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`NICOLA A. PISANO, CA Bar No. 151282
` NicolaPisano@eversheds-sutherland.com
`JOSE L. PATIÑO, CA Bar No. 149568
`
`JosePatino@eversheds-sutherland.com
`JUSTIN E. GRAY, CA Bar No. 282452
`
`JustinGray@eversheds-sutherland.com
`SCOTT A. PENNER, CA Bar No. 253716
` ScottPenner@eversheds-sutherland.com
`EVERSHEDS SUTHERLAND (US) LLP
`12255 EL CAMINO REAL, SUITE 100
`SAN DIEGO, CALIFORNIA 92130
`TELEPHONE:
`858.252.6502
`FACSIMILE:
`858.252.6503
`Attorneys for Defendants and Counter-Plaintiffs
`ESET, LLC and ESET, SPOL. S.R.O.
`
`FINJAN, INC.,
`
`Plaintiff,
`
`v.
`ESET, LLC, et al.,
`Defendants.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
` Case No. 3:17-cv-0183-CAB-BGS
`ESET, LLC AND ESET, SPOL. S.R.O.’S
`REPLY BRIEF IN SUPPORT OF
`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 SEPARATELY
`ORDERED BY THE COURT
`
`AND RELATED COUNTERCLAIMS.
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`Case 3:17-cv-00183-CAB-BGS Document 817 Filed 09/25/20 PageID.39865 Page 2 of 9
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`I.
`
`OVERVIEW
`Finjan’s Opposition argues that this Court did not intend to permit ESET to renew
`its motion for a determination that, in view of the prosecution history of the ’844 patent,
`the term “web server” in that patent’s claims cannot be read on a network gateway. Yet
`Finjan’s Opposition argues that the Court only granted leave to file a motion on
`“prosecution history estoppel” relating to doctrine of equivalents, not prosecution history
`disclaimer. ESET’s prior motion (D.I. 481-1), the sidebar of colloquy during Dr. Cole’s
`cross-examination (D.I. 809-2), and ESET’s opening brief (D.I. 807-1) all were directed
`to the foregoing determination, which makes no mention of equivalents. The Court well
`knows what it authorized. Finjan’s contention is so fundamentally dishonest that the
`Court could grant ESET’s motion for that reason alone.
`Finjan’s Opposition devotes little effort to countering the arguments advanced in
`ESET’s opening brief. Instead, the Opposition presents myriad arguments why Finjan’s
`bad-faith assertion of the ’844 patent should continue to trial. None is credible, much
`less persuasive. And Finjan’s arguments are notably free of citation to the record in this
`case. For example, Finjan urges this Court to abdicate its role as Judge in this case and
`defer to the determinations of other Judges in courts outside this District who lack this
`Court’s extensive background and understanding of Patent Law. Finjan also argues that
`this Court already decided a claim construction for the term “web server,” but at trial this
`Court specifically remarked that this issue was not decided as part of claim construction.
`See D.I. 809-2.
`Finjan repeatedly argues that the statements during prosecution of the ’844 patent
`were not binding because they “were not clear and unequivocal.” But it is hard to
`imagine a more binding disclaimer: Finjan distinguished Ji by arguing that in Ji’s
`network gateway, Downloadable inspection “must be done every time.” Opp. at 2:22-
`23. Yet Finjan accuses the stand-alone software on ESET’s network gateway products
`of infringement, even though ESET’s products scan incoming files “every time”!
`Notwithstanding the mistrial, Finjan’s infringement case on the ’844 patent was
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`Case 3:17-cv-00183-CAB-BGS Document 817 Filed 09/25/20 PageID.39866 Page 3 of 9
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`complete; Finjan made its record, and it is woefully deficient.
`Finjan’s Opposition also presents novel arguments why Ji does not invalidate the
`claims of the ’844 patent, but such arguments are misplaced. Finjan’s ex post facto
`arguments cannot change what it actually told the Patent Office and how it amended its
`claims to differentiate from Ji. The public is entitled to rely on the applicant’s
`amendments and arguments, as set forth in the prosecution history, to determine what
`the patent terms mean. As in contract interpretation, where parole evidence plays no
`role in interpretation absent ambiguity, the arguments (that Ji is a network gateway) and
`amendments (that the claimed elements all are present at the inspector, and not the
`network gateway) made by Finjan to secure allowance of the ’844 patent cannot be
`ignored to read the claims on that which Finjan disclaimed.
`Finjan’s prior success in obscuring from other courts its clear and unmistakable
`intent to disclaim coverage by claims 1 to 21 of a network gateway is entitled to no
`weight here. ESET’s motion for summary judgment that the “web server” of the ’844
`patent cannot be met by a network gateway should be granted.
`II. ARGUMENT
`A.
`Finjan Disclaimed Coverage of Network Gateways.
`As explained in ESET’s opening brief, Finjan’s arguments and amendments to
`differentiate its alleged invention from Ji including explaining that Ji was a network
`gateway, whereas the claimed invention constituted an “inspector” that performed all of
`the steps of receiving a Downloadable, generating a first Downloadable security profile,
`and linking the first Downloadable security profile to the Downloadable before a web
`server makes the Downloadable available to web clients.
`Finjan emphasizes that its inspector need only perform inspection of a
`Downloadable once, whereas in Ji “the burden of examining a Downloadable for
`suspicious code is always on the network gateway, and must be done every time.” Opp.
`at 2:22-23 (emphasis in original). Despite this clear disclaimer that its claims do not
`cover the prior art network gateway that inspects every incoming file, Finjan
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`nevertheless contends that the claims of the ’844 patent cover ESET’s standalone
`network gateway software that does precisely that.1 Moreover, whether Finjan could
`have made arguments to the Patent Examiner about Ji “‘instrumenting’ applets” is
`irrelevant. No such arguments were made during prosecution of the ’844 patent. The
`public is entitled to rely on what Finjan actually said in its arguments and amendments,
`not what Finjan now says it could have argued.
`Similarly, Finjan’s argument that “at no time did Finjan ever state the inspector
`cannot be on the network gateway” is belied by the Remarks portion of Finjan’s
`Response to the Patent Examiner, where Finjan characterized its invention as having
`distinct components for the inspector and the network gateway:
`Before discussing the rejections of the claims, a brief review of an
`embodiment of Applicant's invention is helpful. A system includes an
`inspector for generating and linking a Downloadable security profile to a
`Downloadable before a web server makes the Downloadable available to
`web clients. The system also includes a network gateway which examines
`the Downloadable security profile for security policy violations if the
`Downloadable security profile is deemed trustworthy.
`D.I. 809-4 at 11 (emphasis added). It is nonsensical for Finjan to argue (as it does now)
`that its system included an inspector and also a network gateway if those two distinct
`elements are the same thing. Moreover, Finjan’s claim amendments that require all of
`the claim steps be performed at the inspector—to distinguish over Ji—would be
`completely illusory if the inspector were located at the network gateway! See D.I. 807-1
`at 8:17-9:23. And as explained in ESET’s opening brief, there is no disclosure in the
`’844 patent that the inspector of claims 1 and 15 could be located at a network gateway.
`Id. at 2:12-4:6.
`
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`1 Dr. Cole claimed that ESET’s network gateways infringe when they receive reputation
`data from ESET’s LiveGrid Reputation Server as well as based on analysis of files
`passing through the network gateways using network gateway software alone. As this
`Court’s questioning of Dr. Cole at trial brought to the fore, the LiveGrid system, wherein
`the analysis is conducted asynchronously abroad, cannot infringe because it is performed
`entirely outside the US. Trial Transcript, Day 3, 461:21-463-11. This motion is directed
`to ESET’s standalone network gateway software.
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`Case 3:17-cv-00183-CAB-BGS Document 817 Filed 09/25/20 PageID.39868 Page 5 of 9
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`B.
`This Court Is Not Bound by Other Courts’ Determinations.
`Finjan, as it has throughout this litigation, urges this Court to abdicate its role of
`independently deciding the issues before it, and instead defer to the determinations of
`District Court Judges not of this District. Opp. at 3:8-5:18. Those other courts have no
`compunction about ignoring decisions from outside their districts, including this one.
`See, e.g., Finjan, Inc. vs. Cisco Sys., Inc., No. 17-cv-00072-BLF, 2018 U.S. Dist. LEXIS
`122951, at *29 (“ESET’s claim construction ruling is from outside this District. … the
`Court gives little weight to the construction in ESET …”). In view of Finjan’s
`successful argument to the Northern District judge in the Cisco case that this Court’s
`claim constructions should be accorded no deference, Finjan’s argument that “other
`judicial decisions are entitled to deference to ensure uniformity in construction across
`various lawsuits” (Opp. at. 12:16-25) rings particularly hollow.
`Moreover, it is not at all apparent from Finjan’s citations to the decisions of courts
`outside this District (based on different claim constructions) that those courts properly
`considered the combined effect of the arguments and claims amendments in the
`prosecution history of the ’844 patent. Given this Court’s many years of practice as a
`patent litigator and as a Magistrate Judge, and in-depth knowledge of Patent Law, ESET
`believes this Court will recognize that interplay, and its determination on the issue of
`prosecution history disclaimer will be a definitive assessment.
`C. This Court Has Not Construed the Term “Web Server”.
`Finjan argues that “the parties disputed the proper construction of … ‘web
`server.’” Opp. at 5:20-6:21. Finjan faults ESET for not noting in seeking a construction
`that Finjan had disclaimed that the web server could be a network gateway in August
`2017. At that point in this litigation, however, Finjan’s infringement contentions were
`an unintelligible jumble, and relied for alleged infringement on ESET’s Threatsense
`(LiveGrid) system. It was not until Finjan served the expert report of Dr. Cole on
`November 30, 2018, that ESET learned how Finjan intended to distort its claims to read
`on ESET’s standalone network gateway software.
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`Case 3:17-cv-00183-CAB-BGS Document 817 Filed 09/25/20 PageID.39869 Page 6 of 9
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`The Court’s claim construction (D.I. 195) did not provide a construction for the
`term “web server.” As the Court recognized during Dr. Cole’s cross-examination, there
`was a latent unresolved dispute about the claim term “web server” and more particularly,
`whether a “network gateway” that used ESET’s products could constitute the claimed
`“web server.” The Court stated: “The issue … that has fundamentally resulted from the
`claim construction is not the question of before, which was what we were construing, but
`what a web server and a web client are in this case, which I have never construed.”
`D.I. 809-2 at 427:19-23 (emphasis added). Finjan’s argument that the Court did
`construe that term, or that the Court should not do so now that the dispute has been
`crystallized, lacks merit. Because construction of “web server” informs a proper
`understanding of Finjan’s claim amendments to distinguish over the Ji reference, and the
`full scope of Finjan’s prosecution history disclaimer, the time is ripe for the Court to
`address that issue.
`D. The Juniper IPR Decision Does Not Support Finjan’s Contention.
`In its final written decision in IPR2019-00026 dated April 7, 2020, the Patent
`Trial and Appeal Board construed the term “web server” under a Phillips-type district
`court standard. In that decision, the PTAB concluded that a “web server” is “a server
`connected to the Internet and capable of serving documents accessible by a URL on the
`World Wide Web.” D.I. 809-3 at 18. While finding it unnecessary to decide whether a
`“network gateway” could be a “web server,” id. at 20, the PTAB noted that as described
`in the ’844 patent, the “web server” and “network gateway” are distinct entities and
`“states, for example, that ‘web server 185 [is] … coupled to … external computer
`network 105’ ([’844 patent] at 3:39–44), that ‘web server 185 … transmits the
`Downloadable via the network gateway 110 to the computer client 130’ (id. at 5:11-13
`(emphasis added)), and that ‘communications interface 825 [of web server 185] couples
`the signal bus 825 to the external computer network 105’ (id. at 10:33-34).” Id. at 18.
`The PTAB cautioned that the word “web” could not simply be disregarded: “we do not
`find sufficient support in [the ’844 patent] for broadening ‘web server’ beyond its
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`Case 3:17-cv-00183-CAB-BGS Document 817 Filed 09/25/20 PageID.39870 Page 7 of 9
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`ordinary meaning to, in effect, read out the word ‘web.’” Id.
`In view of the usage of the term “web server” throughout the ’844 patent as
`discussed above, and Finjan’s amendments to overcome Ji, discussed infra, ESET
`submits that the term “web server” should be construed as “a server that serves web
`pages and is not a network gateway.”2
`E.
`Finjan’s Disclaimer Was Clear and Unequivocal.
`Finjan’s contention that “nothing in the intrinsic record supports disclaimer of a
`‘network gateway’” ignores the disclosure of the ’844 patent as well as Finjan’s own
`arguments and amendments to procure allowance of the patent, as explained in ESET’s
`opening brief. D.I. 807-1 at 1-4 and 6-10. When the intrinsic evidence is viewed in its
`entirety, it is plain that neither the claimed “inspector” nor the claimed “web server” of
`claims 1 and 15 of the ’844 patent can be construed to cover a network gateway. Only
`inspector 125 is expressly described as performing the DSP generation and linking
`functions: there is no disclosure that a network gateway performs both of these functions
`in the ’844 patent. The ’844 patent makes equally plain that a network gateway cannot
`be the claimed “web server” of claims 1 and 15, because Finjan specifically disclaimed
`such coverage in its arguments to distinguish over Ji. As used throughout the disclosure
`of the ’844 patent, the term “web server” refers to a distinct network component from a
`“network gateway.” See, e.g., D.I. 809-3 at 18. Finjan’s argument that ESET focused
`only on “one embodiment” of the invention (Opp. at 9:20-26) ignores that there is no
`embodiment in the ’844 patent, nor even a hint of a suggestion, that the web server could
`be on a network gateway. Finjan’s amendment distinguishing the inspector of claims 1
`and 15 from the network gateway of Ji puts the final nail in Finjan’s argument.
`
`
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`2 As noted in ESET’s opening brief (D.I. 807-1 at 6, n.3), Judge Freeman in the Blue
`Coat case construed the phrase “before a web server makes the Downloadable available
`to web clients” as “before the non-network gateway web server makes the
`Downloadable available to web clients.” D.I. 188-1 at 13:1-7. While urging the Court
`to defer to other court’s constructions, Finjan remains oddly silent on that construction,
`which would be dispositive of Finjan’s claims against ESET’s Gateway products for the
`’844 patent.
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`Finjan’s argument that “Ji was completely inapplicable to the ‘844 [sic] patent”
`(Opp. at 10:6-7) cannot be reconciled with the ’844 prosecution history: the Patent
`Examiner found Ji anticipatory, and Finjan amended its claims to distinguish over Ji’s
`network gateway. Finjan’s newfound technical arguments as to why Ji is “inapplicable”
`are found nowhere in the prosecution history of the ’844 patent, and are thus irrelevant.
`Moreover, Finjan’s contentions about its SurfinGate product do not inform the
`prosecution history disclaimer. Nor does any of the discussion somehow expand the
`disclosure of the ’844 patent so that the inspector of claims 1 and 15 may be co-located
`with a network gateway (which Finjan equates with the web server).
`Finjan argues that the PTAB in the Juniper IPR did not ultimately need to define
`the term “web server.” Opp. at 11:8-22. As discussed in ESET’s opening brief (D.I.
`807-1 at 5:23-6:9), although the PTAB ultimately found it unnecessary to decide
`whether a “network gateway” could be a “web server” (D.I. 809-3 at 20), it noted that as
`described in the ’844 patent, the “web server” and “network gateway” are distinct
`entities and “states, for example, that ‘web server 185 [is] … coupled to … external
`computer network 105’ ([’844 patent] at 3:39–44), that ‘web server 185 … transmits the
`Downloadable via the network gateway 110 to the computer client 130’ (id. at 5:11-13
`(emphasis added)), and that ‘communications interface 825 [of web server 185] couples
`the signal bus 825 to the external computer network 105’ (id. at 10:33-34).” Id. at 18.
`The PTAB cautioned that the word “web” could not simply be disregarded: “we do not
`find sufficient support in [the ’844 patent] for broadening ‘web server’ beyond its
`ordinary meaning to, in effect, read out the word ‘web.’” Id. The Juniper IPR decision
`does not support Finjan’s contention that claims 1 and 15 can cover network gateways.
`F.
`Finjan’s Procedural Complaints Lack Merit.
`Finjan’s complaint that this Court did not grant ESET leave to file this motion is
`unserious and completely citation-free. Opp. at 13. The Court’s Minute Order of July
`23, 2020 (D.I. 802), specifically states: “ESET may file its renewed motions for partial
`summary judgment as to the priority date and prosecution history estoppel of the ‘844
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`patent, and indefiniteness of the term downloadable…” Both the Court and ESET
`understood that this motion was intended to address the estoppel effect of the prosecution
`history, and specifically, to address the dispute regarding whether Finjan was estopped
`from alleging that the web server of claims 1 and 15 could be a network gateway.
`This Court had also repeatedly rejected Finjan’s contention (Opp. at 15), that claim
`construction “should be left to the jury.” As noted supra, this Court did not specifically
`construe what a web server is. D.I. 809-2 at 427:19-23. Finjan’s attempt to argue that it
`did, or that this Court should adopt the constructions of courts outside this District, and
`with less experience litigating patent matters, should be rejected.
`III. CONCLUSION
`For all the foregoing reasons, summary judgment that the asserted claims of the
`’844 patent cannot be construed to cover network gateways should be granted.
`Dated: September 25, 2020
`Respectfully submitted,
`
`EVERSHEDS SUTHERLAND (US) LLP
`
`
`
`
`/s/ Nicola A. Pisano
`NICOLA A. PISANO, CA Bar No. 151282
` NicolaPisano@eversheds-sutherland.com
`JOSE L. PATIÑO, CA Bar No. 149568
`
`JosePatino@eversheds-sutherland.com
`JUSTIN E. GRAY, CA Bar No. 282452
`
`JustinGray@eversheds-sutherland.com
`SCOTT A. PENNER, CA Bar No. 253716
` ScottPenner@eversheds-sutherland.com
`12255 EL CAMINO REAL, SUITE 100
`SAN DIEGO, CALIFORNIA 92130
`TELEPHONE:
`858.252.6502
`FACSIMILE:
`858.252.6503
`Attorneys for Defendants and Counter-Plaintiffs
`ESET, LLC and ESET, SPOL. S.R.O.
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