Case 3:17-cv-00183-CAB-BGS Document 181 Filed 10/06/17 PageID.8122 Page 1 of 6
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`NICOLA A. PISANO, CA Bar No. 151282
` npisano@foley.com
`JOSE L. PATIÑO, CA Bar No. 149568
`
`jpatino@foley.com
`JUSTIN E. GRAY, CA Bar No. 282452
`
`jegray@foley.com
`SCOTT A. PENNER, CA Bar No. 253716
`
`spenner@foley.com
`FOLEY & LARDNER LLP
`3579 VALLEY CENTRE DRIVE, SUITE 300
`SAN DIEGO, CALIFORNIA 92130
`TELEPHONE:
`858.847.6700
`FACSIMILE:
`858.792.6773
`Attorneys for Defendants and Counter-Plaintiffs
`ESET, LLC and ESET SPOL. S.R.O.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`FINJAN, INC.,
`
`Plaintiff,
`
`v.
`ESET, LLC, et al.,
`Defendants.
`
`Case No. 3:17-cv-0183-CAB-BGS
`ESET, LLC AND ESET SPOL. S.R.O.’S
`RESPONSE TO PLAINTIFF FINJAN,
`INC.’S SUPPLEMENTAL
`INFORMATION IN SUPPORT OF
`CLAIM CONSTRUCTION OF THE
`TERM “DOWNLOADABLE” FOR U.S.
`PATENT NOS. 9,189,621 AND 9,219,755
`
`
`Judge:
`
`Hon. Cathy Ann Bencivengo
`
`AND RELATED COUNTERCLAIMS.
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`Case 3:17-cv-00183-CAB-BGS Document 181 Filed 10/06/17 PageID.8123 Page 2 of 6
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`ESET spol. s.r.o. and ESET, LLC (collectively “ESET”) respectfully submit this
`responsive brief regarding the term “Downloadable” for U.S. Patent Nos. 9,189,621 (“the
`’621 patent”) and 9,219,755 (‘the ’755 patent”) pursuant to this Court’s Preliminary
`Claim Construction Order (D.I. 178-1 at 2).
`First, Finjan’s IPR submissions do not address the salient question at issue, which
`is whether the term Downloadable should be construed in line with the definition
`provided in U.S. Patent No. 6,480,962 (“the ’962 patent”), one of the incorporated
`patents from which the inventions of the ’621 and ’755 patents derive their support. In
`both IPRs submitted by Finjan to this Court on September 29, 2017, the issue of the
`incorporated specifications was never raised by either party and therefore not considered
`by the PTAB when deciding whether to institute IPRs on the ’621 and ’755 patents.
`Moreover, neither party proposed, as ESET does here, that the construction should be
`consistent with the patentee’s definition from the ’962 patent: “a small executable or
`interpretable application program which is downloaded from a source computer and run
`on a destination computer.” D.I. 138-9 at 1:39-41. Thus, the PTAB was never presented
`with the argument, and did not consider, whether the incorporated specification and
`alternative definition should be used, and whether the alternative and contradictory
`construction renders the claims invalid (an issue the PTAB cannot consider during an IPR
`in any event).
`Second, the case law is clear that when multiple specifications are incorporated by
`reference it is improper to incorporate only portions of those specifications. Instead, the
`entirety of all specifications incorporated by reference must be considered. See Telemac
`Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001) (“When a
`document is ‘incorporated by reference’ into a host a document, such as a patent, the
`referenced document becomes effectively part of the host document as if it were
`explicitly contained therein.”); Harari v. Lee, 656 F.3d 1331, 1335-36 (Fed. Cir. 2011)
`(discussing incorporating multiple patent applications into a patent specification by
`reference). Here, and with the term “Downloadable” for U.S. Patent Nos. 6,154,844
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`Case 3:17-cv-00183-CAB-BGS Document 181 Filed 10/06/17 PageID.8124 Page 3 of 6
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`(“the ’844 patent”), 8,079,086 (“the ’086 patent”), and 6,804,780 (“the ’780 patent”), the
`Court must consult all of the identified incorporated-by-reference specifications and
`cannot pick and choose only one of the incorporated specifications. This is particularly
`true for the ’086 patent which does not include a definition of Downloadable at all. For
`that patent, this Court looked only to the incorporated ’780 patent specification because
`the ’780 patent was the most recent patent from which the ’086 patent claimed priority.
`In doing so, this Court did not also consider the incorporated ’962 patent specification,
`which must be given equal weight. See Joao Control & Monitoring Sys., LLC v. Protect
`Am., Inc., No. 1-14-cv-134-KY, 2015 WL 4937464, at *7-8 (W.D. Tex. Aug. 18, 2015)
`(finding the disputed terms indefinite – patentee not allowed to rely on definitions from
`one of the two incorporated references when those definitions are directly contradicted by
`additional statements contained in both of the references). Because the ’621 and ’755
`patents (like the ’086 patent) contain no express definition of “Downloadable” and
`because each of the patents incorporates the ’962 patent’s definition: “small …
`interpretable” as well as the ’780 patent’s contradictory definition, which leaves out the
`“small” and “interpretable” language, the term is indefinite.1 The Court is required to
`construe the claims as the specification requires, and if the resulting construction renders
`the claim invalid, then that is the appropriate outcome. See Rhine v. Casio, Inc., 183 F.3d
`1342, 1345 (Fed. Cir. 1999) (“We have also admonished against judicial rewriting of
`claims to preserve validity.”).
`Nonetheless, to the extent the Court does not find the term indefinite due to the
`multiple incorporated and contradictory definitions, at the very least, there is no dispute
`that the asserted claims of the ’621 and ’755 patents are supported solely by the
`specification of the ’962 patent. The prosecution history (D.I. 138-10 at 6-7; 138-11 at 6-
`9) and oral argument at the claim construction hearing, confirmed that the ’962 patent
`specification provides the sole support for the claims. Thus, to the extent the Court
`
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`1 The same argument applies with respect the ’844 and ’780 patents which also
`incorporate by reference specifications that use the “small” and “interpretable” language.
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`Case 3:17-cv-00183-CAB-BGS Document 181 Filed 10/06/17 PageID.8125 Page 4 of 6
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`decides to look only to the specification that provides the purported support for the
`alleged inventions (as opposed to all incorporated specification as the case law requires),
`then at the very least the term Downloadable for the ’621 and ’755 patents should be
`limited to the definition set forth in the incorporated by reference ’962 patent
`specification: “a small executable or interpretable application program which is
`downloaded from a source computer and run on a destination computer.” ’962 patent
`(D.I. 138-9) at 1:38-40.
`In summary, the parties in the IPRs did not dispute the definition of
`“Downloadable” for the ’621 and ’755 patents and thus the PTAB did not consider the
`implications of the multiple incorporated specifications. The case law, however, is clear,
`that the entirety of all incorporated specifications must be considered and that it is
`improper to pick and choose only a subset of the incorporated disclosure. Because all of
`the claims that use the term Downloadable in this case are from patents that incorporate
`contradictory definitions, these claims should all be held invalid for indefiniteness.
`Nonetheless, if this Court looks to the specification providing the support for the alleged
`inventions, then there is no dispute that construction of Downloadable for the ’621 and
`’755 patents should be limited to the express definition the patentee provided in the ’962
`patent because only the ’962 patent specification provides support for the alleged
`inventions of the ’621 and ’755 patents. Therefore, Downloadable, to the extent not
`indefinite for the ’621 and ’755 patents, should be construed exactly as the patentee
`defined the term: “a small executable or interpretable application program which is
`downloaded from a source computer and run on a destination computer.” ’962 patent
`(D.I. 138-9) at 1:38-40.
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`Case 3:17-cv-00183-CAB-BGS Document 181 Filed 10/06/17 PageID.8126 Page 5 of 6
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`Dated: October 6, 2017
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`
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`Respectfully submitted,
`FOLEY & LARDNER LLP
`
`
`
`/s/ Nicola A. Pisano
`NICOLA A. PISANO, CA Bar No. 151282
` npisano@foley.com
`JOSE L. PATIÑO, CA Bar No. 149568
`
`jpatino@foley.com
`JUSTIN E. GRAY, CA Bar No. 282452
`
`jegray@foley.com
`SCOTT A. PENNER, CA Bar No. 253716
`
`spenner@foley.com
`3579 VALLEY CENTRE DRIVE, SUITE 300
`SAN DIEGO, CALIFORNIA 92130
`TELEPHONE:
`858.847.6700
`FACSIMILE:
`858.792.6773
`Attorneys for Defendants and Counter-Plaintiffs
`ESET, LLC and ESET SPOL. S.R.O.
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`Case 3:17-cv-00183-CAB-BGS Document 181 Filed 10/06/17 PageID.8127 Page 6 of 6
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a true and correct copy of the foregoing
`document has been served to all counsel of record, who are deemed to have consented to
`electronic service via the court’s CM/ECF system per CivLR 5.4(d).
`I declare under penalty of perjury of the laws of the United States that the
`foregoing is true and correct.
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`Executed on October 6, 2017.
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`/s/ Nicola A. Pisano
`Nicola A. Pisano
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`4830-3744-2897
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