Fed. Circ. Affirms Validity Of Finjan Antivirus Patent
Share us on: By Kevin Penton
Law360 (November 19, 2018, 7:47 PM EST) -- The Federal Circuit on Monday affirmed the Patent Trial and Appeal Board's determination that a Finjan Inc. patent that covers computer virus protection is valid, while asking the board in a related case brought by Palo Alto Networks Inc. to review claims of the same patent that it originally opted not to examine.
The three-judge appellate panel agreed with the PTAB's determination that Palo Alto failed to establish in one of the PTAB inter partes reviews that the patent's asserted claims would have been obvious to an ordinarily skilled artisan because of a combination of prior art, while the Federal Circuit vacated the board's validity decision in the second case because the board picked and chose which claims from the petition to review, according to Monday's opinion.
The patent covers a system that examines content received over a computer network for viruses or other nefarious content and that halts the material's input should it be deemed unsafe, according to the opinion.
Palo Alto challenged the PTAB's construction of the term "invoke," arguing that the board erred when it determined that prior art does not disclose a certain limitation, according to the opinion. The Federal Circuit disagreed, holding that the board did not construe the term in an overly broad way, according to Monday's opinion.
"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," the opinion reads.
The Federal Circuit sent the related case back to the PTAB, noting that under the U.S. Supreme Court's April decision in SAS Institute Inc. v. Iancu , the board may no longer pick and choose which claims from a petition it will institute a review for and which it will not.
Finjan filed a complaint in the Northern District of California in November 2014 claiming that Palo Alto's products infringe its patent, according to court documents. Palo Alto challenged the patent before the PTAB in November 2015, and the board issued its decisions in March 2017, according to the documents.
Counsel for the parties could not be reached for comment on Monday.
U.S. Circuit Judges Jimmie V. Reyna, Alvin A. Schall and Kara F. Stoll sat on the panel for the Federal Circuit.
The patent-in-suit is U.S. Patent Number 8,141,154.
Palo Alto is represented by Orion Armon of Cooley LLP.
Finjan is represented by James R. Hannah and Paul J. Andre of Kramer Levin Naftalis & Frankel LLP.
The cases are Palo Alto Networks Inc. v. Finjan Inc., case numbers 17-2314 and 17-2315, in the U.S. Court of Appeals for the Federal Circuit.
