Case: 19-2151
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`Document:61
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`Page:1_
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`Filed: 12/16/2020
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`NOTE: This disposition is nonprecedential.
`
`Anited States Court of Appeals
`for the Federal Circuit
`
`PALO ALTO NETWORKS,INC.,
`Appellant
`
`Vv.
`
`FINJAN, INC.,
`Appellee
`
`ANDREI IANCU, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARKOFFICE,
`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
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`Document: 61
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`Page:2
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`Filed: 12/16/2020
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`2
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`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 remandfromthis
`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”).! 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.
`
`JPR2016-01071, filed by Symantec Corp. (““Syman-
`1
`tec”), sought review of the same claims as, and wasulti-
`mately joined with, IPR2016-00151. Due to a previous
`settlement, Symantec is not a party to this appeal, and no
`argumentis 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 becauseit 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.
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`BACKGROUND
`
`I
`
`The 154 patent relates to anti-virus protection for com-
`puters, and specifically, to protection against dynamically
`generated malicious codeor viruses, which are viruses gen-
`erated at run-time. °154 patent col. 3 ll. 33-38 & col. SIL
`38-40. The 7154 patent describes using a separate, re-
`motely-located security computer to inspect incomingcon-
`tent to determineif it is safe to run the content on a client
`computer.
`Id. col. 4 ll. 35-54. More specifically, the 154
`patent explains that whencontentis received at the client
`computerthat 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. 511. 4-12. The substitute function causes
`the input to be sent to the security computer, which then
`determines whetherit is safe for the client computerto in-
`voke the original function with the input. Id. col. 5 ll. 12—
`20. If the security computer determinesit is safe, the orig-
`inal function can be invoked at the client computer with
`the input. Jd. col. 5 ll. 22-25.
`
`Independent claim 1 of the 7154 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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`PALO ALTO NETWORKS,INC. v. FINJAN, INC.
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`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 computerindicates that such
`invocation is safe;
`
`a transmitter for transmitting the input to the se-
`curity computer for inspection, whenthefirst func-
`tion is invoked; and
`
`a receiver for receiving an indicator from the secu-
`rity computer whetherit is safe to invokethe 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 inputto be sent
`to a security computerfor 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 J 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 J 10, 26, 35. As discussed
`below, the issue on appeal is whether Rossdiscloses “a call
`
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`oO
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`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”). Init, the Board construed “a call to a first function”
`to mean “a statement or instruction in a program request-
`ing the servicesof 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 assigningthe 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 useddifferent 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 dayas 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
`
`Palo Alto’s petition in IPR2016-00151 challenged
`3
`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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`PALO ALTO NETWORKS,INC. v. FINJAN, INC.
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`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 toa
`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. TPR2016-00151, 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]Je do not agree
`with [Palo Alto]’s argumentthat this construction expands
`the scope of the term to include ‘invocations’ of a function
`whenthe‘call’ is to another function.” Jd. 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 thanall 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 FWDat 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 7154 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 at4, 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 Calderthat teach theel-
`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 havejurisdiction pursuant
`to 28 U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`
`J
`
`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 Intl, 678 F.3d 1357, 1361
`(Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S.
`1, 17 (1966)). What a reference teaches andthe 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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`PALO ALTO NETWORKS,INC. v. FINJAN, INC.
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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 statementor 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 haverevisited 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.
`Jd. at 43-48. For example, Palo
`Alto points out that Ross teaches “[e]Jach hook function is
`configured to supersede a correspondingoriginal 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
`becauseit “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. Jd. at 16. Finjan contends
`
`

`

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`PALO ALTO NETWORKS, INC. v. FINJAN, INC.
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`9
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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.
`
`Ill
`
`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 Lid., 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, andis the statementor 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-
`mentor instruction includedin 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
`encompassthe invocation of a different function. Id. at *1—
`
`

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`2; see Original FWD, 2017 WL 1040254 at *4. The Board’s
`construction, and its application thereof, thus requires no
`more than whatis recited in the claims: “[t]he call to the
`first function must be included in the content, and it is the
`samefirst function that is invoked later in the claim.” Id.
`at *4.
`
`The Board found that Ross teachesa 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 testimonyof Palo
`Alto’s expert that “in the pseudocodein 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.?
`
`AFFIRMED
`
`4 We have considered the other argumentsraised by
`Palo Alto on appeal and have found them to be without
`merit.
`
`

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`Case: 19-2151
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`Document:62
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`Page:1
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`Filed: 12/16/2020
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`Gnited States Court of Appeals
`for the Federal Circutt
`
`PALO ALTO NETWORKS, INC.,
`Appellant
`
`Vv.
`
`FINJAN, INC.,
`Appellee
`
`ANDREI IANCU, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARKOFFICE,
`Intervenor
`
`2019-2151
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2016-
`00151, IPR2016-01071.
`
`JUDGMENT
`
`THIS CAUSE having been considered,it is
`
`ORDERED AND ADJUDGED:
`
`

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`Case: 19-2151
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`AFFIRMED
`
`ENTERED BY ORDER OF THE COURT
`
`
`December16, 2020
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`

`

`
`
`Case: 19-2151 Page:1_Filed: 02/08/2021 Document:64
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`
`
`GAnited States Court of Appeals
`for the Sederal Circuit
`
`PALO ALTO NETWORKS,INC.,
`Appellant
`
`Vv.
`
`FINJAN,INC.,
`Appellee
`
`ANDREW HIRSHFELD, PERFORMING THE
`FUNCTIONS AND DUTIES OF THE UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR
`OF THE UNITED STATES PATENT AND
`TRADEMARK OFFICE,
`Intervenor
`
`2019-2151
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2016-
`00151, IPR2016-01071.
`
`MANDATE
`
`In accordance with the judgmentof this Court, entered
`December 16, 2020, and pursuant to Rule 41 of the Federal
`Rules of Appellate Procedure,
`the formal mandate is
`hereby issued.
`
`February 8, 2021
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`