DC claim construction based on definition incorporated-by-reference reversed

Finjan LLC v. ESET, LLC, ESET SPOL. S.R.O.

Docket No. 2021-2093 (https://cafc.uscourts.gov/opinions-orders/21-2093.OPINION.11-1-2022_2027205.pdf)

PROST, REYNA, TARANTO

November 1, 2022

Brief Summary:   DC grant of SJ of invalidity for indefiniteness based on claim construction relating to incorporation-by-reference reversed. Summary:  Finjan appealed DC grant of summary judgment (SJ) of invalidity for indefiniteness based on its construction of the claim term “Downloadable’…to be restricted to ‘small’ executable or interpretable application programs based on the definition of ‘Downloadable’ provided by a patent in the same family that was incorporated by reference into the asserted patents” (US 6,154,844; 6,804,780; 8,079,086; and 9,186,621 (all expired)).  Each of the asserted patents claims priority to the same provisional application (the ‘639 application) filed in 1996.  The FC panel opinion includes a chart showing the relationships and incorporations by reference in each of the patents-at-issue and others in the family.  Certain members of the patent family define “Downloadable” slightly differently.   Two of the asserted patents define “Dowloadable” while three do not but instead incorporate the ‘962 (unasserted) and ‘780 patents by reference.  The DC’s construction was based on “its construction on the incorporation by reference of the ’520 Patent” (an unasserted family member) and “the definitions and examples included throughout the various patents in the family tree”.  Following oral argument, the DC found genuine issues of material fact and denied ESET’s motion for SJ without prejudice, but later granted ESET’s renewed petition “in light of the testimony from Finjan’s expert during the trial.”  The FC panel explained that SJ “is proper when, drawing all justifiable inferences in the non-movant’s favor, ‘there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law’” (Azko Nobel, FC 2016; Anderson, US 1986), and it reviews a DC’s “claim construction de novo and its underlying factual determinations for clear error” (Teva, US 2015) under the “reasonable certainty” standard (Nautilus, US 2014).  It also wrote that “[w]hether and to what extent material has been incorporated by reference into a host document is a question of law” (Adv. Display, FC 2000).  The FC panel agreed with Finjan that “the word ‘small’ should not be read into the definition of ‘Downloadable’”, writing that “[c]laims must be read in light of the specification” (Philips, FC 2005) and “[p]atents that are incorporated by reference are “effectively part of the host [patents] as if [they] were explicitly contained therein” (X2Y, FC 2014 (“renders ‘the entire contents’ of that patent’s disclosure a part of the host patent”)).  The FC panel also explained that “incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent” (Modine, FC 1996).  It found here that while there are “differing definitions throughout the patent family”, those are not “competing” and the DC’s finding that it “should be limited to the most restricted definition of the term” was erroneous (e.g., “The use of a restrictive term in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference.”)  The FC panel therefore reversed the DC’s claim construction.

This entry was posted in Claim Construction, Incorporation by Reference, Summary Judgment. Bookmark the permalink.

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