Finjan, LLC. v. Cisco Systems Inc.

Background

Finjan, Inc. brought a patent-infringement lawsuit against Cisco Systems Inc. involving five patents concerning computer and network security: the ’844, ’780, ’633, ’154, and ’494 patents. Cisco sought partial summary judgment—a ruling without a trial where the court determines that no genuine dispute over an important fact requires a trial—on non-infringement of the ’154, ’633, and ’780 patents. Cisco also sought summary judgment that Finjan could not recover damages for the period before suit was filed.

The court also addressed Finjan’s expert reports. Earlier, the court had required Finjan’s experts to remove certain disallowed codenames and allegations from their reports. The court rejected Cisco’s argument that the stricken codenames alone required summary judgment, explaining that Finjan could amend its reports and that the court would assume the codenames corresponded to functionalities disclosed in Finjan’s operative infringement contentions.

The ’154 Patent

The ’154 patent concerns protection against dynamically generated malicious content. The court had construed “first function” and “second function” to mean a substitute function and a different original function.

For Cisco’s AMP Products, the court rejected Finjan’s theory that an outside actor, such as a hacker, could supply the substitute function. The court concluded that the patent and its claim construction required the original function to be replaced by a substitute function as part of the claimed system. Because Finjan did not identify evidence that the AMP Products received content containing a call to a substitute function, the court granted Cisco’s motion for summary judgment of non-infringement as to the AMP Products.

For the URL-rewriting feature of Cisco’s ESA Outbreak Filters, the court denied Cisco’s motion. The parties disputed whether a URL or URL-processing operation could satisfy the patent’s function requirements. Viewing the evidence in Finjan’s favor, the court found that a reasonable jury could find that the accused feature met those requirements.

The court granted Cisco’s motion as to the redacted accused component or components that Finjan identified as “content processors.” The court concluded that Finjan had identified emails, rather than the redacted component or components, as the relevant content received by the content processor, and had not shown that the redacted component or components received that content.

The ’633 Patent

The ’633 patent concerns protecting network-connected devices from undesirable downloadable operations. The asserted claim required mobile protection code that is executable and that monitors or intercepts potentially malicious code operations without modifying the executable code. The court ruled that the claim did not require the mobile protection code to be transmitted or communicated.

The court denied Cisco’s motion as to the kernel monitor. Cisco did not dispute for purposes of the motion that the kernel monitor was executable or that it monitored or intercepted the relevant code operations.

For the other redacted accused components identified as mobile protection code, the court concluded that some evidence could allow a reasonable jury to find that the components satisfied the patent’s requirements, while Finjan failed to identify a triable factual issue for another redacted component or components. The court therefore granted Cisco’s motion as to the redacted component or components for which Finjan lacked supporting evidence and denied it as to the redacted component or components for which the evidence could support a jury finding.

The court also denied Cisco’s motion for summary judgment on Finjan’s doctrine-of-equivalents theories concerning mobile protection code. The doctrine of equivalents can allow infringement findings based on an accused element that is not literally within the claim but is equivalent. The court rejected Cisco’s prosecution-history-estoppel arguments concerning those theories, concluding that the relevant amendment had no more than a tangential relationship to the mobile-protection-code element and that Cisco’s other argument sought to revisit claim construction. The court declined to rule on any other doctrine-of-equivalents theories because they were not adequately briefed.

The ’780 Patent

The ’780 patent concerns protecting computers and networks from hostile downloadable programs. The asserted claim required an identification generator to fetch at least one software component identified by a downloadable and hash the downloadable together with the fetched components to generate a downloadable identification.

As to the AMP Products, the court denied Cisco’s motion. Finjan’s expert offered evidence that software components inside a downloadable could be fetched and hashed together with the downloadable, creating a factual dispute.

As to Threat Grid and the other redacted Cisco sandbox component or product, the court denied summary judgment on Finjan’s theory that software components could be fetched from inside the downloadable and then hashed together with it. But the court granted summary judgment on Finjan’s separate theory that a sequence of separately generated hashes stored in a report or file satisfied the claim’s requirement that the downloadable and fetched components be hashed “together.”

The court denied summary judgment concerning dropper, or dropped, files on Cisco’s argument that they were separate executable files and therefore could not satisfy the claim. Cisco had not provided evidence sufficient for the court to resolve that issue on summary judgment.

The court granted Cisco’s motion on Finjan’s doctrine-of-equivalents theories concerning the claim’s identification-generator limitation. The court concluded that amendments made during patent prosecution narrowed the claim to require fetching at least one software component and using a hashing function. Because the amendments were made to overcome patentability challenges, the court applied prosecution-history estoppel and found that Finjan had not shown why the amendments did not surrender the asserted equivalents.

Pre-Suit Damages and Disposition

Finjan agreed that, for the trial, damages would begin on January 6, 2017, the date it filed the initial complaint. Because there was no dispute on that issue, Judge Beth Labson Freeman granted Cisco’s motion for summary judgment on pre-suit damages and held that Finjan could not recover damages for the period before January 6, 2017.

Overall, the order granted in part and denied in part Cisco’s motion for partial summary judgment, with the specific dispositions described above.