Docket No. 2016-1174 (appeal from IPR2013-00596)
TARANTO, CHEN, STOLL
February 14, 2017
Brief Summary: Board’s obviousness decision following IPR vacated and remanded as it failed to properly explain its conclusions. Revised 18-month rule regarding claim construction explained.
Summary: PersonalWeb (PW) appealed Board decision in IPR2013-00596 that US 7,802,310 relating to “methods (or devices for carrying out methods) of locating data and controlling access to data by giving a data file a substantially unique name that depends on the file’s content” (a “True Name”) is invalid for obviousness. Apple’s argued for obviousness based on a combination of a US patent “focuse[d] on a system for backing up or restoring data” (Woodhill) and another “focuse[d] on a system for managing rights to access data” (Stefik). In its final decision (March 25, 2015), the Board applied the broadest reasonable interpretation (BRI) standard to the claims and agreed with Apple on obviousness. PW appealed the decision, including denial of its request for rehearing that was filed 13 days before the ‘310 patent expired. PW argued that since the ‘310 patent expired while its request for rehearing was pending, the claims should be construed under Phillips (FC 2005) and not BRI. FN1 explains that in In re CSB-Sys Int’l Inc. (FC 2016), it held that BRI is “inapplicable, outside the IPR setting, where the patent at issue had expired in a reexamination before the Board review the examiner’s decision”. It also noted that revised 37 CFR § 42.100(b) (2016) includes the “18-month rule” under which an IPR party may “request a district court-type claim construction approach” if the patent will expire within 18 months of the IPR petition’s filing and that it would not have applied here based on the timeline. However, this issue was not resolved in this opinion. Instead, the FC panel found that “the meaning of the language is plain from the face of the claims” and affirmed the Board’s construction. The FC panel agreed with PW, though, that “the Board has not done enough to support its conclusion” of obviousness (reviewed de novo and its underlying factual determinations for substantial evidence (In re Gartside, FC 2000; Intelligent Biosys., FC 2016 (“whether a reasonable factfinder could have arrived at the agency’s decision”)). It explained the Board first had to find the alleged prior art disclosed all the elements of the claims (In re Kotzab, FC 2000) and then the motivation to combine the art “in the way claimed by the ‘310 patent claims at issue” with “a reasonable expectation of success” (In re NuVasive, FC 2016; In re Warsaw Orthopedic, FC 2016; Ariosa, FC 2015; KSR, US 2007 (“it can be important to identify a reason that would have prompted” the combination and the “analysis should be made explicit”)). It also noted it reviews IPR decisions to ensure that they are not ‘arbitrary, capricious, an abuse of discretion,…otherwise not in accordance with the law…[or] unsupported by substantial evidence” (Pride Mobility, FC 2016; Synopsys, FC 2016). It found “[t]he Board’s decision here [to be] inadequate” as it did not provide the required explanation regarding either the disclosure of each claim element by the claims or the motivation to combine the references. For example, the Board’s agreement with Apple’s contention that the combination “would have allowed for the selective access features of Stefik to be used with Woodhill” is not enough as it “seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined” (Belden, FC 2015 (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations….”)) It “nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work” which is required in a case like this in which “complexity or obscurity of the technology or prior art descriptions may well make more detailed explanations necessary” (vs. a case in which “the technology is simple and familiar and the prior art is clear in its language and easily understood”). Thus, the Board’s obviousness decision was vacated and remanded.