Finjan, Inc. v. Cisco Systems, Inc.

F
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        NOTE: This disposition is nonprecedential.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
Case: 19-2074       Document: 56         Page: 3   Filed: 12/30/2020




 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,
Case: 19-2074       Document: 56      Page: 4      Filed: 12/30/2020




 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–
Case: 19-2074       Document: 56         Page: 5   Filed: 12/30/2020




 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.
Case: 19-2074    Document: 56     Page: 6      Filed: 12/30/2020




 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
Case: 19-2074       Document: 56         Page: 7   Filed: 12/30/2020




 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).
Case: 19-2074       Document: 56         Page: 9   Filed: 12/30/2020




 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.
Case: 19-2074    Document: 56      Page: 10      Filed: 12/30/2020




  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
Case: 19-2074       Document: 56     Page: 11   Filed: 12/30/2020




 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”).
Case: 19-2074    Document: 56      Page: 12       Filed: 12/30/2020




  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
Case: 19-2074       Document: 56     Page: 13   Filed: 12/30/2020




 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)).
Case: 19-2074    Document: 56      Page: 14      Filed: 12/30/2020




  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
Case: 19-2074       Document: 56     Page: 19   Filed: 12/30/2020




 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.

Add comment