Case: 22-1048 Document: 45 Page: 1 Filed: 10/13/2023
United States Court of Appeals for the Federal Circuit ______________________
FINJAN LLC, FKA FINJAN, INC., Plaintiff-Appellant
v.
SONICWALL, INC., Defendant-Appellee ______________________
2022-1048 ______________________
Appeal from the United States District Court for the Northern District of California in No. 5:17-cv-04467-BLF, Judge Beth Labson Freeman. ______________________
Decided: October 13, 2023 ______________________
JUANITA ROSE BROOKS, Fish & Richardson, PC, San Di- ego, CA, argued for plaintiff-appellant. Also represented by JASON W. WOLFF; MICHAEL JOHN BALLANCO, Washing- ton, DC; ROBERT COURTNEY, Minneapolis, MN.
MATTHEW CHRISTOPHER GAUDET, Duane Morris LLP, Atlanta, GA, argued for defendant-appellee. Also repre- sented by JOHN R. GIBSON; JARRAD GUNTHER, ROBERT M. PALUMBOS, JOSEPH POWERS, Philadelphia, PA; PIERRE J. HUBERT, Austin, TX. ______________________ Case: 22-1048 Document: 45 Page: 2 Filed: 10/13/2023
Before REYNA, BRYSON, and CUNNINGHAM, Circuit Judges. Opinion for the court filed by Circuit Judge CUNNINGHAM. Opinion concurring in part and dissenting in part filed by Circuit Judge BRYSON. CUNNINGHAM, Circuit Judge. Finjan LLC sued SonicWall, Inc. for patent infringe- ment in the United States District Court for the Northern District of California. Because the district court based its judgment of invalidity on a collateral estoppel decision that we have since vacated, we vacate the district court’s judg- ment of invalidity and remand for further proceedings. We also affirm the district court’s grant of summary judgment of noninfringement and the district court’s decision to ex- clude Finjan’s expert analysis. I. BACKGROUND Finjan asserted U.S. Patent Nos. 8,677,494, 6,154,844, 6,804,780, and 7,613,926 (collectively, the “Downloadable Patents”), as well as U.S. Patent No. 8,225,408 (the “ARB Patent”) (collectively, the “Asserted Patents”), among oth- ers. J.A. 294–95 (Complaint ¶ 57); Amended Complaint ¶¶ 9, 15, 18, 27, 33, Finjan LLC v. SonicWall, Inc., No. 5:17-CV-04467-BLF (N.D. Cal. Nov. 9, 2018) (“Amended Complaint”). Finjan alleged patent infringement as to Son- icWall’s (1) Gateways; (2) Email Security products (“ES products”); and (3) Capture Advanced Threat Protection (“Capture ATP”), among other products. J.A. 42 (Summary Judgment Order); see also J.A. 289–94 (Complaint); Amended Complaint ¶¶ 46–56. The Downloadable Patents relate to ways to protect network-connectable devices from undesirable down- loadable operations. See, e.g., ’494 patent col. 1 ll. 60–63; ’844 patent col. 1 ll. 23–27; ’780 patent col. 1 ll. 31–34; ’926 patent col. 1 ll. 37–40. Each claim of the Downloadable Pa- tents requires interacting with a “Downloadable” or Case: 22-1048 Document: 45 Page: 3 Filed: 10/13/2023
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“incoming Downloadable.” For example, claim 10 of the ’494 patent recites: 10. A system for managing Downloadables, com- prising: a receiver for receiving an incoming Down- loadable; a Downloadable scanner coupled with said receiver, for deriving security profile data for the Downloadable, including a list of suspicious computer operations that may be attempted by the Downloadable; and a database manager coupled with said Downloadable scanner, for storing the Downloadable security profile data in a da- tabase. ’494 patent col. 22 ll. 7–16. The ARB Patent relates to adaptive, rule-based content scanners that scan mobile content for exploits to facilitate network security. ’408 patent col. 1 ll. 19–20, 65–66. Claim 1 of the ARB Patent recites: 1. A computer processor-based multi-lingual method for scanning incoming program code, com- prising: receiving, by a computer, an incoming stream of program code; determining, by the computer, any specific one of a plurality of programming lan- guages in which the incoming stream is written; instantiating, by the computer, a scanner for the specific programming language, in response to said determining, the scanner comprising parser rules and analyzer rules Case: 22-1048 Document: 45 Page: 4 Filed: 10/13/2023
for the specific programming language, wherein the parser rules define certain pat- terns in terms of tokens, tokens being lexi- cal constructs for the specific programming language, and wherein the analyzer rules identify certain combinations of tokens and patterns as being indicators of potential ex- ploits, exploits being portions of program code that are malicious; identifying, by the computer, individual to- kens within the incoming stream; dynamically building, by the computer while said receiving receives the incoming stream, a parse tree whose nodes represent tokens and patterns in accordance with the parser rules; dynamically detecting, by the computer while said dynamically building builds the parse tree, combinations of nodes in the parse tree which are indicators of potential exploits, based on the analyzer rules; and indicating, by the computer, the presence of potential exploits within the incoming stream, based on said dynamically detect- ing. Id. col. 19 l. 45 to col. 20 l. 7. SonicWall filed a motion seeking judgment of invalidity as to the asserted claims of the ’780, ’844, and ’494 patents due to collateral estoppel based on a decision in related pro- ceedings finding the claims of the ’780 and ’844 patents in- valid for indefiniteness. Finjan LLC v. SonicWall, Inc., No. 17-CV-04467-BLF, 2021 WL 3111685, at *1 (N.D. Cal. July 22, 2021) (“Collateral Estoppel Order”); see Finjan, Inc. v. ESET, LLC, No. 3:17-CV-0183-CAB-BGS, 2021 WL 1241143, at *5 (S.D. Cal. Mar. 29, 2021) (“ESET”). The Case: 22-1048 Document: 45 Page: 5 Filed: 10/13/2023
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district court agreed with SonicWall and granted judgment of invalidity due to collateral estoppel and indefiniteness as to claims of the ’844, ’780, and ’494 patents. Collateral Estoppel Order at *5. Subsequently, in the ESET case which provided the underlying support for the Collateral Estoppel Order, Finjan appealed the district court’s grant of summary judgment of invalidity. Finjan LLC v. ESET, LLC, 51 F.4th 1377, 1378–79 (Fed. Cir. 2022). On appeal in the related ESET case, we vacated the district court’s grant of summary judgment of invalidity due to indefinite- ness and remanded for further proceedings. Id. at 1384. During claim construction, the parties agreed that “Downloadable” means “an executable application pro- gram, which is downloaded from a source computer and run on the destination computer.” Finjan LLC v. Son- icWall, Inc., No. 17-CV-04467-BLF, 2019 WL 1369938, at *3 (N.D. Cal. Mar. 26, 2019) (“Claim Construction Order”) (emphasis added). Based on this construction, SonicWall moved for summary judgment of noninfringement of cer- tain claims of the Downloadable Patents, arguing that its Gateway products could not infringe those claims because they never receive “Downloadables”—“executable applica- tion program[s]”—and instead, their Gateway products re- ceive and inspect packets without extracting the data or reassembling the file within. 1 J.A. 44, 55–56 (Summary Judgment Order) (emphasis added). As explained by the district court, the parties’ disagreement centered on “whether a device receives or obtains a Downloadable when it receives a sequence of packets of an executable file, but
1 For this noninfringement theory, the claims in Son- icWall’s motion were claims 10 and 14 of the ’494 patent, claims 41 and 43 of the ’844 patent, and claim 9 of the ’780 patent. J.A. 44. For ease of reference, we refer to these claims as the asserted claims of the Downloadable Patents or asserted claims throughout this opinion. Case: 22-1048 Document: 45 Page: 6 Filed: 10/13/2023
never re-assembles the packets into a final executable file format.” J.A. 57. The district court concluded that Finjan failed to present evidence that the accused Gateway prod- ucts “ever possess a reassembled file or executable applica- tion” or that “unassembled packets are an executable application program that can run on a destination com- puter.” J.A. 57–58. Thus, the district court granted sum- mary judgment of noninfringement of the asserted claims of the Downloadable Patents. 2 J.A. 58. SonicWall also moved for summary judgment of nonin- fringement of the asserted claims of the ARB Patent, argu- ing that the relevant limitations needed to be completed by the same computer. J.A. 58. The district court agreed with SonicWall’s interpretation of the claims and concluded that the recited claim limitations “must be performed by the same computer.” J.A. 64. Because the parties did not dis- pute that “(1) Capture ATP and Gateways and (2) Capture ATP and ES products involve separate, remote comput- ers,” 3 the district court granted summary judgment of non- infringement for the asserted claims of the ARB Patent. Id.
2 While the district court’s order did not discuss claim 22 of the ’926 patent, the parties agreed that its anal- ysis on this issue applied equally to that claim and stipu- lated to judgment of noninfringement of that claim. J.A. 15792 (Stipulation and Order); Appellant’s Br. 33 n.6. 3 Finjan argued in a motion for reconsideration that there remained a factual dispute as to whether “(1) Cap- ture ATP and its Gateway and (2) Capture ATP and its ES [products] each work together to act as a unified computer system to form the steps as Finjan alleges.” J.A. 88 (Re- consideration Order). The district court found that Finjan failed to raise this argument in its opposition to summary judgment briefing, and that even considering the argu- ment’s merits, operating as a unified computer system Case: 22-1048 Document: 45 Page: 7 Filed: 10/13/2023
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SonicWall also filed a motion in limine to exclude cer- tain opinions of Finjan’s experts, which the district court granted. J.A. 111 (Motions in Limine Order); see also J.A. 92–116. SonicWall argued that Finjan’s expert failed to perform a proper apportionment analysis and examine whether the “top-level functions” identified in SonicWall’s documentation included substantial non-patented fea- tures. J.A. 108–09. The district court excluded the appor- tionment opinions of Finjan’s technical expert, along with the opinions of Finjan’s damages expert based on that ap- portionment analysis. J.A. 111. Finjan timely appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). II. STANDARD OF REVIEW A district court’s grant of summary judgment is re- viewed according to the law of the regional circuit. Amgen Inc. v. Sandoz Inc., 923 F.3d 1023, 1027 (Fed. Cir. 2019). “In the Ninth Circuit, summary judgment is reviewed de novo, and is appropriate when, viewing the evidence in fa- vor of the non-movant, there is no genuine dispute of ma- terial fact.” Id. (first citing Brunozzi v. Cable Commc’ns, Inc., 851 F.3d 990, 995 (9th Cir. 2017); and then citing Zetwick v. Cty. of Yolo, 850 F.3d 436, 440 (9th Cir. 2017)). “When reviewing damages in patent cases, we apply re- gional circuit law to procedural issues and Federal Circuit law to substantive and procedural issues pertaining to pa- tent law.” MLC Intell. Prop., LLC v. Micron Tech., Inc., 10 F.4th 1358, 1367 (Fed. Cir. 2021). The Ninth Circuit re- views “a district court’s evidentiary rulings, such as its de- cisions to exclude expert testimony . . . for an abuse of discretion.” Id. (quoting Ollier v. Sweetwater Union High
would not meet the district court’s requirement that a sin- gle computer perform each of the relevant limitations. J.A. 88–89. Case: 22-1048 Document: 45 Page: 8 Filed: 10/13/2023
Sch. Dist., 768 F.3d 843, 859 (9th Cir. 2014)) (citation omit- ted). III. DISCUSSION Finjan raises four arguments. First, Finjan challenges the district court’s grant of judgment of invalidity of the claims of the ’844, ’780, and ’494 patents based on collateral estoppel. Appellant’s Br. 63–65. Second, Finjan seeks to reverse the district court’s judgment of noninfringement as to the asserted claims of the Downloadable Patents, con- tending that receiving packets that contain a downloadable or portions thereof constitutes receiving a downloadable. Id. at 32–49. Third, Finjan challenges the district court’s grant of summary judgment of noninfringement as to the ARB Patent, alleging that multiple computers can collec- tively perform the “by a computer” or “by the computer” limitations. Id. at 49–59. Fourth, Finjan argues that the district court abused its discretion in striking Finjan’s ex- pert apportionment analysis, which purportedly mirrored an apportionment analysis we previously approved in Fin- jan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1312– 13 (Fed. Cir. 2018). Appellant’s Br. 15–32. We address each argument in turn. A. Invalidity Finjan argues that the district court’s grant of judg- ment of invalidity based on collateral estoppel should be vacated because it was based on a district court’s grant of summary judgment of invalidity that was subsequently va- cated by this court. Id. at 63–65. We agree. A party seeking to invoke collateral estoppel must show: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being Case: 22-1048 Document: 45 Page: 9 Filed: 10/13/2023
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asserted] had a full and fair opportunity to litigate the issue in the first action. Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022) (alteration in original) (quoting In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)). For patent claims, collateral estoppel applies where the “issues of pa- tentability” are identical, i.e., where “the differences be- tween the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of inva- lidity.” Id. at 1381 (quoting Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)). If a court reverses or vacates a judgment upon which a collateral es- toppel decision is based, then collateral estoppel can no longer apply based on that decision. Mills v. City of Covina, 921 F.3d 1161, 1170 & n.2 (9th Cir. 2019) (citing Ornellas v. Oakley, 618 F.2d 1351, 1356 (9th Cir. 1980)) (“A reversed or dismissed judgment cannot serve as the basis for a dis- position on the ground of res judicata or collateral estop- pel.”); see also Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1372 (Fed. Cir. 2013) (citations omitted). These principles require us to vacate the district court’s judgment of invalidity based on collateral estoppel here. The district court held that the ESET court’s order meant that collateral estoppel required granting judgment of in- validity as to the claims of the ’844, ’780, and ’494 patents. Collateral Estoppel Order at *2, *5. We have since vacated the judgment upon which the district court based its appli- cation of collateral estoppel. See Finjan LLC v. ESET, LLC, 51 F.4th 1377, 1379, 1384 (Fed. Cir. 2022). We can- not uphold applying collateral estoppel based on a vacated judgment. 4 Mills, 921 F.3d at 1170. Accordingly, we
4 When reviewing the application of collateral estop- pel, we are “generally guided by regional circuit Case: 22-1048 Document: 45 Page: 10 Filed: 10/13/2023
vacate the district court’s grant of judgment of invalidity based on indefiniteness as to the claims of the ’844, ’780, and ’494 patents and remand for further proceedings. B. Noninfringement: Downloadable Patents Finjan argues that the district court erred in determin- ing that SonicWall Gateway products do not infringe the asserted claims because they receive a sequence of packets and not the downloadables themselves. Appellant’s Br. 32– 49; see J.A. 57–58 (Summary Judgment Order). According to Finjan, the district court took the parties’ agreed-upon construction of “Downloadable”—“an executable applica- tion program, which is downloaded from a source computer and run on the destination computer,” Claim Construction Order at *3—and added a requirement that the down- loadable also be “re-assembled by and executable at the re- ceiver.” Appellant’s Br. 32; see J.A. 57–58 (“Finjan offers no evidence that the accused Gateways ever possess a re- assembled file or executable application.”). Finjan further argues that differences among the asserted claims—requir- ing “a receiver for receiving an incoming Downloadable,” ’494 patent claim 10 (emphasis added); a “communications engine for obtaining a Downloadable,” ’780 patent claim 9 (emphasis added); or “means for receiving a Downloadable,” ’844 patent claim 43 (emphasis added)—indicate that a downloadable does not need to be received “in an executa- ble format” to infringe. Appellant’s Br. 35–37, 39–40. In other words, to infringe, the downloadable need not be re- assembled and executable at the receiver. Id. Finjan also contends that the district court’s additional requirements are unsupported by the Downloadable Patents’ specifica- tions, which do not require reassembling packets or
precedent”—here, the Ninth Circuit—“but we apply our own precedent to those aspects of such a determination that involve substantive issues of patent law.” Ohio Willow Wood, 735 F.3d at 1342. Case: 22-1048 Document: 45 Page: 11 Filed: 10/13/2023
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executing downloadables at a receiver. Id. at 42–47. Fi- nally, Finjan argues that summary judgment of nonin- fringement was inappropriate even under the district court’s new construction because Gateway products that receive packets containing the entire downloadable file would still infringe. Id. at 47–49. SonicWall contends that the district court’s conclusion is derived directly from the parties’ agreed-upon construc- tion, which describes a downloadable as an “executable ap- plication program.” Appellee’s Br. 19–21. Finjan submitted testimony from its expert as to the meaning of “executable,” and SonicWall provided evidence showing that its products do not satisfy that definition because they analyze data streams on a packet-by-packet basis without reassembling those packets to obtain the executable appli- cation program. Id. at 19–20. SonicWall argues that “Fin- jan did not identify any evidence” to oppose summary judgment. Id. at 20. We agree with SonicWall that the district court’s judg- ment of noninfringement flows from the parties’ agreed- upon construction. The asserted claims use “Down- loadable” in different ways. See, e.g., ’494 patent claim 10 (“a receiver for receiving an incoming Downloadable”), claim 14 (“The system of claim 10 wherein the Down- loadable includes program script.”); ’844 patent claim 41 (“receiving a Downloadable”), claim 43 (“means for receiv- ing a Downloadable”); ’780 patent claim 9 (“a communica- tions engine for obtaining a Downloadable”). Yet the parties adopted a single construction of “Downloadable” for each of these claims: “an executable application program, which is downloaded from a source computer and run on the destination computer.” Claim Construction Order at *3 (emphases added). The parties’ construction comes verba- tim from the definition of “Downloadable” in the ’844 and ’780 patents’ specifications. ’844 patent col. 1 ll. 44–47; ’780 patent col. 1 ll. 50–53. Case: 22-1048 Document: 45 Page: 12 Filed: 10/13/2023
We do not permit parties on appeal to raise claim con- struction arguments challenging a stipulated construction. See, e.g., Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1322 (Fed. Cir. 2013); see also Traxcell Techs., LLC v. Sprint Commc’ns Co. LP, 15 F.4th 1121, 1129 (Fed. Cir. 2021) (“Now Traxcell insists in retrospect that this con- struction was wrong. But having stipulated to it, Traxcell cannot pull an about-face.”). Therefore, we focus our anal- ysis on whether the district court erred in analyzing in- fringement under the parties’ agreed-upon construction. We conclude that a device that merely receives and for- wards packets without reassembling their contents does not receive a downloadable, under the parties’ agreed-upon construction, because that device does not receive an exe- cutable application program. The district court credited Finjan’s expert, who defined an “executable application program” as “a piece of code that can actually execute, run, or perform a function on a system.” 5 J.A. 57 (Summary Judgment Order). SonicWall then submitted evidence that its Gateway products do not ever possess a downloadable because they operate by “inspect[ing] the payload of each packet on a packet-by-packet basis and then send[ing] each packet to its destination without extracting the data and reassembling a file” into an executable form. J.A. 56–57 (alterations in original) (emphasis added). Finjan never identified evidence challenging how SonicWall’s products operate, arguing instead that SonicWall’s understanding must be incorrect because “every device on the Internet,” including SonicWall’s device, receives program files in the same way, i.e., “in a sequence of packets that contain the
5 Because the district court’s interpretation of the word “executable” is based on Finjan’s own expert’s testi- mony, we disagree with the dissent’s characterization that the parties disputed the meaning of “executable.” See Dis- sent at 3–4. Case: 22-1048 Document: 45 Page: 13 Filed: 10/13/2023
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file’s bits.” J.A. 55–56. Given SonicWall’s unrebutted evi- dence, we agree with the district court that SonicWall’s products do not infringe under the parties’ agreed-upon construction because they do not reassemble a received packet into an executable form, i.e., one that can be exe- cuted or run. See J.A. 57. We disagree that the district court impermissibly devi- ated from the parties’ agreed-upon construction. It is within the discretion of the district court to clarify or elab- orate on the claim construction, so long as it is only “elabo- rates on a meaning inherent in the previous construction.” Mformation Techs., Inc. v. Research in Mot. Ltd., 764 F.3d 1392, 1397 (Fed. Cir. 2014). In Mformation, the patentee argued that the district court impermissibly added an or- der-of-steps requirement to the claim construction—i.e., a requirement that a connection must be completely estab- lished before the transmitting step begins. 764 F.3d at 1397. We concluded that the district court did not err or alter the construction, but rather clarified what was inher- ent in the construction. Id. Similarly, here, it is inherent in the stipulated construction that the “receiver” receives an assembled downloadable. See, e.g., ’494 patent, claim 1. At least dependent claims 9 and 18 of the ’494 patent sup- port this reading. Claim 9 derives from claim 1 and con- templates “disassembling the incoming Downloadable.” See id. claim 9. Claim 18 derives from claim 10 and con- templates a “disassembler for disassembling the incoming Downloadable.” See id. claim 18. This suggests that the incoming downloadable is assembled before it is received such that, in some embodiments, it will be disassembled after being received. See Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022).
Finjan argues the district court’s understanding of the claims—that downloadables refer to the executable appli- cation program, not the packets themselves—would ex- clude “preferred embodiments” of monitoring “internet traffic” because it would preclude any device that transmits Case: 22-1048 Document: 45 Page: 14 Filed: 10/13/2023
information using packets from infringing. Appellant’s Br. 44–46; see, e.g., ’844 patent col. 3 ll. 32–44 (describing using the invention to scan Internet traffic); ’780 patent col. 3 ll. 7–17 (same); ’494 patent col. 6 ll. 26–41 (same). A de- vice could still monitor internet traffic and infringe the as- serted claims by “receiving” or “obtaining” a downloadable whenever it reassembles the packet and gains possession of the downloadable itself. In other words, the “receiving” or “obtaining” step can include the reception and reassem- bly of the packets into an executable application program. The key point is that SonicWall’s Gateway products never reassemble packets to receive or obtain the contents within, i.e., the executable application program or down- loadable. See J.A. 55–58 (Summary Judgment Order). Finjan points to differences among the claims to argue that the district court’s understanding of the parties’ claim construction—that the claims only read on executable ap- plication programs, not packets—must be incorrect. As an example, Finjan points to the claims of the ’780 patent, which require “obtaining a Downloadable that includes one or more references to software components” to argue that a device could infringe even when there are other “software components” (i.e., remaining packets with pieces of the downloadable) remaining to be received. Appellant’s Br. 39–40 (citing claims 1, 9, 17). We see no reason why refer- ences to other software components would refer to out- standing packets as opposed to other software relevant to the downloadable. See, e.g., ’780 patent col. 4 ll. 58–61 (“For example, the ID generator 315 may prefetch all clas- ses embodied in or identified by the JavaTM applet bytecode to generate the Downloadable ID.”). This argument fails to grapple with the parties’ agreed-upon construction and the testimony from its own expert, which confirms that a down- loadable must be an executable application program that “can actually execute, run, or perform a function.” See J.A. 56. Case: 22-1048 Document: 45 Page: 15 Filed: 10/13/2023
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Similarly, Finjan argues that the claims of the ’494 pa- tent use “incoming Downloadable” to suggest that a packet can infringe the asserted claims because “receipt was in the process of coming in and [that process has] not completed.” Appellant’s Br. 39 (citing ’494 patent claim 10). Finjan also cites the ’494 patent’s discussion of inspecting a “potential- Downloadable to see if it more likely includes executable code, and if it does, designating it as a Downloadable.” Ap- pellant’s Br. 44 (cleaned up); ’494 patent col. 19 l. 64 to col. 20 l. 11. We are not persuaded that the ’494 patent’s dis- cussion of a “potential-Downloadable” means the district court misinterpreted the parties’ agreed-upon construction as applied to “incoming Downloadables,” including because the parties agreed to apply a definition of downloadables found in the ’844 and ’780 patents and not the ’494 patent. See Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375–76 (Fed. Cir. 2015) (declining to incorpo- rate limitations from one patent into parties’ stipulated construction for a related patent, despite patents’ overlap- ping discussion of “tagging”). Moreover, the claims of the ’494 and ’926 patents repeatedly introduce an “incoming Downloadable” and subsequently use “the Downloadable” to refer to the same limitation, confirming the patentee used “incoming Downloadable” and “Downloadable” inter- changeably. See, e.g., ’494 patent claims 1, 10; ’926 patent claims 1, 8, 15, 22, 29, 30. Finjan argues that the district court’s understanding of the parties’ claim construction has no support in the speci- fications of the Downloadable Patents. Appellant’s Br. 32. For example, Finjan argues that the Downloadable Patents do not describe or require a downloadable to be “re-assem- bled by and executable at the receiver.” Appellant’s Br. 39, 42–43. The parties’ agreed-upon construction is supported by the specifications—it is taken verbatim from the ’780 and ’844 patents. ’780 patent col. 1 ll. 50–53 (providing def- inition adopted by parties); ’844 patent col. 1 ll. 44–47 (same). Case: 22-1048 Document: 45 Page: 16 Filed: 10/13/2023
Finjan also challenges the district court’s construction because certain packets may contain an entire down- loadable, such that a device receives a downloadable when it receives that packet containing the entire downloadable. Appellant’s Br. 48. Finjan’s arguments assume that the district court based its judgment of noninfringement solely on the fact that most IP packets contain only a portion of the larger downloadable they are transmitting. However, the district court based its judgment on the fact that an unassembled packet containing a downloadable is not exe- cutable. J.A. 58 (“While Finjan emphasizes that transmit- ted IP packets ‘contain[]’ Downloadables, it offers no evidence that unassembled packets are an executable ap- plication program that can run on a destination com- puter[.]” (citations omitted)). Finjan’s argument that a packet can contain the entire downloadable itself fails to address the crux of the district court’s reasoning. We see no evidence from Finjan demonstrating that SonicWall’s products operate differently than the district court described. Accordingly, we affirm the district court’s grant of summary judgment of noninfringement as to claims 10 and 14 of the ’494 patent, claims 41 and 43 of the ’844 patent, and claim 9 of the ’780 patent. C. Noninfringement: ARB Patent Finjan argues that the district court erred in determin- ing that SonicWall’s Capture ATP technology in combina- tion with SonicWall’s Gateways and/or ES products cannot infringe the asserted claims of the ARB Patent and requir- ing each recited step be performed by “a single, standalone computer.” Appellant’s Br. 49, see also id. 50–62. Accord- ing to Finjan, the ARB Patent requires “a computer”—sub- sequently referred to as “the computer”—to perform certain steps, where the use of “a” indicates that “one or more” computers can perform the various steps of the claim. Id. at 54 (quoting Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Finjan Case: 22-1048 Document: 45 Page: 17 Filed: 10/13/2023
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argues the district court’s decision cannot be squared with 01 Communique Laboratory, Inc. v. LogMeIn, Inc., where we concluded that “a location facility” could “be distributed among multiple locator server computers.” Id. at 56–57 (citing 687 F.3d 1292, 1296 (Fed. Cir. 2012)). SonicWall argues that Finjan never disputed that its Capture ATP and Gateway products are performed by dif- ferent computers, challenging only whether the claims re- quired the “same computer” to perform the claim limitations. Appellee’s Br. 31 (citing Finjan’s Opp. Summ. J. at J.A. 11146). SonicWall argues that even if the refer- ence to “a computer” may mean “one or more computers,” the subsequent references to “the computer” can only be satisfied by the same “one or more computers” that satis- fied the first limitation. Appellee’s Br. 33–35. We agree with SonicWall. For example, in Salazar v. AT&T Mobility LLC, we agreed with the district court that “while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limita- tions referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.” 64 F.4th 1311, 1317 (Fed. Cir. 2023). Similar to this court’s holding that “said” indicates part of a claim limitation refers to the corresponding part of a previously claimed limitation, see Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015), the use of “the” also indicates the claimed term refers to an antecedent term. See, e.g., Convolve, Inc. v. Compaq Com- put. Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (“This ref- erence to ‘the processor,’ referring back to the ‘a processor’ recited in preamble, supports a conclusion that the recited user interface is ‘operatively working with’ the same proces- sor to perform all of the recited steps.” (emphasis added)). The same logic from Salazar applies here. Furthermore, we previously examined a similar claim construction argument in Traxcell Techs., LLC v. Nokia Case: 22-1048 Document: 45 Page: 18 Filed: 10/13/2023
Sols. & Networks Oy, 15 F.4th 1136, 1143–44 (Fed. Cir. 2021) (“Nokia”). In Nokia, we explained that “[a]s a matter of plain language, reciting ‘a computer’ (or a ‘first com- puter’) that performs a function, and then further reciting that ‘the computer’ (or ‘said first computer’) performs mul- tiple additional functions, suggests that such ‘computer’ must be tied to all those functions.” Id. This same ra- tionale is relevant in analyzing the claims here. We see no inconsistency between the holdings in Sala- zar and Nokia and the principles outlined in Baldwin. “[T]he indefinite article a means one or more in open-ended claims containing the transitional phrase comprising.” Salazar, 64 F.4th at 1315 (cleaned up) (quoting Convolve, 812 F.3d at 1321). But that is a separate issue from whether the claims require the same component to perform multiple functions or satisfy multiple limitations of a claim. See Salazar, 64 F.4th at 1318 (“[I]t does not suffice to have multiple microprocessors, each able to perform just one of the recited functions; the claim language requires at least one microprocessor capable of performing each of the recited functions.”); see also Baldwin, 512 F.3d at 1342 (not addressing whether the use of a definite article to refer to the initial antecedent phrase requires the same component to perform the later limitation). Finjan relies heavily on our decision in 01 Commu- nique. See Appellant’s Br. 56–59. In that case, the claim required, among other limitations, “a locator server com- puter linked to the Internet[;] its location on the Internet being defined by a static IP address[;] and including a loca- tion facility for locating the personal computer;” where the location facility is “operable” to create a communication channel between a remote computer and a personal com- puter. 687 F.3d at 1294–95 (first and third emphases added). The parties disputed whether the “location facil- ity” software “must be contained entirely on a single locator server computer . . . or whether it may be distributed among multiple locator server computers.” Id. at 1296. We Case: 22-1048 Document: 45 Page: 19 Filed: 10/13/2023
FINJAN LLC v. SONICWALL, INC. 19
explained that the use of “a,” “its,” and “the” in the claims did not require the locator server computer to be a single computer, especially where the patent disclosed that “the locator server computer may comprise multiple comput- ers.” Id. at 1297. But 01 Communique does not consider whether the same computer must perform each of several subsequent claim limitations referring to that computer, and we see nothing in that decision contradicting the prin- ciples outlined in Salazar and Nokia. With this understanding of our precedent in mind, we agree with the district court’s grant of summary judgment of noninfringement as to asserted claims of the ARB Pa- tent. Claim 1 of the ARB Patent requires that the same computer perform each of the claimed steps “receiv- ing . . . ,” “determining . . . ,” “instantiating . . . ,” “deter- mining . . . ,” “identifying . . . ,” “dynamically building . . . ,” “dynamically detecting . . . ,” and “indicat- ing . . . .” ’408 patent claim 1. Claim 22 is even more ex- plicit, requiring “a computer to perform” the claimed steps. Id. claim 22 (emphasis added). Even if an infringing sys- tem 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 of the ARB Patent. Finally, Finjan argues that even if the ARB Patent re- quires a single “computer” to perform each step of claims 1 and 22, granting summary judgment was still improper be- cause a “computer” can be “comprised of a combination of computers working together.” Appellant’s Br. 59–61 (citing Symantec v. Comp. Assocs. Int’l, 522 F.3d 1279, 1291 (Fed. Cir. 2008) (explaining that “the ordinary meaning of the terms ‘computer’ and ‘computer system’” are “not limited to a single, stand-alone computer or workstation”)). The dis- trict court, in denying Finjan’s motion for reconsideration, concluded that (1) even if Finjan argued SonicWall’s prod- ucts operated “as unified computer systems,” it did not show that a “single computer satisfies the relevant Case: 22-1048 Document: 45 Page: 20 Filed: 10/13/2023
limitations,” and (2) under the standards for granting a motion for reconsideration, Finjan failed to show the dis- trict court’s “manifest failure” to consider Finjan’s legal ar- guments. J.A. 88–89 (Reconsideration Order). Besides its argument that the claims do not require a single computer to perform each limitation, Finjan does not challenge the district court’s reasoning for denying Finjan’s reconsidera- tion motion. Appellant’s Br. 60–61. We agree with the dis- trict court that the analysis above is dispositive. We are not persuaded Symantec requires a different outcome for the claims we consider here, which require the same com- puter to perform each of several subsequent claim limita- tions. See ’408 patent claims 1, 22; Symantec, 522 F.3d at 1291. We affirm the district court’s grant of summary judg- ment of noninfringement as to the asserted claims of the ARB Patent. J.A. 64. D. Expert Analysis Lastly, Finjan challenges the district court’s grant of SonicWall’s motion to exclude the apportionment analysis of one Finjan expert and the opinion of another Finjan ex- pert relying on the apportionment analysis. Appellant’s Br. 21–32. In that order, the district court found that Fin- jan’s expert providing the apportionment analysis “slapped top-level function labels onto the accused products without particularizing how apt the labels were” and then failed to analyze how “sub-features” within those top-level functions related, if at all, to the Asserted Patents. J.A. 110 (Motions in Limine Order). As an example, Finjan argued that Son- icWall SuperMassive’s RFDPI Engine benefitted from the technology in the ARB patent “at least by how incoming . . . program code (’408 [patent]) is received.” Id. But Finjan’s expert never then analyzed the five sub-features listed un- derneath the RFDPI engine, meaning his analysis never established “the extent to which these sub-features involve receiving incoming . . . program code.” Id. The district Case: 22-1048 Document: 45 Page: 21 Filed: 10/13/2023
FINJAN LLC v. SONICWALL, INC. 21
court struck Finjan’s expert apportionment analysis be- cause he offered “no analysis of whether SonicWall custom- ers derived value solely from the patented features of the top-level function or whether the top-level functions in- cluded non-accused or non-patented functions at all.” Id. Accordingly, the district court also struck the related dam- ages opinions relying on the apportionment analysis. J.A. 111. Finjan argues that the district court’s decision cannot stand in light of our decision in Blue Coat. Appellant’s Br. 21–26 (citing 879 F.3d at 1312–13). In that case, a dif- ferent Finjan expert based her apportionment analysis on a diagram prepared by the accused infringer that orga- nized the accused products’ functionality into twenty-four boxes; she “assumed that each box represented one top level function and that each function was equally valua- ble.” 879 F.3d at 1312–13. Finjan argues that we “con- firmed that the methodology in [Blue Coat] satisfied the apportionment requirement,” such that the district court should have permitted its expert to offer similar analysis of top-level features in this case. Appellant’s Br. 21–24. In Finjan’s view, an expert need only distinguish between “pa- tented and unpatented features,” not sub-features. Id. at 21 (citing Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226–27 (Fed. Cir. 2014)). SonicWall responds that Blue Coat is inapposite be- cause it arises in the context of a jury verdict, not a district court exercising its discretion to exclude unreliable expert testimony. Appellee’s Br. 44–45. Because the district court identified the correct law and its decision on this issue is otherwise logical and supported, SonicWall argues that the district court did not abuse its discretion in excluding Fin- jan’s expert apportionment analysis. Appellee’s Br. 50–51. We agree that the district court did not abuse its dis- cretion in excluding Finjan’s expert apportionment anal- yses. “[T]he patentee . . . must in every case give evidence Case: 22-1048 Document: 45 Page: 22 Filed: 10/13/2023
tending to separate or apportion . . . the patentee’s dam- ages between the patented feature and the unpatented fea- tures[.]” LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 67 (Fed. Cir. 2012) (quoting Garretson v. Clark, 111 U.S. 120, 121 (1884)); see also Pavo Sols. LLC v. King- ston Tech. Co., Inc., 35 F.4th 1367, 1380 (Fed. Cir. 2022) (same). “[W]here multi-component products are involved, the governing rule is that the ultimate combination of roy- alty base and royalty rate must reflect the value attributa- ble to the infringing features of the product, and no more.” Ericsson, 773 F.3d at 1226 (citing VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1326 (Fed. Cir. 2014)). The SonicWall documents relied upon by Finjan’s ex- pert to identify the purported “top-level functions” divide those functions into additional sub-features. See J.A. 14145 (listing “feature summary” for SonicWall prod- ucts); J.A. 14142–44 (describing additional features of each “top-level” feature). Because Finjan’s expert admitted that he presented no analysis to assess the value of the sub-fea- tures, J.A. 13958, the district court did not abuse its dis- cretion by concluding that Finjan’s expert failed to carefully tie his analysis to allegedly infringing features and to exclude value attributable to unpatented features. See Commonwealth Sci. & Indus. Rsch. Organisation v. Cisco Sys., Inc., 809 F.3d 1295, 1301 (Fed. Cir. 2015) (“[T]o be admissible, all expert damages opinions must separate the value of the allegedly infringing features from the value of all other features.” (citation omitted)). Nor are we persuaded by Finjan’s reliance on Blue Coat. In Blue Coat, we held—as we do here—that Finjan’s expert failed to apportion the value of unpatented elements from patented elements. 879 F.3d at 1311–12. The other portion of Blue Coat on which Finjan’s appeal focuses is in- apposite, because it concerns whether a jury’s damages award was supported by substantial evidence, id. at 1312, whereas this appeal concerns the district court’s discretion to strike Finjan’s expert apportionment analyses before it Case: 22-1048 Document: 45 Page: 23 Filed: 10/13/2023
FINJAN LLC v. SONICWALL, INC. 23
went to a jury. Blue Coat is also distinguishable because the jury’s damages award was based on an expert who re- lied on a document that identified twenty-four relevant fea- tures but identified no sub-features of those relevant features, whereas here the documents Finjan’s expert re- lied on identify nearly 100 sub-features. Compare 879 F.3d at 1312–13, with J.A. 14142–45. Because the district court did not abuse its discretion, we affirm the district court’s decision to strike the appor- tionment analysis of Finjan’s expert and the related dam- ages opinions. J.A. 110–11 (Motions in Limine Order). IV. CONCLUSION We have considered Finjan’s remaining arguments and find them unpersuasive. For these reasons, we vacate the district court’s judgment of invalidity based on collateral estoppel as to the claims of the ’844, ’780, and ’494 patents; we affirm the district court’s grant of summary judgment of noninfringement as to the asserted claims of the Down- loadable Patents and the ARB Patent; and we affirm the district court’s decision to exclude Finjan’s expert appor- tionment analysis and the related damages opinions. We remand to the district court for further proceedings con- sistent with this opinion. AFFIRMED IN PART, VACATED IN PART AND RE- MANDED COSTS No costs. Case: 22-1048 Document: 45 Page: 24 Filed: 10/13/2023
United States Court of Appeals for the Federal Circuit ______________________
Appeal from the United States District Court for the Northern District of California in No. 5:17-cv-04467-BLF, Judge Beth Labson Freeman. ______________________
BRYSON, Circuit Judge, concurring in part and dissenting in part. I join the majority opinion with respect to its treatment of the ’408 patent, the expert opinion of Dr. Striegel, and the district court’s judgment of invalidity based on collat- eral estoppel. However, I believe that the district court erred in its disposition of the Downloadable patents, and I would not affirm the judgment as to those patents. In the district court the parties stipulated that the term “Downloadable” should be construed to mean “an ex- ecutable application program, which is downloaded from a source computer and run on a destination computer.” J.A. 5. In granting summary judgment of non-infringement of the Downloadable patents, the district court accepted Case: 22-1048 Document: 45 Page: 25 Filed: 10/13/2023
SonicWall’s assertion that the Gateway device does not in- fringe because the Gateway does not receive an executable program, but only a series of packets that must be recon- structed before actually being executed. J.A. 55–58. By resolving the issue in that manner, the court effectively further construed the term Downloadable to require the Downloadable to be capable of being executed in the form and at the time of its receipt by the intermediate computer, rather than being reconstructed by the destination com- puter before execution. I disagree with that construction, for two reasons. First, to construe the term Downloadable in that man- ner would read the preferred Internet embodiments out of the claims of at least two of the Downloadable patents. As the district court noted, it was undisputed that network de- vices transmit files in a sequence of packets. J.A. 57. As a result, any computer that receives a Downloadable over a network will receive it in the form of packets that must be reconstructed before the Downloadable may be executed. The district court’s ruling that the Downloadable patents require that the Downloadable be executable upon receipt by the receiver therefore means that the Downloadable pa- tents would not read on any network that uses packetized files. That anomalous result strongly suggests that the term “executable” should be understood to refer to a file that is capable of being executed once it is reconstructed from the packetized form in which the file was transmitted and received. 1
1 The majority contends that the district court’s con- struction would not render the Downloadable claims nuga- tory because receiver systems other than SonicWall’s reconstruct the packets after receiving them in order to scan them for malware in their reconstructed form. In that respect, the majority suggests, those systems can be said to “receive” or “obtain” Downloadables. While that may be Case: 22-1048 Document: 45 Page: 26 Filed: 10/13/2023
SonicWall argues that Finjan agreed to the construc- tion of the term Downloadable and is stuck with the conse- quences, even if the consequences are that the patent reads
true for the ’780 patent, which claims methods or systems for “obtaining a Downloadable,” it is not true for the other three Downloadable patents, which claim methods and sys- tems for “receiving a Downloadable” (’844 patent), or meth- ods and systems for “receiving an incoming Downloadable” (’926 patent and ’494 patent). And even if, despite the awk- wardness of the construction, a receiver that reconstructs a file can be said, under the district court’s understanding, to be “receiving a Downloadable” from itself, it cannot rea- sonably be said to be “receiving an incoming Down- loadable.” Thus, the district court’s construction would, at minimum, leave the claims of the ’926 patent and the ’494 patent with no scope as to the Internet embodiments. The majority also finds support for its interpretation of the term “Downloadable” in claims 9 and 18 of the ’494 pa- tent, which recite that deriving Downloadable security data “comprises disassembling the incoming Down- loadable” (claim 9) and that the Downloadable scanner “comprises a disassembler for disassembling the incoming Downloadable” (claim 18). But “disassembly” in this con- text refers to extracting data from packets. See Dennis Longley & Michael Shain, Dictionary of Information Tech- nology 94 (2d ed. 1986) (defining “disassembler” as “a de- vice that extracts the message content from packets”). Assembly means the opposite. See Microsoft Computer Dic- tionary 386 (5th ed. 2002) (referring to “assembling/disas- sembling packets”). As the majority notes, claims 9 and 18 imply that the incoming Downloadable is assembled before it is received. “Assembled,” however, means assembled into packets—not into a reconstructed file. Because claims 9 and 18 indicate that Downloadables are received in packet form, they support Finjan’s interpretation of the term, not SonicWall’s. Case: 22-1048 Document: 45 Page: 27 Filed: 10/13/2023
on no embodiments. In fact, however, the record reflects that although the parties stipulated to the construction of the term Downloadable, they did not share the same un- derstanding of the term “executable,” as used in that con- struction, a point that became clear during the summary judgment argument. By agreeing to the construction of the term Downloadable, Finjan did not acquiesce in the inter- pretation of the court’s construction of “executable,” which was that an “executable” file must be executable without any further processing, rather than being capable of execu- tion after, for example, being reconstructed following its transmission in packetized form. Second, the specifications of the Downloadable patents suggest that it is not necessary for the claimed receiver to reconstruct the packets in order for the file to be considered an executable file. For example, the specification of the ’494 patent discloses a mechanism for determining whether a “potential-Downloadable” is actually a Down- loadable by examining whether it “more likely [than not] includes executable code.” ’494 patent, col. 19, line 64 through col. 20, line 12. The fact there is no actual deter- mination of whether the file contains executable code, but instead merely a determination of whether the file “likely” contains such code, indicates that the analysis described in that passage could take place before the reconstruction of the packets into a file that can be executed. The specifica- tion of the ’844 patent also notes that “programs and data may be received by and stored in the system in alternative ways.” ’844 patent, col. 7, ll. 31–33. That language further suggests that a system may transmit the Downloadable in packets if desired, and that the Downloadable would be “executable” even when it is transmitted in packetized form. For those reasons, I would vacate the district court’s grant of summary judgment of non-infringement with re- spect to the Downloadable patents and remand for further proceedings on that issue.