`
`NOTE: This disposition is nonprecedential.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
`inter partes review
`(“IPR”)
`in IPR2016-00151
`for
`(“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
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`

`

`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
`
`

`

`
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` 12
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` 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.
`
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`PALO ALTO NETWORKS, INC. v. FINJAN, INC.
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`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.
`
`