Processing All Things Federal Circuit
November 10, 2022 - Last Week in the Federal Circuit

Last Week In The Federal Circuit (October 31 – November 4): Keeping It In The (Patent) Family

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Claim construction disputes often include arguments based on patents in the same family or materials incorporated by reference. Our case of the week discusses both categories of sources—and illustrates some limits on their use in claim construction.

Case of the (recent) week: Finjan LLC v. ESET, LLC, No. 21-2093

Panel: Judges Prost, Reyna, and Taranto, with Judge Reyna writing the opinion

You should read this case if: you have a matter involving claim construction arguments based on related patents or incorporation by reference

This week’s case involves a family of patents related to detecting computer viruses in downloaded files. In particular, the claims at issue all recite a security profile or policy for a “Downloadable.” Of the four asserted patents, two lacked any express definition of “Downloadable,” and two defined “Downloadable” as “an executable application program[]” downloaded from another computer. But all four asserted patents incorporated by reference a parent patent that defined “Downloadable” as “a small executable . . . application program.”

Based on that incorporation by reference, the district court construed “Downloadable” in the asserted patents as similarly limited to “small” executable application programs.

The Federal Circuit reversed. It acknowledged that “[i]ncorporation by reference of a patent renders the entire contents of that patent’s disclosure a part of the host patent.” But the Court emphasized that “incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent.” Rather, an incorporation by reference must be read in light of the host patent’s disclosure “to determine what impact, if any, a patent incorporated by reference will have on construction of the host patent claims.”

Applying those principles, the Court rejected the district court’s use of the incorporated patents’ “Downloadable” definition to limit the asserted claims. It observed that the asserted patents “purposely delete[d]” the “restrictive” definition in the parent patents. And it noted that the only examples of “Downloadables” in the parent patents were small programs (applets). By contrast, the example “Downloadables” in the asserted patents were not so limited—they also included larger files such as scripts. The Court thus saw no inconsistency in giving “Downloadable” a broader scope in the asserted patents than in the incorporated parent patents.

In sum, based on “the context provided by” the asserted patents, the Court concluded that “Downloadable” in the asserted claims “should not be restricted to ‘small’ executable application programs.”


Precedential opinions: 3

Non-precedential opinions: 8

Rule 36: 3

Longest pending case from argument: Finjan LLC v. ESET, LLC, No. 21-2093 (182 days)

Shortest (non-Rule 36) pending case from argument: Uniloc 2017 LLC v. Google LLC, No. 21-1498, and Uniloc USA, Inc. v. Motorola Mobility LLC, No. 21-1555 (59 days) (companion cases)