PATENT CASE OF THE WEEK 

PersonalWeb Techs., LLC v. Apple, Inc., Appeal No. 2018-1599 (Fed. Cir. March 8, 2019)

In a second appeal in this inter partes review matter, the Federal Circuit reversed the PTAB’s finding of invalidity, ending this five-year old case.

The patent in this case concerns certain improvements in data processing systems.  In 2015, the PTAB found the challenged claims unpatentable over two prior art references.  On February 14, 2017, the Federal Circuit affirmed the PTAB’s claim construction, but remanded the obviousness findings.  PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017).  In that case, the primary dispute was about a single claim element.  The Board had cited only “Stefik” as satisfying that element, but Apple had “made clear in its petition that it relied on only Woodhill for this element.”  The Court disagreed with the Board’s reliance on Stefik and instructed the Board to evaluate whether the limited portion of Woodhill taught the element.  The Court also reversed the Board’s analysis concerning the purported motivation to combine the art, finding it insufficient.

On remand, the Board ordered additional briefing by the parties concerning whether Apple had sufficiently made out a proper case of obviousness on the instituted ground. The Board reaffirmed its prior decision, replacing its reliance on Stefik with Woodhill, and expanding its analysis concerning motivation to combine the art.  With respect to Woodhill, the Board found that the prior art inherently disclosed the limitation at issue.

The Federal Circuit reversed.  It reinforced the standard for finding limitations inherently present in prior art:

“Inherency . . . may not be established by probabilities or possibilities.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). “The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. (emphasis added). Rather, a party must “show that the natural result flowing from the operation as taught would result in the performance of the questioned function.” Id. (emphasis in original).

Having laid out that standard, the Federal Circuit found that there was insubstantial evidence for the Board to find that the missing limitation was inherently present in Woodhill.  The Federal Circuit noted that PersonalWeb had “suggest[ed] an equally plausible, if not more plausible, understanding of Woodhill” that would not necessarily have included the limitation in question.  Because the Federal Circuit determined that there was insufficient evidence to support a finding of inherency, it held that Apple had not met its burden to prove the claims invalid, because one claim limitation was not found in the prior art.  Given its conclusion on that issue, it did not reach the issue of motivation to combine the art.

To read our write-up of the original PersonalWeb case, see here.

The opinion can be found here.