Claim Construction and the Indefinite Article Shuffle

by Dennis Crouch

The Federal Circuit’s new Finjan decision once again focuses attention on what I call patent law’s “indefinite article shuffle.” Finjan v. SonicWall — F.4th — (Fed. Cir. 2023).

Although patent courts do interpret the indefinite article “a” as allowing for a plural meaning, they generally do not permit a change in the associated noun. Let me explain. Here, the patentee Finjan claimed “a computer” performing a certain operation and later referred to “the computer” performing another operation. The accused infringer SonicWall was using two different computers for these operations and the patentee sought a construction that relied upon the presumed plurality to encompass the accused activity. The district court refused and awarded summary judgment of non-infringement. On appeal, the Federal Circuit affirmed, finding that the transition from “a computer” to “the computer” requires the same computer perform both operations. As the court explained, “the use of ‘the’ also indicates the claimed term refers to an antecedent term.” Slip op. at 17 (citing Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313 (Fed. Cir. 2016)). Thus, the reference to “the computer” tied back to the same “a computer” initially recited, requiring a single computer be able to perform both steps.

The Federal Circuit issued a similar opinion earlier in 2023 in Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (Fed. Cir. 2023). In Salazar, the court explained that “while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.” Id. See also Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015).

Although I agree with the Federal Circuit’s decision here as to both the claim construction and non-infringement, it also appears to be a clear situation where the doctrine of equivalents could save the patentee.  However prosecution history estoppel may be a problem for the patentee on the DOE front because one of the “computer” references was added during prosecution in order to move the case toward allowance.

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The district court also found another set of claims not infringed — this time based upon an agreed claim construction of the term “downloadable.” The patents relate to cybersecurity technology for protecting network-connected devices from malware, and these patents particularly related to identifying and stopping malware downloads: U.S. Patent Nos. 8,677,494; 6,154,844; 6,804,780; and 7,613,926.

These all require receiving a “downloadable” and the parties had agreed to define a downloadable is an “executable application” that is downloaded and “run” on the destination computer. The problem for the patentee is that SonicWall’s software receives data packets but never reassembles them into an executable application.  Rather, the accused SonicWall product operates by inspecting the payload on a packet-by-packet basis and then sends each packet to its destination without reassembling the file.

Based upon this uncontroverted evidence of how SonicWall operates and the agreed upon claim construction, the district court awarded summary judgment of non-infringement to the accused infringer.  On appeal, the Federal Circuit affirmed — finding that the district court did not “impermissibly deviate[] from the parties’ agreed-upon construction” but rather only “elaborat[ed]” upon inherent aspects of the construction.

On appeal, the patentee raised a number of claim construction arguments that may have carried weight in an ordinary claim construction context. Here those arguments were rejected as the court repeatedly returned to the text of the stipulated claim construction that the patentee had agreed to.

We do not permit parties on appeal to raise claim construction arguments challenging a stipulated construction.  See, e.g., Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1322 (Fed. Cir. 2013); see also Traxcell Techs., LLC v. Sprint Commc’ns Co. LP, 15 F.4th 1121, 1129 (Fed. Cir. 2021) (“Now Traxcell insists in retrospect that this construction was wrong. But having stipulated to it, Traxcell cannot pull an about-face.”).

Slip Op. at 12.  Judge Bryson wrote in dissent noted that the district court’s construction leads to absurd results based upon how the internet works. No device ever ‘receives’ an already assembled executable program; rather folks receive the packets and that is seen as the equivalent of receiving the program.  Bryson then went further and argued that the district court overstepped the bounds of the agreed-upon construction.

SonicWall argues that Finjan agreed to the construction of the term Downloadable and is stuck with the consequences, even if the consequences are that the patent reads on no embodiments. In fact, however, the record reflects that although the parties to the construction of the term Downloadable, they did not share thesame understanding of the term “executable,” as used in that construction, a point that became clear during the summary judgment argument. By agreeing to the construction of the term Downloadable, Finjan did not acquiesce in the interpretation of the court’s construction of “executable,” which was that an “executable” file must be executable without any further processing, rather than being capable of execution after, for example, being reconstructed following its transmission in packetized form.

Dissent at 3-4. In Judge Bryson’s view, the district court interpreted “executable” too narrowly in a way that effectively altered the agreed-upon construction. Although Finjan agreed to the overall construction of “Downloadable,” it did not agree to the district court’s implicit interpretation of “executable” as requiring executability upon receipt.

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The final issue in the case was the district court’s decision that a number of the asserted claims were invalid. In fact, the district court did not make this ruling on the merits, but rather used the procedural tool of issue preclusion (collateral estoppel) since the claims had been held invalid in a prior dispute.

Issue preclusion prevents a party from relitigating an issue that has already been actually litigated and necessarily determined by a final judgment in a prior case. Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022). Issue preclusion always involves two different cases, and the question is whether some determination in the first case will preclude the parties from relitigating the issue in a subsequent case.  The doctrine applies when: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) the party against whom issue preclusion is asserted had a full and fair opportunity to litigate the issue in the first action. Id. Issue preclusion can bar relitigation of both questions of law and questions of fact.

Issue preclusion can attach as soon as a final judgment is reached in one case, even before any appeals are exhausted. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367 (Fed. Cir. 2013). This allows parties to rely on a decision without waiting for appeals to conclude. However, if the decision providing the basis for issue preclusion is later overturned on appeal, this eliminates the ability to continue to rely on issue preclusion. Mills v. City of Covina, 921 F.3d 1161, 1170 n.2 (9th Cir. 2019). Since the overturned judgment can no longer have preclusive effect, any issue preclusion decisions relying on it must also fall away. This is what happened in Finjan v. SonicWall with the court vacating the invalidity holding.  Based upon my reading, this outcome does not save the patentee’s case against SonicWall (Because of the non-infringement findings), it does allow Finjan to continue to assert its patents against others.