Case 1:10-cv-00593-GMS Document 326 Filed 02/29/12 Page 1 of 4 PageID #: 4029
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`FINJAN, INC.,
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`Plaintiff,
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`Defendants.
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`_______________________________)
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`v.
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`C.A. No. 1 0-cv-593 (GMS)
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`MCAFEE, INC., SYMANTEC CORP.,
`WEBROOT SOFTWARE, INC., WEBSENSE,
`INC., and SOPHOS, INC.,
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`ORDER CONSTRUSING THE TERMS OF U.S. PATENT NOs. 6,092,194 & 6,480,962
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`After having considered the submissions of the parties and hearing oral argument on the
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`matter, IT IS HEREBY ORDERED, ADJUDGED, and DECREED that, as used in the asserted
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`claims ofU.S. Patent Nos. 6,092,194 ("the '194 Patent") and 6,480,962 ("the '962 Patent"):
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`A. The '194 Patent
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`1. The term "Downloadable" is construed to mean "an executable application program, which is
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`downloaded from a source computer and run on the destination computer." 1
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`1 The court rejects the defendants' proposed construction of this term, which all parties agree is not
`amenable to plain and ordinary meaning.
`(D.I. 144 at 8-11; D.I. 145 at 5-10.) The defendants' proposed
`construction defining "Downloadable" as a "mobile code that is requested by an ongoing process and downloaded
`from a source computer to a destination computer for automatic execution," departs from the patent specification
`and injects ambiguity into the term. See Phillips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005). In fact,
`the term "mobile code" itself is not included in the specification and is instead derived from the prosecution history.
`Specifically, the language of the defendants' construction was included in an October 17, 1999 Response to Office
`Action, wherein the patent applicant stated:
`Ji [U.S. Patent No. 5,623,600) teaches gateway detection of viruses attached to executable files,
`and does not teach hostile Downloadable detection. As is well known in the art, a Downloadable
`is a mobile code that is requested by an ongoing process, downloaded from a source computer to a
`destination computer for automatic execution. The programs or documents of Ji are not
`Downloadables.
`(DJ. 184 at JA000249.) The defendants assert that the applicant used this definition to distinguish the invention
`from the Ji prior art and, therefore, the applicant disclaimed the plaintiffs current construction. (D.I. 145 at 6-7.)
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`BLUE COAT SYSTEMS - Exhibit 1024 Page 1
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`Case 1:10-cv-00593-GMS Document 326 Filed 02/29/12 Page 2 of 4 PageID #: 4030
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`2. The term "Downloadable security profile data pertaining to the Downloadable" is construed
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`to have its plain and ordinary meaning. 2
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`3. The term "a list of suspicious computer operations that may be attempted by the
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`Downloadable" is construed to have its plain and ordinary meaning. 3
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`In light of relevant precedent, however, the court disagrees. As the Federal Circuit has made clear, "the
`specification 'is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single
`best guide to the meaning of a disputed term."' Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Here, the plaintiffs proposed construction is derived directly from the
`'194 Patent's specification. See U.S. Patent No. 6,092,194 ("the '194 Patent"), at CoL I, II. 44-47. As this court
`concluded in Finjan, Inc. v. Secure Computing Corp. et a! (06-cv-369), where it was asked to construe the same
`term, the court declines to substitute the '194 Patent specification's explicit definition with a conflicting portion of
`the '194 Patent's prosecution history. (06-cv-369; D.I. 142 at 2.) Rather, the court concludes that where, as here,
`the patent applicant intended to act as the lexicographer of this term, the specification definition controls. See
`Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); see also 3M Innovative Props.
`Co. v. Avery Dennison Corp., 350 F.3d 1365, 1374 (Fed. Cir. 2003) (concluding that "the definition in the
`specification controls").
`2 The court rejects the defendants' proposed construction of this term, which it defines as meaning "data
`that was decomposed from the code for the received Downloadable." (D.I. 145 at 16-18; OJ. 183 at 18-20.) The
`defendants assert that plain and ordinary meaning is insufficient here because, per the specification, "an incoming
`Downloadable is decomposed into DSP data, unless it has previously been decomposed." (D.I. 183 at 18.) To this
`end, the defendants argue, "decomposed" should be included in the definition of this term as it is the "only method
`of deriving DSP data" that is "described in the specification," specifically in Figures 6A and 7. (ld.) Conversely,
`the plaintiff argues that the defendants' inclusion of the words "data decomposed from the code" is inappropriate
`because there "are no limitations placed on how the Downloadable security profile is generated" and, in fact, the
`"claim language is silent" with respect to how the Downloadable security profile data pertaining to the
`Downloadable is generated.
`(D.l. 144 at 12.) Moreover, the plaintiff asserts that the defendants' proposed
`construction explicitly reads in a limitation from two dependent claims into the independent claims and, in so doing,
`violates the doctrine of claim differentiation. (ld.)
`The court agrees with the plaintiff that the plain and ordinary meaning of this term is sufficient.
`Specifically, and as the plaintiff notes in its Opening and Answering Briefs, the defendants' proposed construction
`fails because: (1) it seeks to add limitations from dependent claims into independent claims, violating the claim
`differentiation doctrine; and (2) it requires the generation of Downloadable security profile data. when the
`independent claims require only comparison between the Downloadable security profile and the security policy.
`With regard to the latter, the Downloadable security profile data does not need to be generated for this comparison
`to occur, as it may be "pre-stored and retrieved from a database." See '194 Patent, Col. 5, II. 38-41 ("[I]f the DSP
`data 310 of the received Downloadable is known, the code scanner 325 retrieves and forwards the information to the
`ACL comparator 330"); see also id. at Col. 6, II. 6-10 ("for improved speed but reduced security, the code scanner
`325 may examine only a portion of the Downloadable such as the Downloadable header"). Thus, in consideration of
`the foregoing and the relevant law, the court concludes that inclusion of "decomposed" in the construction of this
`term would improperly narrow its scope. See Adams Respiratory Therapeutics, Inc. v. Perrigo, Co., 616 F.3d 1283,
`1290 (Fed. Cir. 2010) (concluding that it is improper to exclude embodiments disclosed in the specification where
`the patentee did not explicitly disclaim these embodiments in the intrinsic record); Liebel-Flarsheim Co., 358 F.3d
`898, 910 (Fed. Cir. 2004) (stating that, where independent claims lack reference to a limitation in dependent claims,
`this absence provides strong support that all claims are not intended to include the limitation); see also Phillips, 415
`F.3d at 1314 ("In some cases, the ordinary meaning of claim language as understood by a person of skill in the art
`may be readily apparent even to lay judges, and claim construction in such cases involves little more than the
`application of the widely accepted meaning of commonly understood words.").
`3 The court rejects the defendants assertion that this term should be construed to mean "a list of all
`operations that may be attempted by the received Downloadable that have been determined to be suspicious." (D.l.
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`2
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`BLUE COAT SYSTEMS - Exhibit 1024 Page 2
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`Case 1:10-cv-00593-GMS Document 326 Filed 02/29/12 Page 3 of 4 PageID #: 4031
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`B. The '962 Patent
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`1. The term "Downloadable" is construed to mean "an executable application program, which is
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`downloaded from a source computer and run on the destination computer."4
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`2. The term "information pertaining to the Downloadable" is construed to have its plain and
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`ordinary meaning. 5
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`145 at 16-20.) The defendants' proposed construction mirrors the term language, except that it requires the "list of
`suspicious computer operations that may be attempted by the Downloadable" to recite "all" such suspicious
`computer operations. The defendants derive this construction from: ( 1) an embodiment in the '194 Patent stating
`that "the particular Downloadable security profile data 30 I includes 'the list of all potentially hostile or suspicious
`computer operations that may be attempted by a specific Downloadable 307'"; and (2) the '194 Patent applicant's
`use of this specific embodiment to overcome the prior art, specifically, U.S. Patent Nos. 5,692,047 and 5,864,683.
`(D.I. 183 at 16-17.)
`The court, however, disagrees with the assertion that the patent applicant disavowed the plain and ordinary
`meaning of this term through its patent specification and prosecution history to distinguish it from the prior art.
`First, and as the defendants acknowledge in their Opening and Answering Briefs, the inclusion of the word "all" in
`this term's language is an embodiment and, therefore, is not dispositive in construing the term's meaning. See
`Comarck Communications v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) ("while ... claims are to be
`interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that
`limitations from the specification may be read into the claims" (internal citation omitted)). Second, the defendants'
`'194 Patent because of the applicant's reliance on this
`contention that the patent examiner approved the
`embodiment, is not entirely accurate and imports a limitation from the prosecution history into the meaning of this
`claim term. Specifically, while the defendants are correct that the patent applicant amended claims related to the
`Downloadable security profile, it is not clear that the examiner approved the '194 Patent because the applicant
`included the word "all". Rather, the patent examiner stated, in the Notice of Allowability, that "the Examiner found
`it novel in the art to compare downloadable security profile data pertaining to a downloadable that which the
`downloadable security profile data includes a Jist of suspicious computer operations that may be attempted by the
`(D.l. 144 at 13 (quoting '194 Patent File History, Notice of Allowability, JA 000255-56).)
`downloadable."
`Consequently, the court concludes that the inclusion of "all" in the construction of this term would improperly limit
`its scope and would be inappropriate under relevant Jaw. See Phillips, 415 F.3d at 1315 (Fed. Cir. 2005)
`(concluding that claim construction should be consistent with a patent's specification and noting that "the inventor's
`intention, as expressed in the specification, is dispositive" (citing Vitronics Corp., 90 F.3d at 1582)); id. at 1315-16
`(concluding that, although the prosecution history is a part of the intrinsic record, it is generally less reliable for
`purposes of claim construction than the specification and claims because the prosecution history reflects a
`"negotiation history" rather than the result of that negotiation); Comarck Commc'ns, 156 F.3d at 1186 ("while ...
`claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not
`follow that limitations from the specification may be read into the claims" (citations omitted)).
`4 The court agrees with the parties' contention that "Downloadable" should be construed to have the same
`meaning in the '194 and '962 Patents. (D.L 144 at 8-11; D.l. 145 at 5-10.) The court also notes that the definition
`of"Downloadable" in the '962 Patent is also included in that Patent's specification and provides the same definition
`as the construction adopted in this Order. See U.S. Patent No. 6,480,962 ("the '962 Patent), at Col. 1., II. 39-41. For
`a discussion of the court's reasoning in connection with the construction of this term, see supra note 1.
`5 The court disagrees with the defendants' proposed construction that "information pertaining to the
`Downloadable" should be construed to mean "information that
`is sufficient to
`identity the requesting
`Downloadable." "In some cases, the ordinary meaning of claim language as understood by a person of skill in the
`art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the
`application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314 (internal
`citations omitted).
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`3
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`BLUE COAT SYSTEMS - Exhibit 1024 Page 3
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`Case 1:10-cv-00593-GMS Document 326 Filed 02/29/12 Page 4 of 4 PageID #: 4032
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`3. The term "Downloadable engine" is construed to mean "software for managing and
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`executing received Downloadables."6
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`4. The term "operating system probe" 1s construed to mean "interface for receiving and
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`recognizing requests before allowing the operating system to execute the requests."7
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`Dated: February 1/i, 2012
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`The court further concludes that the defendants' proposed construction would serve to unjustifiably narrow
`!d. at 1316.
`In support of their
`the tenn's broad scope, which is not explicitly limited by the specification.
`construction, the defendants contend that the plaintiff, during reexamination of the '962 Patent's parent, U.S. Patent
`No. 6,167,520 ("the '520"), narrowed the meaning of this tenn by stating that "the broadest reasonable interpretation
`of this claim element would require at the very least 'information pertaining to the Downloadable' include
`infonnation sufficient to identifY the requesting downloadable." (D.I. 145 at 11 (citing '520 Patent Reexam, April
`19, 2010, Appeal Brief).) As the plaintiff correctly notes, however, the quotation on which the defendants rely from
`the '520 Patent reexamination should not be viewed in isolation. Rather, during the '520 reexamination, the
`applicant stated in its November 10, 2010 Reply Brief that "[i]nfonnation that is sufficient to identify the requesting
`Downloadable is any infonnation that is associated with the requesting Downloadable." (D.l. 182 at 13 (citing '520
`Patent Reexam, November 10, 2010, Reply Brief at 9).) Notably, the defendants do not cite to the '962 Patent's
`prosecution history to support their construction and the '962 Patent specification does not discuss the identity of the
`Downloadable. See Telejlex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002).
`Consequently, the court concludes that the defendants' construction would inappropriately limit the scope of and
`inject ambiguity into the term. See Phillips, 415 F.3d at 1315 ("[T]he specification 'is always highly relevant to the
`claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of the disputed
`term."' (citation omitted)).
`6 During the Markman hearing, the parties agreed on this construction of the term. See Transcript of
`Hearing, dated January 30, 2012 ("Tr.") at 25: 10-25; 26:1-7.
`1 During the Markman hearing, the parties agreed on this construction of the tenn. See Tr. at 27: 15-25;
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`28:1-3.
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`4
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`BLUE COAT SYSTEMS - Exhibit 1024 Page 4