raised by the experts’ opinions and testimony (which has
`yet to be completed), precluding summary judgment.
`Second, this Court construed Downloadable to include “small” even though it
`deviated from the way other various other courts and the PTAB have construed
`Downloadable. Because claims should be construed to preserve their validity when
`amenable to more than one construction, the Court’s construction should not now be a
`basis for invalidity. Ruckus Wireless, 824 F.3d at 1004 (a claim should be construed to
`preserve its validity).
`
`A. Dr. Cole’s Testimony Does not Support Indefiniteness
`As a preliminary matter, Dr. Cole’s testimony should not be considered for the
`purposes of this Motion, as it was the result of a mistrial. Eset has provided no basis to
`show that this incomplete record and testimony can be considered for the Court to rule
`on a summary judgment motion. This would be particularly problematic, as at least two
`Finjan witnesses, Drs. Mitzenmacher and Medvidovic, were still to testify on the term
`and its application. At a minimum, the Motion should be deferred until there is a full
`trial record with complete “testimony and cross examination,” which the Court sought
`when it denied Eset’s original motion. Doc. No. 699 at 5-6. A severe decision of
`invalidity should not be made on an incomplete record. Dr. Cole’s testimony from the
`mistrial will be replaced by his testimony at the future trial, and Finjan’s other experts
`will provide complete testimony. If needed, Finjan should have the opportunity to
`develop the record with these other experts whose deposition testimony Eset cites in
`purported support of its Motion. Similarly, Eset’s expert, Dr. Spafford, did not testify
`at the mistrial. Finjan should have the opportunity to cross-examine him at trial,
`including about his ability to readily apply a term that Eset now claims is indefinite.
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`1.
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`Dr. Cole’s Mistrial Testimony Clearly Explains “Small” And Is
`Consistent With The Patent Specifications
`Despite the fact that it should not be considered, as it is part of an incomplete
`record, Dr. Cole’s testimony does nothing but confirm that there is no indefiniteness
`issue. Specifically, Dr. Cole explained that a small executable is one that does not
`require installation. See Wells Ex. 2 (Day 2 Trial Tr.) at 314:5-333:3. This is how a
`person of ordinary skill in the art would understand the term based on the written
`description of the ‘844 Patent, as Dr. Cole explained. Wells Ex. 3 (Day 3 Trial Tr.) at
`401:10-402:5; 405:12-20. This understanding is consistent with examples in the
`specification, such as Java applets, ActiveX controls, JavaScript scripts, or Visual Basic
`scripts, which the Court relied on in part in denying Eset’s motion for summary
`judgment. Doc. No. 699 at 5-6; ’844 Patent at 1:48-56. Therefore, there is no doubt that
`this term can be understood by a skilled artisan with “reasonable certainty.” Nautilus,
`572 U.S. at 910.
`Dr. Cole’s explanation of “small” accounts for size, contrary to Eset’s claims in
`its Motion. As Dr. Cole elaborated during his testimony, a small executable, i.e., one
`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. Wells Ex. 3 (Day 3 Trial Tr.) at 457:11-20. Dr. Cole further
`testified that his understanding of the criteria for “small” is consistent regardless of time
`period (e.g., the 1990s or today), Internet speed and other factors related to capacity,
`even if what fits that criteria may change. Id. at 413:21-414:15. However, as Dr. Cole
`explained, there is no precise numerical size range for a small executable. See, e.g., id.
`at 400 (“[A]n exact number…isn’t the right criteria that’s used in determining small”).
`Following lengthy testimony from Dr. Cole during cross-examination about the
`meaning of Downloadable and “small” that demonstrated it was readily understood to a
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`8
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`person of ordinary skill, Eset’s attorney asked Dr. Cole whether a 2 terabyte file that is
`not installed would be small, and Dr. Cole explained that this would be “extremely
`unusual.” This far-fetched, unreasonable hypothetical regarding a file that does not
`exist does not come close to showing that the term cannot be understood with
`“reasonable certainty” as required under the law. Rather, Dr. Cole’s full testimony
`makes clear that a person of skill would readily understand this term.
`2.
`Dr. Cole’s Mistrial Testimony Is Consistent With Finjan’s
`Experts’ Deposition Testimony
`Dr. Cole’s explanation during the mistrial is also consistent with his deposition
`testimony, in which he explains that “small” cannot be defined by numerical cutoffs but
`rather should be determined based on the relevant context. Doc. No. 478-5 (Cole Tr.) at
`168:20-26 (“[Y]ou would have to look at the scenario to see if it fits under the context
`of downloadable”); 171:1-4 (“I'm not going to be pinned in to an exact number because
`I didn't do the claim construction and it depends on the context.”). Dr. Cole further
`provided examples of executables during his deposition, including Microsoft Word,
`which he explained is not a Downloadable because it is not a “small” executable. Id. at
`168:2-15. In contrast, he explained what would constitute a “small” executable:
`If you look at the '844 and what it was meant for in the
`claim construction, this is meant for people browsing to
`sites, small malicious code, small things dropping down.ꞏ
`So if you're going to a website and it's dropping some
`malicious code on your system, that would be small.ꞏ
`You click on an e-mail that does a downloadable, that
`would be small.ꞏ It's basically for malicious – small
`malicious content pieces that are running on your system.
`Id. at 172:4-13.
`Dr. Cole’s explanation is consistent with the deposition testimony of Finjan’s
`other experts, including Dr. Mitzenmacher, Dr. Medvidovic, and Dr. Goodrich, who
`confirmed that a person skilled in the art would understand the term Downloadable and
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`“small” with reasonable certainty. For example, Dr. Medvidovic explained that he does
`not think “it’s possible to ascribe a specific size limit” to “small,” and that he “can't give
`you a specific number and say, this is small and everything larger than that is not small.
`I don't think that's -- nor do I think that was the intent of the Court in -- in construing the
`term this way.” Doc. No. 478-7 (Medvidovic Depo. Tr.) at 117:2-13. Instead, Dr.
`Medvidovic gave the example of “small” as “something that is part of a piece of content
`you’re downloading as part of a web page” (i.e., something that would not be installed),
`as opposed to examples of not “small,” such as “Office products” (i.e., something that
`would be installed). Id. at 116:6-22. Similarly, Dr. Mitzenmacher explained that
`Internet Explorer and Microsoft Word are not Downloadables, and examples of “small”
`included “…things that run on a browser.” Doc. No. 478-6 (Mitzenmacher Tr.) at 70:9-
`71:4; 71:16-72:5, 72:15-73:10. He further testified that he would not “provide a specific
`dividing line” in terms of numerical size. Id.
`In response to a question about how a person would determine “what qualifies as
`a downloadable,” Finjan’s validity expert, Dr. Goodrich, explained that it “will always
`be clear from the context” and “the specification of the ʼ962 Patent, for example, gives
`several examples of thisꞏthat would be easily discernible by a person of ordinary skill
`in the art.” Doc. No. 478-8 (Goodrich Tr.) at 104:3-10. Dr. Goodrich identified several
`examples and further stated “that examples of downloadable from the specification itself
`include Java applets and ActiveX controls. And it even has, like, Figures 4 and 3 that
`get into the details of the whole architecture surrounding those downloadables.” Id. at
`104:22-105:1. Contrary to Eset’s claims, Dr. Goodrich never testified at his deposition
`that Internet Explorer, the example raised by the examining attorney, is small. In fact,
`he explained in the context of the patent that “compared to these little applets and little
`ActiveX controls, those are the downloadables, not the Internet Explorer.” Id. at 105:3-
`20. Thus, like Drs. Medvidovic’s and Mitzenmacher’s testimony, Dr. Goodrich’s
`testimony is entirely consistent with Dr. Cole’s testimony.
`10
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`MEMO IN SUPPORT OF FINJAN’S
`OPP. RE: DOWNLOADABLE
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`
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`CASE NO. 3:17-cv-00183-CAB-BGS
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`To the extent Dr. Cole and Finjan’s other experts discussed potential size ranges
`at their depositions, they are consistent with Dr. Cole’s explanation of the plain meaning
`of “small.” Finjan’s experts provided this testimony in response to Eset’s examining
`attorneys’ questions demanding numerical ranges, and they always qualified by
`explaining that there is no set numerical size limit and that “small” instead depends on
`context. Finjan’s experts are by no means required to put an absolute number on the
`size of an application program under the relevant legal standards. The Supreme Court
`rejected any requirements for absolute precision that Eset demands and stated that such
`absolute requirements are “unattainable.” Nautilus, 572 U.S. at 910. Likewise, the
`Federal Circuit has held that “‘a patentee need not define his invention with
`mathematical precision in order to comply with the definiteness requirement.’”
`Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005) (quoting
`Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1340 (Fed. Cir. 2003)). The
`definitene