Facts

Defendants ESET spol. s.r.o and ESET LLC filed a renewed motion for summary judgment against Plaintiff Finjan, Inc., the owner of a large family of patents relating to security systems and methods of detecting malware in computer programs, seeking to invalidate Plaintiff's United States Patent Nos. 6,154,844; 6,804,780; 8,079,086; 9,189,621; and 9,219,755 as indefinite. The Court previously had adopted a construction of the term "Downloadable" based on the inventors' explicit definition found in the '520 patent. The construction included the word "small."

PLAINTIFF'S CONTENTIONS: Plaintiff contended the claimed term "Downloadable" could not be indefinite because the Court was able to construe the term. Plaintiff also contended that the term was definite because a person of ordinary skill would have been able to identify meaningfully precise claim scope. Plaintiff further contended that a numerical limitation was not necessary because a skilled artisan could determine if an application was small from the examples in the '962 patent and based on the context.

DEFENDANTS' CONTENTIONS: Defendants contended that the patents at-issue were indefinite during the original claim construction hearing and filed a summary judgment motion at the close of expert discovery. Specifically Defendants contended neither the patent specifications nor Plaintiff's experts could provide any objective boundaries for what constituted "small." That original motion was denied, without prejudice, the Court electing to hear expert testimony at a trial scheduled for March 2020. Although the trial ended in a mistrial due to COVID safety concerns, Finjan's expert testified that size did not matter in determining if something was "small." Instead what mattered was whether the file was "installable" and therefore that a 2-TB file could in fact be small. Defendant pointed to this testimony in its renewed motion for summary judgment.

Result

The court granted Defendants' renewed motion for summary judgment after it determined the claim term "Downloadable" was indefinite.