On January 10, the United States Court of Appeals for the Federal Circuit (“the Court”) handed down its decision (“the Decision”) in Finjan, Inc. (“Finjan”) v. Blue Coat Systems, Inc. (“Blue Coat”). At issue in the case was Blue Coat’s alleged infringement of four patents owned by Finjan that were directed to identification and protections against malware including U.S. Patent No. 6,154,844 (“the ’844 patent”).
At trial, a jury found that Blue Coat infringed these four patents and awarded Finjan approximately $39.5 million for Blue Coat’s infringement. Further, after a bench trial, the district court concluded that the ’844 patent is directed to patent-eligible subject matter under 35 U.S.C. § 101. Blue Coat appealed the holdings of infringement, subject matter-eligibility and damages.
In its Decision, the Court further expounded on the standards for statutory subject matter developed in its recent McRO, Affinity Labs, and Enfish decisions while signaling the significance of claim construction in statutory subject matter analysis.
The Court interpreted the ’844 patent as being directed to a method of providing computer security by scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a “security profile.” Claim 1 of the ’844 patent, which the district court found representative for § 101 purposes, read:
1. A method comprising: receiving by an inspector a Downloadable; generating by the inspector a first Downloadable security profile that identifies
suspicious code in the received Downloadable; and linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.
Claim 1, ‘844 Patent (Emphasis added).
At claim construction, the parties agreed that “Downloadable” should be construed to mean “an executable application program, which is downloaded from a source computer and run on the destination computer.” Additionally, the district court construed “Downloadable security profile that identifies suspicious code in the received Downloadable” to mean “a profile that identifies code in the received Downloadable that performs hostile or potentially hostile operations.”
The Court noted that, previously, it had held in Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1319 (Fed. Cir. 2016), that “[b]y itself, virus screening is well-known and constitutes an abstract idea.” However, in Finjan, the Court noted that, “Here, the claimed method does a good deal more.”
The Court then went on to emphasize the district court’s claim construction. Specifically, the Court noted that:
[The district court’s claim construction decision emphasizes that this “identif[y] suspicious code” limitation can only be satisfied if the security profile includes “details about the suspicious code in the received downloadable, such as . . . ‘all potentially hostile or suspicious code operations that may be attempted by the Downloadable.’” Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2014 WL 5361976, at *9 (N.D. Cal. Oct. 20, 2014). Further, this “security profile” must include the information about potentially hostile operations produced by a “behavior-based” virus scan. This operation is distinguished from traditional, “code-matching” virus scans that are limited to recognizing the presence of previously-identified viruses, typically by comparing the code in a downloadable to a database of known suspicious code.
Decision, p. 6, (Emphasis added).
As can be seen from the plain language of Claim 1, there is no recitation that the “identifies suspicious code” or the “security profile” necessarily require a “behavior-based” virus scan. It is only through the Court’s reliance on the claim construction that the “identifies suspicious code” or the “security profile” is imbued with the limitation of a “behavior-based” virus scan.
As noted above, it is the usage of this “behavior-based” virus scan that the Court views as satisfying the requirements of § 101:
“The question, then, is whether this behavior-based virus scan in the ’844 patent constitutes an improvement in computer functionality. We think it does.”
Decision, p. 6.
Such a reliance on the claim construction may put patent-holders in a Catch-22. A patent-holder may advocate for broad claim construction to avoid any potential preclusive effect with respect to present or future infringement actions. However, in light of Finjan, it appears that such broad claim constructions may run the risk of reaching subject matter which may not be statutory thereby placing validity of the claim at risk.
Suppose that Finjan had argued for a broader claim construction which included both the “behavior-based” virus scan and the “code-matching” virus scans which the Court held to be “traditional.” While Finjan may have avoided any preclusive effects for litigation against a subsequent infringer employing “code-matching” virus scans (i.e. they had not admitted that their claim was directed only to “behavior-based” virus scans), they may have simultaneously rendered their claim invalid by including subject matter which the Court ultimately deemed non-statutory.
In light of the Court’s reliance on the claim construction in its statutory subject matter analysis, it appears that rights-holders must make strategic decisions balancing limitation of the claims to a scope which provides strong arguments for statutory subject matter eligibility at the expense of the ability to cast a broad infringement net.
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