Finjan, Inc. v. Blue Coat Systems, Inc., 5-15-cv-03295 (CAND December 13, 2016, Order) (Freeman, USDJ)
Thursday, December 15, 2016
In Determining 35 U.S.C. § 101 Eligibility, Court May Consider Specification of Parent Patent Incorporated by Reference
The court denied defendant's motion for judgment on the pleadings on the ground that plaintiff’s malicious code monitoring patent encompassed unpatentable subject matter and found that it could look to a parent patent incorporated by reference to determine eligibility. "This case presents an interesting scenario where the claims themselves are basic and broad, but significant clarifying detail is provided in a specification that belongs not to the [patent-in-suit] itself, but to a parent patent . . . which the [patent-in-suit] identifies and declares to be 'hereby incorporated by reference.'. . . As with any matter involving the scope of the patent grant, '[t]he § 101 inquiry must focus on the language of the Asserted Claims themselves.'. . . Nevertheless, the specification, as a helpful tool in understanding claim scope, is not to be ignored entirely. . . . Because the Court must construe the pleadings in favor of [plaintiff], the Court must err on the side of incorporating more -- not less -- particularities from the specification into its understanding of the claims, while still refraining from importing limitations from the specification into the claim. . . . Here, the [patent-in-suit] identifies the material it is incorporating with sufficient particularly: it indicates that it is incorporating the entire [parent] patent, and provides enough information for the reader to locate this information. . . . Accordingly, the Court is persuaded that the [patent-in-suit] successfully incorporates the entirety of the [parent] patent’s disclosure by reference."