4:13-cv-05808
N.D. Cal.Dec 3, 2015Background
- Finjan sued Proofpoint and Armorize for patent infringement involving seven disputed claim terms across six patents relating to runtime monitoring and content-scanning of downloadable/mobile code.
- The patents cover (inter alia) mobile protection code (MPC) that accompanies downloadables, adaptive rule-based (ARB) scanners that build parse trees from incoming content, and a gateway/client system that replaces and vets function calls via a security computer.
- The parties agreed on several definitions (e.g., CODE-A/B/C, downloadable, security context) but disputed constructions for key terms: “mobile protection code,” “information-destination,” “parse tree,” function-call language in the ’154 Patent (including whether it invokes §112 ¶6), “selectively diverting,” and “linking/linked.”
- The court relied primarily on intrinsic evidence (claims, specification, prosecution history) and applied Phillips/Vitronics principles to construe terms; extrinsic evidence played a lesser role.
- The court resolved disputes chiefly by (a) reading claim language consistent with specification embodiments (e.g., MPC operates at runtime), (b) refusing to import narrow examples as limiting the claims, and (c) finding some plain-meaning terms did not trigger means-plus-function treatment.
Issues
| Issue | Finjan's (Plaintiff) Argument | Proofpoint's (Defendant) Argument | Held |
|---|---|---|---|
| Construction of “mobile protection code” (MPC) | MPC is code capable of monitoring or intercepting potentially malicious code | MPC must be code communicated to an information-destination and must monitor/intercept malicious code at runtime | Construed as: “code that, at runtime, monitors or intercepts actually or potentially malicious code operations.” Runtime limitation adopted; communication-to-destination not required as definitional. |
| “information-destination / downloadable-information destination” | Defined broadly as any server/computer where information is communicated to, installed, or executed | Narrower: a user device capable of receiving and initiating or otherwise hosting mobile code execution | Construed as: “a device or process that is capable of receiving and initiating or otherwise hosting a mobile code execution.” Specification controlled. |
| “parse tree” (’408 Patent) | A tree data structure representing exploits in scanned content | A set of linked hierarchical nodes representing token sequences per syntax | Construed as: “a hierarchical structure of interconnected nodes built from scanned content.” Includes dynamic building requirement. |
| Phrase “a call to a first function ... invoking a second function” (’154) — must first/second be different? | First/second indicate order; they can be the same | They must be different (original vs. substitute) based on spec language | Held plain meaning governs; no requirement that first and second be different; no construction necessary. |
| Whether the “content processor … for processing … and for invoking …” is means-plus-function under 35 U.S.C. §112 ¶6 (’154) | Not means-plus-function; plain meaning suffices | Argues it is means-plus-function and requires corresponding structure identification | Court found presumption against §112 ¶6 applies (no “means” term) and intrinsic record supplies sufficient structural context (location and interaction); not means-plus-function. |
| “selectively diverting incoming content from its intended destination to said rule-based content scanner” (’305) — indefinite? | Plain meaning; definite to person of skill | Indefinite because “selectively” lacks objective guidance | Term is definite and needs no construction; specification describes selection criteria (pre-scanner, cache) so scope is reasonably certain. |
| “linking/linked” a Downloadable security profile to a Downloadable (’844) | Linking means creating an association and may include examples (pointer or attachment) | No construction necessary; plain meaning | Court adopted plain and ordinary meaning; the patent expressly defines “linking” as association but examples are not limiting. |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir.) (claim construction is a question of law)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims give ordinary meaning; specification is primary guide)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (specification acts as dictionary when it defines terms)
- Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (presumption against means-plus-function when claim lacks "means" can be overcome by showing lack of definite structure)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (U.S. 2014) (patent claims must inform those skilled in the art of their scope with reasonable certainty)