Finjan’s Claims in IPR

Patent,

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.

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Nexus: Product must be “Essentially the Claimed Invention”

Patent,

by Dennis Crouch

Fox Factory, Inc. v. SRAM LLC (Fed. Cir. 2019)

This is an important case for anyone arguing secondary indicia -- not a good case for patent holders. The court here again raised the "nexus" hurdle by holding that a presumption of nexus can only be achieved by proving that the product being sold by the patentee is "essentially the claimed invention."  This is a situation where SRAM owned two patents in the same patent family -- both of which covered aspects of its X-Sync bicycle chainring (gear).  Each patent included elements not claimed in the other -- for the court that was enough evidence to disprove coexistence.

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