Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39806 Page 1 of 20
`
`
`
`
`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.
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`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
`PROSECUTION HISTORY
`DISCLAIMER FOR U.S. PATENT NO.
`6,154,844
`
`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: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39807 Page 2 of 20
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Page
`INTRODUCTION ................................................................................................... 1
`
`FACTUAL BACKGROUND .................................................................................. 2
`
`A
`
`The ’844 Patent Prosecution History ............................................................ 2
`
`1.
`
`2.
`
`Finjan Did Not Disclaim a Network Gateway when
`Distinguishing Ji ................................................................................. 2
`
`Various Courts Have Decided That the Prosecution History
`Does Not Limit These Terms .............................................................. 3
`
`B
`
`Procedural History ......................................................................................... 5
`
`1.
`
`2.
`
`This Court Has Already Construed the Terms Of The
`“Before…” Claim Element After Extensive Consideration ............... 5
`
`The Court Did Not Grant Leave for this Motion on Disclaimer ........ 6
`
`III. ARGUMENT ........................................................................................................... 8
`
`A
`
`Finjan Did Not Disclaim a Network Gateway During Prosecution of
`the ’844 Patent ............................................................................................... 8
`
`1.
`
`2.
`
`Applicant’s Statements Were Not Clear and Unequivocal................. 9
`
`Other Courts Have Found No Disclaimer So There is No
`“Unmistakable Disavowal” ............................................................... 11
`
`B
`
`Eset’s Motion is Procedurally Improper ..................................................... 13
`
`IV. CONCLUSION ...................................................................................................... 15
`
`
`
`
`i
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39808 Page 3 of 20
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Acumed v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007) ............................................................................ 15
`Avid Tech., Inc. v. Harmonic, Inc.,
`812 F.3d 1040 (Fed. Cir. 2016) ............................................................................ 8
`Baxalta Inc. v. Genentech, Inc.,
`No. 19-1527, 2020 WL 5048435 (Fed. Cir. 2020) ............................................... 8
`Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C.,
`482 F.3d 1347 (Fed. Cir. 2007) .......................................................................... 14
`Fenner Inv., Ltd. v. Microsoft Corp.,
`632 F. Supp. 2d 627 (E.D. Tex. 2009), aff’d sub nom. Fenner
`Investments, Ltd. v. Microsoft Corp., 369 F. App’x 132 (Fed. Cir. 2010) ......... 14
`Finjan, Inc. v. Blue Coat Sys.,
`879 F.3d 1299 (Fed. Cir. 2018) ............................................................................ 3
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 13-cv-03999-BLF, 2014 WL 5361976 (N.D. Cal. Oct. 20, 2014) .......... 5, 12
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 13-cv-03999-BLF, 2016 WL 3880774 (N.D. Cal. July 18, 2016) ................ 5
`Finjan, Inc. v. Cisco Sys., Inc.,
`No. 17-cv-00072-BLF, 2018 WL 3537142 (N.D. Cal. July 23, 2018) .......... 4, 12
`Finjan, Inc. v. Proofpoint, Inc.,
`No. 13-cv-05808-HSG, 2016 WL 1427492 (N.D. Cal. Apr. 12, 2016) ......... 4, 15
`Finjan, Inc. v. Sonicwall, Inc.,
`No. 17-cv-04467-BLF, 2019 WL 1369938 (N.D. Cal. Mar. 26, 2019) ......... 4, 12
`Finjan, Inc. v. Sophos, Inc.,
`244 F. Supp. 3d 1016 (N.D. Cal. 2017) ................................................................ 5
`
`ii
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39809 Page 4 of 20
`
`
`Finjan, Inc. v. Sophos, Inc.,
`No. 14-cv-01197-WHO, 2016 WL 2988834 (N.D. Cal. May 24, 2016) ....... 5, 15
`Finjan, Inc. v. Symantec Corp.,
`No. 14-cv-02998-HSG, 2017 WL 550453 (N.D. Cal. Feb. 10, 2017) ....... 4, 9, 12
`Markman v. Westview Indus., Inc.,
`517 U.S. 370 (1996) ............................................................................................ 12
`Mass. Inst. of Tech. v. Shire Pharm., Inc.,
`839 F.3d 1111 (Fed. Cir. 2016) ........................................................................ 1, 9
`Nellcor Puritan Bennett, Inc. v. Masimo Corp.,
`402 F.3d 1364 (Fed. Cir. 2005) ............................................................................ 9
`Ottah v. Fiat Chrysler,
`884 F.3d 1135 (Fed. Cir. 2018) .......................................................................... 12
`PPG Industries v. Guardian Industries Corp.,
`156 F.3d 1351 (Fed. Cir. 1998) .......................................................................... 15
`SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 9
`Trading Techs. Int'l, Inc. v. Open E Cry, LLC,
`728 F.3d 1309 (Fed. Cir. 2013) .......................................................................... 13
`Wilson Sporting v. Hillerich Bradsby,
`442 F.3d 1322 (Fed. Cir. 2006) .......................................................................... 15
`Other Authorities
`Fed.R.Civ.P. 50 (a) ..................................................................................................... 7
`U.S. Patent No. 6,154,844 .................................................................................passim
`Juniper Networks, Inc. v. Finjan, Inc.,
`No. IPR2019-00026, Paper 46 (P.T.A.B. Apr. 7, 2020) .................................... 11
`
`
`
`
`iii
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39810 Page 5 of 20
`
`
`I.
`
`INTRODUCTION
`
`Eset’s “Renewed Motion for Summary Judgment of Prosecution History
`Disclaimer For U.S. Patent No. 6,154,844” (“Motion”) should be denied because Eset’s
`Motion is both substantively without merit and procedurally improper.
`Eset’s untimely “disclaimer” argument is baseless because Finjan never made the
`“clear and unmistakable disavowal” of claim scope of the term “before a web server
`makes the Downloadable available to web clients,” which is necessary to find
`disclaimer of this term. Indeed, Finjan never limited the invention to a specific location
`or device in a network or excluded network gateway devices as being covered, let alone
`an “unmistakable disavowal” for these. The fact that multiple judges have interpreted
`applicant’s statements to find no disclaimer shows that the statements that Finjan made
`during prosecution are, at a minimum, subject to other “reasonable interpretations,”
`which precludes a finding of disclaimer under the law. See Mass. Inst. of Tech. v. Shire
`Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (“Where the alleged disavowal is
`ambiguous, or even ‘amenable to multiple reasonable interpretations,’ we have declined
`to find prosecution disclaimer.”).
`Additionally, there is nothing to renew, as the Court ordered that the only open
`issue was that it would review the infringement case that Finjan would present at trial to
`determine whether Finjan had applied the Court’s claim construction. Doc. No. 702 at
`2. Since the trial ended before the close of evidence, this issue is not properly before the
`Court. Additionally, Eset’s Motion is procedurally improper because it raises the claim
`construction issue of “disclaimer,” as opposed to the “prosecution history estoppel”
`issue it sought leave to raise (which relates only to infringement under the doctrine of
`equivalents). Eset was not given permission to file a brief on this completely different
`legal doctrine of disclaimer, or to propose new constructions at this late stage in the case
`for terms the Court already construed after extensive consideration. To do so now after
`
`1
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39811 Page 6 of 20
`
`
`Finjan and its experts relied on the Court’s constructions is highly prejudicial. Thus, the
`Court should not consider this procedurally defective Motion.
`II.
`FACTUAL BACKGROUND
`A
`
`The ’844 Patent Prosecution History
`1.
`Finjan Did Not Disclaim a Network Gateway when Distinguishing Ji
`
`During the prosecution of the ’844 Patent, the examiner issued a non-final
`rejection of ’844 Patent claims over the reference Ji on February 8, 2000. Wells Decl.,
`Ex. 2 (’844 File History Excerpts) at 3-4. Ji is a patent that describes a process of
`“instrumenting” applets, a technique of rewriting code in the actual applet itself, and
`which is different from the ‘844 Patent. Doc. No. 188-14 (Ji) at Abstract. Unlike Ji, the
`‘844 Patent does not instrument the Downloadable, but instead creates a Downloadable
`profile that identifies suspicious code in the Downloadable. In fact, Ji specifically
`references Finjan’s products in its specification and distinguishes itself from Finjan’s
`technology of creating profiles for the Downloadables. Doc. No. 188-14 at 1:66-3:4 (Ji
`stating that Finjan’s SurfinGate creates downloadable profiles at the gateway). In
`contrast, Ji taught that the better option was to instrument the code at a gateway and
`then analyze the file every time it is run. Id. at 3:9-12.
`On May 16, 2000, Finjan filed a response to the examiner’s non-final rejection of
`the ‘844 Patent claims to distinguish the inventions of the ‘844 Patent with how Ji
`operates. Wells Decl., Ex. 2 at 9-14. Finjan noted that Ji’s system was resource
`intensive because it instrumented every applet every time an applet was received. Id. at
`13 (“In Ji’s system, the burden of examining a Downloadable for suspicious code is
`always on the network gateway, and must be done every time.”) (emphasis added). In
`other words, the ‘844 Patent is less resource intensive because it can save processing
`time by reusing known security profiles. Moreover, Finjan explained that the ’844
`
`2
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39812 Page 7 of 20
`
`
`Patent has an inspector that can use the Downloadable security profile multiple times,
`thus reducing the load on a network gateway. Wells Decl., Ex. 2 at 13.
`Notably, at no time did Finjan ever state that the inspector cannot be on a
`network gateway. Indeed, just by reusing Downloadable security profiles (via the
`“linking” between the Downloadable and Downloadable security profile to recall
`Downloadable security profiles of known Downloadables) at the inspector in the
`network gateway, Finjan’s invention is less resource intensive than Ji’s system.
`2.
`Various Courts Have Decided That the Prosecution History Does
`Not Limit These Terms
`
`Various other courts have also considered terms in the “before…” element of the
`‘844 Patent in claim construction and dispositive motions, and some have considered
`the exact prosecution history disclaimer arguments that Eset raises here. They have all
`rejected other defendants’ attempts to limit the claim language.
`First, the Federal Circuit has weighed in concerning how this claim element can
`be “reasonably…understood” and applied a broad understanding:
`It was reasonable for the jury to interpret “web clients” in this
`context to refer to the specific web clients protected by the
`claimed system. Likewise, the limitation requiring that linking
`occur before a downloadable is “ma[de] . . . available to web
`clients” could reasonably be understood to require that linking
`occur at some point before users are permitted to access that
`downloadable—but not necessarily before the downloadable is
`made available on the Internet. Blue Coat concedes that, at the
`time a security profile is linked, the “particular web client cannot
`yet receive the downloadable—but the web server has made it
`available . . . .” Reply Br. 9. Given the undisputed evidence that
`WebPulse links security profiles to downloadables before
`downloadables can be received by users of the service, we find
`that the ’844 infringement verdict was supported by substantial
`evidence.
`Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299, 1306-07 (Fed. Cir. 2018).
`
`3
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39813 Page 8 of 20
`
`
`Additionally, other district courts have explicitly declined to find that the
`applicants of the ‘844 Patent disclaimed claim scope based on statements in the
`prosecution history with respect to the Ji reference. Below is a summary of these prior
`decisions1:
` Finjan, Inc. v. Symantec Corp., No. 14-cv-02998-HSG, 2017 WL 550453,
`at *16 (N.D. Cal. Feb. 10, 2017) (explicitly rejecting Symantec’s
`prosecution history disclaimer argument and finding: “…[T]his is not a
`circumstance in which it may properly interpret the asserted claims to
`exclude what Symantec characterizes as the ‘gateway embodiment,’
`because that embodiment is not ‘inconsistent with unambiguous language
`in the patent’s specification or prosecution history…The Court does not
`read this language [regarding Ji in the prosecution history of the ‘844
`Patent] to establish Symantec's apparent point that an inspector by
`definition can never be at the gateway, or to amount to a clear and
`unmistakable disavowal of claim scope so as to require adoption of
`Symantec's construction.” );
` Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2016 WL 1427492,
`at *2, *6 (N.D. Cal. Apr. 12, 2016)(denying summary judgment where
`Proofpoint argued that Finjan disclaimed claim scope that would cover
`Proofpoint’s products by distinguishing Ji during the prosecution history of
`the ‘844 Patent and that “…once a Downloadable is on a web server and
`available for download, it is available to web clients, and anything that
`happens after does not” satisfy the claim element);
` Finjan, Inc. v. Sonicwall, Inc., No. 17-cv-04467-BLF, 2019 WL 1369938,
`at *8 (N.D. Cal. Mar. 26, 2019) (“To the extent that Sonicwall invokes the
`prosecution disclaimer doctrine, its argument fails… Here, at best, Finjan's
`patent prosecution statements are ambiguous and thus do not support
`Sonicwall's position. As such, Finjan's statements do not show that it
`‘clearly and unmistakably’ disavowed ‘network gateway’ embodiments
`from the claim scope.”);
` Finjan, Inc. v. Cisco Sys., Inc., No. 17-cv-00072-BLF, 2018 WL 3537142,
`at *4 (N.D. Cal. July 23, 2018) (same);
`
`
`1 Finjan has provided additional details regarding many of these decisions in its prior
`claim construction briefing. See Doc. Nos. 188, 212.
`4
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39814 Page 9 of 20
`
`
` Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197-WHO, 2016 WL 2988834, at
`*22 (N.D. Cal. May 24, 2016)(rejecting Sophos’ position “that…a
`Downloadable is made available to web clients …whenever a
`Downloadable is made available to anyone over the internet”);
` Finjan, Inc. v. Sophos, Inc., 244 F. Supp. 3d 1016, 1049 (N.D. Cal.
`2017)(rejecting Sophos’ argument that “[i]f an accused product receives a
`‘Downloadable’ from a web server and then performs the claimed linking,
`it cannot infringe [because] the web server has already made that
`Downloadable available to web clients.”); Doc. No. 188-8 at 16;
` Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-cv-03999-BLF, 2014 WL
`5361976, at *10–11 (N.D. Cal. Oct. 20, 2014) (declining to hold that there
`was a specific disclaimer in the prosecution history based on applicant’s
`statements regarding Ji or to import limitation based on Blue Coat’s
`argument that when a web server makes a Downloadable available to a web
`client, “the inspector has already transmitted an inspected Downloadable to
`a web server…”); Doc. No. 188-9 at 15;
` Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-cv-03999-BLF, 2016 WL
`3880774, at *8 (N.D. Cal. July 18, 2016) (rejecting Blue Coat’s argument
`that its gateway product does not infringe because the inspection happens
`after its product “already received the Downloadable from a non-network
`gateway web server in order analyze the Downloadable.”); Doc. No. 188-5
`at 15.
`Thus, various Courts have rejected arguments the same as or similar to those that Eset
`makes in its Motion seeking to limit these claim terms.
`B
`Procedural History
`1.
`This Court Has Already Construed the Terms Of The “Before…”
`Claim Element After Extensive Consideration
`
`Finjan asserts Claims 1, 7 and 15 of U.S. Patent No. 6,154,844 (the “’844
`Patent”) against Eset in this case. Claims 1 and 15 are independent claims that include
`the language “before a web server makes the Downloadable available to web clients.”
`See Doc. No. 139-4 (’844 Patent), Claims 1 and 15. During the claim construction
`phase of this case, the parties disputed the proper construction of “before a web server
`makes the Downloadable available to web clients” and also “web server.” Doc. No.
`5
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39815 Page 10 of 20
`
`
`136-2 at 4-7. Finjan proposed that these terms should be given their plain and ordinary
`meaning. Id. Eset proposed that the “before…” term should be construed as “before
`deployment of the Downloadable to a web server,” and that “web server” should be
`construed as “the server on which the Downloadable is deployed and which responds to
`requests from web clients for content.” Id. Notably, Eset did not include in its
`construction that Finjan disclaimed that this action could be performed by network
`gateway servers.
`On September 25 and 26, 2017, the Court held a claim construction hearing,
`during which substantial time was devoted to discussion of these claim terms, including
`the issue of prosecution history disclaimer. Doc. No. 188-16 (Claim Construction Hr’g
`Tr.), Vol. I, 74-164; Vol. II, 3-81. During this discussion, counsel for Eset abandoned
`the construction that it proposed in its briefing, including the “deployment” language.
`Eset instead adopted a different construction—i.e., that the linking of the security profile
`to the Downloadable must be done and then made available to the web server (as
`opposed to made available to the web client as written in the claims). Id. Vol. I, 114:15-
`116:7. The Court ultimately construed the “before…” term as “before the
`Downloadable is available on a web server to be called up or forwarded to a web
`client,” citing in support “’844 @ Col. 3:32-52; Col. 4:65 – Col. 5:13; Figure 1.” Doc.
`No. 195 at 3. The Court did not adopt Eset’s proposed construction of “web server” or
`provide any other construction for this term. Id. In either case, Eset did not argue for a
`construction that would disclaim the use of the claimed system at a network gateway.
`
`2.
`
`The Court Did Not Grant Leave for this Motion on Disclaimer
`
`On April 23, 2019, Eset filed a motion for summary judgment regarding
`infringement of the ’844 Patent. Doc. No. 482. On September 26, 2019, the Court held
`a hearing regarding the parties’ summary judgment motions. When discussing the terms
`of the “before…” element during the hearing, the Court noted that the figures in the
`
`6
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39816 Page 11 of 20
`
`
`‘844 Patent specification did not limit the location of the system, instead noting that
`“[t]hese things happen in all kinds of different places.” Wells Ex. 1 (Summ. J. Hr’g Tr.
`Excerpt)2 at 1. The Court further noted that “…if the Downloadable is in a system and
`there’s someone in the system that’s inspecting it before it goes to the client and that’s
`who they’re calling the web server, I’m not sure that’s contrary to the Court’s
`construction as long as it’s happening before it gets to the client.” Id. at 2-3. Counsel
`for Eset then argued that there was “prosecution history estoppel” (not disclaimer) “as a
`matter of law.” Id. at 2-3. On October 16, 2019, the Court entered its Order on the
`parties’ summary judgement motions, denying Eset’s motion for summary judgment
`regarding infringement of the ’844 Patent based on “numerous material facts in
`dispute.” Doc. No. 699 at 2.
`Eset moved for reconsideration of the Court’s order on its Motion for Summary
`Judgment on November 13, 2019. See Doc. No. 708-1. In its request for
`reconsideration, Eset again asked whether “the doctrine of prosecution history estoppel
`precludes Finjan from reading the claims of the ‘844 patent to cover a network gateway
`…” Doc. No. 708-1 at 5:11-23. The law that Eset cited and relied on related to
`prosecution history estoppel. Id. In response, the Court ordered that it would review
`whether “it becomes apparent that plaintiff has not applied the Court’s claim
`construction, as ESET contends, or that Finjan has not produced evidence upon which a
`jury could properly proceed to find a verdict of infringement by preponderance of the
`evidence, ESET may procedurally move for a verdict pursuant to Fed.R.Civ.P. 50 (a).”
`Doc. No. 720 at 2. Notably, the Court did not state that it would reconsider its claim
`construction for this term under a disclaimer theory, only that it would consider the
`evidence Finjan produces for this term in the manner it was already construed by the
`Court. Id.
`
`2 Unless otherwise noted, all exhibits are attached to the Declaration of Benu Wells in support of this
`opposition.
`
`7
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39817 Page 12 of 20
`
`
`On March 10, 2020, this Court commenced trial in this action, which resulted in
`mistrial due to the Covid-19 pandemic before the close of Finjan presenting its
`evidence. During this trial, Eset attempted to question Dr. Cole about the prosecution
`history of the ’844 Patent. Finjan’s counsel objected that Eset was improperly
`addressing claim construction with Dr. Cole. Doc. No. 809-2 (3/12/20 Trial Tr.) at
`427:11-15. Eset’s counsel claimed that “I don’t think it’s a construction argument.
`Whether they, in fact, explained network gateway, that’s not really the claim
`construction, Your Honor. It’s an actual fact.” Id. at 430:5-8. The Court found that
`there was “a factual matter” for the jury, but that it would “decide the prosecution
`estoppel claim.” Id. at 432:9-14. On July 16, 2020, the parties filed status updates, in
`which Eset requested additional briefing on “prosecution history estoppel,” arguing that
`“Finjan is estopped from asserting the ‘844 patent against ESET’s gateway servers….”
`Doc. No. 800 at 7. On July 23, 2020, the Court allowed Eset to “file its renewed
`motion[] for . . . prosecution history estoppel of the ‘844 patent.” Doc. No. 802. On
`August 21, 2020, Eset filed its Motion, asking the Court to find “prosecution history
`disclaimer,” citing to new law related to “disclaimer,” not “estoppel.” Doc. No. 807.
`III. ARGUMENT
`
`A
`Finjan Did Not Disclaim a Network Gateway During Prosecution of
`the ’844 Patent
`Finjan’s statements during prosecution of the ’844 Patent do not meet the
`stringent standard necessary for a disclaimer, which requires an unequivocal and
`unambiguous disavowal of a certain meaning to obtain a patent. Avid Tech., Inc. v.
`Harmonic, Inc., 812 F.3d 1040, 1045-46 (Fed. Cir. 2016). Here, there can be no
`showing that the statements made during prosecution rise to the level required for
`disclaimer, where the “disavowal must be both clear and unmistakable.” Baxalta Inc. v.
`Genentech, Inc., No. 19-1527, 2020 WL 5048435 at *5 (Fed. Cir. 2020) (quoting 3M
`Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013)).
`
`8
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39818 Page 13 of 20
`
`
`Indeed, because multiple courts have determined that there was no disclaimer,
`applicant’s statements are necessarily, at a minimum, “amenable to multiple reasonable
`interpretations,” which precludes a finding of disclaimer. SAS Inst., Inc. v.
`ComplementSoft, LLC, 825 F.3d 1341, 1349 (Fed. Cir. 2016); see also Mass. Inst. of
`Tech. v. Shire Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016).
`
`1.
`Applicant’s Statements Were Not Clear and Unequivocal
`Nothing in the intrinsic record supports disclaimer of a “network gateway” from
`the claims of the ‘844 Patent. First, the specification of the ’844 Patent uses this term in
`a manner consistent with its plain and ordinary meaning and does not limit it to a
`specific location, nor prohibit a specific location. For instance, the ’844 Patent discloses
`that an inspector may be located at the network gateway and that the security profile
`discussed in the claims can be generated there. See Doc. No. 139-4 (’844 Patent), 5:14-
`33. The specification further explains that the generic protection engine (shown at
`Figure 5) is an example of a network protection engine (which is at the gateway) and
`includes a content inspection engine (525). Id., 7:40-8:5. As Judge Gilliam found in the
`Symantec Case, having the inspector at the network gateway is not “inconsistent with
`unambiguous language in the patent’s specification . . . .” Symantec, 2017 WL 550453,
`at *14–17 (citation and internal quotations omitted). Eset’s arguments pointing to the
`specification of the ’844 Patent are therefore baseless.
`Moreover, Eset bases its arguments on one embodiment of the invention, ignoring
`the various embodiments in the specification that demonstrate the elements in claims 1
`and 15. These include embodiments where the inspector is at a network gateway.
`Nellcor Puritan Bennett, Inc. v. Masimo Corp., 402 F.3d 1364, 1368 (Fed. Cir. 2005)
`(“The fact that the construction adopted by the district court and advocated by [appellee]
`would have the effect of placing all the embodiments of the invention outside the scope
`of the claims is powerful evidence that the court's construction is incorrect.”).
`
`9
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39819 Page 14 of 20
`
`
`Instead of applying the Court’s construction, Eset asks the Court to adopt a new
`construction of “web server” that differs from the construction it proposed during the
`claim construction period. Eset’s new proposed construction improperly excludes
`“network gateway” from the “web server.” Eset bases this new construction on an
`alleged disclaimer by Finjan when it made arguments during prosecution the ’844
`Patent with respect to the Ji reference. Motion at 11-13. However, Ji was completely
`inapplicable to the ‘844 Patent, as it specifically taught away from using security
`profiles and instead used its distinct “instrumentation” to modify an applet at the
`gateway in a manner that protects the client computer. Doc. No. 188-14 (Ji) at Abstract,
`2:27-41, 3:1-4. In response to a non-final rejection, Finjan explained how its invention
`is different from Ji’s system. In particular, Finjan noted that “Ji teaches a method
`performed on a network gateway of examining application programs for lines of code
`that the client computer should monitor for security policy violations.” Wells Ex. 2
`(’844 File History Excerpts) at 13. In other words, Finjan merely noted to the examiner
`what Ji says it does itself. Doc. No. 188-14 (Ji) at 3:1-4 (“To distribute the load
`between the client and the server evenly, the present inventor has determined that a
`combination of static scanning and run-time monitoring is needed.”). Finjan contrasted
`Ji to the examiner noting that the ‘844 Patent invention generates a security profile and
`links it to the Downloadable before making it available to web clients, as opposed to Ji’s
`instrumentation at the gateway and run-time monitoring at web clients. Wells Ex. 2
`(’844 File History Excerpts) at 13.
`In fact, the Ji reference notes in its specification that Finjan’s SurfinGate product
`is also at the network gateway, but specifically contrasted itself from Finjan by arguing
`that Finjan’s system of generating security profiles, and taught away from this method
`because it allowed previously known applets through without rescanning. Doc. No. (Ji)
`at 2:27-41 (“No analysis is redone. This means that if a previously safe applet is
`modified and still has the same URL, [Finjan’s] SurfinGate will fail to rescan it and let
`10
`MEMO IN SUPPORT OF FINJAN’S OPP.
`RE: PROSECUTION DISCLAIMER
`
`CASE NO. 3:17-cv-00183-CAB-BGS
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 815 Filed 09/11/20 PageID.39820 Page 15 of 20
`
`
`it pass through.”). Finjan again noted this contrast back to the examiner, stating:
`“Further, Ji does not teach examining an already linked Downloadable security profile
`by network gateways, if the profile is deemed trustworthy. In Ji’s system, the burden of
`examining a Downloadable for suspicious code is always on the network gateway, and
`must be done every time.” Wells Ex. 2 (’844 File History Excerpts) at 13. Thus, Finjan
`merely noted that Ji’s system is different from Finjan’s because Finjan used security
`profiles and Ji did not since Ji believed it was necessa