December 3, 2023


Rich Inside You

Declare Development and the Indefinite Article Shuffle

6 min read

by Dennis Crouch

The Federal Circuit’s new Finjan determination as soon as once more focuses consideration on what I name patent legislation’s “indefinite article shuffle.” Finjan v. SonicWall — F.4th — (Fed. Cir. 2023).

Though patent courts do interpret the indefinite article “a” as permitting for a plural which means, they typically don’t allow a change within the related noun. Let me clarify. Right here, the patentee Finjan claimed “a pc” performing a sure operation and later referred to “the pc” performing one other operation. The accused infringer SonicWall was utilizing two completely different computer systems for these operations and the patentee sought a development that relied upon the presumed plurality to embody the accused exercise. The district courtroom refused and awarded abstract judgment of non-infringement. On attraction, the Federal Circuit affirmed, discovering that the transition from “a pc” to “the pc” requires the identical pc carry out each operations. Because the courtroom defined, “the usage of ‘the’ additionally signifies the claimed time period refers to an antecedent time period.” Slip op. at 17 (citing Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313 (Fed. Cir. 2016)). Thus, the reference to “the pc” tied again to the identical “a pc” initially recited, requiring a single pc be capable to carry out each steps.

The Federal Circuit issued an analogous opinion earlier in 2023 in Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (Fed. Cir. 2023). In Salazar, the courtroom defined that “whereas the declare time period ‘a microprocessor’ doesn’t require there be just one microprocessor, the next limitations referring again to ‘stated microprocessor’ require that not less than one microprocessor be able to performing every of the claimed features.” Id. See additionally Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015).

Though I agree with the Federal Circuit’s determination right here as to each the declare development and non-infringement, it additionally seems to be a transparent state of affairs the place the doctrine of equivalents might save the patentee.  Nevertheless prosecution historical past estoppel could also be an issue for the patentee on the DOE entrance as a result of one of many “pc” references was added throughout prosecution as a way to transfer the case towards allowance.

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The district courtroom additionally discovered one other set of claims not infringed — this time primarily based upon an agreed declare development of the time period “downloadable.” The patents relate to cybersecurity expertise for safeguarding network-connected units from malware, and these patents notably associated to figuring out and stopping malware downloads: U.S. Patent Nos. 8,677,494; 6,154,844; 6,804,780; and seven,613,926.

These all require receiving a “downloadable” and the events had agreed to outline a downloadable is an “executable software” that’s downloaded and “run” on the vacation spot pc. The issue for the patentee is that SonicWall’s software program receives knowledge packets however by no means reassembles them into an executable software.  Somewhat, the accused SonicWall product operates by inspecting the payload on a packet-by-packet foundation after which sends every packet to its vacation spot with out reassembling the file.

Based mostly upon this uncontroverted proof of how SonicWall operates and the agreed upon declare development, the district courtroom awarded abstract judgment of non-infringement to the accused infringer.  On attraction, the Federal Circuit affirmed — discovering that the district courtroom didn’t “impermissibly deviate[] from the events’ agreed-upon development” however moderately solely “elaborat[ed]” upon inherent features of the development.

On attraction, the patentee raised plenty of declare development arguments that will have carried weight in an abnormal declare development context. Right here these arguments have been rejected because the courtroom repeatedly returned to the textual content of the stipulated declare development that the patentee had agreed to.

We don’t allow events on attraction to boost declare development arguments difficult a stipulated development.  See, e.g., Operate Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1322 (Fed. Cir. 2013); see additionally Traxcell Techs., LLC v. Dash Commc’ns Co. LP, 15 F.4th 1121, 1129 (Fed. Cir. 2021) (“Now Traxcell insists looking back that this development was flawed. However having stipulated to it, Traxcell can’t pull an about-face.”).

Slip Op. at 12.  Decide Bryson wrote in dissent famous that the district courtroom’s development results in absurd outcomes primarily based upon how the web works. No gadget ever ‘receives’ an already assembled executable program; moderately of us obtain the packets and that’s seen because the equal of receiving this system.  Bryson then went additional and argued that the district courtroom overstepped the bounds of the agreed-upon development.

SonicWall argues that Finjan agreed to the development of the time period Downloadable and is caught with the results, even when the results are that the patent reads on no embodiments. In reality, nevertheless, the document displays that though the events to the development of the time period Downloadable, they didn’t share thesame understanding of the time period “executable,” as utilized in that development, some extent that grew to become clear throughout the abstract judgment argument. By agreeing to the development of the time period Downloadable, Finjan didn’t acquiesce within the interpretation of the courtroom’s development of “executable,” which was that an “executable” file have to be executable with none additional processing, moderately than being able to execution after, for instance, being reconstructed following its transmission in packetized type.

Dissent at 3-4. In Decide Bryson’s view, the district courtroom interpreted “executable” too narrowly in a means that successfully altered the agreed-upon development. Though Finjan agreed to the general development of “Downloadable,” it didn’t conform to the district courtroom’s implicit interpretation of “executable” as requiring executability upon receipt.

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The ultimate challenge within the case was the district courtroom’s determination that plenty of the asserted claims have been invalid. In reality, the district courtroom didn’t make this ruling on the deserves, however moderately used the procedural software of challenge preclusion (collateral estoppel) because the claims had been held invalid in a previous dispute.

Situation preclusion prevents a celebration from relitigating a problem that has already been truly litigated and essentially decided by a remaining judgment in a previous case. Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022). Situation preclusion all the time includes two completely different instances, and the query is whether or not some willpower within the first case will preclude the events from relitigating the problem in a subsequent case.  The doctrine applies when: (1) the problem is an identical to 1 determined within the first motion; (2) the problem was truly litigated within the first motion; (3) decision of the problem was important to a remaining judgment within the first motion; and (4) the social gathering towards whom challenge preclusion is asserted had a full and honest alternative to litigate the problem within the first motion. Id. Situation preclusion can bar relitigation of each questions of legislation and questions of reality.

Situation preclusion can connect as quickly as a remaining judgment is reached in a single case, even earlier than any appeals are exhausted. Levi Strauss & Co. v. Abercrombie & Fitch Buying and selling Co., 719 F.3d 1367 (Fed. Cir. 2013). This enables events to depend on a call with out ready for appeals to conclude. Nevertheless, if the choice offering the premise for challenge preclusion is later overturned on attraction, this eliminates the power to proceed to depend on challenge preclusion. Mills v. Metropolis of Covina, 921 F.3d 1161, 1170 n.2 (ninth Cir. 2019). Because the overturned judgment can not have preclusive impact, any challenge preclusion choices counting on it should additionally fall away. That is what occurred in Finjan v. SonicWall with the courtroom vacating the invalidity holding.  Based mostly upon my studying, this consequence doesn’t save the patentee’s case towards SonicWall (Due to the non-infringement findings), it does enable Finjan to proceed to say its patents towards others.

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