BT Americas, Inc. appealed the Patent Trial and Appeal Board's November 7, 2024 final written decision in IPR2023-00889, Palo Alto Networks, Inc. v. BT Americas Inc., which held claims 1 to 25 of U.S. Patent No. 7,895,641 unpatentable under 35 U.S.C. 103 (Op. 1-2). In the IPR, Palo Alto Networks, Inc., now the appellee, was the petitioner and BT Americas Inc. was the patent owner (Op. 2, 6). The Board denied BT Americas' request for rehearing on January 15, 2025 (Op. 3; Paper 35).
The claims
Claim 1 recites a system for operating a probe as part of a security monitoring system for a computer network, including "a filtering subsystem coupled to analyze status data to identify potentially security-related events" and "a modification control system for dynamically modifying an analysis capability of the probe during operation thereof based on the received feedback" (claim 1; Op. 2-3 and n.2). Dependent claim 6 requires a "multi-stage analysis" that includes "analysis at the probe and analysis at a secure operations center" (Op. 3). The Board held claims 1 to 7 and 15 to 17 obvious over Duvall (U.S. Patent No. 5,884,033) and Chu, and the remaining claims unpatentable on other grounds that were not challenged on appeal (Op. 3 and nn.4-6).
What the court held
Writing for a panel of Circuit Judges Chen, Stoll, and Stark in BT Americas, Inc. v. Palo Alto Networks, Inc., No. 2025-1572 (Fed. Cir. Oct. 29, 2026) (nonprecedential), Judge Chen held that substantial evidence supports the Board's findings that Duvall's system is "not only at least capable of, but configured to, perform dynamic modification via online editing," and that the Duvall-Chu system did not need to be "significantly altered" to do so (Op. 4-5). The court also rejected BT Americas' challenges to the Board's motivation-to-combine findings (Op. 5 n.8).
On claim 6, the court said BT Americas "misunderstands" the petition, which relied on two different analyst systems, one at a secure operations center and one at the probe, and held that the Board did identify the claimed "analysis at a [SOC]" (Op. 6).
BT Americas also argued that the Board lacked jurisdiction because the '641 patent expired before the petition was filed. The court said it had rejected that argument in Apple Inc. v. Gesture Technology Partners, 127 F.4th 364, 368-69 (Fed. Cir. 2025), that it is "not permitted to deviate from our precedential holding," and that it saw "no persuasive reason to do so" (Op. 7). The judgment: "AFFIRMED" (Op. 7).