Case 3:17-cv-00183-CAB-BGS Document 182 Filed 10/13/17 PageID.8128 Page 1 of 7
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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
`SUPPLEMENTAL BRIEF
`REGARDING ’621 PATENT
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`
`Judge: Hon. Cathy Ann Bencivengo
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`AND RELATED COUNTERCLAIMS.
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`Case 3:17-cv-00183-CAB-BGS Document 182 Filed 10/13/17 PageID.8129 Page 2 of 7
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`ESET spol. s.r.o. and ESET, LLC (collectively “ESET”) respectfully submit this
`Supplemental Brief regarding the means-plus-function term “the plurality of operating
`system probes … includes means for monitoring a request sent to a downloadable
`engine” in claim 15 of U.S. Patent No. 9,189,621 (“the ’621 patent”) pursuant to this
`Court’s Preliminary Claim Construction Order. (D.I. 178-1 at 6.)
`I.
`INTRODUCTION
`This Court ordered additional briefing specifically on the topic of “identifying the
`structure disclosed in the patent (the ‘962) that is the means for monitoring a request sent
`to a downloadable engine and whether the examples of the downloadable engines
`identified in that patent limit the means for monitoring.” (D.I. 178-1 at 6.)
`There is no dispute that the term at issue in claim 15 of the ’621 patent is subject to
`35 U.S.C. § 112, ¶ 6. It is written in “means for” language and is drafted in functional
`terms. Similarly, there is no dispute that the claimed function is “monitoring a request
`sent to a downloadable engine,” precisely as stated in the claim. The only question then,
`as this Court recognized, is what structure is disclosed for performing the function.
`Because the specification fails to describe any structure for monitoring requests sent “to”
`a downloadable engine, ESET respectfully submits that the claim is indefinite. However,
`to the extent the Court finds monitoring requests to the downloadable engine is disclosed,
`the structure must necessarily include the downloadable engine because the function is
`monitoring a request sent to a downloadable engine (as opposed to requests sent to other
`modules or software components).
`II. ANALYSIS
`As discussed at length during the Markman hearing, there is no support for any of
`the alleged claimed inventions of the ’621 patent within the four corners of the ’621
`patent specification. Instead, the only alleged support identified by Finjan is that of U.S.
`Patent No. 6,480,962 (D.I. 138-9, “the ’962 patent”). For example, the terms “probe,”
`“response engine,” “interrupt,” and “downloadable engine,” which are all included as
`elements of dependent claim 15 of the ’621 patent, appear in the ’621 patent specification
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`Case 3:17-cv-00183-CAB-BGS Document 182 Filed 10/13/17 PageID.8130 Page 3 of 7
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`only by way of incorporation of the ’962 patent. Each of these terms appears
`prominently in the ’962 patent. Figures 3 and 4 show the probes in boxes 310, 312, 314,
`and 316, the response engine in box 318, and the downloadable engine in box 250. See
`’962 patent at 3:55-56 (“a JavaTM virtual machine 250 (i.e., the Downloadable engine
`250)”); 5:26-27 (“the ActiveXTM platform (i.e., the Downloadable engine 250)”). In
`addition, the concept of “interrupting” is disclosed in Figure 7 at box 715 (“interrupt OS
`Request”). The ’962 patent specification provides the only support for the alleged
`inventions of the ’621 patent and, therefore, analysis of the structure corresponding to the
`functionality recited in the means-plus-function claim must come from the ’962
`specification.
`After determining a term should be construed according to 35 U.S.C. § 112 ¶ 6,
`this Court must engage in a two-step process: “‘First, the court must determine the
`claimed function. Second, the court must identify the corresponding structure in the
`written description of the patent that performs the function.’” Noah Sys., Inc. v. Intuit
`Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012) (quoting Applied Med. Res. Corp. v. U.S.
`Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)).
`Here, the first step in the process is straightforward. The function is expressly set
`forth in the claim language, which states the means are “for monitoring a request sent to a
`downloadable engine.” ’621 patent at claim 15. Next, the corresponding structure in the
`written description that performs the entirety of the claimed function must be identified.
`Indeed, the specification itself must identify the structure that performs the recited
`function. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) (“We
`hold that, pursuant to this provision, structure disclosed in the specification is
`‘corresponding’ structure only if the specification or prosecution history clearly links or
`associates that structure to the function recited in the claim.”).
`The plurality of operating system probes are defined as items 310-316. The
`specification states “the security system 135a further includes operating system probes
`310, 312, 314 and 316.” ’962 patent at 4:19-20; see also id. at 6:24-25. There is no other
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`Case 3:17-cv-00183-CAB-BGS Document 182 Filed 10/13/17 PageID.8131 Page 4 of 7
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`description in the ’962 patent specification relating to the operating system probes.
`Similarly, the downloadable engine is identified as item 250. With respect to Figure 3,
`the specification teaches that “a Java™ virtual machine 250 (i.e., the Downloadable
`engine 250)” and with respect to Figure 4, the specification teaches “the ActiveX™
`platform (i.e., the Downloadable engine 250).” ’962 patent at 3:55-56 (emphasis added),
`5:27. In other words, the downloadable engine is described as either the Java virtual
`machine or the ActiveX platform. In fact, at another point the specification expressly
`equates the downloadable engine to the Java virtual machine. Id. at 4:48-49 (“the Java™
`virtual machine 250”). Thus, item 250, defined in the specification as the downloadable
`engine, is equated solely with the Java virtual machine and the ActiveX platform.
`With the understanding that the operating system probes are items 310-316 and the
`downloadable engine is item 250, the structure must be identified that is disclosed for
`“monitoring request sent to a downloadable engine.” ’621 patent at claim 15. There is
`none.
`There is no description that the operating system probes monitor “a request sent to
`a downloadable engine.” Instead the specification teaches that the operating system
`probes 310-316 monitor requests from the downloadable engine sent to the operating
`system. The specification teaches that “a file management system probe 310 recognizes
`applet instructions sent to the file system 265 of operating system 260, a network system
`probe 312 recognizes applet instructions set [sic] to the network management system 270
`of operating system 260, a process system probe 314 recognizes applet instructions sent
`to the process system 275 of operating system 260, and a memory management system
`probe 316 recognizes applet instructions sent to the memory system 280 of operating
`system 260.” ’962 patent at 4:20-28 (emphasis added). In other words, the operating
`system probes all monitor requests that are sent to the operating system, not the
`downloadable engine. In addition, the specification teaches that the method of Figure 7
`begins when the “operating system probes 310, 312, 314 and 316 in step 705 monitoring
`the operating system 260 for Operating System (OS) requests from Downloadables
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`Case 3:17-cv-00183-CAB-BGS Document 182 Filed 10/13/17 PageID.8132 Page 5 of 7
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`140.” Id. at 6:25-27. Again, the purpose of the operating system probes, as taught by the
`specification, is to monitor requests from the downloadable engine, not to the
`downloadable engine as required by the claims. There are no other disclosures in the
`’962 patent specification regarding the operating system probes.
`While Figures 3 and 4 do show a double sided arrow for communications between
`the operating system and the downloadable engine, that drawing depiction cannot
`constitute sufficient disclosure of the recited function. First, the figures do not show the
`probes are monitoring that communication. Second, there is no description in the
`specification about the probes performing any monitoring at that communication level.
`Third, the specification expressly states that the probes are only monitoring requests sent
`to the operating system, not the downloadable engine as required by the claim. Because
`the specification lacks written description support identifying the structure corresponding
`to the claimed function, claim 15 is indefinite. B. Braun, 124 F.3d 1419 at 1424.
`Nonetheless, should the Court conclude that even without express written
`description support, that the probes are also somehow monitoring requests sent to the
`downloadable engine, then the recited structure must at least include the disclosed
`structure for the downloadable engine. The claims recite that the function performed by
`the “means” is “monitoring a request sent to a downloadable engine.” It would not make
`sense to parse the phrase and stop merely at the word “monitoring” or at the phrase
`“monitoring a request.” Instead, the entirety of the function must find corresponding
`structural support in the specification. Because a “downloadable engine” has no
`generally understood structure and is not something that can be done by a general
`purpose computer without specialized programming (indeed here it is described as being
`part of a web browser, ’962 patent at 3:37-40, and therefore clearly something that
`requires additional coding) it must have an express algorithm disclosed. Harris Corp. v.
`Ericsson Inc., 417 F.3d 1241, 1249, 1254 (Fed. Cir. 2005); Ex parte Smith, 108
`U.S.P.Q.2d (BNA) 1198 (P.T.A.B. Mar. 14, 2013) (“opinion timeline engine” does not
`denote structure and must have a disclosed algorithm in the specification) (D.I. 179-2);
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`Case 3:17-cv-00183-CAB-BGS Document 182 Filed 10/13/17 PageID.8133 Page 6 of 7
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`Ex parte Rodriguez, 92 U.S.P.Q.2d (BNA) 1395, 2009 WL 3756279, at *12 (P.T.A.B.
`Oct. 1, 2009) (“system configuration generator” does not denote structure) (D.I. 179-3);
`Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1348 (Fed. Cir. 2016)
`(“symbol generator” is a means-plus-function term). Yet no express algorithm is
`provided for the downloadable engine other than that it is an ActiveX platform or Java
`virtual machine. See ’962 patent at Figs. 3-4, 3:45-56 (“a JavaTM
` virtual machine 250
`(i.e., the Downloadable engine 250)”); 4:48-49 (“the Java™ virtual machine 250”); 5:18
`(“ActiveXTM platform (i.e., the Downloadable engine 250)”). Thus, to the extent that the
`specification discloses any corresponding structure of the downloadable engine, it is only
`that the downloadable engine is the Java virtual machine or ActiveX platform.
`III. CONCLUSION
`For the reasons stated above, this Court should determine that the function of the
`“plurality of operating system probes” is to “monitor a request sent to a downloadable
`engine” and is indefinite as lacking written description, there being no relevant structure
`disclosed. However, if the Court determines that some structure is disclosed, then the
`structure should be that corresponding to operating system probes 310, 312, 314, and 316
`monitoring requests 302 made from the downloadable engine 250 (Java or ActiveX) as
`shown in Figures 3 and 4 and the accompanying text in the ’962 patent.
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`Dated: October 13, 2017
`Respectfully submitted,
`
`FOLEY & LARDNER LLP
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`/s/ Nicola A. Pisano
`NICOLA A. PISANO, CA Bar No. 151282
` npisano@foley.com
`JOSE L. PATIÑO, CA Bar No. 149568
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`jpatino@foley.com
`JUSTIN E. GRAY, CA Bar No. 282452
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`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 182 Filed 10/13/17 PageID.8134 Page 7 of 7
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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 13, 2017.
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`/s/ Nicola A. Pisano
`Nicola A. Pisano
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