Personal Web Technologies, LLC v. Apple, Inc.
917 F.3d 1376
| Fed. Cir. | 2019Background
- The ’310 patent claims a content-based identifier (“True Name”) generated by hashing a data item’s content and using that identifier to control access and identify duplicates.
- Apple petitioned for IPR challenging claims of the ’310 patent as obvious over Woodhill (a backup/restore system using Binary Object Identifiers based on cryptographic hashes) and Stefik (an access-control system using unique identifiers and usage rights).
- The PTAB initially found the challenged claims obvious over Woodhill in view of Stefik; the Federal Circuit vacated and remanded in PersonalWeb I, instructing the Board to reassess whether Woodhill’s column 17 taught comparing a content-based identifier to a plurality of values and to better explain motivation to combine.
- On remand the Board found Woodhill inherently disclosed the “compared to a plurality of values” limitation by inferring a lookup table of Binary Object Identifiers in Woodhill’s restore process and concluded a skilled artisan would combine Woodhill and Stefik to add authorization.
- The Federal Circuit held the Board’s inherency finding lacked substantial evidence: Woodhill explicitly uses user-specified file identity and file-offset fields to locate binary objects, so a lookup table comparing a Binary Object Identifier against a plurality of identifiers is at best possible, not necessarily inherent.
- Because Apple offered no other basis showing the comparison-to-plurality element was disclosed or obvious, the court reversed the Board’s obviousness decision over Woodhill in view of Stefik.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Woodhill inherently teaches “causing the content-dependent name… to be compared to a plurality of values” | Apple: Woodhill’s column 17 implies the remote server references a local database mapping Binary Object Identifiers, necessarily requiring comparison to a plurality of values. | PersonalWeb: Woodhill instead uses user-specified file identity and Binary Object Offset/stream fields to locate objects; a lookup table is not disclosed. | Reversed: Board’s inherency finding unsupported by substantial evidence; mere possibility is insufficient. |
| Whether claims were obvious over Woodhill in view of Stefik | Apple: A skilled artisan would combine Woodhill’s identifiers with Stefik’s authorization repository to prevent unauthorized access. | PersonalWeb: The crucial comparison element is not shown in Woodhill; combination lacks a proper factual basis. | Not reached (court reversed on inherency); motivation-to-combine need not be decided. |
| Proper standard for inherency in obviousness analysis | Apple: (implicit) inference of necessary lookup from Woodhill’s restore description. | PersonalWeb/PFR: Inherency requires that the missing feature necessarily be present, not merely possible. | Court: Applies PAR Pharm. standard—cannot establish inherency by possibilities; must show natural result of the reference’s operation. |
| Adequacy of PTAB’s factual findings on remand | Apple/PTAB: Expert testimony supports inference of lookup/database in Woodhill. | PersonalWeb: Expert and specification passages show alternative mechanisms; PTAB failed to address contrary record evidence. | Court: PTAB did not adequately support its inherency finding and failed to respond to contrary, plausible reading of Woodhill. |
Key Cases Cited
- PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186 (Fed. Cir. 2014) (inherency cannot be established by mere possibilities; must show natural result of the prior art’s operation)
- PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) (prior Federal Circuit opinion vacating PTAB’s obviousness finding and instructing clearer analysis of Woodhill’s column 17 and motivation to combine)