Finjan, Inc. v. Cisco Systems, Inc. ( 2020 )

Case: 19-2074 Document: 56 Page: 1 Filed: 12/30/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FINJAN, INC.,
Appellant
v.
CISCO SYSTEMS, INC.,
Cross-Appellant
______________________
2019-2074, 2019-2146
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00391.
______________________
Decided: December 30, 2020
______________________
JAMES R. HANNAH, Kramer Levin Naftalis & Frankel
LLP, Menlo Park, CA, for appellant. Also represented by
PAUL J. ANDRE; JEFFREY PRICE, New York, NY.
PATRICK D. MCPHERSON, Duane Morris LLP, Washing-
ton, DC, for cross-appellant. Also represented by PATRICK
C. MULDOON; MATTHEW CHRISTOPHER GAUDET, Atlanta,
GA; JOSEPH POWERS, Philadelphia, PA.
______________________
Case: 19-2074 Document: 56 Page: 2 Filed: 12/30/2020
2 FINJAN, INC. v. CISCO SYSTEMS, INC.
Before LOURIE, REYNA, and WALLACH, Circuit Judges.
WALLACH, Circuit Judge.
Cisco Systems, Inc. (“Cisco”) sought inter partes review
(“IPR”) of claims 1–4, 8, and 11–14 (“the Challenged
Claims”) of Finjan, Inc.’s (“Finjan”) U.S. Patent
No. 7,647,633 (“the ’633 patent”). The U.S. Patent and
Trademark Office’s Patent Trial and Appeal Board
(“PTAB”) issued a final written decision concluding that
Cisco “ha[d] shown by a preponderance of the evidence that
claims 1–4, 8, and 11–13 of the ’633 patent are unpatenta-
ble” as obvious, but “ha[d] not shown by a preponderance
of the evidence that [independent] claim 14 of the ’633 pa-
tent is unpatentable” as obvious. Cisco Sys., Inc. v. Finjan,
Inc., No. IPR2018-00391, 2019 WL 2237141, at *1 (P.T.A.B.
May 23, 2019).
Finjan appeals and Cisco cross-appeals. We have ju-
risdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). We affirm.
BACKGROUND
I. The ’633 Patent
Entitled “Malicious Mobile Code Runtime Monitoring
System and Methods,” the ’633 patent “relates generally to
computer networks, and more particularly” to “a system
and methods for protecting network-connectable devices
from undesirable downloadable operation.” ’633 patent
col. 1 ll. 30–33. The ’633 patent “provides protection sys-
tems and methods capable of protecting . . . network acces-
sible devices or processes,” such as personal computers,
“from harmful, undesirable, suspicious or other ‘malicious’
operations that might otherwise be effectuated by remotely
operable code,” such as computer viruses. Id. col. 2 ll. 20–
25; see id. col. 1 ll. 40–44 (noting that “the Internet and
other public networks have . . . become a major source of
potentially system-fatal or otherwise damaging computer
code commonly referred to as ‘viruses’”). The ’633 patent
discloses “embodiments” that first “determin[e], within one
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FINJAN, INC. v. CISCO SYSTEMS, INC. 3
or more network ‘servers’ . . . whether received information
includes executable code”—referred to as a “Down-
loadable”—then, based on that determination, “deliver[]
static, configurable, and/or extensible remotely operable
protection [code or] policies” to the location of the Down-
loadable, and “caus[e] the mobile protection code to be exe-
cuted within a Downloadable-destination in a manner that
enables various Downloadable operations to be detected,
intercepted or further responded to via protection opera-
tions.” Id. col. 2 ll. 39–55; see id. col. 1 ll. 60–66 (providing
that “[d]ownloadable information” may include “distribut-
able components (e.g.[,] Java™ applets and JavaScript
scripts, ActiveX™ controls, Visual Basic, add-ins and/or
others)” and “application programs, Trojan horses, multi-
ple compressed programs such as zip or meta files, among
others”), col. 2 ll. 28–33 (similar).
Independent claims 1 and 14, and claims 2 and 3 of the
’633 patent, are illustrative. Independent claim 1 recites:
A computer processor-based method, comprising:
receiving, by a computer, downloadable-in-
formation;
determining, by the computer, whether the
downloadable-information includes execut-
able code; and
based upon the determination, transmit-
ting from the computer mobile protection
code to at least one information-destination
of the downloadable-information, if the
downloadable-information is determined to
include executable code.
Id. col. 20 ll. 54–62. Claim 2 depends from independent
claim 1, and provides that “receiving includes monitoring
received information of an information re-communicator.”
Id. col. 20 ll. 63–65. Claim 3, which depends from claim 2,
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4 FINJAN, INC. v. CISCO SYSTEMS, INC.
provides that claim 2’s “information re-communicator is a
network server.” Id. col. 20 ll. 66–67.
Independent claim 14 recites:
A computer program product, comprising a com-
puter usable medium having a computer readable
program code therein, the computer readable pro-
gram code adapted to be executed for computer se-
curity, the method comprising:
providing a system, wherein the system
comprises distinct software modules, and
wherein the distinct software modules com-
prise an information re-communicator and
a mobile code executor;
receiving, at the information re-communi-
cator, downloadable-information including
executable code; and
causing mobile protection code to be exe-
cuted by the mobile code executor at a
downloadable-information destination
such that one or more operations of the ex-
ecutable code at the destination, if at-
tempted, will be processed by the mobile
protection code.
Id. col. 21 l. 58–col. 22 l. 5.
II. The Prior Art
A. Hanson
Entitled “Reverse Proxy Server,” WIPO Pub. No.
WO 98/31124 (“Hanson”) is an international application
published under the Patent Cooperation Treaty, and “re-
lates to client/server computer communications over an in-
ternetwork system and, more particularly, to improved
access of firewall protected servers.” J.A. 833; see J.A. 831–
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FINJAN, INC. v. CISCO SYSTEMS, INC. 5
52 (Hanson). 1 Hanson discloses “a method and system for
securely accessing servers” over a network by providing
“secure bi-directional data packet communication between”
an external “client . . . and [internal] servers,” with the
servers “protected by a firewall . . . and bastion server.”
J.A. 835–36. The bastion server “includes a processor and
memory like typical servers, but also includes an internal
[IP] address file . . . and a rules file . . . stored in memory.”
J.A. 836. 2
Hanson teaches that its bastion server uses its address
and rule files to limit “external access to [the internal serv-
ers] through the firewall,” J.A. 837, specifically, by check-
ing both outgoing and incoming “data packet[s]” against its
internal address file and rules file, J.A. 838. Data packets
are routed through the bastion server. J.A. 838. Incoming
data packets are addressed to an internal server name.
J.A. 838. The bastion server receives the data packet and,
first, “determines whether a match exists between the
server name and an internal address located in the inter-
nal address file.” J.A. 838. “If no match is found, the bas-
tion” server notifies the client that the “packet cannot be
delivered.” J.A. 838. If the address is found, the bastion
server then “check[s]” “the received packet . . . against [the]
rules contained within the rules file.” J.A. 838. If the data
packet “fails to pass” any of the rules, the bastion server
notifies the client and does not deliver the packet. J.A. 838.
“[I]f the received packet passes all the rules contained
within the rules file, a connection is made between the cli-
ent and the [addressed internal] server” and the packet is
delivered. J.A. 838. “The rule checks include certain
1 Hanson defines “internetwork” as “the joining of
multiple computer networks, both similar and dissimilar,
by means of gateways or routers that facilitate data trans-
fer and conversion from various networks.” J.A. 833.
2 A “bastion server” is “a special-purpose computer
on a network . . . specifically designed and configured to
protect against unauthorized access.” J.A. 775.
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6 FINJAN, INC. v. CISCO SYSTEMS, INC.
security [check] programs that operate upon received data
packets and, particularly, data packets that are or include
programs.” J.A. 838; see J.A. 842–43 (providing that these
programs may be “J[ava™] applets” or “ActiveX[™] pro-
grams which are intended to be run on the destination cli-
ent or server”). Hanson explains that the “security check
program” does this by “tagging” or “attaching itself to the
[executable code] being sent in the data packet,” such that,
when the executable code is “run at the destination client
or server,” the security check program “runs simultane-
ously” and “performs [the necessary] security operations.”
J.A. 842, 845. Outgoing packets undergo a similar check
through the bastion server. J.A. 840.
B. Hyppönen
Entitled “Computer Virus Screening,” U.S. Patent
No. 6,577,920 (“Hyppönen”) “relates to the screening of
computer data for viruses and more particularly to the
screening of computer data for macro viruses.” J.A. 857;
see J.A. 854–61 (Hyppönen). Hyppönen defines “macros”
as “small executable programs written in a simple high
level language” that provide, for example, “customized
menu bars” or “document templates” in word processing
programs. J.A. 857.
Hyppönen discloses a “method of screening a software
file for viral infection” using three databases—one “of
known macro virus signatures, a second . . . of known and
certified commercial macro signatures, and a third . . . of
known and certified local macro signatures.” J.A. 854.
Hyppönen teaches that a software file may be “scanned to
determine whether or not [it] contains a macro.” J.A. 854.
“If [it does] contain[] a macro,” then the method determines
“a signature for the macro” such that it may be “screened
against the signatures contained in [the three] databases”
of known signatures. J.A. 854. If the macro is a known
virus, the file system event is suspended and the user
alerted. J.A. 859. If the macro is a known legitimate
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FINJAN, INC. v. CISCO SYSTEMS, INC. 7
program, it is allowed to proceed. J.A. 859. If the macro is
unknown and unverifiable, the file system event is sus-
pended and “a report is sent to the network manager” with
“a copy of the [unknown] macro.” J.A. 859. The databases
may be updated as more macros are encountered or become
available. J.A. 857. Hyppönen suggests that its system
may be modified “to screen files for viruses other than
macro viruses.” J.A. 859.
DISCUSSION
Finjan argues that the PTAB made a series of claim
construction errors, and that, under the proper construc-
tion, claims 1–4, 8, and 11–13 of the ’633 patent are not
obvious over Hanson and Hyppönen. Appellant’s Br. 20–
36. On cross-appeal, Cisco argues that the PTAB’s conclu-
sion that independent claim 14 of the ’633 patent is not ob-
vious over Hanson and Hyppönen is unsupported by
substantial evidence. Cross-appellant’s Br. 40. We ad-
dress each argument in turn.
I. Standard of Review
“We review the PTAB’s factual findings for substantial
evidence and its legal conclusions de novo.” Redline Detec-
tion, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed.
Cir. 2015) (citation omitted). “Substantial evidence is
something less than the weight of the evidence but more
than a mere scintilla of evidence,” meaning that “[i]t is such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion.” In re NuVasive, Inc., 842
F.3d 1376, 1379–80 (Fed. Cir. 2016) (internal quotation
marks and citations omitted). “If two inconsistent conclu-
sions may reasonably be drawn from the evidence in rec-
ord, the PTAB’s decision to favor one conclusion over the
other is the epitome of a decision that must be sustained
upon review for substantial evidence.” Elbit Sys. of Am.,
LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356 (Fed.
Cir. 2018) (internal quotation marks, brackets, and cita-
tion omitted).
Case: 19-2074 Document: 56 Page: 8 Filed: 12/30/2020
8 FINJAN, INC. v. CISCO SYSTEMS, INC.
II. Claim Construction
A. Legal Standard
“[C]laim construction must begin with the words of the
claims themselves.” Amgen Inc. v. Hoechst Marion Rous-
sel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006) (citation
omitted). “[W]ords of a claim are generally given their or-
dinary and customary meaning,” i.e., “the meaning that the
term would have to a person of ordinary skill in the art
[(‘PHOSITA’)] in question at the time of the invention[.]”
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed.
Cir. 2005) (en banc) (internal quotation marks and citation
omitted). 3 “The words used in the claims are interpreted
in light of the intrinsic evidence of record, including the
written description, the drawings, and the prosecution his-
tory[.]” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
1324 (Fed. Cir. 2002) (citation omitted). The PHOSITA “is
deemed to read [a] claim term not only in the context of the
particular claim in which [it] appears, but in the context of
the entire patent, including the specification.” Phillips,
415 F.3d at 1313. 4 Prosecution history may also be looked
3 Because the ’633 patent expired between conclu-
sion of the IPR and this appeal, see Appellant’s Br. 20 (not-
ing that the ’633 patent expired in November 2019); see
generally Cross-appellant’s Br. (discussing neither expira-
tion of the ’633 patent nor the appropriate claim construc-
tion standard), we construe the Challenged Claims in
accordance with the standard set forth in Phillips, 415 F.3d
at 1312–13, rather than the broadest reasonable interpre-
tation (“BRI”) as applied by the PTAB, Cisco, 2019 WL
2237141, at *2; see In re Rambus, Inc., 753 F.3d 1253, 1256
(Fed. Cir. 2014) (providing that, once a patent has expired,
“we apply the Phillips claim construction standards”).
4 The “specification includes both the written de-
scription and the claims of the patent.” Cisco Sys., Inc. v.
TQ Delta, LLC, 928 F.3d 1359, 1362 (Fed. Cir. 2019) (inter-
nal quotation marks and citation omitted).
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FINJAN, INC. v. CISCO SYSTEMS, INC. 9
to in order to supply additional evidence of a claim term’s
intended meaning. See Home Diagnostics, Inc. v. Lifescan,
Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004). 5 “A patent’s
specification, together with its prosecution history, consti-
tutes intrinsic evidence to which the PTAB gives priority
when it construes claims.” Knowles Elecs. LLC v. Cirrus
Logic, Inc., 883 F.3d 1358, 1361−62 (Fed. Cir. 2018) (cita-
tion omitted). We review the PTAB’s assessment of the in-
trinsic evidence de novo and extrinsic evidence for
substantial evidence. See id. at 1362.
B. The PTAB Properly Construed the Term
“Information Re-Communicator”
The PTAB concluded that the “information re-commu-
nicator” as recited in claims 2 and 3 “is not limited to re-
ceiving downloadable-information from an external
network.” Cisco, 2019 WL 2237141, at *4. Finjan argues
that, by not requiring that the received downloadable in-
formation come “from an external network,” the PTAB’s
construction is “overbroad and inconsistent with the speci-
fication and [expert] testimony.” Appellant’s Br. 33–34. 6
We disagree with Finjan.
The PTAB properly construed the term “information
re-communicator.” Consistent with claim construction
principles, we look first to the language of the claims,
5 A patent’s prosecution history “consists of the com-
plete record of the proceedings before the [US]PTO,”
providing “evidence of how the [US]PTO and the inventor
understood the patent.” Phillips, 415 F.3d at 1317 (citation
omitted).
6 Finjan refers to the recited “information re-commu-
nicator” as the “information re-communicator/monitor.”
See, e.g., Appellant’s Br. 34. Finjan does not raise any ar-
guments specific to the term “monitor.” See generally Ap-
pellant’s Br. Consistent with the PTAB, we discuss this
term as the “information re-communicator.” See, e.g.,
Cisco, 2019 WL 2237141, at *4.
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10 FINJAN, INC. v. CISCO SYSTEMS, INC.
followed by the language of the specification and prosecu-
tion history. See Phillips, 415 F.3d at 1315–17. Independ-
ent claim 1 recites “[a] computer processor based method”
in which “a computer” “receiv[es] . . . downloadable infor-
mation.” ’633 patent col. 20 ll. 54–56. Dependent claims 2
and 3 further provide that this “receiving” may be done by
an “information re-communicator” within the computer, id.
col. 20 ll. 63–65, and the “information re-communicator”
may be a “network server,” id. col. 20 ll. 66–67. The claim
language does not, however, specify from where the “down-
loadable information” is “receiv[ed].” See id. col. 20 ll. 64–
67. This indicates that the “information re-communicator”
is not limited to receiving “downloadable information” from
an external network. See Phillips, 415 F.3d at 1314 (“[T]he
claims themselves provide substantial guidance as to the
meaning of particular claim terms.”). Accordingly, the
PTAB properly concluded that the “claims are silent as to
the source of the ‘downloadable-information,’” and, as such,
the plain meaning of the claim language” does not require
that source be “an external network.” Cisco, 2019
WL 2237141, at *4.
We next turn to the specification. See Phillips, 415
F.3d at 1315 (“[C]laims must be read in view of the specifi-
cation, of which they are a part.” (internal quotation marks
and citation omitted)). The specification repeatedly de-
scribes the “re-communicator” as a “server” or “firewall.”
See, e.g., ’633 patent, Abstract (disclosing embodiments
with “a server, firewall or other suitable ‘re-communica-
tor’”); id. col. 5 ll. 34–36 (“Embodiments provide, within one
or more ‘servers’ (e.g.[,] firewalls, resources, gateways,
email relays or other information re-communicating de-
vices)[.]”). The specification provides that “re-communica-
tors” include “one or more network servers, firewalls or
other network connectable information re-communicating
devices.” Id. col. 2 ll. 58–62. Thus, based on the specifica-
tion, “information re-communicators” are devices that re-
communicate received information, regardless of whether
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FINJAN, INC. v. CISCO SYSTEMS, INC. 11
that information comes from an external network or other
source. The specification does not narrow the term “infor-
mation re-communicator,” and instead, supports the con-
clusion that the “information re-communicator” is not
limited to receiving “downloadable information” from an
external network. Accordingly, the PTAB properly con-
cluded that the specification “does not restrict” the “infor-
mation re-communicator” to “processing the downloadable-
information solely” from “external networks.” Cisco, 2019
WL 2237141, at *4. 7
Finjan’s primary counterargument is unpersuasive.
Finjan “does not disagree” that “(1) the claims are silent as
to the source of the downloadable-information and (2) the
[s]pecification describes consistently a server or a firewall
as a re-communicator.” Appellant’s Br. 33 (internal quota-
tion marks and citation omitted). Finjan nonetheless urges
us to adopt an additional limitation to the term because,
based on expert testimony, “a P[H]OS[IT]A would under-
stand . . . ‘information re-communicator’” to require it. Id.;
see id. at 34 (citing J.A. 2302 (Finjan’s expert testimony),
2369 (Cisco’s expert deposition)). This argument is without
merit. First, while “extrinsic evidence,” such as expert tes-
timony, “can shed useful light on the relevant art,” “it is
less significant than the intrinsic record[.]” Phillips, 415
F.3d at 1317. Finjan agrees that the claims are silent as to
whether “downloadable-information” must come from an
external network and that the specification does not re-
quire it. Appellant’s Br. 33. Where, as here, “an analysis
of the intrinsic evidence alone will resolve any ambiguity
in [the] disputed claim term,” it is “improper to rely on ex-
trinsic evidence,” such as expert testimony, to introduce
7 Neither party argues that the prosecution history
illuminates the meaning of “information re-communica-
tor.” Accordingly, we do not consider it here. See Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996) (providing that we will consider the prosecution
history “if in evidence”).
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12 FINJAN, INC. v. CISCO SYSTEMS, INC.
ambiguity. Vitronics, 90 F.3d at 1583; see Phillips, 415
F.3d at 1318 (“[A] court should discount any expert testi-
mony that is clearly at odds with the claim construction
mandated by the claims themselves, the written descrip-
tion, and the prosecution history[.]”).
Second, Finjan’s proffered expert testimony does not
persuasively support its argument that the term “infor-
mation re-communicator” must be narrowed to receiving
“downloadable-information from” only “an external net-
work.” Appellant’s Br. 33. Finjan’s expert testimony is
premised on exemplary embodiments of the ’633 patent.
J.A. 2302–04. Finjan’s expert explains that the ’633 pa-
tent’s “information re-communicator” receives “down-
loadable-information from an external network” because
“the ’633 patent describes” an exemplary embodiment with
“a network that includes subsystems . . . , which are sepa-
rated via [an] external network . . . from resource serv-
ers[.]” J.A. 2302–03 (citing ’633 patent col. 5 l. 63–col. 6
l. 33, Figs. 1a, 1b, 1c); see ’633 patent col. 5 ll. 57–62 (ex-
plaining that “F[igs]. 1a through 1c illustrate a computer
network system . . . according to an embodiment of the in-
vention. F[ig]. 1a broadly illustrates [a] system . . . , while
F[igs]. 1b and 1c illustrate exemplary protectable subsys-
tem implementations[.]”), col. 5 l. 63–col. 6 l. 33 (describing
Figs. 1a, 1b, and 1c). That is, Finjan’s expert seeks to im-
properly read “limitations from the specification . . . into
the patent claims.” Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Grp., Inc., 262 F.3d 1258, 1270 (Fed. Cir. 2001).
Finjan also asserts that Cisco’s expert “agreed that the
claimed ‘information re-communicator . . .’ must receive
downloadable information over an external network.” Ap-
pellant’s Br. at 18; see id. at 34 (similar). Finjan is incor-
rect. Cisco’s expert declined to “construe any terms,” but
noted, when asked “[w]hat problem the ’633 patent” tries
to “solve,” that he “underst[oo]d from reading the patent
that the re[-]communicator receives the downloadable in-
formation from the external network,” with
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FINJAN, INC. v. CISCO SYSTEMS, INC. 13
“downloadables” only “usually” “downloaded from an exter-
nal network.” J.A. 2368–69 (without citation or specific ref-
erence). Even if we were to interpret this statement as
requiring “an external network” as Finjan urges, “[w]here
the patent documents are unambiguous, expert testimony
regarding the meaning of a claim is entitled to no weight.”
Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193,
1212 (Fed. Cir. 2002); Vitronics, 90 F.3d at 1584 (“[E]xpert
testimony . . . often only indicates what a particular expert
believes a term means[.]”). The PTAB, therefore, properly
construed the term “information re-communicator” as “not
limited to receiving downloadable-information from an ex-
ternal network.” Cisco, 2019 WL 2237141, at *4; see In re
CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1341 (Fed. Cir. 2016)
(“In many cases, the claim construction will be the same
under the Phillips and BRI standards.”). 8
II. Obviousness
A. Legal Standard
A patent claim is invalid “if the differences between the
subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made to a
8 Finjan’s argument that Hanson “does not disclose
an ‘information re-communicator,’” is predicated on us
adopting Finjan’s construction of “information re-commu-
nicator.” Appellant’s Br. 36 (arguing that Hanson “does
not disclose an ‘information re-communicator . . .’ under
the proper construction”). Because we do not adopt Fin-
jan’s construction, we need not address Finjan’s conditional
argument. See Knowles Elecs. LLC v. Iancu, 886 F.3d
1369, 1373 n.3 (Fed. Cir. 2018) (“Because we conclude that
the PTAB did not err in its construction of the disputed
limitation, we need not address the appellant’s conditional
arguments as to the PTAB’s unpatentability determina-
tions.” (internal quotation marks, brackets, and citation
omitted)).
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14 FINJAN, INC. v. CISCO SYSTEMS, INC.
[PHOSITA].” 35 U.S.C. § 103(a) (2006). 9 Obviousness “is
a question of law based on underlying findings of fact.” See
In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Those
underlying findings of fact include: (1) “the scope and con-
tent of the prior art,” (2) “differences between the prior art
and the claims at issue,” (3) “the level of ordinary skill in
the pertinent art,” and (4) the presence of objective indicia
of nonobviousness such “as commercial success, long felt
but unsolved needs, failure of others,” and unexpected re-
sults. Graham v. John Deere Co. of Kan. City, 383 U.S. 1,
17 (1966); see United States v. Adams, 383 U.S. 39, 50–52
(1966). In assessing the prior art, the PTAB also “con-
sider[s] whether a PHOSITA would have been motivated
to combine the prior art to achieve the claimed invention
and whether there would have been a reasonable expecta-
tion of success in doing so.” In re Warsaw Orthopedic, Inc.,
832 F.3d 1327, 1333 (Fed. Cir. 2016) (internal quotation
marks, brackets, and citation omitted). “What a prior art
reference teaches and whether a [PHOSITA] would have
been motivated to combine references are questions of
fact.” Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d
1034, 1051 (Fed. Cir. 2016) (en banc).
B. Substantial Evidence Supports the PTAB’s Finding
that Hanson Discloses “Downloadable-Information” as
Recited in Independent Claim 1
The PTAB concluded that it “need not construe the
term” “downloadable-information,” because even if it
9 Congress amended § 103 when it enacted the
Leahy-Smith America Invents Act (“AIA”). Pub. L.
No. 112-29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the application that led to the ’633 patent never con-
tained (1) a claim having an effective filing date on or after
March 16, 2013, or (2) a reference under 35 U.S.C. §§ 120,
121, or 365(c) to any patent or application that ever con-
tained such a claim, the pre-AIA § 103 applies. See AIA,
§ 3(n)(1), 125 Stat. at 293; ’633 patent, Cover Page.
Case: 19-2074 Document: 56 Page: 15 Filed: 12/30/2020
FINJAN, INC. v. CISCO SYSTEMS, INC. 15
adopted Finjan’s proposed construction, Cisco “ha[d] shown
that prior art teaches the limitation.” Cisco, 2019
WL 2237141, at *5; see id. (noting that Finjan defined the
term “downloadable-information” as “information which is
downloaded from a source computer which may or may not
include executable code” (quoting J.A. 305 (Patent Owner’s
Response)). The PTAB then found that “Hanson’s bastion
server receives ‘downloadable-information’” and, therefore,
Hanson teaches “receiving . . . downloadable-information”
as recited in independent claim 1. Id. at *13. Finjan ar-
gues that the PTAB’s construction of “downloadable-infor-
mation” was “premised on a very clear misinterpretation of
Finjan’s argument.” Appellant’s Br. 29. Finjan asserts
that the PTAB’s “failure to address Finjan’s actual argu-
ment means that” the PTAB’s finding that Hanson teaches
“receiving . . . downloadable-information” is unsupported
by substantial evidence. Id. at 31. We disagree with Fin-
jan.
Substantial evidence supports the PTAB’s finding that
Hanson teaches “receiving . . . downloadable-information.”
Independent claim 1 recites a “computer processor-based
method,” in which “a computer” first “receiv[es] . . . down-
loadable-information,” then “determin[es] . . . whether the
downloadable-information includes executable code,” and
last, “if the downloadable-information is determined to in-
clude executable code,” “transmit[s] . . . [a] mobile protec-
tion code to [an] information-destination of the
downloadable-information.” ’633 patent col. 20 ll. 54–62.
“Downloadable-information” is “information which is
downloaded from a source computer which may or may not
include executable code.” Cisco, 2019 WL 2237141, at *5
(quoting J.A. 305); see Appellant’s Br. 27–28 (offering the
same definition); J.A. 305 (same).
Hanson discloses, in relevant part, that its bastion
server—a computer, J.A. 836; see J.A. 775—receives both
incoming (“received”) and outgoing (“reply”) data packets
for and from a client and checks these data packets against
Case: 19-2074 Document: 56 Page: 16 Filed: 12/30/2020
16 FINJAN, INC. v. CISCO SYSTEMS, INC.
address and rules files, J.A. 838. Hanson explains that, for
received packets, its bastion server runs “rule checks” that
“include certain security [check] programs that operate
upon received data packets and, particularly, data packets
that are or include programs.” J.A. 838. These programs
may be, for example, “J[ava™] applets” or “ActiveX[™] pro-
grams which are intended to be run on the destination cli-
ent or server.” J.A. 842–43. The bastion server performs
“[s]imilar” checks on “outgoing” or “reply data packet[s].”
J.A. 840. Both Java™ applets and ActiveX™ programs are
“downloadable” information. J.A. 842–43; see ’633 patent
col. 1 ll. 60–63, col. 2 ll. 28–33. Hanson, therefore, teaches
“a computer,” specifically its bastion server, that “re-
ceive[s] . . . downloadable-information,” such as Java™ ap-
plets and ActiveX™ programs, in both incoming and
outgoing data packets. ’633 patent col. 20 ll. 54–62;
J.A. 842–43. Accordingly, substantial evidence supports
the PTAB’s finding that Hanson discloses “the transmit-
ting step” of independent claim 1, “a computer” that “re-
ceive[s] . . . downloadable-information.” Cisco, 2019
WL 2237141, at *12–13; see NuVasive, 842 F.3d at 1380
(“[Substantial evidence] is such relevant evidence as a rea-
sonable mind might accept as adequate to support a con-
clusion.” (internal quotation marks and citations omitted)).
Finjan’s counterarguments are unpersuasive. First, to
the extent Finjan tries to alter its proposed construction of
“downloadable-information” on appeal, see Appellant’s
Br. 27 (arguing that the PTAB’s “construction of ‘down-
loadable-information’ is overbroad”), its 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 in-
troduce new claim construction arguments on appeal or al-
ter the scope of the claim construction positions it took
below.”). To the extent Finjan argues that the PTAB mis-
understood its proposed claim construction, Appellant’s
Br. 31 (suggesting that the PTAB was “confused”), 32 (sug-
gesting that the PTAB “set up a strawman”), its argument
Case: 19-2074 Document: 56 Page: 17 Filed: 12/30/2020
FINJAN, INC. v. CISCO SYSTEMS, INC. 17
is without merit. Finjan argued, and continues to argue,
that “downloadable-information” is “information which is
downloaded from a source computer which may or may not
include executable code.” Appellant’s Br. 27–28; see
J.A. 305 (same). The PTAB adopted this construction ver-
batim. Cisco, 2019 WL 2237141, at *5. Any issue Finjan
takes with the PTAB’s understanding of what the prior art
teaches in light of its claim construction is a substantial
evidence challenge—“[w]hat is disclosed by a prior art ref-
erence is a question of fact.” Mettler-Toledo, Inc. v. B-Tek
Scales, LLC, 671 F.3d 1291, 1297 (Fed. Cir. 2012); see Ap-
pellant’s Br. 27 (arguing that the PTAB “ignored . . . evi-
dence” about the definition of downloadable information,
when it concluded Hanson “does not disclose ‘receiving
downloadable information’”).
Second, Finjan argues that the PTAB’s finding that
Hanson teaches “downloadable-information” is unsup-
ported by substantial evidence because the PTAB “con-
fused Finjan’s arguments regarding” what Hanson
discloses. Appellant’s Br. 31. The PTAB stated that Finjan
“characterizes [Hanson’s] reply data packets as a request
for server resources.” Cisco, 2019 WL 2237141, at *13 (cit-
ing J.A. 318 (Patent Owner’s Response)). Finjan asserts
that it actually argued that Hanson’s incoming, request
data packets are “requests for server resources and, conse-
quently, are not data that can be downloaded,” Appellant’s
Br. 30 (citing J.A. 318), while Hanson’s outgoing, reply data
packets are “outgoing” and therefore “are not . . . down-
loaded,” id. at 31 (citing J.A. 319). Finjan asserts that the
PTAB’s “failure to address Finjan’s actual argument means
that there is not even a scintilla of evidence supporting the
[PTAB’s] finding.” Id. at 31 (internal quotation marks and
citation omitted). Finjan is mistaken. The PTAB did in-
deed consider Finjan’s argument—it simply found it unper-
suasive. See Cisco, 2019 WL 2237141, at *13 (explaining
that, while Finjan had argued that “Hanson’s bastion
server does not receive ‘downloadable-information’
Case: 19-2074 Document: 56 Page: 18 Filed: 12/30/2020
18 FINJAN, INC. v. CISCO SYSTEMS, INC.
because . . . requests are not data that can be downloaded,”
this argument failed because “Hanson’s bastion server re-
ceives data packets . . . that may include executable pro-
grams,” and executable programs are examples of
“downloadable information”); see also id. (explaining that
Finjan’s arguments concerning Hanson’s reply data pack-
ets also failed because Hanson “describes the outgoing re-
ply data packets in the same vein as describing the
incoming data packet,” “plac[ing] emphasis” on “secure
two-way data communication,” not on differences between
incoming and outgoing packets). Further, that the PTAB
may have misstated that Finjan characterized Hanson’s
“reply data packets” as “a request,” does not alter the
PTAB’s finding that “Hanson’s bastion server receives data
packets . . . that may include executable programs,” both
incoming and outgoing, or undermine the substantial evi-
dence that supports that conclusion. Id.; see In re Watts,
354 F.3d 1362, 1369 (Fed. Cir. 2004) (“[T]he harmless error
rule applies to appeals from the [PTAB].”); Munoz v.
Strahm Farms, Inc., 69 F.3d 501, 504 (Fed. Cir. 1995) (“The
correction of an error must yield a different result in order
for that error to have been harmful and thus prejudice a
substantial right of a party.”). Accordingly, the PTAB’s
finding that Hanson teaches “downloadable information” is
supported by substantial evidence. 10
10Finjan also argues “Hanson in view of Hyppönen
does not disclose” “determining . . . whether the down-
loadable-information includes executable code.” Appel-
lant’s Br. 23; see ’633 patent col. 20 ll. 56–57 (independent
claim 1). While Finjan raised this argument in its prelim-
inary response, J.A. 237–38, it abandoned it in its Patent
Owner’s Response, J.A. 287–343; see Appellant’s Reply &
Resp. 7 (arguing that it was sufficient to raise the argu-
ment in its sur-reply below (citing J.A. 508–11)). Finjan
was on notice that such an omission would result in waiver.
J.A. 268 (PTAB Scheduling Order) (“The patent owner is
cautioned that any arguments for patentability not raised
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FINJAN, INC. v. CISCO SYSTEMS, INC. 19
C. Substantial Evidence Supports the PTAB’s Finding
that Hanson Does Not Disclose “Executable Code” as
Recited in Independent Claim 14
The PTAB concluded that Cisco “ha[d] not shown by a
preponderance of the evidence that [independent] claim 14
would have been obvious over Hanson.” Cisco, 2019 WL
2237141, at *17. The PTAB explained that Cisco had failed
to establish that Hanson discloses “causing mobile protec-
tion code to be executed . . . at a downloadable-information
destination such that one or more operations of the execut-
able code . . . , if attempted, will be processed by the mobile
protection code,” ’633 patent col. 22 ll. 1–5, because Cisco
had failed to show that Hanson teaches, as the ’633 patent
requires, that its “executable code” be “not modified” when
processed by its “bastion server,” Cisco, 2019 WL 2237141,
at *17. Cisco argues that the PTAB’s finding is unsup-
ported by substantial evidence because Hanson “does not
require [its] executable code to be modified,” Cross-appel-
lant’s Br. 41, and substantial evidence does not support the
conclusion Hanson’s executable code is “modified,” id. at
45. We disagree with Cisco.
Substantial evidence supports the PTAB’s finding that
Hanson does not disclose “executable code” as recited in in-
dependent claim 14. Independent claim 14 recites “causing
mobile protection code to be executed . . . at a down-
loadable-information destination such that one or more op-
erations of the executable code . . . , if attempted, will be
processed by the mobile protection code.” ’633 patent
col. 22 ll. 1–5. The PTAB concluded, and the parties do not
contest, that this limitation requires that “the executable
in the response will be deemed waived.”). The argument
is, accordingly, waived. See NuVasive, 842 F.3d at 1380–
81 (providing that an argument raised in a preliminary re-
sponse, but omitted in the patent owner’s response, despite
the PTAB’s “warn[ing] . . . that this would result in
waiver,” is “abandoned” and deemed “waived”).
Case: 19-2074 Document: 56 Page: 20 Filed: 12/30/2020
20 FINJAN, INC. v. CISCO SYSTEMS, INC.
code whose operations are processed by the mobile protec-
tion code at the destination is the same as the executable
code received, i.e., it undergoes no modification.” Cisco,
2019 WL 2237141, at *15; see Cross-appellant’s Br. 40; Ap-
pellant’s Reply & Resp. 16. Cisco argued that a PHOSITA
would have understood Hanson alone to teach this limita-
tion, J.A. 126 (Petition), 435–38 (Petitioner’s Reply); it has
not, however, proven that to be true, Cisco, 2019 WL
2237141, at *17. Hanson provides that its “bastion server”
has “security check program[s]” that “execute if the bastion
receives” executable code “as or in a data packet.” J.A. 842;
see J.A. 845. These security check programs “ensure[] that
the data within the data packet . . . is not destructive for
the intended recipient.” J.A. 842. The “security check pro-
gram” does this by “tagging” or “attaching itself to the [ex-
ecutable code] being sent in the data packet,” such that,
when the executable code is “run at the destination client
or server,” the security check program “runs simultane-
ously” and “performs [the necessary] security operations[.]”
J.A. 842; see J.A. 845. Cisco’s expert stated that Hanson’s
“tagging” or “attaching” were “well[-]known” “concatena-
tion methods, in which two items may be interleaved or
sent together in a packet or series of packets.” J.A. 1554–
55. In contrast, Finjan’s expert stated that a PHOSITA
would have understood Hanson’s “attaching” or “tagging”
to result in “modification” of the executable code.”
J.A. 2314; see J.A. 2317. Finjan’s expert explained that in
Hanson’s specific “attaching” process, a security check pro-
gram is “inserted” into “the data packet carrying” the exe-
cutable code, modifying it such that, when the executable
code is run, the security check program “alter[s] [the] oper-
ations” of the executable code and “override[s]” any de-
structive operations. J.A. 2314–15 (citing J.A. 844); see
J.A. 1761–62 (Cisco’s expert deposition) (explaining that
“concatenation” is “a logical term” meaning two packets “go
together,” that is, “are transferred as a pair,” and “[t]here
are many different ways you can do that”). The PTAB cred-
ited Finjan’s expert and found that Cisco had not
Case: 19-2074 Document: 56 Page: 21 Filed: 12/30/2020
FINJAN, INC. v. CISCO SYSTEMS, INC. 21
established that Hanson discloses running executable code
that was “not modified.” Cisco, 2019 WL 2237141, at *17.
The PTAB “was within its discretion to weigh the credibil-
ity of expert testimony.” Shoes by Firebug LLC v. Stride
Rite Children’s Grp., LLC, 962 F.3d 1362, 1372 (Fed. Cir.
2020). Accordingly, substantial evidence supports the
PTAB’s finding that Hanson does not teach processing “not
modified” executable code. See Celgene Corp. v. Peter, 931
F.3d 1342, 1352 (Fed. Cir. 2019) (“[S]ubstantial evidence
supports the [PTAB’s] assessment and weighing of this ev-
idence, and we decline to reweigh the evidence on appeal.”).
Cisco’s primary counterargument is unpersuasive.
Cisco argues that the PTAB erred because it “held Cisco to
a higher standard” than other petitioners, requiring
“Cisco . . . prove [a] negative—that [Hanson’s] executable
[code] was not modified[,] even though Hanson does not
disclose any modification[.]” Cross-appellant’s Br. 40. This
argument is without merit. The PTAB required that Cisco
prove what it pled—that Hanson teaches what independ-
ent claim 14 recites, “executable code” that “is not modi-
fied.” Cisco, 2019 WL 2237141, at *15. The PTAB did not
err by requiring that Cisco “have the burden of proving . . .
unpatentability by a preponderance of the evidence.” 35
U.S.C. § 316(e); see Novo Nordisk A/S v. Caraco Pharm.
Labs., Ltd., 719 F.3d 1346, 1352 (Fed. Cir. 2013) (“[A] party
challenging [a patent’s] validity bears the burden of prov-
ing the factual elements of invalidity[.]”). Cisco argues
that, because Hanson’s plain language “does not require
the executable code to be modified,” it discloses running ex-
ecutable code that is “not modified.” Appellant’s Br. 41.
This is insufficient. “Mere speculation is not substantial
evidence.” OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375,
1382 (Fed. Cir. 2019) (internal quotation marks and cita-
tion omitted). Accordingly, the PTAB’s conclusion that
Cisco failed to establish that independent claim 14 of the
’633 patent would have been obvious over Hanson, is sup-
ported by substantial evidence.
Case: 19-2074 Document: 56 Page: 22 Filed: 12/30/2020
22 FINJAN, INC. v. CISCO SYSTEMS, INC.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. 11 Accordingly, the Final
11 Finjan also proposes a construction of “mobile pro-
tection code” as recited in independent claim 1. Appellant’s
Br. 20. Finjan did not, however, raise this argument before
the PTAB. J.A. 305–06 (Patent Owner’s Response). It is
therefore waived. See Conoco, 460 F.3d at 1358. Finjan
argues we should nonetheless consider its new construc-
tion, asserting that “the circumstances . . . warrant deviat-
ing from th[e] [general] principle” of waiver. Appellant’s
Br. 22. Finjan has not, however, shown any “exceptional
circumstances” to warrant consideration of its untimely ar-
gument. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed.
Cir. 2012).
First, Finjan asserts that Cisco “would not be preju-
diced” because Cisco “advocated” for the same “construc-
tion” in parallel district court proceedings. Appellant’s
Br. 21. Finjan’s assertion is, at best, inaccurate. J.A. 2957
(Cisco’s Responsive Supplemental Claim Construction
Brief) (arguing, before the district court, that construction
of “mobile protection code” was “unnecessary,” but stipulat-
ing to Finjan’s construction “in th[at] case to eliminate the
dispute”). Further, whatever construction Cisco subse-
quently stipulated to in other proceedings, Finjan must
have “timely present[ed] [its] arguments to the [PTAB].”
Baxter, 678 F.3d at 1362.
Second, Finjan argues that we should consider its
waived claim construction because, in effect, we owe no def-
erence to the PTAB. Appellant’s Br. 22–23; see id. at 22
(noting our de novo standard of review for claim construc-
tion), 22–23 (noting that, because the ’633 patent expired
between the PTAB’s decision and our review, our analysis
shifts from BRI to Phillips), 23 (noting the “strange circum-
stances” of the PTAB’s decision—specifically, that the
PTAB changed its mind about the efficacy of Finjan’s argu-
ments between institution and its final written decision).
Case: 19-2074 Document: 56 Page: 23 Filed: 12/30/2020
FINJAN, INC. v. CISCO SYSTEMS, INC. 23
Written Decision of the U.S. Patent and Trademark Of-
fice’s Patent Trial and Appeal Board, is
AFFIRMED
COSTS
Each party to bear its own costs.
This argument is without merit. “No matter how inde-
pendent an appellate court’s review of an issue may be, it
is still no more than that—a review.” Sage Prod., Inc. v.
Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997). A
de novo standard of review is not an exceptional circum-
stance, Conoco, 460 F.3d at 1358 (“[L]egal issues in patent
infringement suits are not immune to the doctrine of
waiver on appeal[.]”), neither is a tribunal’s change in its
appraisal of the merits following full consideration of the
evidence, see Trivascular, Inc. v. Samuels, 812 F.3d 1056,
1068 (Fed. Cir. 2016) (“[T]he [PTAB] is not bound by any
findings made in its Institution Decision. . . . The [PTAB]
is free to change its view of the merits after further devel-
opment of the record, and should do so if convinced its ini-
tial inclinations were wrong.” (emphasis original)).
Accordingly, we decline to consider Finjan’s waived claim
construction argument.