United States: Lessons From An Israeli Company's Cybertech Patent Litigation

With origins dating back to 1996 and claiming more than $350 million in patent licensing revenue, Finjan Holdings is a frequent plaintiff in U.S. patent litigation. The Israeli company claims to have developed pioneering technologies in the area of malware detection, although it may best be known for its patent suits against software giants such as Microsoft, Cisco, Palo Alto Networks, Symantec, and many others. A recent ruling from one of Finjan's suits provides an excellent teaching point for Israel's cybersecurity innovators.

The issue that arose in Finjan's suit against Juniper is quite simple. One of Finjan's patents, which focused on protecting client computers from malware, included the claim term "content processor." Because patent claims define the scope of patent protection—just like a fence defines the boundary of property—a key issue in the case was whether Juniper's cybersecurity software used a "content processor." If Juniper's software practiced that claim term, Finjan may be able to prove infringement. If not, there could be no infringement. After all, infringement requires that each and every element in a patent claim be present in an accused product.

On May 8, 2019, a federal judge in California ruled that there was no infringement of Finjan's patent including the term "content processor." Two different interpretations of this claim term were asserted by the parties. Finjan's interpretation—the broader of the two interpretations, which is common for plaintiffs in litigation—was that a "content processor" is simply a "component that processes content." Juniper's interpretation—the narrower of the two, which is likewise common for defendants in litigation—was that a "content processor" is a "processor on a client/user computer that processes modified content." The key area of dispute was thus whether the "content processor" may simply process "content" (as Finjan asserted) or must process "modified content" (as Juniper asserted). Because the evidence in the case showed that Juniper's software did not process "modified content," Finjan needed to win on its broader interpretation in order to prove infringement.

According to the judge, the way Finjan's patent was written confirmed that the term "content processor" was limited to the interpretation asserted by Juniper. Not only did the surrounding claim language support Juniper's more narrow interpretation, but the judge found that the written description in Finjan's patent also pointed toward that narrow interpretation. Specifically, Finjan's patent characterized the "present invention" in a way that the court found binding. In patent law, when a patent describes the "present invention," courts are more likely to impose limitations on the scope of the patent based on how the patent describes the "present invention." As an illustration, if a patent for a pencil states that the "present invention" includes a writing instrument with a writing end and an eraser, a court may require that the "eraser" be a limitation in the claim, even if not expressly recited in the claim. So too with Finjan's patent, the patent stated that "the present invention operates by replacing original function calls with substitute function calls within the content," which the court relied on in determining that the "content processor" must process "modified content," as Juniper argued.

Based on this claim construction, the court next observed that Finjan did not present any evidence that Juniper's software processed "modified content," as opposed to simply "content." The court thus observed that Juniper's products would not infringe Finjan's patent.

Cybersecurity companies, in Israel and beyond, should learn from Finjan's litigation experience. A fundamental takeaway is that patents are very different from technical papers, such as journal articles or master's theses. While technical papers are often written to be very specific and precise in their description of a technology, when patents are similarly specific they may be interpreted in a limiting way. Especially when a patent describes the "present invention"—words having almost a magical meaning in patent law—that description becomes more likely to limit the scope of the claims. Israeli cybersecurity innovators should take care in drafting their patent applications to embrace variations and avoid unnecessary limitations. Rather than limit their invention to one specific configuration or embodiment, innovators should describe many different possible variations and permutations. To be clear, innovators can and should include technical detail in their patent applications. The point is that patent applications should not be limited to such details.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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