Patent Case Summaries October 18, 2023

Patent Case Summaries | Week Ending October 13, 2023

Finjan LLC v. SonicWall, Inc., No. 2022-1048 (Fed. Cir. (N.D. Cal.) Oct. 13, 2023). Opinion by Cunningham, joined by Reyna. Opinion concurring in part and dissenting in part by Bryson.

Finjan sued SonicWall for infringement of a series of patents relating to ways to protect network-connectable devices from undesirable download operations, or to adaptive content scanners that aid network security. The district court granted SonicWall summary judgment of invalidity based on collateral estoppel and summary judgment of noninfringement. The court also excluded the apportionment analysis conducted by Finjan’s technical expert and relied on by Finjan’s damages expert. Finjan appealed, making four arguments.

First, Finjan argued that the Federal Circuit should vacate the district court’s grant of summary judgment of invalidity based on collateral estoppel. Finjan explained that, in a separate appeal, the Federal Circuit recently vacated the decision that the district court relied on for its collateral estoppel ruling. The Federal Circuit agreed with Finjan: “If a court reverses or vacates a judgment upon which a collateral estoppel ruling is based, then collateral estoppel can no longer apply based on that decision.” The Federal Circuit thus remanded this issue for further proceedings.

Second, Finjan argued that the district court erred in granting summary judgment of noninfringement as to claims where the parties had stipulated to the meaning of the term “Downloadable.” Finjan argued that the district court impermissibly added a requirement that a “Downloadable” must be “reassembled by and executable at the receiver.” The Federal Circuit disagreed with Finjan, as the district court had merely clarified or elaborated on the parties’ agreed construction, which is permissible “so long as it only elaborates on a meaning inherent in the previous construction.” The Federal Circuit then ruled that, based on “SonicWall’s unrebutted evidence,” the district court correctly granted summary judgment of noninfringement because SonicWall’s products “do not reassemble a received packet into an executable form.”

Third, Finjan argued that the district court erred in granting summary judgment of noninfringement as to claims that require “a computer” to perform certain steps. The district court ruled that the steps must be performed by “a single, standalone computer” because the claims’ reference to “a computer” followed by references to “the computer” meant that the same computer performs each of the steps. The Federal Circuit affirmed, explaining that “even if an infringing system can use ‘one or more computers,’ the plain language of the claims requires at least one of those computers to perform all the functions listed in the claims.”

Fourth and finally, Finjan challenged the grant of SonicWall’s motion to exclude Finjan’s technical expert’s apportionment analysis and to exclude Finjan’s damages expert’s analysis relying on that apportionment analysis. The Federal Circuit ruled that the district court did not abuse its discretion in excluding the apportionment analyses because “Finjan’s expert failed to carefully tie his analysis to allegedly infringing features and to exclude value attributable to unpatented features.”

Judge Bryson issued an opinion dissenting in part. In his view, the district court erred in granting summary judgment of noninfringement as to the patents requiring a “Downloadable.” The district court construed the term to require the “Downloadable” to be capable of being executed in the form and at the time of its receipt by an intermediate computer, rather than being reconstructed by the destination computer before execution. Judge Bryson disagreed with that construction because it read a preferred embodiment out of the claims and went against the patent specifications’ explanations of a “Downloadable.”

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