Case: 19-2151 Document: 61 Page: 1 Filed: 12/16/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PALO ALTO NETWORKS, INC.,
Appellant
v.
FINJAN, INC.,
Appellee
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2019-2151
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
00151, IPR2016-01071.
______________________
Decided: December 16, 2020
______________________
ORION ARMON, Cooley LLP, Broomfield, CO, for appel-
lant. Also represented by DENA CHEN, Palo Alto, CA.
JAMES R. HANNAH, Kramer Levin Naftalis & Frankel
Case: 19-2151 Document: 61 Page: 2 Filed: 12/16/2020
2 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
LLP, Menlo Park, CA, for appellee. Also represented by
PAUL J. ANDRE; JEFFREY PRICE, New York, NY.
SARAH E. CRAVEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for interve-
nor. Also represented by THOMAS W. KRAUSE, FARHEENA
YASMEEN RASHEED, DANIEL KAZHDAN.
______________________
Before REYNA, SCHALL, and WALLACH, Circuit Judges.
SCHALL, Circuit Judge.
This is an appeal of the final decision of the United
States Patent Office, Patent Trial and Appeal Board
(“Board”), in IPR2016-00151, following a remand from this
court. Palo Alto Networks, Inc. v. Finjan, Inc., No.
IPR2016-00151, Paper 68 (P.T.A.B. May 15, 2019), J.A. 1–
7 (“Remand FWD”). 1 In the Remand FWD, the Board held
that claims 1–12 of U.S. Patent No. 8,141,154 (“the ’154
patent”), owned by Finjan, Inc. (“Finjan”), had not been
shown to be unpatentable in the inter partes review
proceeding brought by Palo Alto Networks, Inc. (“Palo
Alto”). For the reasons set forth below, we affirm. 2
1 IPR2016-01071, filed by Symantec Corp. (“Syman-
tec”), sought review of the same claims as, and was ulti-
mately joined with, IPR2016-00151. Due to a previous
settlement, Symantec is not a party to this appeal, and no
argument is raised by the parties with respect to IPR2016-
01071. See Remand FWD at 1 n.1.
2 Initially, Palo Alto argued that we should vacate
and remand the Remand FWD because it was rendered by
an unconstitutionally appointed panel of Administrative
Patent Judges, citing our court’s decision in Arthrex, Inc. v.
Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Ap-
pellant’s Br. 49. The U.S. Patent & Trademark Office
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PALO ALTO NETWORKS, INC. v. FINJAN, INC. 3
BACKGROUND
I
The ’154 patent relates to anti-virus protection for com-
puters, and specifically, to protection against dynamically
generated malicious code or viruses, which are viruses gen-
erated at run-time. ’154 patent col. 3 ll. 33–38 & col. 8 ll.
38–40. The ’154 patent describes using a separate, re-
motely-located security computer to inspect incoming con-
tent to determine if it is safe to run the content on a client
computer. Id. col. 4 ll. 35–54. More specifically, the ’154
patent explains that when content is received at the client
computer that includes “a call to an original function” and
the call includes “an input to the function,” the call to the
original function is replaced with a “call to a substitute
function.” Id. col. 5 ll. 4–12. The substitute function causes
the input to be sent to the security computer, which then
determines whether it is safe for the client computer to in-
voke the original function with the input. Id. col. 5 ll. 12–
20. If the security computer determines it is safe, the orig-
inal function can be invoked at the client computer with
the input. Id. col. 5 ll. 22–25.
Independent claim 1 of the ’154 patent is representa-
tive. It provides as follows:
intervened with respect to this issue. The Supreme Court
subsequently granted certiorari in Arthrex, 2020 WL
6037208 (Oct. 13, 2020), and Palo Alto then filed a motion
to stay this appeal, which our court denied. As the peti-
tioner before the Board in IPR2016-00151, Palo Alto has
forfeited its right to an Arthrex challenge. See generally
Ciena Corp. v. Oyster Optics, LLC, 958 F.3d 1157 (Fed. Cir.
2020).
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4 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
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 func-
tion 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.
Id. col. 17 ll. 32–44 (emphasis added). The claimed “first
function” refers to the substitute function, whereas the
claimed “second function” refers to the original function
that the client computer has been asked to perform. Thus,
the term at issue, “a call to a first function,” refers to a call
to the substitute function that causes the input to be sent
to a security computer for inspection.
The only prior art at issue is U.S. Patent Application
Publication No. 2007/0113282 to Ross (“Ross”). Ross de-
scribes systems and methods for detecting and disabling
malicious script code. Specifically, Ross teaches a “hook”-
based detection engine that is configured to review script
code associated with incoming data content and detect
function calls in the script code. Ross ¶¶ 10, 25. The hook-
base detection engine includes a hook script generator that
creates new “hooked” or “hook” functions that replace the
standard functions originally set forth in the script code,
thereby replacing potentially malicious functions con-
tained in the script code. Id. at ¶¶ 10, 26, 35. As discussed
below, the issue on appeal is whether Ross discloses “a call
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PALO ALTO NETWORKS, INC. v. FINJAN, INC. 5
to a first function,” as recited in the ’154 patent and as con-
strued by the Board.
II
On March 15, 2017, the Board issued a Final Written
decision in IPR2016-00151. Final Written Decision, Palo
Alto Networks, Inc. v. Finjan, Inc., No. IPR2016-00151,
2017 WL 1040254 (P.T.A.B. Mar. 15, 2017) (“Original
FWD”). In it, the Board construed “a call to a first function”
to mean “a statement or instruction in a program request-
ing the services of a particular (i.e., first) function.” Id. at
*3–4. In the Original FWD, the Board determined that
claims 1–8, 10, and 11 were patentable over Ross because
Ross did not disclose the claimed “content including a call
to a first function.” Id. at *5–8. 3 The Board rejected Palo
Alto’s argument that Ross’s hook function teaches or sug-
gests the “call to a first function.” The Board concluded:
“Ross teaches assigning the original function to the hooked
function. In that manner, Ross invokes indirectly the hook
function without any need to include a call to that hook
function.” Id. at *7.
Palo Alto sought rehearing of the Original FWD be-
cause the Board used different language in its construction
of the term “call to a first function” in a Final Written De-
cision in IPR2015-01979, which issued the same day as the
Original FWD and which also involved the ’154 patent. In
the Final Written Decision in IPR2015-01979, the Board
construed “a call to a first function” to mean “a statement
3 Palo Alto’s petition in IPR2016-00151 challenged
claims 1–8, 10, and 11 of the ’154 patent as obvious under
35 U.S.C. § 103 over Ross and claims 9 and 12 as obvious
over Ross and U.S. Patent App. Pub. No. 2002/0066022 to
Calder (“Calder”). The Board instituted review of Palo
Alto’s challenge to claims 1–8, 10, and 11, but declined to
institute its challenge to claims 9 and 12.
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6 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
or instruction in the content, the execution of which causes
the function to provide a service.” Final Written Decision,
Palo Alto Networks, Inc. v. Finjan, Inc., No. IPR2015-
01979, 2017 WL 1040259, at *7 (P.T.A.B. Mar. 15, 2017).
The Board granted Palo Alto’s Request for Rehearing, and
agreed with Palo Alto “that the construction of ‘a call to a
first function’ must be consistent with [its] determination
in IPR2015-01979,” specifically, that “a call to a first func-
tion” means “a statement or instruction in the content, the
execution of which causes the function to provide a service.”
Decision on Petitioner’s Request for Rehearing, Palo Alto
Networks, Inc. v. Finjan, Inc., No. IPR2016-00151, 2017
WL 2211715, at *1 (P.T.A.B. May 19, 2017) (“Rehearing
Decision”). The Board concluded, however, that the modi-
fied construction was consistent with its prior analysis and
did not require modification of its patentability determina-
tions. Id. at *1–2. The Board stated: “[W]e do not agree
with [Palo Alto]’s argument that this construction expands
the scope of the term to include ‘invocations’ of a function
when the ‘call’ is to another function.” Id. at *1.
Palo Alto appealed the Original FWD and the Final
Written Decision in IPR2015-01979. In a November 19,
2018 decision, our court issued an opinion in which we
(1) affirmed the Board’s construction of a disputed claim
term in IPR2015-01979; and (2) vacated and remanded the
Board’s decision in IPR2016-00151 under SAS Institute
Inc. v. Iancu, 138 S. Ct. 1348 (2018), because the Board had
instituted IPR2016-00151 on less than all of the challenged
claims. Palo Alto Networks, Inc. v. Finjan, Inc., 752 F.
App’x 1017 (Fed. Cir. 2018).
On remand, the Board modified its institution decision
to institute inter partes review of dependent claims 9 and
12. Remand FWD at 3, J.A. 3. The Board also “adopt[ed]
and incorporate[d] by reference, in its entirety, [its] previ-
ous [Original FWD] that [Palo Alto] ha[d] not shown by a
preponderance of the evidence that claims 1–8, 10, and 11
of the ’154 patent are unpatentable” and “reinstate[d],
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and . . . incorporate[d] by reference,” its decision on Palo
Alto’s Request for Rehearing. Remand FWD at 4, J.A. 4.
The Board found that newly challenged claims 9 and 12
had not been shown to be unpatentable because Palo Alto
did not “point to any teachings in Calder that teach the el-
ements [the Board] found missing in Ross in reaching [its]
decision that Ross did not render claims 1 and 10,” from
which claims 9 and 12 depend, “obvious.” Id. at 4–6.
Palo Alto now appeals. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
I
For petitions for inter partes review filed on or after
November 13, 2018, the Board applies the Phillips district-
court claim construction standard. 37 C.F.R. § 42.100(b)
(2018); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc); Immunex Corp. v. Sanofi-Aventis U.S.
LLC, 977 F.3d 1212, 1216 & n.2 (Fed. Cir. 2020). For peti-
tions for inter partes review filed before November 13,
2018, like Palo Alto’s, we apply the broadest reasonable in-
terpretation claim construction standard. 37 C.F.R.
§ 42.100(b) (2012); AC Tech. S.A. v. Amazon.com, Inc., 912
F.3d 1358, 1365 n.1 (Fed. Cir. 2019). “We review the
Board’s claim construction de novo and any underlying fac-
tual findings for substantial evidence.” Immunex, 977 F.3d
at 1217 (citations omitted).
Obviousness is a question of law based on underlying
findings of fact. In re Baxter Int’l, 678 F.3d 1357, 1361
(Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S.
1, 17 (1966)). What a reference teaches and the differences
between the claimed invention and the prior art are ques-
tions of fact, which we review for substantial evidence. Id.
at 1361.
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II
As noted, the Board ultimately construed “a call to a
first function” to mean “a statement or instruction in the
content, the execution of which causes the function to pro-
vide a service.” Rehearing Decision, 2017 WL2211715 at
*1. This was the construction first stated in IPR2015-
01979.
In Palo Alto’s view, the Board improperly added a lim-
itation to the claims—that the “call” must directly name
the first function—when it construed the term as just
stated and applied the construction to Ross. Palo Alto con-
tends that the Board’s original construction in IPR2016-
00151 (“a statement or instruction in a program requesting
the services of a particular (i.e., first) function”) required
that the first function be explicitly called, and when the
Board modified the Original FWD in IPR2016-00151 to
make the construction there consistent with the construc-
tion in IPR2015-01979, the Board should have revisited its
invalidity analysis under the new construction, which was
not so limited. Appellant Br. 36–41.
According to Palo Alto, Ross teaches a “call to a first
function” through its description of the hook functions and
their associated inputs. Id. at 43–48. For example, Palo
Alto points out that Ross teaches “[e]ach hook function is
configured to supersede a corresponding original function”
and that “[t]he hook function corresponding to the data
content original function is executed when the original
function is called.” Id. at 44, 46 (quoting Ross ¶ 10).
Finjan responds that Palo Alto’s argument that the
claim construction was not correctly applied is meritless
because it “ignores the fundamental difference between a
function call and the invocation of a function.” Appellee’s
Br. 15. Finjan notes that Palo Alto does not challenge the
Board’s claim construction itself and indeed Palo Alto spe-
cifically requested that the construction in IPR2015-01979
be applied in IPR2016-00151. Id. at 16. Finjan contends
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that the Board’s construction requires “the” function that
is called to be “the” function that “provide[s] a service,” and
that the Board’s determination that Ross failed to teach
that approach is supported by substantial evidence. Id. at
17–18, 20, 24.
III
We have recognized a party’s ability to challenge the
Board’s application of a claim construction. Respironics,
Inc. v. Zoll Med. Corp., 656 F. App’x 531, 535 (Fed. Cir.
2016) (first citing In re Abbott Diabetes Care Inc., 696 F.3d
1142, 1150-51 (Fed. Cir. 2012), then citing Intervet Inc. v.
Merial Ltd., 617 F.3d 1282, 1289-90 (Fed. Cir. 2010)). “Our
analysis of this issue includes two components: first, we de-
termine whether the Board added a limitation when it ap-
plied the construction; second, we determine whether that
limitation is appropriate under claim-construction law.”
Id.
Applying this test, we do not believe the Board added a
direct-naming limitation when it applied its construction.
Rather, the Board consistently explained that the term “a
call to a function” is simply not equal to “invoking a func-
tion.” Original FWD, 2017 WL 1040254, at *4; Rehearing
Decision, 2017 WL2211715 at *2. The Board explained
that the term “call” was used in the claims as a noun to
mean a “programmatic statement included in the content.”
Original FWD, 2017 WL 1040254 at *4; Rehearing Deci-
sion, 2017 WL2211715 at *2 (“The word ‘call’ is recited in
claim 1 as a noun, and is the statement or instruction in-
cluded in the content . . . .”). According to the Board, such
a programmatic statement to a function must “cause[ ]
the . . . function to provide a service.” Rehearing Decision,
2017 WL2211715 at *2 (“The word “call” . . . is the state-
ment or instruction included in the content that causes the
first function to provide a service.”). The Board also con-
sistently explained that such a “call” to a function does not
encompass the invocation of a different function. Id. at *1–
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10 PALO ALTO NETWORKS, INC. v. FINJAN, INC.
2; see Original FWD, 2017 WL 1040254 at *4. The Board’s
construction, and its application thereof, thus requires no
more than what is recited in the claims: “[t]he call to the
first function must be included in the content, and it is the
same first function that is invoked later in the claim.” Id.
at *4.
The Board found that Ross teaches a call to the original
(second) function, in order to invoke the hook (first) func-
tion, but does not teach a “call” to the hook function. Id. at
*6. This finding is supported by substantial evidence, in-
cluding the testimony of Finjan’s expert, see, e.g., Original
FWD, 2017 WL 1040254, at *6, and the testimony of Palo
Alto’s expert that “in the pseudocode in figure 4 [of Ross]
there’s no explicit call to a hooked function.” Id. at *7.
CONCLUSION
For the foregoing reasons, we affirm the Remand
FWD. 4
AFFIRMED
4 We have considered the other arguments raised by
Palo Alto on appeal and have found them to be without
merit.