Restrictive Claim Term Definition In Parent Application Does Not Restrict Term In Child Application

In Finjan LLC v. ESET, LLC,¹ the Federal Circuit held that a definition provided in any incorporated-by-reference document is a part of the host patent. However, the use of a restrictive definition of a claim term in an earlier parent application does not reinstate that restrictive definition in a later continuing application that purposely deletes the term, even if the earlier parent application is incorporated by reference.

Finjan, Inc., sued ESET, LLC, contending that ESET infringed U.S. Patent Nos. 6,154,844 ('844 Patent), 6,804,780 ('780 Patent), 8,079,086 ('086 Patent) and 9,189,621 ('621 Patent) (collectively, asserted patents or patents-at-issue). The asserted patents were part of a family of patents describing systems and methods for finding computer viruses in a "downloadable" using a security profile. Finjan claimed priority back to provisional application No. 60/030,639 ('639 application), filed on November 8, 1996.