Docket No. 2018-1599 (IPR2013-00596)
MOORE, TARANTO, CHEN
March 8, 2019
Brief summary: Board’s IPR decision that PersonalWeb’s claims were unpatentable for obviousness reversed because “the Board’s reliance on inherency…was improper” and “Apple provided no other basis for” the disputed claim element.
Summary: Personal Web appealed PTAB’s IPR final written decision (FWD) finding five claims of US 7,802,310 related to computer file naming systems unpatentable as obvious in view of two prior art patents (Woodhill and Stefik). Personal Web earlier appealed a 2015 decision of unpatentability and in 2017 the FC affirmed the PTAB’s claim construction but remanded the obviousness finding based on the same references (Personal Web I, FC 2017). In that 2017 opinion, the FC panel “disagreed with the Board’s use of Stefik” as disclosing the “main claim element in dispute” (“causing the content-dependent name of the particular data item to be compared to a plurality of values”), while “Apple made clear in its petition that it relied on only Woodhill for this element”, “and instructed the Board to evaluate whether column 17 of Woodhill, which was the only portion of Woodhill cited by Apple in its petition, taught” that element. The FC panel (in the 2017 opinion) also “disagreed with the Board’s motivation-to-combine analysis’, which merely affirmed Apple’s allegation” and “said said nothing more than that the two references could be combined, not that there would have been a motivation to combine them, and lacked any explanation as to how the combination of the two references was supposed to work”. This FC panel opinion explains that “[o]n remand, the Board maintained the same obviousness theory of unpatentability, except that the Board replaced its previous reliance on Stefik for teaching the ‘compared to a plurality of values’ element with reliance on column 17 of Woodhill” and “expanded its analysis of a skilled artisan’s motivation to combine Woodhill and Stefik.” This FC panel also explained that the Board “continued to point to Apple’s petition”, “adopted Apple’s expert’s conclusion”, “concluded that Woodhill, without saying so, necessarily” provides the disputed claim element (“inherently teaches” the step), and “agree[d] with Apple that access provided in Stefik would necessarily require” the comparison step (“this rationale is sufficient”). This FC panel concluded that “the Board’s inherency finding…lacks substantial evidence” since the “mere possibility” that Woodhill could provide the claimed element, this “is not enough” (PAR Pharm., FC 2014 (“Inherency…may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Rather, a party much ‘show that the natural result flowing from the operation as taught would result in the performance of the questioned function.”)) (e.g., “As PersonalWeb suggests, an equally plausible, if not more plausible, understanding of Woodhill” is that it operates differently.) Thus, this FC panel concluded that “the Board’s reliance on inherency…was improper”, that “Apple provided no other basis for this element”, and reversed the Board’s decision.