Prior Narrow Definition Does Not (Necessarily) Limit Claim Scope in Family Member

Finjan LLC v. ESET LLC, — F.4th — (Fed. Cir. 2022)

Finjan’s patents assert a procedure for examining downloadable documents for stability worries.  Back in 1996 when Finjan filed its authentic provisional application, the emphasis was on applets or other smaller downloadable applications.  But downloadables nowadays are substantially bulkier.  Below, the statements involve a selection of operations on “a downloadable” and the parties have debated during the litigation how to construe that term.

The district court’s method was a bit convoluted.

• Development: The district court docket first narrowly construed the expression as minimal only to “smaller downloadables.” Although the asserted patents do not seems to demand smallness, the patents do incorporate-by-reference a relatives member that especially defines downloadable as “applets” and as “small executable or interpretable application system[s] which [are] downloaded.”
• Invalidation: Later, the district court reviewed that design and concluded that the time period “small” is a term of degree without the need of any restricting concept and therefor is invalid as indefinite.

On attraction, the Federal Circuit has reversed on the following position of regulation:

The use of a restrictive term in an before application does not reinstate that term in a later patent that purposely deletes the expression, even if the before patent is included by reference.

Slip Op.  The court even further explained that patents inside a spouse and children can use two distinct definitions of the identical expression.  “[T]hese two definitions can exist in harmony in the patent loved ones.”  The court observed that the previously application with the “small” limitation was centered on downloading compact executables when the patents at issue in this circumstance claim an creation with a improved-target that is “not limited to ‘small’ executable[s].” Here, the courtroom noted that the patentee experienced also integrated by reference yet another prior patent that did not include the smaller restrict.  For the appellate courtroom, all this implies that, for the asserted patents the downloadables are not needed to be small.

I have involved an picture of the patent household tree from the patentee’s quick.  You can see that there are quite a few branches.  I believe that that it is all those branches (instead than a straight-chain of continuations) that aided the court docket get to its final decision that the household-member definitions had been not binding.  The court pointed out some about of difference in the disclosures as properly.

Since the “small” definition was removed, that also mooted the question of no matter if “small” is indefinite.