Docket Nos. 2017-2314-15 (IPR2015-01979, IPR2016-00151, -00919, -01071)
REYNA, SCHALL, STOLL
Nov. 19, 2018 (Non-precedential)
Brief summary: Board decision in -00151 vacated and remanded for consideration of all grounds raised in PA’s IPR petition under SAS (US 2018); decision in -00179 IPR FWD affirmed.
Summary: Palo Alto (PA) appealed PTAB final written decisions (FWDs) upholding the patentability (i.e., no obviousness) of Finjan’s US 8,141,154 directed to computer virus protection in IPR2015-01979 and IPR2016-00151. The claims require an inspection step as the “first function” and “second function” being “when, having been deemed safe, the content is actually run.” In the -00151 IPR, the PA petitioned for review of claims 1-12 based on two different grounds (one for claims 1-8, 10 and 11, the other for claims 9 and 12). The Board instituted review of claims 1-8, 10 and 11 but not claims 9 and 12. Under two different claim constructions of the “call to a first function” (original and later updated), the Board found the prior art (Ross) did not disclose that first function and, therefore, claims 1-8, 10 and 11 were not shown to be unpatentable. The FC panel explained that “[p]rior to oral argument in this appeal, Palo Alto notified the court that in light of SAS” (US 2018, holding 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 challenged; and ‘the grounds on which the challenge to each claim is based’”) “it was seeking vacatur and remand of” the -00151 decision “on grounds of partial institution.” The FC panel agreed with PA, and vacated and remanded the -00151 FWD for review of the non-instituted claims.
In the -00179 IPR, PA petitioned for IPR of claims 1-5 and claims 6-8, 10, and 11 (two different grounds) as obvious and the Board instituted IPR on all grounds. The Board construed “content” and “call to a first function” and “was ‘not persuaded that Khazan teaches the limitation of invoking the second function only if the invocation is safe’”. PA argued the Board construed the terms differently in this IPR than in the -00151 IPR but the Board decided no change was required because “it had ‘not been directed to any particular issue that [it] misapprehended or overlooked”. PA argued in this appeal that the Board erroneously construed “invoke”, and that it “is both inconsistent with the Board’s use of the term in the -00151 IPR, and incorrect under the broadest reasonable interpretation standard” (note: the Phillips standard appies to all petitions filed on or after Nov. 13, 2018). The FC panel explained that “[t]he ultimate construction of the claim is a legal question…reviewed de novo” (Info-Hold, FC 2015; Teva, US 2015 (“[c]laim construction based solely upon intrinsic evidence is a matter of law reviewed de novo”)). The FC panel also explained that “[t]he Supreme Court has emphasized the ‘importance of uniformity in the treatment of a given patent’” (Markman, US 1996), and that this “is similarly important when construing claims of the same patent across different IPR proceedings.” However, since the -00151 FWD was vacated, the FC panel found PA’s argument on this point moot but considered its claim construction arguments “that do not wholly rely on the -00151 IPR.” And the FC panel concluded the Board did not err in its construction (e.g., “neither Palo Alto nor Finjan sought construction of the ‘invoke’ terms during the -01979 IPR”; Owens, FC 2017 (“claims are plainly not so limited” as “the preferred embodiments”)). Thus, the FC panel affirmed the Board’s -00179 FWD.