Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 1 of 31
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
`Plaintiff,
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`v.
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`SYMANTEC CORP.,
`Defendant.
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`Case No.14-cv-02998-HSG
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`CLAIM CONSTRUCTION ORDER
`Re: Dkt. Nos. 72, 151
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`Plaintiff Finjan, Inc. filed this patent infringement action against Defendant Symantec
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`Corp. The parties seek construction of a total of twelve claim terms found in eight patents: Patent
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`Nos. 6,154,844 (“’844 Patent”), 7,613,926 (“’926 Patent”), 8,677,494 (“’494 Patent”), 7,756,996
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`(“’996 Patent”), 7,930,299 (“’299 Patent”), 8,015,182 (“’182 Patent”), 7,757,289 (“’289 Patent”),
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`and 8,141,154 (“’154 Patent”). This order follows claim construction briefing, a technology
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`tutorial, a claim construction hearing, two rounds of supplemental claim construction briefing, and
`a supplemental claim construction hearing held on January 20, 2017.1
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`I. LEGAL STANDARD
`Claim construction is a question of law to be determined by the Court. Markman v.
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`Westview Instruments, Inc., 517 U.S. 370, 384 (1996). “The purpose of claim construction is to
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`determine the meaning and scope of the patent claims asserted to be infringed.” O2 Micro Int’l
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`Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (internal quotation
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`marks omitted).
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`Generally, claim terms should be “given their ordinary and customary meaning”—i.e., “the
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`1 Following the original claim construction briefing and hearing, the Court granted Defendant’s
`motion to stay the case pending IPR proceedings. Dkt. No. 117. After the U.S. Patent Trial and
`Appeal Board denied institution of IPR on ten of the eleven petitions filed, the Court lifted the stay
`at the parties’ joint request. Dkt. Nos. 124, 127.
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 1
`Juniper v Finjan
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`

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`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 2 of 31
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`meaning that the terms would have to a person of ordinary skill in the art at the time of the
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`invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal
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`quotation marks omitted). There are only two circumstances where a claim is not entitled to its
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`plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
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`lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the
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`specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
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`1365 (Fed. Cir. 2012).
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`When construing claim terms, the Federal Circuit emphasizes the importance of intrinsic
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`evidence such as the language of the claims themselves, the specification, and the prosecution
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`history. Phillips, 415 F.3d at 1312-17. The claim language can “provide substantial guidance as
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`to the meaning of particular claim terms,” both through the context in which the claim terms are
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`used and by considering other claims in the same patent. Id. at 1314. The specification is likewise
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`a crucial source of information. Id. at 1315-17. Although it is improper to read limitations from
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`the specification into the claims, the specification is “the single best guide to the meaning of a
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`disputed term.” Id. at 1315 (“[T]he specification is always highly relevant to the claim
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`construction analysis. Usually, it is dispositive.” (internal quotation marks omitted)); see
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`also Merck & Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (“[C]laims
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`must be construed so as to be consistent with the specification . . . .”).
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`Despite the importance of intrinsic evidence, courts may also consider extrinsic evidence—
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`technical dictionaries, learned treatises, expert and inventor testimony, and the like—to help
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`construe the claims. Phillips, 415 F.3d at 1317-18. For example, dictionaries may reveal what the
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`ordinary and customary meaning of a term would have been to a person of ordinary skill in the art
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`at the time of the invention. Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr Inc., 744
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`F.3d 715, 722 (Fed. Cir. 2014) (“Terms generally carry their ordinary and customary meaning in
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`the relevant field at the relevant time, as shown by reliable sources such as dictionaries, but they
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`always must be understood in the context of the whole document—in particular, the specification
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`(along with the prosecution history, if pertinent).”). Extrinsic evidence is, however, “less
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`significant than the intrinsic record in determining the legally operative meaning of claim
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 2
`Juniper v Finjan
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`

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`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 3 of 31
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`language.” Phillips, 415 F.3d at 1317 (internal quotation marks omitted).
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`II.
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`DISPUTED TERMS
`For the first time the Court can recall in any of its patent cases, the parties have failed to
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`reach agreement as to the construction of even one initially disputed claim term.
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`A.
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`“Downloadable” (’844, ’926, ’494)
`Finjan’s Construction
`an executable application program, which is
`downloaded from a source computer and run
`on the destination computer
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`Symantec’s Construction
`mobile code that is requested by an ongoing
`process and downloaded from a source computer
`to a destination computer for automatic
`execution
`The Court adopts Finjan’s construction.
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`The parties’ dispute concerning this term reduces to whether an explicit definition in the
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`specification controls over a narrower definition referenced in the prosecution history. Finjan
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`argues that the ’844 Patent expressly defines the term “Downloadable” in its specification:
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` A
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` Downloadable is an executable application program, which is
`downloaded from a source computer and run on the destination
`computer.
`’844 Patent at 1:44-47. Finjan asserts that this express definition ends the inquiry. See Edwards
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`Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009) (holding that the court will
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`adopt a definition where “the patentee acted as his own lexicographer and clearly set forth a
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`definition of the disputed claim term in either the specification or prosecution history” (internal
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`quotation marks omitted)).
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`Symantec proposes a construction drawn from the prosecution history of another Finjan
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`patent (the ’194 Patent), which predates the patents at issue in this case. According to Symantec,
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`the examiner rejected the initial ’194 Patent application over U.S. Patent No. 5,623,600 (the “Ji
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`Patent”). The Ji Patent disclosed a virus scanner that “detect[s] . . . viruses attached to executable
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`files.” Dkt. No. 74 (“Def. Resp. Br.”) at 2. Symantec directs the Court to a passage of the
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`prosecution history in which it argues that the inventors of the ’194 Patent distinguished their
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`invention from the Ji Patent on the ground that the Ji Patent “does not teach hostile Downloadable
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`detection,” because “[a]s is well known in the art, a Downloadable is mobile code that is requested
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`by an ongoing process, downloaded from a source computer to a destination computer for
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 3
`Juniper v Finjan
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`

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`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 4 of 31
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`automatic execution.” Id. (internal quotation marks omitted) (emphasis in original).
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`The Court adopts Finjan’s construction, and agrees that the patentee acted as his own
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`lexicographer in defining this term. The Court is not persuaded by Symantec’s argument based on
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`the prosecution history of the ’194 patent, and finds that the cited history does not reflect a “clear
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`and unmistakable disavowal” in any event. See Verizon Servs. Corp. v. Vonage Holdings Corp.,
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`503 F.3d 1295, 1306 (Fed. Cir. 2007) (“To operate as a disclaimer, the statement in the
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`prosecution history must be clear and unambiguous, and constitute a clear disavowal of scope.”).
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`B.
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`“Database” (’926, ’494)
`Finjan’s Construction
`a collection of interrelated data organized
`according to a database schema to serve one
`or more applications
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`Symantec’s Construction
`Organized collection of data
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`The Court adopts Finjan’s construction.
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`When engaging in claim construction, district courts have granted “reasoned deference” to
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`claim construction orders outside their jurisdiction that address the same term in the same patent,
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`given the importance of uniformity in claim construction. See Visto Corp. v. Sproqit Techs., Inc.,
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`445 F. Supp. 2d 1104, 1108 (N.D. Cal. 2006); Maurice Mitchell Innovations, L.P. v. Intel Corp.,
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`No. 2:04-CV-450, 2006 WL 1751779, at *4 (E.D. Tex. June 21, 2006), aff’d, 249 F. App’x 184
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`(Fed. Cir. 2007); see also Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir.
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`2008) (“In the interest of uniformity and correctness, this court consults the claim analysis of
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`different district courts on the identical terms in the context of the same patent.”) Under this
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`standard, the court considers the prior claim construction order for its persuasive value, while still
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`ultimately reaching its own independent judgment. Visto, 445 F. Supp. 2d at 1108-09; Maurice
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`Mitchell, 2006 WL 1751779, at *4; see also B-50.com, LLC v. InfoSync Servs., LLC, No. 3:10-
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`CV-1994-D, 2012 WL 4866508, at *4 (N.D. Tex. Oct. 15, 2012) (deferring “where appropriate” to
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`construction of same patent claim by court outside jurisdiction in furtherance of the “patent law
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`goal of uniformity”). If anything, to the extent possible, the degree of deference should be greater
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`where the prior claim construction order was issued in the same jurisdiction. As observed by
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`Judge Chen, the Supreme Court has stressed the particular importance of intrajurisdictional
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 4
`Juniper v Finjan
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`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 5 of 31
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`uniformity in claim construction, see Visto, 445 F. Supp. 2d at 1107-08 (discussing Markman, 517
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`U.S. at 390-91), such that claim construction orders from within the jurisdiction arguably should
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`receive greater deference than those from outside it, see id. at 1108.
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`In Finjan, Inc. v. Sophos, Inc., No. 14-CV-01197-WHO, 2015 WL 890621, at *2-4 (N.D.
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`Cal. Mar. 2, 2015), Judge Orrick adopted Finjan’s identical proposed construction of “database” in
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`the same patents at issue here, on the ground that this construction reflects the patents’ “context”
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`and the “well-accepted definition of the term.” While still independently weighing the arguments
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`made by the parties here, the Court is persuaded by Judge Orrick’s thorough reasoning for
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`adopting Finjan’s construction, and accepts that reasoning in toto to arrive at the same
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`construction of “database” here. The Court’s holding is also consistent with the policy favoring
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`uniformity in claim construction to the extent possible, particularly within the same district.
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`C.
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`“Means for Receiving a Downloadable” (’844)
`Finjan’s Construction
`Symantec’s Construction
`Function: receiving a Downloadable
`Function: receiving a Downloadable
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`Structure: Downloadable file interceptor
`Structure: indefinite
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`The Court adopts Finjan’s construction.
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`As reflected above, the parties do not dispute that this is a means-plus-function claim under
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`section 112(f), or that the claimed function is “receiving a Downloadable.” Compare Dkt. No. 72
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`(“Pl. Br.”) at 11-12 with Def. Resp. Br. at 8-9. Instead, their dispute concerns the corresponding
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`structure that performs that function. Compare Pl. Br. at 12-13 with Def. Resp. Br. 9-10.
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`Symantec argues that “means for receiving a Downloadable” is indefinite because Finjan’s
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`proposed structure—a Downloadable file interceptor—is a general purpose processor or computer
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`“programmed to perform the disclosed algorithm,” Def. Resp. Br. at 9, but the ’844 Patent does
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`not disclose an algorithm for performing that function. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d
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`1302, 1317 (Fed. Cir. 2012) (“[R]estat[ing] the function associated with the means-plus-function
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`limitation . . . is insufficient to provide the required corresponding structure.”). Finjan asserts that
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`the specification designates the “Downloadable file interceptor” as the structure performing the
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`“receiving a Downloadable” function, and that the Federal Circuit’s decision in In re Katz
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 5
`Juniper v Finjan
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`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 6 of 31
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`Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011), requires no more.
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`The Court agrees that the specification of the ’844 Patent designates the “Downloadable
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`file interceptor” as the structure that performs the “receiving a Downloadable” function.
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`“Downloadable file interceptor” is mentioned in the specification several times. Figure 5 labels a
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`“Downloadable file interceptor” in a flow chart. The specification states that Figure 5 represents
`“a generic protection engine [ ], which . . . includes a Downloadable file interceptor 505 for
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`intercepting incoming Downloadables (i.e. Downloadable files) for inspection, and a file reader . .
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`. .” ’844 Patent at 7:41-58 (emphasis added). The specification also uses the term “Downloadable
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`file interceptor” in relation to Figure 7, described as “a flowchart illustrating a method 700 for
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`examining a Downloadable (whether or not signed and inspected).” Id. at 9:19-22. The method
`700 “begins with the Downloadable file interceptor 505 in step 705 receiving a Downloadable
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`file.” Id. at 9:22-23 (emphasis added). These passages clearly identify the “Downloadable file
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`interceptor” as the corresponding structure.
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`The key question is whether, under the Katz exception, the patentee was excused from
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`disclosing an algorithm performing the “receiving” function. Katz states that “[a]bsent a possible
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`narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those
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`functions can be achieved by any general purpose computer without special programming. As
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`such, it [is] not necessary to disclose more structure than the general purpose processor that
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`performs those functions.” Katz, 639 F.3d at 1316. The Federal Circuit discussed the Katz
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`exception at some length in EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616
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`(Fed. Cir. 2015). The EON decision characterized the Katz exception as “narrow,” and read the
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`case to stand for the principle that “a microprocessor can serve as structure for a computer-
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`implemented function only where the claimed function is ‘coextensive’ with a microprocessor
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`itself.” Id. at 621-22. EON cited “‘receiving’ data, ‘storing’ data, and ‘processing’ data”—the
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`functions at issue in Katz—as “[e]xamples of such coextensive functions.” Id. at 622. EON held
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`that “[a] microprocessor or general purpose computer lends sufficient structure only to basic
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`functions of a microprocessor,” and indicated that “[a]ll other computer-implemented functions
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`require disclosure of an algorithm.” Id. at 623.
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 6
`Juniper v Finjan
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`

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`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 7 of 31
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`Symantec argues that the Katz exception does not apply because that decision only
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`concerns functions that can be performed by a “general purpose computer without special
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`programming.” Def. Resp. Br. at 9-10 (citing Katz, 639 F.3d at 1316). In support of its
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`argument, Symantec offers the opinion of Dr. Richard Ford, who contends that receiving a
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`downloadable at a network gateway is a “non-trivial” task that does require special programing.
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`Receiving a Downloadable at a network gateway is a non-trivial
`task. I have experience developing software that performs this task.
`It requires that the Downloadable file interceptor parse the network
`protocol that is sending the downloadable. This activity needs to
`happen at multiple levels; for example, for the case of a file sent
`over HTTP, the Downloadable file interceptor would need to be able
`to track traffic in multiple different protocols, including HTTP,
`TCP, IP and ICMP. Furthermore, the system would need to act as a
`bridge, not only intercepting traffic, but also sending some traffic on
`to its destination. An additional complication is that network
`packets can be fragmented into smaller “chunks.” These chunks
`need to be re-assembled in order to recover the higher-level
`information. The Downloadable file interceptor must also be able to
`deal with packets that are dropped during transmission. All this
`requires programming to perform these specialized tasks.
`Dkt. No. 74-1 (“Ford Decl.”) at ¶ 43. Finjan argues that Dr. Ford’s opinion is “unsupported,” Dkt.
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`No. 77 (“Pl. Reply Br.”) at 7, and directs the Court to the declaration of its own expert, Dr. Nenad
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`Medvidovic. Dr. Medvidovic opines that “[a] person of ordinary skill in the art would be able to
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`determine the proper function and structure of this element with a reasonable certainty when the
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`claim is read in light of the specification and prosecution history.” Dkt. No. 72-1 (“Medvidovic
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`Decl.”) at ¶ 18.
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`The Court does not find Dr. Medvidovic’s declaration relevant to the key issue under Katz.
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`See EON, 785 F.3d at 623 (“EON also argues that a microprocessor can serve as sufficient
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`structure for a software function if a person of ordinary skill in the art could implement the
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`software function. This argument is meritless. In fact, we have repeatedly and unequivocally
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`rejected this argument: a person of ordinary skill in the art plays no role whatsoever in determining
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`whether an algorithm must be disclosed as structure for a functional claim element.”). However,
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`the Court agrees with those courts that have found that “means for receiving” functions are not
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`indefinite when they fail to specify an algorithm. See Sophos, 2015 WL 890621, at *8-9 (holding
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`that the ’844 patent need not specify an algorithm as the corresponding structure to the simple
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 7
`Juniper v Finjan
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`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 8 of 31
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`“Receiving a Downloadable” function); Freeny v. Murphy USA Inc., No. 2:13–CV–791–RSP,
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`2015 WL 294102, at *37 (E.D. Tex. Jan. 21, 2015) (“means for receiving” data does not require
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`algorithm); e–LYNXX Corp. v. Innerworkings, Inc., No. 1:10–CV–2535, 2012 WL 4484921, at
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`*19 (M.D. Pa. Sept. 27, 2012) (“means for receiving an electronic communication” does not
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`require disclosed algorithm). But see Porto Tech. Co. v. Cellco P’ship, No. 3:13CV265–HEH,
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`2013 WL 6571844, at *6-7 (E.D. Va. Dec. 13, 2013) (“means for receiving” traffic map does not
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`fall under Katz exception).
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`The Court finds that the Federal Circuit’s reasoning in EON supports this conclusion.
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`EON directly reaffirmed that “receiving data” is a function coextensive with the microprocessor so
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`as not to require disclosure of an algorithm. 785 F.3d at 622. The Court does not find anything in
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`Dr. Ford’s opinion to overcome this straightforward holding. While Dr. Ford asserts that a
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`number of more complex operations ultimately need to occur at the network gateway, the Court
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`agrees with Judge Orrick’s conclusion in Sophos that the context of the ’844 Patent establishes
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`that “‘Receiving a Downloadable’ is a simple function that consists of accepting or intercepting
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`downloaded content when it is initially downloaded and before more complex operations process
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`the file,” so as to be performable by a general purpose microprocessor. 2015 WL 890621 at *9.
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`D.
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`“Means for Generating a First Downloadable Security Profile that Identifies
`Suspicious Code in the Received Downloadable” (’844)
`Finjan’s Construction
`Symantec’s Construction
`Function: generating a first Downloadable
`Function: generating a first Downloadable
`security profile that identifies suspicious
`security profile that identifies suspicious code in
`code in the received Downloadable
`the received Downloadable
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`Structure: content inspection engine
`Structure: a processor programmed to perform
`programmed to perform the algorithm
`the algorithm disclosed at col. 5, lines 42-45 and
`disclosed at Col. 8, lines 51-60 of the ’844
`col. 9, lines 20-42 of U.S. Patent No. 6,092,194
`Patent, which involves performing the steps
`of examining the operations of the received
`Downloadable, comparing the operations of
`the received Downloadable to a list of
`suspicious operations or rules, and creating a
`data structure based on matches to suspicious
`operations or rules violations
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`The Court adopts the undisputed construction of the term’s function and adopts in
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 8
`Juniper v Finjan
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`

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`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 9 of 31
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`part Finjan’s construction of the term’s structure. Specifically, the Court construes the term’s
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`structure as “content inspection engine programmed to perform the algorithm disclosed at Col. 8,
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`lines 51-60 of the ’844 Patent.”
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`The parties do not dispute that the function of this claim is “generating a first
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`Downloadable security profile that identifies suspicious code in the received Downloadable.”
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`Compare Pl. Br. at 13-14 with Def. Resp. Br. at 11. And, based on the parties’ supplemental
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`briefs, there is no longer a dispute that the structure must consist of an algorithm, as required by
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`the Federal Circuit’s holding that “[a] computer-implemented means-plus-function term is limited
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`to the corresponding structure disclosed in the specification and equivalents thereof, and the
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`corresponding structure is the algorithm.” Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253-54
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`(Fed. Cir. 2005) (finding that district court erred in construing structure as a “symbol processor,”
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`because that construction did not incorporate any disclosed algorithm); see also WMS Gaming,
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`Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999) (finding that district court erred by
`failing to limit the claim to the algorithm disclosed in the specification).2 However, the parties
`now offer competing identifications of the algorithm comprising the structure.
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`The Federal Circuit has explained that “[t]he usage ‘algorithm’ in computer systems has
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`broad meaning, for it encompasses ‘in essence a series of instructions for the computer to follow,
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`whether in mathematical formula, or a word description of the procedure to be implemented by a
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`suitably programmed computer.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1384
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`(Fed. Cir. 2011) (citation omitted). “The specification can express the algorithm ‘in any
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`understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any
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`other manner that provides sufficient structure.’” Noah Sys., Inc., 675 F.3d at 1312 (quoting
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`2 Plaintiff initially proposed to define the structure as “content inspection engine.” See Pl. Br. at
`13-14. The Court ordered supplemental briefing after lifting the stay, pointing out that Plaintiff’s
`construction appeared inconsistent with the requirements of Harris Corp. and WMS Gaming. Dkt.
`No. 164. Plaintiff then abandoned its proposed construction and offered a new one. Dkt. No. 166
`(“Pl. Add’l Supp. Br.”). At oral argument on the supplemental claim construction briefs,
`Plaintiff’s counsel could offer no explanation as to why its initial construction failed to meet the
`requirements of binding Federal Circuit authority that is over ten years old. The Court does not
`appreciate having its time wasted in this manner, and finds it unacceptable that Plaintiffs complied
`with plainly applicable authority only after being prompted long after the parties submitted their
`proposed constructions.
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`9
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`Northern District of California
`United States District Court
`
`Juniper Ex. 1028-p. 9
`Juniper v Finjan
`
`

`

`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 10 of 31
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`Finisar, 523 F.3d at 1340). The specification itself must adequately disclose the algorithm, and
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`“the testimony of one of ordinary skill in the art cannot supplant the total absence of structure
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`from the specification.” Id. (internal quotation marks omitted).
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`The Court finds that Finjan’s identification of the algorithm is correct, but declines to
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`include its paraphrasing in the claim construction. The “content inspection engine” is mentioned
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`many times in the patent specification. The overall function and structure of the content
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`inspection engine is described in the summary of the invention as follows:
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`The inspector includes a content inspection engine that uses a set of
`rules to generate a Downloadable security profile corresponding to
`a Downloadable. The content inspection engine links the
`Downloadable security profile to the Downloadable. The set of
`rules may include a list of suspicious operations, or a list of
`suspicious code patterns. The first content inspection engine may
`link to the Downloadable a certificate that identifies the content
`inspection engine which created the Downloadable security profile.
`The system may include additional content inspection engines for
`generating and linking additional Downloadable security profiles to
`the Downloadable.
`’844 Patent at 2:3-14 (emphasis added). This language demonstrates that the content inspection
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`engine performs the function of “generating a first Downloadable security profile for the received
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`Downloadable.” See id. at 2:51-52; see also id. at 2:3-5 (“[A] content inspection engine . . . uses a
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`set of rules to generate a Downloadable security profile . . . .”). Similarly, it is clear that “[t]he
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`content inspection engine links the Downloadable security profile to the Downloadable.” Id. at
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`2:5-7.
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`Both parties contend that the ’194 patent is incorporated by reference in the ’844 patent,
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`compare Pl. Add’l Supp. Br. at 3-4 with Dkt. No. 165 (“Def. Add’l Supp. Br.”) at 4-5, and both
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`sides refer to column 9, lines 24-28 and 34-42 of the ’194 patent in their additional supplemental
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`briefs as relevant to identifying the means for the “generating” function, compare Pl. Add’l Supp.
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`Br. at 5 with Def. Add’l Supp. Br. at 5. But the ’844 patent nowhere specifically identifies a
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`particular section of the ’194 patent as setting out the algorithm for that function. See ’844 Patent
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`at 4:59-64 (asserting that “[g]enerating a DSP and generating a Downloadable ID are described in
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`great detail with reference to the patent application [that led to issuance of the ’194 Patent], which
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`has been incorporated by reference above,” but failing to cite any particular section of the
`10
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`Northern District of California
`United States District Court
`
`Juniper Ex. 1028-p. 10
`Juniper v Finjan
`
`

`

`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 11 of 31
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`
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`application containing this “great detail”); compare Advanced Display Sys., Inc. v. Kent State
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`Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (“To incorporate material by reference, the host
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`document must identify with detailed particularity what specific material it incorporates and
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`clearly indicate where that material is found in the various documents.”). The parties’ dispute thus
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`appears to come down to whether the identified sections of the ’194 patent are themselves the
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`algorithm, or whether instead the narrative summary of steps described in the ’844 patent is
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`sufficient on its own to supply the required algorithm.
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`Confronted with a hodgepodge of vague and cryptically-drafted cross-references, the Court
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`takes the simplest tack and finds the algorithm to be the series of steps set out in the ’844 patent at
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`8:51-60, which describe in narrative form how to “generat[e] a DSP.” Specifically, that portion of
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`the ’844 patent states as follows:
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`As stated above, generating a DSP includes examining the
`Downloadable 205 (and the Downloadable components) for all
`suspicious operations that will or may be performed by the
`Downloadable, all suspicious code patterns, all known viruses, etc.
`Generating a DSP may include comparing all operations that will or
`may be performed against a list of suspicious operations or against a
`list of rules, e.g., a rules base 165. Accordingly, if an operation in
`the Downloadable 205 matches one of the suspicious operations or
`violates one of the rules, then the operation is listed in the DSP 215.
`’844 patent at 8:51-60. This narrative algorithm is similar to ones that have been found by the
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`Federal Circuit to disclose sufficient structure. See Typhoon Touch, 659 F.3d at 1385-86 (four-
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`step algorithm for “computer-implemented cross-referencing” disclosed sufficient structure, where
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`algorithm consisted of entry of a response, search for entered response in a library of responses,
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`determination of whether a match existed, and execution of an action if match existed); Noah Sys.,
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`675 F.3d at 1313 (algorithm for “means for providing access” was sufficiently disclosed where
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`specification provided that authorized agents were provided with passcodes and could not enter,
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`delete, review, adjust or process data inputs within master ledger unless passcode was verified).
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`The Court declines to further paraphrase the algorithm as suggested by Finjan.
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`//
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`//
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`//
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`Northern District of California
`United States District Court
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`Juniper Ex. 1028-p. 11
`Juniper v Finjan
`
`

`

`Case 4:14-cv-02998-HSG Document 170 Filed 02/10/17 Page 12 of 31
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`E.
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`“Means for Linking the First Downloadable Security Profile to the
`Downloadable Before a Web Server Makes the Downloadable Available to
`Web Clients” (’844)
`Finjan’s Construction
`Function: linking the first Downloadable
`security profile to the Downloadable before a
`web server makes the Downloadable
`available to web clients
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`Structure: content inspection engine
`programmed to perform the algorithm
`disclosed at col. 6, lines 20-24 of the ’844
`Patent, which involves performing the step
`of associating the Downloadable with a
`Downloadable security profile
`The Court adopts the undisputed construction of the term’s function, but accepts
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`Symantec’s Construction
`Function: linking the first Downloadable
`security profile to the Downloadable before a
`web server makes the Downloadable available
`to web clients
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`Structure: a processor programmed to perform
`the algorithm of steps 630 and 645 disclosed at
`Fig. 6, col. 8 lines 65-67, col. 6, lines 13-24, and
`col. 5, lines 3-13
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`neither party’s construction of the term’s structure. Instead, the Court adopts the following
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`construction of the term’s structure: “conte