Knobbe/Martens: Intellectual Property Law

PERSONAL WEB TECHNOLOGIES, LLC v. APPLE, INC.

By Ashley C. Morales and Andrea Cheek March 8, 2019
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

Meet the Knobbe Martens Attorneys

PERSONAL WEB TECHNOLOGIES, LLC v. APPLE, INC.
Ashley Morales is an associate in our San Diego office. Her practice focuses on litigation. She represents clients in a wide variety of intellectual property disputes, including...
PERSONAL WEB TECHNOLOGIES, LLC v. APPLE, INC.
Andrea Cheek represents clients in all areas of intellectual property law, with an emphasis on patent litigation involving Abbreviated New Drug Applications under the Hatch-Waxman Act...
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