The Federal Circuit recently affirmed a Patent Trial and Appeal
Board ("PTAB") inter partes review
("IPR") decision in Palo Alto Networks, Inc. v.
Finjan, Inc., No. 2017-2059, holding that the PTAB did not err
in concluding that a person of ordinary skill would not have
combined certain prior art identified by Palo Alto Networks, Inc.
("PAN") in a way that would teach a claim limitation
common to the challenged claims. The Federal Circuit’s opinion underscores that the prior art
references selected for assertion by an IPR petitioner are the key
to any IPR petition's ultimate success.
As related in the opinion, on September 30, 2015, PAN petitioned
the PTAB for an IPR of claims 1, 2–7, 9, 12–16,
19–23, 29 and 35 ("challenged claims") of U.S.
Patent No. 8,225,408 (the "'408 patent") issued to
Finjan, Inc. ("Finjan"). The '408 patent relates to
"methods and systems for detecting malware in data streamed
from a network onto a computer," by building "a parse
tree data
