Personal Web Technologies, LLC v. Apple, Inc.
848 F.3d 987
| Fed. Cir. | 2017Background
- PersonalWeb’s U.S. Patent No. 7,802,310 claims using a content-dependent (content-based) identifier or "True Name" derived from a file’s contents to locate data and control access.
- Apple petitioned for inter partes review (IPR) challenging claims 24, 32, 70, 81, 82, and 86 as obvious over Woodhill (content-based identifiers for backup/restore) and Stefik (access control via digital tickets).
- The Patent Trial and Appeal Board instituted review, adopted the broadest-reasonable-interpretation (BRI) standard, and held the challenged claims obvious over Woodhill + Stefik in its Final Written Decision.
- PersonalWeb appealed the Board’s claim construction of “content-dependent name” and the Board’s obviousness findings; the appeal proceeded after the patent expired.
- The Federal Circuit affirmed the Board’s claim construction (the claims require only "at least some" of the data to generate the identifier, not "all").
- The Federal Circuit vacated and remanded the Board’s obviousness determination for inadequate explanation and evidentiary support as to (1) whether the asserted references disclose all claim elements and (2) motivation/expectation-of-success for combining Woodhill and Stefik.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Construction of “content-dependent name” / content-based identifier | PersonalWeb: term requires identifier to rely on all of the data in the data item | Apple/PTAB: BRI standard—identifier need only be based on at least some bits of the data item | Court: Affirmed PTAB — claim language expressly says "at least some," so no "all" requirement |
| Use of BRI standard after patent expiration | PersonalWeb: BR I should not apply because the patent expired during proceedings; ask for Phillips-type construction | Apple/PTAB: BRI applied under the then-applicable PTO rule | Court: Did not decide which standard controls but found Board’s construction correct even under Phillips |
| Whether Woodhill + Stefik disclose all claim elements (e.g., comparing identifier to a plurality of values) | Apple: Woodhill (and Stefik) disclose content-based IDs and matching; supports all elements | PersonalWeb: Woodhill does not clearly disclose comparing an identifier to a plurality of values to control access | Court: Vacated — Board did not adequately identify or explain where the prior art discloses all claim elements; record/analysis insufficient |
| Motivation to combine and reasonable expectation of success | Apple: A skilled artisan would have understood and been motivated to combine Woodhill’s identifiers with Stefik’s access controls | PersonalWeb: No adequate evidence showing a motivation to combine or expectation of success | Court: Vacated — Board’s reasoning was conclusory and lacked an adequate, evidence-grounded explanation; remand required |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim-construction framework)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (standard of review for Board factual findings)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (Sup. Ct.) (motivation-to-combine analysis and need for explicit reasoning)
- Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir.) (agency must provide record and reasoned explanation)
- In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir.) (motivation/expectation-of-success review)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir.) (amount of explanation varies by context)
- In re Lee, 277 F.3d 1338 (Fed. Cir.) (agency must set forth findings and grounds)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir.) (obviousness requires motivation to make the combination)