| Ashley C. MoralesAndrea Cheek
Federal Circuit Summary

Before Moore, Taranto, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: The mere fact that a certain thing may result from a given set of circumstances is not sufficient to demonstrate inherency.  Instead, the party alleging inherency must show that the natural result flowing from the operation as taught would result in the performance of the questioned function.

Apple filed a petition requesting an inter partes review of a patent owned by PersonalWeb, alleging the patent was obvious in view of two prior art references.  The patent at issue claimed a method and apparatus for avoiding problems which arise from traditional naming protocols in conventional data processing systems, such as duplication of a data item.  The PTAB found the claims obvious, in part, by finding that one of the prior art references inherently taught a claim limitation.

The Federal Circuit reversed the Board’s decision, concluding that the inherency finding lacked substantial evidence.  While it was possible that the prior art system utilized the claim limitation at issue, PersonalWeb suggested an equally plausible understanding of the prior art that would not utilize the limitation at issue.  The Federal Circuit noted that inherency may not be established by probabilities or possibilities, but instead must necessarily exist in the prior art.  Because the disputed claim limitation did not necessarily exist in the prior art, the Board’s reliance on inherency in its obviousness analysis was improper.

Editor: Paul Stewart