Finjan LLC, FKA Finjan, Inc., v. Sonicwall, Inc., [2022-1048] (October 13, 2023) the Federal Circuit vacated the district court’s judgment of invalidity because it was based on collateral estoppel of a decision that was subsequently reversed, and remanded for further proceedings. The Federal Circuit also affirmed the district court’s grant of summary judgment of noninfringement and the district court’s decision to exclude Finjan’s expert analysis.

Finjan asserted U.S. Patent Nos. 8,677,494, 6,154,844, 6,804,780, and 7,613,926, as well as U.S. Patent No. 8,225,408. SonicWall filed a motion seeking judgment of invalidity as to the asserted claims of the ’780, ’844, and ’494 patents due to collateral estoppel based on a decision in related proceedings finding the claims of the ’780 and ’844 patents invalid for indefiniteness.  The district court granted judgment of invalidity due to collateral estoppel and indefiniteness as to claims of the ’844, ’780, and ’494 patents. Subsequently, in the other case which provided the underlying support for the Collateral Estoppel Order, Finjan appealed the district court’s grant of summary judgment of invalidity, and on appeal the Federal Circuit vacated the district court’s grant of summary judgment of invalidity due to indefiniteness and remanded for further proceedings.

During claim construction, the parties agreed that “Downloadable” means “an executable application program, which is downloaded from a source computer and run on the destination computer.” Based on this construction, SonicWall moved for summary judgment of noninfringement of certain of the claims, arguing that its Gateway products could not infringe those claims because they never receive “Downloadables”—“executable application program[s],” which was granted.

The Federal Circuit noted that it cannot uphold applying collateral estoppel based on a vacated judgment. Accordinglv, it vacated the district court’s grant of judgment of invalidity

based on indefiniteness as to the claims of the ’844, ’780, and ’494 patents and remanded for further proceedings.

 Non-Infringement

Finjan argued that the district court erred in determining that SonicWall Gateway products do not infringe the asserted claims because they receive a sequence of packets

and not the downloadables themselves.  According to Finjan, the district court took the parties’ agreed-upon construction of “Downloadable”—“an executable application

program, which is downloaded from a source computer and run on the destination computer,” and added a requirement that the downloadable also be “re-assembled by and executable at the receiver.  SonicWall contended that the district court’s conclusion

is derived directly from the parties’ agreed-upon construction, which describes a downloadable as an “executable application program.

The Federal Circuit agreed with SonicWall that the district court’s judgment of noninfringement flows from the parties’ agreed upon construction. The Federal Circuit noted that the asserted claims use “Downloadable” in different ways.  The Federal Circuit noted that parties’ construction comes verbatim from the definition of “Downloadable” in the ’844 and ’780 patents’ specifications.