Claim Terms Are Not Necessarily Interpreted By Patents Incorporated By Reference

• Published date: 23 December 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: BakerHostetler
• Author: Mr Scott R. Conley

Finjan LLC v. ESET, LLC, Appeal No. 2021-2093 (Fed. Cir. 2022).

The Federal Circuit reversed a district court's summary judgment that interpreted the claims based on a definition in a separate patent that was incorporated by reference.

The patents at issue are directed to systems and methods for detecting computer viruses in a Downloadable. A non-asserted family member patent defines the term "Downloadable" as "a small executable or interpretable application program which is downloaded from a source computer and run on a destination computer."¹ Two of the asserted patents define "Downloadable" without using the term "small." Though they do incorporate by reference a patent that does define a Downloadable as "a small executable ...."

The district court construed the term "Downloadable" to be restricted to "small" executable applications based on the definition of Downloadable in the family member patent that was incorporated by reference. The word "small" was determined to be indefinite, so the claims were invalid.

Claims are read in light of the specification, which includes any patents that are incorporated by reference. The incorporated references are effectively part of the specification and can be used to construe the claims.² While they may be part of the specification, the Federal Circuit explained that "incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent."³ The...