Finjan, Inc. v. Secure Computing Corp.
626 F.3d 1197
| Fed. Cir. | 2010Background
- Finjan sued Secure Computing, Cyberguard, and Webwasher AG for infringement of three proactive-scanning patents ('194, '780, '822).
- Accused products included Webwasher software download, a Web-washer hardware appliance, and a Cyberguard TSP hardware appliance with eight software modules, three of which provide proactive scanning and are locked behind keys.
- Jury found infringement of Finjan's system and storage-medium claims, and noninfringement of method claims; patents were deemed valid and willful infringement found against Defendants.
- District court awarded damages, enhanced under §284, and issued a permanent injunction; Finjan cross-appealed for post-judgment, pre-injunction damages.
- Defendants appealed the infringement and damages rulings; Finjan cross-appealed on damages for pre-injunction period prior to the injunction.
- The Federal Circuit affirmed infringement on system/storage-medium claims, reversed on method claims, affirmed damages, and remanded for post-judgment, pre-injunction damages.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement of system and storage-medium claims despite locked modules | Finjan: modules' presence and system functionality infringe when the code is present, regardless of activation. | Defendants: locked code cannot infringe when not enabled or activated. | Infringement sustained for system/storage-medium claims. |
| Infringement of method claims | Finjan: evidence supports direct infringement of method steps in the United States. | No substantial US-directed evidence of practicing all claimed steps. | Method-claim infringement reversed; noninfringement affirmed. |
| Construction of 'addressed to a client' in the '194 patent | Plain meaning; no reserved construction. | Defendants urged IP-address-based construction. | district court's plain-meaning construction sustained; no new trial required. |
| Damages: royalty base and government sales inclusion | Use full sale value; exclude government sales only if properly instructed. | Challenge entire-market-value rule; improper government-sales included. | Government-sales exclusion recognized; entire-market-value waiver applied; damages affirmed overall. |
| Damages: post-judgment, pre-injunction period | Entitled to damages for infringing sales up to injunction. | Waiver/limitation issues raised; no pre-injunction damages. | Remand to determine post-judgment, pre-injunction damages. |
Key Cases Cited
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (Georgia-Pacific factors; infringement involves all steps for method claims; damages analysis guidance)
- Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002) (infringement analysis for capability-based claims; software tools)
- Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821 (Fed. Cir. 1991) (claim language may require capability rather than operation in infringement)
- ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007) (overturning inducement where no evidence device operates in infringing mode)
- NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (system claims may infringe without mandatory performance of each step)
- Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed. Cir. 2009) (standard of review for JMOL and new trial)