PTAB rejects inherently obvious finding

November 21, 2019
Patterson Thuente IP

What’s obvious to one person isn’t always obvious to another, and the same is true when it comes to patents. The U.S. Court of Appeals for the Federal Circuit demonstrated this principle in rejecting the Patent Trial and Appeal Board’s (PTAB’s) determination that a patent was inherently obvious. In doing so, it shed light on what factors establish when a claimed feature of a patented invention was “inherent” in an earlier invention.

Identity crisis

PersonalWeb Technologies, LLC, owns a patent for a method and apparatus that create a unique identifier for each data item in a data processing system, based only on the content of the data item. The invention resolves certain problems associated with traditional naming conventions that identify data items based on characteristics such as user-created alphanumeric names or locations.computer code on a screen

For example, when one device transfers a data item using just the name associated with the item, it’s possible that the data item already exists on the second device, resulting in the creation of a duplicate. But a data system can use a content-based identifier to determine whether a data item is already present on a device and avoid duplication.

Apple, Inc., challenged the patent, arguing it was invalid because two earlier patents for systems that use identifiers made PersonalWeb’s content-based identifier obvious to someone skilled in the relevant field. The PTAB agreed and found that one of the prior patents inherently described part of the patent at issue. PersonalWeb appealed.

Inherent risk

The Federal Circuit, however, agreed with PersonalWeb. Although it acknowledged that it was possible that the earlier patented system relied on by the PTAB used an “unstated … identifier,” the mere fact that a certain thing may result from a given set of circumstances isn’t enough.

Rather, the challenging party must show that the natural result flowing from the operation described in the earlier patent would result in the performance of the questioned function in the challenged patent. Here, it was equally if not more plausible that the previously patented system used conventional file names and locations to locate data files.

The obvious lesson

A party must satisfy a high standard to rely on inherency to establish obviousness that invalidates a patent. The court’s ruling reinforces this standard.

PersonalWeb Technologies, LLC v. Apple, Inc., No. 18-1599, March 8, 2019, Fed. Cir.

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