Finjan’s Claims in IPR

Palo Alto Networks, Inc. v. Finjan, Inc. (Fed. Cir. 2020)

Note – I originally misread this decision as applying the Phillips standard for claim construction. On review, I realize that I misread the decision. The court explains:

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 petitions for inter partes review filed before November 13, 2018, like Palo Alto’s, we apply the broadest reasonable interpretation claim construction standard.

So, my original opinion–that the change in claim construction made the difference–is obviously wrong.

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This appeal stems from an IPR proceedings filed by Palo Alto (PANW) against Finjan’s US. Patent No. 8,141,154.  Back in 2017, the Board originally sided with Finjan and confirmed patentability of the claims (not proven unpatentable). In a 2018 appeal, however, the Federal Circuit vacated that decision under SAS.  The IPR had only been partially-instituted and the Supreme Court in SAS held that partial-institution is improper.   On remand, the Board expanded its institution to all challenged claims and then again sided with the patentee — finding none of the challenged claims were proven unpatentable.  On appeal here, the Federal Circuit has affirmed.

Appointments Clause Issue: Although Palo Alto petitioned for the IPR, it argued here on appeal that the decision should be vacated because of the Arthrex appointments clause issue. On appeal, the Federal Circuit rejected that argument — holding that it had “forfeited its right to an Arthrex challenge” by being IPR petitioner.  I’ll note here that this is probably a “waiver” rather than “forfeiture.” In addition, the actual waiver here is questionable — Palo Alto petitioned for IPR, but did not ask for unconstitutionally appointed judges to decide the IPR.

Phillips Standard for Claim Construction: On the merits, the Federal Circuit affirmed. Here, the claims require a “a call to a first function” and the prior art taught a more indirect way of initiating the function — which the Board found did not fit the construction of “call.”  The Board explained — “a call to a function is simply not equal to invoking a function.”  On appeal , the Federal Circuit affirmed the construction and the nonobviousness result.

Read the decision: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2151.OPINION.12-16-2020_1702797.pdf

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Claim 1. A system for protecting a computer from dynamically generated malicious content, comprising:

a content processor (i) for processing content received 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 input, only if a security computer indicates that such invocation is safe;

a transmitter for transmitting the input to the security computer for inspection, when the first function is invoked; and

a receiver for receiving an indicator from the security computer whether it is safe to invoke the second function with the input.

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