NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PALO ALTO NETWORKS, INC.,
Appellant
v.
FINJAN, INC.,
Appellee
______________________
2017-2314, 2017-2315
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01979, IPR2016-00151, IPR2016-00919,
IPR2016-01071.
______________________
Decided: November 19, 2018
______________________
ORION ARMON, Cooley LLP, Broomfield, CO, argued
for appellant.
JAMES R. HANNAH, Kramer Levin Naftalis & Frankel
LLP, Menlo Park, CA, argued for appellee. Also repre-
sented by PAUL J. ANDRE.
______________________
Before REYNA, SCHALL, and STOLL, Circuit Judges.
2 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
REYNA, Circuit Judge.
In this consolidated appeal, Appellant-Petitioner Palo
Alto Networks, Inc. challenges the Patent Trial and
Appeal Board’s Final Written Decisions upholding the
patentability of U.S. Patent No. 8,141,154 in two inter
partes review proceedings. 1 For the reasons below, we
affirm the Board’s decision in IPR2015-01979. We vacate
the decision in IPR2016-00151 and remand for proceed-
ings consistent with the Supreme Court’s decision in SAS
Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).
BACKGROUND
I. The ’154 Patent
Finjan, Inc. (“Finjan”) owns U.S. Patent No. 8,141,154
(“the ’154 patent”), entitled “System and Method for
Inspecting Dynamically Generated Executable Code.”
The ’154 patent is broadly directed toward computer virus
protection against dynamically generated malicious code
and conventional viruses that are statically generated.
The ’154 patent describes a system that inspects func-
tion inputs in content received over a network for poten-
tially malicious behavior and halts execution or modifies
the input if deemed unsafe. An embodiment of the system
claimed by the ’154 patent contains a gateway computer,
a client computer, and a security computer. ’154 patent
col. 8 ll. 45–47. The gateway computer receives content
from a network, such as the Internet, over a communica-
tion channel; the content may be in the form of HTML
pages, XML documents, Java applets, and other content
renderable on a web browser. Id. col. 8 ll. 48–51. A
content modifier modifies original content received by the
1 Symantec Corporation, an original appellant, set-
tled and withdrew as a party after this appeal was filed.
PALO ALTO NETWORKS, INC. v. FINJAN, INC. 3
gateway computer to produce content that includes a
layer of protection to combat dynamically generated
malicious code. Id. col. 9 ll. 13–16.
The ’154 patent has four independent claims (1, 4, 6,
and 10), each reciting a system or software program that
executes a substitute function. The substitute function
inspects the input to an original function to determine if
executing the original function with the input violates a
security policy. Claim 1 is illustrative:
1. A system for protecting a computer from dy-
namically generated malicious content, compris-
ing:
a content processor (i) for processing content re-
ceived over a network, the content including a call
to a first function, and the call including an input,
and (ii) for invoking a second function with the in-
put, only if a security computer indicates that
such invocation is safe;
a transmitter for transmitting the input to the se-
curity computer for inspection, when the first
function is invoked; and
a receiver for receiving an indicator from the secu-
rity computer whether it is safe to invoke the sec-
ond function with the input.
’154 patent col. 17 ll. 31–44.
In the language of the ’154 patent, the “first function”
is the inspection step in which the content is assessed for
safety, and the “second function” is when, having been
deemed safe, the content is actually run.
II. Proceedings Before the Board
Palo Alto Networks, Inc. (“Palo Alto”) filed petitions
for inter partes review (“IPR”) in IPR2016-00151
(“the -00151 IPR”) and IPR2015-01979 (“the -01979 IPR”),
4 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
challenging the validity of various claims of the
’154 patent under 35 U.S.C. § 103.
A. The -00151 IPR
In the -00151 IPR, Palo Alto petitioned for IPR of
claims 1–8, 10, and 11 of the ’154 patent as obvious under
35 U.S.C. § 103 over U.S. Patent Application Pub. No.
2007/0113282 A1 (“Ross”), and claims 9 and 12 as obvious
under § 103 over Ross and U.S. Patent Application Pub.
No. 2002/0066022 A1 (“Calder”). J.A. 3358–3409. The
Board instituted review of claims 1–8, 10, and 11 under
§ 103 over Ross, but declined to institute claims 9 and 12.
J.A. 3497.
The Board issued a Final Written Decision concluding
that Ross disclosed every limitation in the asserted claims
except a “call to a first function,” and thus concluded that
the instituted claims had not been shown to be unpatent-
able under § 103. Palo Alto Networks, Inc. v. Finjan, Inc.,
IPR2016–00151, 2017 WL 1040254, at *5–7, *10 (P.T.A.B.
Mar. 15, 2017) (“-00151 IPR FWD”). Palo Alto moved for
rehearing, arguing that the Board should construe the
term “call to a first function” the same way in the -01979
and -00151 IPRs. J.A. 3967. The Board agreed that the
construction for “a call to a first function” must be con-
sistent across the IPRs, and updated its -00151 IPR FWD
to adopt the construction from the -01979 IPR. Palo Alto
Networks, Inc. v. Finjan, Inc., IPR2016–00151, 2017 WL
2211715, at *1 (P.T.A.B. May 19, 2017). The Board
concluded that the new construction did not expand the
scope of the term, and on that basis did not update its
analysis and conclusions of the patentability of the
’154 patent in the -00151 IPR FWD. Id. at *1–2.
B. The -01979 IPR
In the -01979 IPR, Palo Alto petitioned for IPR of
claims 1–5 of the ’154 patent as obvious under 35 U.S.C.
§ 103 over U.S. Patent Application Pub. No. 2005/0108562
PALO ALTO NETWORKS, INC. v. FINJAN, INC. 5
(“Khazan”) in view of Sirer, 2 and claims 6–8, 10, and 11 as
obvious under § 103 over Khazan in view Sirer and U.S.
Patent No. 7,437,362 (“Ben-Natan”). J.A. 234. The Board
subsequently instituted on all of the petitioned claims and
grounds. J.A. 362.
i. Khazan
Khazan is the only prior art reference relevant to
the -01979 IPR on appeal. Khazan discloses a system for
detecting malicious code by performing both static and
dynamic analysis. Khazan, Abstract. In the static analy-
sis phase, Khazan’s instrumentation process wraps (i.e.,
surrounds) calls to original/target functions contained in
an executable application, such that the calls are inter-
cepted by a wrapper function. More specifically, during
the static analysis portion of the system, to intercept
potentially malicious function activity, Khazan’s system
replaces the first line of code in the original function with
a jump command. Id. ¶¶ 88, 90–91. Once the program is
run, the jump command transfers control of the program
to a wrapper function to verify the safety of the original
function input. Id. ¶ 82. Khazan’s system saves the first
instruction of the original function, replaced by the jump
command, to be executed after the program is verified to
be safe. Id. ¶ 88. In the language of the ’154 patent,
Khazan’s wrapper function is the “first” or substitute
function and the original or target function is the “second”
function.
ii. Final Written Decision in the -01979 IPR
In the -01979 IPR, the Board construed two terms of
the ’154 patent: “content” and “call to a first function.”
2 Emin Gün Sirer, et al., Design and Implementa-
tion of a Distributed Virtual Machine for Networked
Computers, 33 ACM SIGOPS Operating Systems Review
202 (Dec. 5, 1999) (“Sirer”).
6 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015–01979,
2017 WL 1040259, at *6–7 (P.T.A.B. Mar. 15, 2017)
(“-01979 IPR FWD”). The Board construed “content” to
mean “data or information, which has been modified and
is received over a network.” Id. at *6. The Board con-
strued “call to a first function” as “a statement or instruc-
tion in the content, the execution of which causes the
function to provide a service.” Id. at *7. The Board held
that “the definition of ‘call to a first function’ need not
define the particular format of the instruction or [provide]
further detail regarding its parameters.” Id. at *6.
In assessing the patentability of the ’154 patent, the
Board determined it was “not persuaded that Khazan
teaches the limitation of invoking the second function only
if the invocation is safe,” concluding instead that “Khazan
continues the operation of the second function, depending
on the verification check performed by the pre-monitoring
code.” Id. at *21. Thus, “any combination of teachings of
Khazan with Sirer would result in the second function
being invoked, as taught by Khazan, upon execution of
the instrumented content, but not ‘only if’ the invocation
is safe, after receiving the indicator.” Id. The Board
found that none of the prior art references taught this
limitation, and thus concluded that the ’154 patent had
not been shown to be unpatentable as obvious under
Khazan.
Following the Final Written Decision in the -01979
IPR, Palo Alto sought rehearing, arguing, inter alia, that
the Board should construe the term “call to a first func-
tion” the same way in the -01979 and -00151 IPRs. J.A.
1005. The Board agreed that claim construction between
the two IPRs should be consistent, but noted that Palo
Alto did not argue for the construction in the -01979 IPR
to be changed or altered in any particular way. Palo Alto
Networks, Inc. v. Finjan, Inc., IPR2015–01979, 2017 WL
2211714, at *3 (P.T.A.B. May 19, 2017). The Board thus
determined that because it had “not been directed to any
PALO ALTO NETWORKS, INC. v. FINJAN, INC. 7
particular issue that [it] misapprehended or overlooked in
this proceeding concerning claim construction of a ‘call to
a first function,’” no change to its construction of that
term was required. Id.
DISCUSSION
We review decisions of the Board under the standard
of the Administrative Procedure Act (“APA”). Novartis
AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1323 (Fed. Cir.
2017). We hold unlawful and set aside the actions of the
Board if they are “not in accordance with law” or “unsup-
ported by substantial evidence.” 5 U.S.C. § 706.
I. The -00151 IPR
We first address the effects of SAS Institute, Inc. v.
Iancu on the -00151 IPR. The Supreme Court held in
SAS that if the Director institutes IPR proceedings, the
Board’s review must proceed in accordance with or in
conformance to the petition, including “‘each claim chal-
lenged’ and ‘the grounds on which the challenge to each
claim is based.’” Id. at 1355–56 (quoting 35 U.S.C.
§ 312(a)(3)). After SAS, this court has held that remand
to the Board can be appropriate to consider non-instituted
grounds as well as non-instituted claims. See BioDelivery
Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d
1205, 1208 (Fed. Cir. 2018) (collecting cases). We have
also declined to find that a party waives its right to seek
SAS-based relief due to failure to argue against partial
institution before the Board. Id.
The Board instituted the -00151 IPR on less than all
claims and grounds. J.A. 3497. Prior to oral argument in
this appeal, Palo Alto notified the court that in light of
SAS, it was seeking vacatur and remand of the Board’s
decision in the -00151 IPR on the grounds of partial
institution. Palo Alto Networks, Inc. v. Finjan, Inc., No.
17-2314, Dkt. No. 44, at 4 (Fed. Cir. May 29, 2018).
Because the -00151 IPR FWD addresses fewer than all
8 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
claims challenged in Palo Alto’s petition to institute inter
partes review in the -00151 IPR, and because Palo Alto
has not waived its objection to the Board’s failure to
address the non-instituted claims, we vacate and remand
to allow the Board to issue a Final Written Decision
consistent with SAS.
II. The -01979 IPR
As discussed above, in the -01979 IPR, the Board de-
termined it was “not persuaded that Khazan teaches the
limitation of invoking the second function only if the
invocation is safe,” and that “Khazan continues the opera-
tion of the second function, depending on the verification
check performed by the pre-monitoring code.” -01979 IPR
FWD, 2017 WL 1040259, at *21.
On appeal, Palo Alto contends that the Board erred in
its construction of “invoke,” and that under the correct
construction, substantial evidence does not support the
Board’s finding that Khazan does not disclose the “only if”
limitation. Palo Alto argues that the Board’s understand-
ing of “invoke” is both inconsistent with the Board’s use of
that term in the -00151 IPR, and incorrect under the
broadest reasonable interpretation standard for claim
construction.
“The ultimate construction of the claim is a legal
question and, therefore, is reviewed de novo.” Info-Hold,
Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265
(Fed. Cir. 2015). Claim construction based solely upon
intrinsic evidence is a matter of law reviewed de novo.
Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841 (2015).
Claim construction seeks to ascribe the meaning to
claim terms as a person of ordinary skill in the art at the
time of invention would have understood them. Phillips
v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005)
(en banc). In an IPR proceeding, claims are given their
PALO ALTO NETWORKS, INC. v. FINJAN, INC. 9
broadest reasonable interpretation in light of the specifi-
cation. 3 In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
1279 (Fed. Cir. 2015), aff’d sub. nom., Cuozzo Speed
Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). In construing
terms, “the person of ordinary skill in the art is deemed to
read the claim term not only in the context of the particu-
lar claim in which the disputed term appears, but in the
context of the entire patent, including the specification.”
Phillips, 415 F.3d at 1313. Indeed, the specification is
“the single best guide to the meaning of a disputed term”
and “[u]sually, it is dispositive.” Id. Claims must be
construed “in view of the specification, of which they are a
part.” Id. at 1315.
Although the Board did not expressly construe the
“invoke” term in either the -00151 IPR or the -01979 IPR,
Palo Alto argues that the Board interpreted and applied it
differently in each of the IPRs. In the -00151 IPR, the
Board concluded that “a call to a function” and “invoking
a function” are not equivalent; the Board concluded that
3 On October 11, 2018, the United States Patent
and Trademark Office issued a final rule revising the
claim construction standard for interpreting claims in
IPR, post-grant review, and covered business method
patent review proceedings before the Board. Changes to
the Claim Construction Standard for Interpreting Claims
in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified
at 37 C.F.R. pt. 42). The final rule provides that, for these
types of proceedings, the Board will apply the same
standard applied in federal courts to construe patent
claims—i.e., the Phillips standard—to all petitions filed
on or after the effective date of November 13, 2018. Id.
Because Palo Alto filed its IPR petitions before the effec-
tive date of the rule, we construe the claims under the
broadest reasonable interpretation standard.
10 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
“call” refers to a programmatic statement or instruction,
whereas “first function is invoked” refers to the effect of
that call—i.e., “the effect of the call to the function being
executed.” -00151 IPR FWD, 2017 WL 1040254, at *4. In
contrast, Palo Alto argues, in the -01979 IPR the Board
applied “invoke” more broadly to cover merely making a
call to a function, without requiring execution.
The Supreme Court has emphasized the “importance
of uniformity in the treatment of a given patent.” Mark-
man v. Westview Instruments, Inc., 517 U.S. 370, 390
(1996). Such uniformity of treatment is similarly im-
portant when construing claims of the same patent across
different IPR proceedings. But because the Board’s final
decision in the -00151 IPR has been vacated as improper-
ly instituted under SAS, Palo Alto’s argument about
inconsistent constructions across IPRs is now effectively
moot. Having requested and obtained vacatur of
the -00151 IPR decision on the grounds that it was im-
properly instituted, Palo Alto cannot now point to it as a
basis for reversing the decision in the -01979 IPR. Any
discussion on constructions adopted in a now-vacated
decision would constitute an advisory opinion, and accord-
ingly, we do not reach any of Palo Alto’s arguments re-
garding the -01979 IPR that rely on the -00151 IPR. See
Flast v. Cohen, 392 U.S. 83, 96–97 (1968) (“[T]he oldest
and most consistent thread in the federal law of justicia-
bility is that the federal courts will not give advisory
opinions.” (quoting C. Wright, Federal Courts 34 (1963))).
Palo Alto makes only two arguments regarding claim
construction that do not wholly rely on the -00151 IPR.
First, Palo Alto argues that the Board committed a second
claim construction error related to “invoking a second
function with the input, only if” such invocation is safe,
because its understanding of this term gives no meaning
to “with the input.” Appellant’s Br. 62. Palo Alto, howev-
er, never argued to the Board that “invoking . . . with the
input” should be given any particular meaning, and
PALO ALTO NETWORKS, INC. v. FINJAN, INC. 11
accordingly, this argument is waived. See Conoco, Inc. v.
Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1358–59 (Fed.
Cir. 2006) (“[A] party may not introduce new claim con-
struction arguments on appeal or alter the scope of the
claim construction positions it took below.”).
Second, Palo Alto argues that the Board in the -01979
IPR did not apply the claim limitation “invoking a second
function with the input” properly under the broadest
reasonable interpretation standard. Specifically, Palo
Alto argues that the Board applied an “overly broad”
interpretation of the “invoke” term that covers merely
initiating a call to a function, regardless of whether the
function is executed. Appellant’s Br. 51. Palo Alto’s
argument in support of a perceived inconsistency again
largely relies on the Board’s approach to the “invoke”
terms in the -00151 IPR decision. Appellant’s Br. 2–4,
26–27, 46–52. Palo Alto makes no independent argument
based on the ’154 patent as to why the Board’s under-
standing of the “invoke” term in the -01979 IPR is incor-
rect under the broadest reasonable interpretation
standard. See id.; see also Phillips, 415 F.3d at 1313–15.
On review of the ’154 patent, we find nothing in the
claims or the specification that supports Palo Alto’s
contention that “invoking” a function limitation always
means that the function is executed. Claim 1 and claim 4
both recite that the content processor invokes “a second
function with the input, only if” a security computer or
indicator “indicates that such invocation is safe.”
’154 patent col. 17 ll. 36–38, col. 18 ll. 2–3. The specifica-
tion describes various instances where a function or
function call may be invoked. E.g., id. col. 15 ll. 61–64,
col. 16 ll. 24–26.
In some instances, the specification describes “invok-
ing” a function and the effect of that function being
achieved. E.g., id. col. 12 l. 64–col. 13 l. 3 (“This guaran-
tees that when content processor 270 begins to process the
12 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
modified input, it will again invoke the substitute func-
tion for Document.write( ), which in turn passes the
input . . . to security computer 215 for inspection.”). But,
because the claims are not so limited, such references in
the specification do not require, under the broadest rea-
sonable interpretation standard, that “invoking” requires
execution of the function. See Owens Corning v. Fast Felt
Corp., 873 F.3d 896, 901 (Fed. Cir. 2017) (“It is true that
the preferred embodiments . . . focus on roofing materials
that are or will be coated or saturated with asphalt or
asphalt mix. But that is not enough to narrow the claim
scope in the IPR. The claims are plainly not so limited.”).
Palo Alto further maintains that this understanding
of “invoke” is inconsistent with the meaning of “call to a
first function,” which the Board construed to mean “a
statement or instruction in the content, the execution of
which causes the function to provide a service.” Appel-
lant’s Br. 51. But Palo Alto makes only conclusory state-
ments to argue that “invoking a function” requires that
the function be executed. Id. at 51 (“[The Board’s] con-
struction [of “call to a first function”] also recognizes that
calling (i.e., invoking) a function requires ‘execution [of
the function] which causes the function to provide a
service.’” (emphasis added) (last alteration in original)).
And although Palo Alto criticizes the Board for not con-
struing “invoke” or being unclear as to what “invoke”
means, neither Palo Alto nor Finjan sought construction
of the “invoke” terms during the -01979 IPR. J.A. 238–42;
454–56.
We conclude that the Board did not err in its under-
standing of the “invoke” terms in the -01979 IPR FWD. In
light of this decision, we do not reach whether, under a
different construction, substantial evidence supports the
Board’s decision upholding the patentability of the
’154 patent in the -01979 IPR.
PALO ALTO NETWORKS, INC. v. FINJAN, INC. 13
CONCLUSION
Based on the foregoing, we vacate the Board’s decision
in the -00151 IPR and remand for proceedings consistent
with the Supreme Court’s decision in SAS Institute. We
affirm the Board’s decision in the -01979 IPR that the
’154 patent was not shown to be unpatentable as obvious
under § 103.
AFFIRMED-IN-PART, VACATED AND
REMANDED-IN-PART
COSTS
No costs.