Introduction

On March 8, 2019 the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made decision in PersonalWeb Technologies, LLC v. Apple, Inc. An inter partes review (IPR) petitioned by Apple, Inc. (“Apple”) in 2013 resulted in Claims 24, 32, 81, 82, and 86 of U.S. Patent No. 7,802,310 (“the ‘310 patent”) being deemed unpatentable as obvious, in view of U.S. Patent No. 5,649,196 (“Woodhill”) and U.S. Patent No. 7,359,881 (“Stefik”). PersonalWeb Technologies, LLC (“PersonalWeb”) appealed the Patent Trial and Appeal Board’s (“the Board’s”) decision in 2015, and the Federal Circuit vacated and remanded the Board’s obviousness finding due to inadequate analysis. On remand, the Board maintained its obviousness finding based on inherency and motivation-to-combine, adding Woodhill to its first reference, Stefik. PersonalWeb appealed again and the Federal Circuit had jurisdiction.

Decision

The ‘310 patent teaches a data processing system in which (i) a unique content-based identifier is assigned to a data item and (ii) the content-based identifier is compared to a plurality of values, authorization or lack thereof to the data item is determined contingent on the existence of correspondence to one of said plurality of values, and, based on the previous outcome, not allowing a second computer access to the data item if access is not authorized.

The Board utilizes Woodhill and Stefik to maintain its finding of the ‘310 patent’s unpatentability. “Woodhill discloses a distributed management system for backing up and restoring data files” in which each byte of data is assigned an identifier. Thus, the Board found that Woodhill inherently teaches comparing an identifier to a plurality of values. Furthermore, “Stefik discloses an authentication system for controlling access to digital works,” using a ‘digital ticket’ entitling user access. Agreeing with Apple’s arguments, the Board found that “access provided in Stefik would necessarily require a comparison between the unique identifier and other values to see if a match can be obtained.” Considering the above, the Board found the ‘310 patent unpatentable due to obviousness on the bases of inherency and motivation-to-combine.

However, the Federal Circuit does not agree. Although Woodhill may possibly utilize an identifier lookup table to locate matches, the possibility itself is not enough. “As PersonalWeb suggests, an equally plausible…understanding of Woodhill is that Woodhill’s system uses conventional file names and locations to locate files and the Binary Object Offset field to locate a given binary object within a file…Woodhill does not disclose searching for a file based on a content-based identifier.” Rather, Woodhill collects information from a database.

Thus, the features that Apple and the Board rely on do not necessarily exist, and as such, the Board’s reliance on inherency was improper. The Federal Circuit therefore reversed the Board’s finding of obviousness over Woodhill in view of Stefik.

Conclusion

Inherency in an obviousness claim is only valid if the allegedly-inherent feature is a naturally occurring result. The mere possibility of the result or feature is not enough to demonstrate inherency as a basis for obviousness.

Full Personal Web Technologies, LLC v. Apple, Inc. decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1599.Opinion.3-8-2019.pdf

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.

 

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