Case 3:17-cv-00183-CAB-BGS Document 186 Filed 10/18/17 PageID.8270 Page 1 of 8
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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
`RESPONSIVE SUPPLEMENTAL
`BRIEF REGARDING ’621 PATENT
`
`
`Judge: Hon. Cathy Ann Bencivengo
`
`AND RELATED COUNTERCLAIMS.
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`Case 3:17-cv-00183-CAB-BGS Document 186 Filed 10/18/17 PageID.8271 Page 2 of 8
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`ESET spol. s.r.o. and ESET, LLC (collectively “ESET”) respectfully submit this
`Responsive 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
`Finjan’s attempt to identify structure for the means-plus-function term in claim 15
`of the ’621 patent is entirely untethered from the claim language and the specification.
`(See D.I. 183 at 1.) Not only does Finjan’s purported structure have nothing to do with
`the requirements of the claim, but there is no clear nexus, indeed there is no nexus at all,
`between the purported structure and the recited means as required by B. Braun Med., Inc.
`v. Abbott Labs., 124 F.3d 1419 (Fed. Cir. 1997). Moreover, Finjan’s attempt to read out
`“downloadable engine” from the purported structure of the means-plus-function element
`is contradicted by Finjan’s own brief explaining that it must be part of the “function” for
`which structure must be identified. In light of the above, and in view of the analysis set
`forth in ESET’s supplemental brief (D.I. 182), there is no support in the ’621 patent or
`the relevant incorporated-by-reference patent, specifically U.S. Patent No. 6,480,962
`(D.I. 138-9, “the ’962 patent”) for identifying the structure associated with the means
`clause of claim 15. Claim 15 is therefore indefinite.
`II. ARGUMENT
`Finjan alleges that the structure for the “means for monitoring” is “a request broker
`programmed to perform the algorithm disclosed at Col. 4, ll. 12-18 of the ’962 patent.”
`(D.I. 183 at 1.) This cannot be true. Claim 15 of the ’621 patent requires “wherein the
`plurality of operating system probes operating substantially in parallel for monitoring
`the operating system includes means for monitoring a request sent to a downloadable
`engine.” (emphasis added). The claim language specifically requires that the plurality of
`operating system probes must include means for monitoring a request sent to a
`downloadable engine. Noticeably absent from Finjan’s brief is any mention of the
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`Case 3:17-cv-00183-CAB-BGS Document 186 Filed 10/18/17 PageID.8272 Page 3 of 8
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`operating system probes at all. Instead, Finjan relied on a completely different portion of
`the specification that has no relationship, and makes no mention of, the operating system
`probes. Finjan identifies the “request broker,” which is item 306 in Figures 3 and 4. But
`the request broker, as shown in the Figures, is not interconnected with, and does not
`communicate with, the operating system probes. Indeed, nothing in the specification
`links the request broker to the operating system probes. As the Federal Circuit has held,
`the specification (or file history) must not only identify the structure that performs the
`recited function, but it must also clearly link it to the function of the claims. B. Braun
`Med., 124 F.3d at 1424 (“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.”).
`There is simply no link between the request broker and the “operating system probes” as
`required by the claims and the controlling case law.
`Moreover, the algorithm that Finjan purports to identify makes it clear that the
`“event broker” cannot be associated with the identified function. Finjan identifies the
`following algorithmic passage as purportedly performing the recited function:
`When a new applet requests the service of a Java class 302, the
`corresponding Java class extension 304 interrupts the request
`and generates a message to notify the request broker 306 of the
`Downloadable’s request. The request broker 306 uses TCP/IP
`message passing protocol to forward the message to the event
`router 308.
`’962 patent at 4:12-18. Finjan claims that this shows the “request broker ‘monitors a
`request sent to a downloadable engine’ by receiving a request from a downloadable via a
`downloadable engine and forwarding a message regarding the Downloadable’s request to
`an event router.” (D.I. 183 at 2.) But Finjan’s statement of what this algorithm
`purportedly shows is completely at odds with the actual text. First, there is nothing in the
`passage that talks about “monitoring.” Finjan substituted the verb “monitoring” of the
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`Case 3:17-cv-00183-CAB-BGS Document 186 Filed 10/18/17 PageID.8273 Page 4 of 8
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`claim with the verb “receiving” ‒ which does not even appear in the specification. Apart
`from this linguistic sleight-of-hand, monitoring is very different than receiving.
`Monitoring is an active process whereas receiving is a passive one, a distinction that is
`clearly spelled out in the specification. For the operating system probes, the specification
`teaches: “[m]ethod 700 begins with operating system probes 310, 312, 314, and 316 in
`step 705 monitoring the operating system 260 for Operating System (OS) requests from
`Downloadables 140.” ’962 patent at 6:24-27 (emphasis added). Thus, the operating
`system probes are actively watching (i.e. monitoring) the operating system to see if a
`request comes in. By contrast, the “request broker” is described passively: “Java class
`extension…generates a message to notify the request broker.” ’962 patent at 4:13-15.
`The terminological distinction drawn by the specification between makes clear that the
`request broker is not “monitoring” anything.
`In addition, the request broker does not even receive the “request,” as is required
`by the claim (“for monitoring a request…”). Instead, the specification teaches that the
`request broker gets a “message” meant to “notify” the request broker that some request
`has been made, but the specification does not teach that request broker ever actually
`receives the request (as opposed to the notification message). The lack of nexus between
`what the event router actually receives and the claimed functionality of the means-plus-
`function term is fatal to Finjan’s argument. See B. Braun Med., 124 F.3d at 1424.
`Finally, Finjan erroneously argues that the “request sent to the downloadable
`engine” should be interpreted as the request made by the Downloadable to the
`downloadable engine. (D.I. 183 at 2.) But that interpretation does not comport with the
`claims. One of the elements of independent claim 10, from which claim 15 depends,
`includes the term “a request made by a Downloadable.” Claim 15 does not use the
`definite article “the” in front of “a request sent to a downloadable engine” and therefore it
`must be a different request than the request of claim 10. If the request of claim 10 is the
`request from the Downloadable to the downloadable engine, then the request of claim 15
`must be a different request being sent to the downloadable engine. As explained in
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`Case 3:17-cv-00183-CAB-BGS Document 186 Filed 10/18/17 PageID.8274 Page 5 of 8
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`ESET’s opening brief on this issue, the specification lacks any written description of
`monitoring of a request being sent “to the downloadable engine” as required by the
`claims. (D.I. 182 at 3-4.) Indeed, as just discussed above, even if the request in claim 10
`and the request in claim 15 were the same request made from the Downloadable to the
`downloadable engine, then neither the operating system probes nor the request broker
`would be monitoring that “request.” Instead, claim 10 states the “operating system
`probes monitor an event caused from [the] request” and the event router passively gets “a
`message.” ’962 patent at 4:13-14; ’621 patent at claim 10. Once again, the lack of nexus
`between what the event router actually receives and the claimed functionality of the
`means-plus-function term is fatal to Finjan’s argument. See B. Braun Med., 124 F.3d at
`1424.
`
`Finally, to the extent the Court finds there is specification support for an algorithm
`according to which the operating system probes “monitor a request sent to a
`downloadable engine,” the recited structure must include the structure disclosed for the
`downloadable engine as well. As Finjan acknowledges, the function is “monitoring a
`request sent to a downloadable engine.” (D.I. 183 at 4.) Thus, the construction must
`include the structure for the entirety of the function. Finjan offers no case law to support
`its proposition that only part of the function needs to have associated structure. The
`result can be determined by a simple thought experiment. If the identified function were
`merely “monitoring a request”, Finjan’s identified structure would be the same. But here
`the function is “monitoring a request sent to a downloadable engine” and, therefore, the
`recited structure must identify what the downloadable engine is as part of the algorithmic
`step.
`As set forth in ESET’s opening brief on this issue, the “downloadable engine” is
`described in the specification in purely functional terms. It is introduced in the
`specification as follows: “[t]he web browser 245 includes a Downloadable engine 250
`for managing and executing received Downloadables 140.” ’962 patent at 3:39-40.
`Moreover, it is described as being part of a web browser. That is, the Downloadable
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`Case 3:17-cv-00183-CAB-BGS Document 186 Filed 10/18/17 PageID.8275 Page 6 of 8
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`engine is not something that can be performed by a general purpose computer without
`specialized coding. Finally, the Downloadable engine, identified as item 250, is directly
`equated with the JavaTM Virtual machine and ActiveX platform. So much so that in some
`places when the number 250 is used it is expressly recited as the JavaTM virtual machine
`and not the Downloadable engine. 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)”).
`Because the term “engine” has been construed as a nonce word before, 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), the term “Downloadable engine” is described with only functional language in
`the specification, and the term is part of the identified function for the means-plus-
`function element, the associated structure (i.e. the JavaTM virtual machine or ActiveX
`platform) must be included as part of the construction if the term is not indefinite.
`III. CONCLUSION
`The means-plus-function term of claim 15 of the ’621 patent is indefinite.
`However, to the extent it is not, the structure cannot be the “request broker” identified by
`Finjan because the request broker is entirely untethered from the claim language
`requiring the “means” be included in the operating system probes. If not indefinite,
`ESET’s proposed structure should be adopted: 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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`Case 3:17-cv-00183-CAB-BGS Document 186 Filed 10/18/17 PageID.8276 Page 7 of 8
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`Dated: October 18, 2017
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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 186 Filed 10/18/17 PageID.8277 Page 8 of 8
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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 18, 2017.
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`/s/ Nicola A. Pisano
`Nicola A. Pisano
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