Friday, November 05, 2010

Finjan hoses WebWasher at CAFC

Defendants sued by Finjan included WebWasher and DOES 1 THROUGH 100. In a mixed decision, plaintiff won on the device claims, but not on the method claims.

Note that the case does relate to McAfee. From eWeek:

In Finjan Software v Secure Computing, Israel-based Finjan sued Secure Computing in 2006 for infringing on three of its proactive scanning patents. McAfee acquired Secure Computing in 2008. Secure Computing had counter-claimed in court that it was actually Finjan that had violated its patents.

In one of the more interesting parts of the decision, the plaintiff was deemed to have waived his waiver argument:

Finjan responds first with a waiver argument, claim-
ing that Defendants forfeited their contention that locked
software cannot infringe by failing to raise it in their
JMOL motions. This court disagrees. It is correct that
“[i]f a party seeks a judgment in its favor based on insuffi-
ciency of the evidence, he must file for judgment as a
matter of law both before the case is submitted to the jury
and after a verdict is returned.” Pediatrix Screening, Inc.
v. TeleChem Int’l, Inc., 602 F.3d 541, 546 (3d Cir. 2010).
But here, Defendants orally moved for JMOL of nonin-
fringement under Rule 50(a) at the close of Finjan’s case.
While the district court denied the motion, Transcript at
687:1-688:8, challenging infringement orally was suffi-
cient, see Fed. R. Civ. P. 7(b)(1)(A). Defendants also filed
a written Rule 50(a) motion on the last day of trial, re-
peating its noninfringement position. See Defs.-
Counterclaimants’ Mot. for JMOL Pursuant to Fed. R.
Civ. P. 50. The district court considered these issues
preserved and reserved judgment until the parties re-
newed their JMOL motions after trial under Rule 50(b).
Memorandum at 2 & n.1; Transcript at 673:12-21.
In that renewed motion, Defendants reiterated their nonin-
fringement argument and fully explained their locked
software theory. See Defs.-Counterclaimants’ Mot. for
JMOL and New Trial. Importantly, Finjan did not oppose
Defendants’ Rule 50(b) motion on waiver grounds, thereby
itself waiving this objection. See Williams v. Runyon, 130
F.3d 568, 572 (3d Cir. 1997) (adopting rule that “where a
party did not object to a movant’s Rule 50(b) motion
specifically on the grounds that the issue was waived by
an inadequate Rule 50(a) motion, the party’s right to
object on that basis is itself waived”)

As to other bits of law, one notes the court indicated
the defendants confused a method case with the device claims
at issue here:

In Southwest Software, Inc. v. Harlequin Inc., this
court affirmed denial of a new trial on infringement, after
a verdict of noninfringement, because the evidence
showed that the accused software product “included a
manual step which avoided the automatic selection fea-
ture of the patented invention even though the code for
automatic selection remained in place.” 226 F.3d 1280,
1291 (Fed. Cir. 2000). Defendants interpret Southwest to
hold that locked code cannot infringe. However, the claim
at issue in that case was a method that required perform-
ance of each claimed step. Id. at 1285. Here, the claims
at issue are “system” and “storage medium” claims, which
do not require the performance of any method steps.
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282,
1318 (Fed. Cir. 2005) (“[T]he use of a process necessarily
involves doing or performing each of the steps recited.
This is unlike use of a system as a whole . . . .”).

Fantasy Sports came up a lot in the decision:

As we have cautioned, “in every infringement analy-
sis, the language of the claims, as well as the nature of
the accused product, dictates whether an infringement
has occurred.” Fantasy Sports Props. v.,
Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002). (...)
Thus, depending on the claims, “an accused
device may be found to infringe if it is reasonably capable
of satisfying the claim limitations, even though it may
also be capable of noninfringing modes of operation.”
Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343
(Fed. Cir. 2001); see also Ball Aerosol & Specialty Con-
tainer, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 994 (Fed.
Cir. 2009) (noting that the “reasonably capable” test
applies “only to claim language that specifies that the
claim is drawn to capability”). (...)
We addressed a similar infringement scenario in Fan-
tasy Sports, where we held that software for playing
fantasy football could infringe a claim to a “computer for
playing football.” 287 F.3d at 1118. The defendants who
sold the software argued that because their product was a
“modifiable software tool,” direct infringement occurred
only when users configured it to play games. Id. at 1117.
Rejecting this contention, we explained that “although a
user must activate the functions programmed into a piece
of software by selecting those options, the user is only
activating means that are already present in the underly-
ing software.” Id. at 1118. Infringement occurred because
the code “was written in such a way as to enable a user of
that software to utilize the function . . . without having to
modify that code.” Id. That analysis applies here. The
code for proactive scanning was “already present” in
Defendants’ accused products when sold. There is no
evidence that customers needed to modify the underlying
code to unlock any software modules.

As to the method claims at issue:

In addition to the system and storage medium claims,
Finjan asserted method claims from each of the three
patents in suit. “To infringe a method claim, a person
must have practiced all steps of the claimed method.”
Lucent Techs. v Gateway, Inc., 580 F.3d 1301, 1317 (Fed.Cir. 2009).
(...)Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380
(Fed. Cir. 2009) (“Critically, it is the infringing act—
making, using, offering to sell, selling, or importing—that
must be within (or into) the United States.”). Further-
more, Finjan identifies no evidence that Defendants
infringed the method claims by testing or operating any
copies of the accused products in the United States.

O2 Micro came up:

According to Defendants, the district court shirked its
responsibility to construe a disputed claim term by adopt-
ing “plain and ordinary meaning,” violating the principles
of O2 Micro International Ltd. v. Beyond Innovation
Technology Co., 521 F.3d 1351 (Fed. Cir. 2007). In O2
Micro, we held that the district court erred by assigning
the term “only if” its plain and ordinary meaning because
that definition “failed to resolve the parties’ dispute.” Id.
at 1361. The parties disputed whether “only if” allowed
for exceptions, but the district court did not answer this
question, ruling that the phrase had “a well-understood
definition.” Id. In the absence of an authoritative con-
struction, the parties argued the scope of the claim term
to the jury. Remanding the case, we explained: “When
the parties raise an actual dispute regarding the proper
scope of the claims, the court, not the jury, must resolve
that dispute.” Id. at 1360.


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