Three of those modules — Anti-Virus, Anti-Malware, and Content Protection — offered proactive scanning functionality, which was related to the patents held by Finjan.
[6] To prove their non-infringement theory, the defendants cited the Southwest Software, Inc. v. Harlequin Inc. case for the proposition that "locked [computer] code" cannot infringe.
Based on a single debug file, Finjan showed at most that Webwasher AG performed proactive scanning on one occasion during testing.
[7] Secure Computing argued that a new trial was required because the district court failed to construe the term "addressed to a client" from each asserted claim of the '194 patent,[7] similar as what happened in the case O2 Micro International Ltd. v. Beyond Innovation Technology Co..
For the second challenge, the Federal Circuit found that the district court had in fact instructed the jury at trial that sales to the United States Government should not be included in any damages calculation.
Secure Computing argued that the jury ignored the fact that not all customers enabled proactive scanning modules.
If no users activated modules containing proactive scanning, no revenue for that product was attributable to the Finjan's patented invention.
The Federal Circuit disagreed with Secure Computing and explained that the accused direct infringers were Defendants, not their customers.
Because Defendants included proactive scanning on every accused product, such function encompassed all of Secure Computing's sales, regardless of customer activation.
For example, Secure Computing obtained advertising value from those products even customers did not unlock the proactive scanning modules.
The Federal Circuit emphasized that use of past patent licenses must account for differences in the technologies and economic circumstances.
[1] In sum, The court contended that the royalty percentages were made with substantial evidence and based on expert's opinion.
It was seen as a zenith in the winning of Beauregard claims where the Federal Circuit held that not only was it okay for a computer-readable medium with instructions on it to be enforced, but that the code needn't even be active in order to trigger infringement.
Versata Software, Inc. v. SAP America, Inc.[12] and Bally Technologies, Inc v. Business Intelligence Systems Solutions, Inc.[13] adopted the opinion that "inactive" program could still infringe apparatus claims.
In Brocade Communications Systems, Inc. and Foundry Networks, LLC.,[14] criteria on deciding method claim infringement were based this case.