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District Court Orders Additional Claim Construction Briefing After Plaintiff Appeared to Argue a Different Position in Other Litigation

After the district court conducted a claim construction hearing (but before it issued an order), the district court stayed the litigation between Finjan and Symantec pending a decision by the PTAB regarding whether to institute an inter partes review (“IPR”) over the asserted patents. When the district court lifted the stay and issued a new scheduling order, Symantec filed a motion seeking additional claim construction briefing another hearing.

The district court believed that there was good cause to order the additional briefing and hearing for two reasons:

First, since the Markman hearing in this case, Plaintiff appears to have argued in other litigation regarding this patent that “web clients” are limited to “end users.” See, e.g., Finjan, Inc. v. Sophos, Inc., No. 14-CV-01197-WHO, 2016 WL 2988834, at *22 (N.D. Cal. May 24, 2016) (Orrick, J.) (“[Finjan] argues that the web clients in the accused products are the end users . . . .”); Straka Decl., Ex. 3 at 1-5 (Plaintiff’s brief filed on May 20, 2016 in Finjan, Inc. v. Proofpoint, Inc., No. 3:13-cv-5808-HSG (hereinafter, “Finjan v. Proofpoint“)) (arguing that the plain and ordinary meaning of “web client” is the “end user’s computer”); Straka Decl., Ex. 4 at 10 (Plaintiff’s brief filed on March 31, 2016 in Finjan v. Proofpoint) (“The only logical interpretation, which is fully supported with the documentary and testimony evidence, is that the end user is the web client . . . .”). In contrast, Defendant contends, based on the patent’s language, that “web client” means “any application program that accesses web page data on a web server . . . regardless of whether that program is an end user system or running on a server.”

Second, since the Markman hearing in this case, Plaintiff appears to have represented in other litigation regarding this patent that the claim limitation “before a web server makes the Downloadable available to web clients” can be met even where the claim inspector links the Downloadable after web clients are able to access the Downloadable. See Straka Decl., Ex. 4 at 10 (Plaintiff’s brief filed on March 31, 2016 in Finjan v. Proofpoint) (stating that the accused product “receives web content . . . from a web server, inspects the content, [and] generates a security profile,” which is only then “linked to the analyzed content”). In contrast, Defendant argues that the plain language of the claim, the specification, and the prosecution history demonstrate that linking must occur before web clients can access the Downloadable. See Dkt. No. 135 at 5-9.

As a result of these arguments made in other litigation, the district court determined that there was good cause to depart from the default deadlines and obligations of the Patent Local Rules “because resolving the targeted number of fundamental disputes described above will assist the fact finder in ruling on the patent infringement claims, help the parties tailor discovery to the scope of claims, and allow experts to render more precise opinions.”

Finjan, Inc. v. Symantec Corp., Case No. 14-cv-02998-HSG (N.D. Cal. Nov. 14, 2016)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or