Case: 21-2093 Document: 52 Page: 1 Filed: 11/01/2022
United States Court of Appeals
for the Federal Circuit
______________________
FINJAN LLC,
Plaintiff-Appellant
v.
ESET, LLC, ESET SPOL. S.R.O.,
Defendants-Appellees
______________________
2021-2093
______________________
Appeal from the United States District Court for the
Southern District of California in No. 3:17-cv-00183-CAB-
BGS, Judge Cathy Ann Bencivengo.
______________________
Decided: November 1, 2022
______________________
JUANITA ROSE BROOKS, Fish & Richardson P.C., San
Diego, CA, argued for plaintiff-appellant. Also represented
by JASON W. WOLFF; ROBERT COURTNEY, Minneapolis, MN.
NICOLA ANTHONY PISANO, Eversheds Sutherland (US)
LLP, San Diego, CA, argued for defendants-appellees. Also
represented by JUSTIN EDWIN GRAY, JOSE L. PATINO, SCOTT
PENNER, REGIS CALVIN WORLEY, JR.
______________________
Before PROST, REYNA, and TARANTO, Circuit Judges.
Case: 21-2093 Document: 52 Page: 2 Filed: 11/01/2022
2 FINJAN LLC v. ESET, LLC
REYNA, Circuit Judge.
Appellant Finjan, Inc. appeals the U.S. District Court
for the Southern District of California’s grant of summary
judgment of invalidity. The district court construed the
claim term “Downloadable” in the asserted patents to be
restricted to “small” executable or interpretable applica-
tion programs based on the definition of “Downloadable”
provided by a patent in the same family that was incorpo-
rated by reference into the asserted patents. The district
court determined that the asserted claims were indefinite
and thus invalid. We reverse the district court’s claim con-
struction, vacate its grant of summary judgment, and re-
mand for further proceedings.
BACKGROUND
In 2017, Finjan, Inc. (“Finjan”) filed suit against ESET,
LLC (“ESET”) in the Southern District of California, as-
serting that ESET infringed U.S. Patent Nos. 6,154,844
(“the ’844 Patent”); 6,804,780 (“the ’780 Patent”); 8,079,086
(“the ’086 Patent”); and 9,189,621 (“the ’621 Patent) (collec-
tively, “the asserted patents” or “the patents-at-issue”).
Finjan, Inc. v. ESET, LLC,
2017 WL 5501338, at *1 (S.D.
Cal. Nov. 14, 2017) (Claim Construction Order). The as-
serted patents, which are all expired, are part of a family
of patents directed to systems and methods for detecting
computer viruses in a “Downloadable” through a security
profile. See, e.g., ’844 Patent col. 1 ll. 23–27. Finjan claims
priority for each of the asserted patents back to provisional
application No. 60/030,639 (“the ’639 application”), filed
November 8, 1996. The family’s chain of priority and in-
corporation by reference relationships are as follows:
Case: 21-2093 Document: 52 Page: 3 Filed: 11/01/2022
FINJAN LLC v. ESET, LLC 3
J.A. 13.
On September 25 and 26, 2017, the district court held
a Markman hearing. Claim Construction Order at *1. The
court focused on the meaning of the term “Downloadable”
and requested further briefing on that term.
Case: 21-2093 Document: 52 Page: 4 Filed: 11/01/2022
4 FINJAN LLC v. ESET, LLC
“Downloadable” appears in the claims of all asserted
patents. The ’639 application first defines “Downloadable”
as “an executable application program which is automati-
cally downloaded from a source computer and run on the
destination computer. Examples of Downloadables include
applets designed for use in the Java™ distributing envi-
ronment . . . .” J.A. 1863.
Non-asserted U.S. Patent Nos. 6,167,520 (“the ’520 Pa-
tent”) and 6,480,962 (“the ’962 Patent”) define Down-
loadables as “applets” and as “a small executable or
interpretable application program which is downloaded
from a source computer and run on a destination com-
puter.” ’520 Patent col. 1 ll. 31–34; ’962 Patent col. 1 ll.
38–41 (emphasis added). Two of the asserted patents, the
’844 and ’780 patents, define a Downloadable as “an exe-
cutable application program, which is downloaded from a
source computer and run on the destination computer.”
’844 Patent col. 1 ll. 44–47; ’780 Patent col. 1 ll. 50–53. The
patents list as examples Java applets and JavaScripts
scripts.
Id. Both patents incorporate the ’520 patent by
reference. ’844 Patent col. 1. ll. 14–18; ’780 Patent col. 1.
ll. 19–23. The three remaining asserted patents, the ’086,
’621, and ’755 patents, do not include a definition of “Down-
loadable” but incorporate the ’962 and ’780 patents by ref-
erence. ’086 Patent col. 1. ll. 24, 34–35; ’621 Patent col. 1
ll. 40–41, 58; ’755 Patent col. 1. ll. 44, 58–59.
The district court construed the term “Downloadable”
to mean “a small executable or interpretable application
program which is downloaded from a source computer and
run on a destination computer.” Claim Construction Order
at *2 (emphasis added). The court based its construction
on the incorporation by reference of the ’520 Patent. 1
Id.
1 The asserted patents also incorporate the ’962 Pa-
tent by reference. The ’962 Patent is substantially similar
Case: 21-2093 Document: 52 Page: 5 Filed: 11/01/2022
FINJAN LLC v. ESET, LLC 5
at *1–2. The district court reasoned that the patent family
contained “somewhat differing definitions” that “can be
reconciled.” Id. at *1. The court found that based on the
definitions and examples included throughout the various
patents in the family tree, the term Downloadable in the
patents-at-issue should be construed to include the word
“small” as defined in the ’520 Patent. Id. at *2.
On April 23, 2019, ESET moved for summary judgment
of invalidity based on indefiniteness. Finjan, Inc. v. ESET,
LLC,
2021 WL 1241143, at *1 (S.D. Cal. Mar. 29, 2021).
The court held oral argument and determined that there
were genuine disputes of material fact over what a skilled
artisan would have understood “Downloadable” to mean as
of the effective filing date in 1997.
Id. The court denied
the motion without prejudice.
On March 10, 2020, the case went to trial. Three days
later, the court vacated the remainder of the trial due to
California’s COVID-19 stay-home order.
Id.
On August 21, 2020, ESET renewed its motion for sum-
mary judgment in light of the testimony from Finjan’s ex-
pert during the trial.
Id. On March 29, 2021, the district
court granted the motion, finding the asserted patents in-
definite based on the word “small” as used in the court’s
construction of “Downloadable.” Id. at *5. Finjan timely
appealed. This court has jurisdiction pursuant to
28
U.S.C. § 1295(a)(1).
STANDARD OF REVIEW
The Federal Circuit reviews a district court’s grant of
summary judgment under the standard applied in the re-
spective regional circuit, in this case the Ninth Circuit. See
Neville v. Found. Constructors, Inc.,
972 F.3d 1350, 1355
to the ’520 Patent. Reference to the ’520 Patent definition
throughout the opinion also applies to the ’962 Patent.
Case: 21-2093 Document: 52 Page: 6 Filed: 11/01/2022
6 FINJAN LLC v. ESET, LLC
(Fed. Cir. 2020). The Ninth Circuit reviews a grant of sum-
mary judgment de novo.
Id. (citation omitted). “Summary
judgment 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 Coatings, Inc. v. Dow
Chem. Co.,
811 F.3d 1334, 1338–39 (Fed. Cir. 2016) (quot-
ing Fed. R. Civ. P. 56(a); Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255, (1986)).
The Court reviews a district court’s claim construction
de novo and its underlying factual determinations for clear
error. See Teva Pharms. USA, Inc. v. Sandoz, Inc.,
574 U.S.
318, 325–26, (2015). “Whether and to what extent material
has been incorporated by reference into a host document is
a question of law.” Advanced Display Sys., Inc. v. Kent
State Univ.,
212 F.3d 1272, 1283 (Fed. Cir. 2000) (citing
Quaker City Gear Works, Inc. v. Skil Corp.,
747 F.2d 1446,
1453–54 (Fed. Cir. 1984)).
“We review [a] district court’s indefiniteness determi-
nation de novo.” Ethicon Endo-Surgery, Inc. v. Covidien,
Inc.,
796 F.3d 1312, 1317 (Fed. Cir. 2015) (citation omit-
ted). A claim is invalid for indefiniteness under
35 U.S.C.
§ 112 if its language, when read in light of the specification
and prosecution history, fails to inform skilled artisans
about the scope of the invention with reasonable certainty.
Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898,
909–911 (2014).
DISCUSSION
Finjan makes two arguments on appeal: (1) the district
court erred by construing the term “Downloadable” to be
limited to “small” executable application programs and (2)
the district court erred by finding that the word “small”
rendered the claims indefinite and thus, invalid. We ad-
dress each issue in turn below.
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FINJAN LLC v. ESET, LLC 7
Finjan argues that the district court erred in its con-
struction and that the word “small” should not be read into
the definition of “Downloadable.” Appellant’s Br. 27–28.
We agree.
Claims must be read in light of the specification. Phil-
lips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
banc). That includes any patents incorporated by refer-
ence. Patents that are incorporated by reference are “effec-
tively part of the host [patents] as if [they] were explicitly
contained therein.” X2Y Attenuators, LLC v. U.S. Int’l
Trade Comm’n,
757 F.3d 1358, 1362–63 (Fed. Cir. 2014)
(alterations in original) (citations omitted). Incorporation
by reference of a patent “renders ‘the entire contents’ of
that patent’s disclosure a part of the host patent.”
Id. at
1363 (citing Ultradent Prods., Inc. v. Life-Like Cosmetics,
Inc.,
127 F.3d 1065, 1069 (Fed. Cir. 1997); Manual of Pa-
tent Examining Procedure § 608.01(p) (6th ed. 1996)). Ac-
cordingly, definitions in any incorporated patents or
references are a part of the host patent.
Yet, “incorporation by reference does not convert the
invention of the incorporated patent into the invention of
the host patent.” Modine Mfg. Co. v. U.S. Int’l Trade
Comm’n,
75 F.3d 1545, 1553 (Fed. Cir. 1996), abrogated on
other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co.,
234 F.3d 558 (Fed. Cir. 2000) (en banc). Ra-
ther, the disclosure of the host patent provides context to
determine what impact, if any, a patent incorporated by
reference will have on construction of the host patent
claims. See, e.g., X2Y Attenuators, 757 F.3d at 1363. “The
disclosures of related patents may inform the construction
of claim terms common across patents, but it is erroneous
to assume that the scope of the invention is the same such
that disclaimers of scope necessarily apply across pa-
tents. . . .” Id. at 1366 (J. Reyna, concurring).
The district court erred because it viewed the differing
definitions throughout the patent family as competing and
Case: 21-2093 Document: 52 Page: 8 Filed: 11/01/2022
8 FINJAN LLC v. ESET, LLC
determined that the asserted patents should be limited to
the most restricted definition of the term. We disagree.
Here, it is not necessary to limit the asserted patents be-
cause the two definitions are not competing. 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.
Modine Mfg., 75 F.3d at 1553 (finding that a grandparent
patent defining “relatively small” to be “0.07 inches or less”
did not incorporate this definition into the parent and child
applications that deleted the definition).
The ’520 Patent, which defines a Downloadable as
“small,” represents a subset of the patent family claiming
an invention capable of downloading only small executable
or interpretable application programs. That is because the
disclosure in the ’520 Patent focuses on applets as small
executable or interpretable application programs. See, e.g.,
’520 Patent col. 1 ll. 31–32. The ’520 Patent summarizes
the invention as “a system for protecting a client from hos-
tile Downloadables. The system includes security
rules . . . and security policies defining the appropriate re-
sponsive actions to rule violations such as terminating the
applet, limiting the memory or processor time available to
the applet, etc.” ’520 Patent col. 1 l. 66 to col. 2 l. 6 (empha-
ses added).
The definition of “Downloadable” that does not include
a size requirement refers to executable or interpretable ap-
plication programs of all sizes, including, but not limited
to, “small” executable or interpretable application pro-
grams. Because these two definitions can exist in harmony
within the patent family, we do not necessarily have to ap-
ply the ’520 Patent’s definition to the asserted patents.
The ’844 and ’780 Patents describe a Downloadable as
“an executable application program, which is downloaded
from a source computer and run on the destination com-
puter.” ’844 Patent col. 1 ll. 45–47; ’780 Patent col. 1 ll.
Case: 21-2093 Document: 52 Page: 9 Filed: 11/01/2022
FINJAN LLC v. ESET, LLC 9
51–53. This definition is not limited to “small” executable
application programs. The ’844 and ’780 Patents list exam-
ples of Downloadables, including “JavaTM applets,” “Ac-
tiveXTM controls,” “JavaScriptTM scripts,” and “Visual Basic
scripts.” ’844 Patent col. 1 ll. 63–65; ’780 Patent col. 2 ll.
3–4. These examples expand upon the sole example listed
in the ’520 Patent—applets. The ’844 and ’780 Patents de-
fine Downloadable to contemplate a broader functionality
of the claimed invention not limited to downloading only
“small” executable application programs, and the examples
in the ’844 and ’780 Patents provide further support.
Hence, in the ’844 and ’780 Patents, “Downloadable” should
not be construed to include the term “small.”
As noted, the ’086, ’621, and ’755 Patents do not ex-
pressly define Downloadable but incorporate patents by
reference that include both the ’520 Patent’s restricted def-
inition of Downloadable with the word “small” and the
broader definition without it. Similar to the ’844 and ’780
Patents, the ’086, ’621, and ’755 Patents include examples
expanding upon the ’520 Patent’s focus on “small” executa-
ble or interpretable application programs like applets as
well. For example, the ’086 patent recites: “JavaTM applets
and JavaScript™ scripts, ActiveX™ controls, Visual Basic,
add-ins, and/or others . . . Trojan horses, multiple com-
pressed programs such as zip or meta files.” ’086 Patent
col. 2 ll. 3–9; ’621 Patent col. 2 ll. 36–40; ’755 Patent col. 2
ll. 36–40. Based on the context provided by the ’086, ’621,
and ’755 Patents, the term “Downloadable” should not be
restricted to “small” executable application programs.
In sum, the term “Downloadable” as used in the ’844,
’780, ’086, ’621, and ’755 Patents means “an executable or
interpretable application program, which is downloaded
from a source computer and run on the destination com-
puter.” We therefore reverse the district court’s claim con-
struction.
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10 FINJAN LLC v. ESET, LLC
Because we reverse the district court’s claim construc-
tion, we need not to review the entirety of the district
court’s determination of invalidity due to indefiniteness.
CONCLUSION
We reverse the district court’s claim construction and
determine that Downloadable should be construed as “an
executable or interpretable application program, which is
downloaded from a source computer and run on a destina-
tion computer.” We vacate the district court’s grant of sum-
mary judgment based on invalidity due to indefiniteness
and remand for further proceedings consistent with our
claim construction.
REVERSED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
