ESET, LLC, et al. v. Finjan LLC

Finjan asserted five interrelated U.S. patents relating to anti-malware systems and methods against ESET. The Finjan patents purport to analyze a “Downloadable,” a term that had no meaning to persons of skill in the computer art. In three of the asserted patents, conflicting definitions of the term “Downloadable” are supplied by incorporated-byreference patents as an “executable application program” or as a “small executable or interpretable application program…” In the other two asserted patents, the patentee expressly defined the term “Downloadable” as an “executable application program…” but also incorporated by reference prior related patents that contained the conflicting definition of “Downloadable” as a “small executable or interpretable application program…” The District Court adopted for its construction of the term “Downloadable” in all five asserted patents the patenteeprovided definition that included “small,” “executable,” and “interpretable,” applying Federal Circuit precedent that a patentee may act as his own lexicographer in defining his invention. Ignoring its own precedent and that of this Court, the Federal Circuit reversed, fashioning an entirely new definition that included “executable” and “interpretable” but excluded the word “small.” There is no patentee-coined definition of “Downloadable” that includes “interpretable” but excludes “small.” The Federal Circuit opined, counterfactually, that there was no conflict in the definitions provided in the incorporated-by-reference patents. The questions presented are: 1. In a case of first impression for this Court, where a patentee expressly defines a claim term, may the Federal