Disclosure in Patents Incorporated by Reference Does Not Convert the Invention
Last week, patent applicants received some guidance as to the significance of incorporation by reference, provided in the Federal Circuit’s appellate decision in Finjan v. ESET. If a patent has one definition for a term, and it also incorporates by reference another patent that has a different definition, then the incorporation does not necessarily control the interpretation or clarity of the term as it appears in the patent-at-issue. Based on this, the Federal Circuit decision overturned a ruling from the lower court granting summary judgment to accused infringer ESET.
Patent owner Finjan alleged that ESET infringed several patents related to U.S. Patent No. 9,189,621. The term “Downloadable” appears in all the claims in the asserted patents. Some of the patents define this term differently, while other do not include a definition of this term.
The district court interpreted the term “Downloadable” as meaning, “a small executable or interpretable application program which is downloaded from a source computer and run on a destination computer,” based upon the definition provided in unasserted patents that were incorporated by reference. The district court ruled that the term “small” in the definition of “Downloadable” rendered the claims indefinite.
On appeal, Finjan asserted that the word “small” should not be included in the definition of “Downloadable.” The Federal Circuit agreed, stating:
The use of a restrictive term in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference.
The Court indicated that the term “Downloadable” when it is not defined with a size requirement (“small”) includes all sizes. Notably, some of the patents in the family incorporate both patents with the definition of “Downloadable” that has a size restriction and patents that have no size restriction. Thus, the district court’s interpretation of the term was in error.