{"id":3572,"date":"2023-10-13T22:50:07","date_gmt":"2023-10-14T03:50:07","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=3572"},"modified":"2023-12-12T18:00:59","modified_gmt":"2023-12-13T00:00:59","slug":"collateral-estoppel-cannot-be-based-on-a-decision-that-was-subsequently-reversed","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=3572","title":{"rendered":"Collateral Estoppel Cannot be Based on a Decision that was Subsequently Reversed"},"content":{"rendered":"\n

Finjan LLC, FKA Finjan, Inc., v. Sonicwall, Inc.<\/em>, [2022-1048]<\/a> (October 13, 2023) the Federal Circuit vacated the district court\u2019s 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\u2019s grant of summary judgment of noninfringement and the district court\u2019s decision to exclude Finjan\u2019s expert analysis.<\/p>\n\n\n\n

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 \u2019780, \u2019844, and \u2019494 patents due to collateral estoppel based on a decision in related proceedings finding the claims of the \u2019780 and \u2019844 patents invalid for indefiniteness.\u00a0 The district court granted judgment of invalidity due to collateral estoppel and indefiniteness as to claims of the \u2019844, \u2019780, and \u2019494 patents. Subsequently, in the other case which provided the underlying support for the Collateral<\/em> Estoppel Order<\/em>, Finjan appealed the district court\u2019s grant of summary judgment of invalidity, and on appeal the Federal Circuit vacated the district court\u2019s grant of summary judgment of invalidity due to indefiniteness and remanded for further proceedings.<\/p>\n\n\n\n

During claim construction, the parties agreed that \u201cDownloadable\u201d means \u201can executable application program<\/em>, which is downloaded from a source computer and run on the destination computer.\u201d 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 \u201cDownloadables\u201d\u2014\u201cexecutable <\/em>application program[s],\u201d which was granted.<\/p>\n\n\n\n

The Federal Circuit noted that it cannot uphold applying collateral estoppel based on a vacated judgment. Accordinglv, it vacated the district court\u2019s grant of judgment of invalidity<\/p>\n\n\n\n

based on indefiniteness as to the claims of the \u2019844, \u2019780, and \u2019494 patents and remanded for further proceedings.<\/p>\n\n\n\n

 Non-Infringement<\/p>\n\n\n\n

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<\/p>\n\n\n\n

and not the downloadables themselves.  According to Finjan, the district court took the parties\u2019 agreed-upon construction of \u201cDownloadable\u201d\u2014\u201can executable application<\/p>\n\n\n\n

program, which is downloaded from a source computer and run on the destination computer,\u201d and added a requirement that the downloadable also be \u201cre-assembled by and executable at the receiver.  SonicWall contended that the district court\u2019s conclusion<\/p>\n\n\n\n

is derived directly from the parties\u2019 agreed-upon construction, which describes a downloadable as an \u201cexecutable <\/em>application program.<\/p>\n\n\n\n

The Federal Circuit agreed with SonicWall that the district court\u2019s judgment of noninfringement flows from the parties\u2019 agreed upon construction. The Federal Circuit noted that the asserted claims use \u201cDownloadable\u201d in different ways.  The Federal Circuit noted that parties\u2019 construction comes verbatim from the definition of \u201cDownloadable\u201d in the \u2019844 and \u2019780 patents\u2019 specifications.<\/p>\n","protected":false},"excerpt":{"rendered":"

Finjan LLC, FKA Finjan, Inc., v. Sonicwall, Inc., [2022-1048] (October 13, 2023) the Federal Circuit vacated the district court\u2019s judgment of invalidity because it was based on collateral estoppel of a decision that was subsequently reversed, and remanded for further … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[49],"tags":[],"class_list":["post-3572","post","type-post","status-publish","format-standard","hentry","category-collateral-estoppel"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3572","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=3572"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3572\/revisions"}],"predecessor-version":[{"id":3573,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3572\/revisions\/3573"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=3572"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=3572"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=3572"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}