The Software IP Report
Patent Prior Art Inherency Requires More Than Mere Possibility
By Charles Bieneman
Categories: 35 U.S.C. §§ 102, 103, The Software IP Report
A finding that prior art inherently disclosed elements of claims of U.S. Patent No. 7,802,310 was not supported by substantial evidence; the Federal Circuit therefore reversed the Patent Trial and Appeal Board’s conclusion that the ’310 patent was unpatentable as obvious. Personal Web Technologies, LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. Mar. 8, 2019). This precedential opinion arose from an inter partesreview (IPR) proceeding, but will be of interest to patent prosecutors, inasmuch as inherency is often used (and misused) by patent examiners.
Claim 24 of the ’310 patent, reproduced below, was discussed as representative:
A computer-implemented method implemented at least in part by hardware comprising one or more processors, the method comprising:
(a) using a processor, receiving at a first computer from a second computer, a request regarding a particular data item, said request including at least a content-dependent name for the particular data item, the content-dependent name being based, at least in part, on at least a function of the data in the particular data item, wherein the data used by the function to determine the content-dependent name comprises at least some of the contents of the particular data item, wherein the function that was used comprises a message digest function or a hash function, and wherein two identical data items will have the same content-dependent name; and
(b) in response to said request:
(i) causing the content-dependent name of the particular data item to be compared to a plurality of values;
(ii) hardware in combination with software determining whether or not access to the particular data item is unauthorized based on whether the content-dependent name of the particular data item corresponds to at least one of said plurality of values, and
(iii) based on said determining in step (ii), not allowing the particular data item to be provided to or accessed by the second computer if it is determined that access to the particular data item is not authorized.
The claim limitation at issue, which Apple contended was disclosed by U.S. Patent No. 5,649,196 (Woodhill), was “causing the content-dependent name of the particular data item to be compared to a plurality of values.”
The parties had been arguing about this claim limitation since the IPR was filed in 2013. The PTAB in 2014 found ’310 patent claims obvious over Woodhill and U.S. Patent No. 7,359,881 (Stefik), with Stefik allegedly teaching “causing the content -dependent name . . .” In 2015, the Federal Circuit reversed and remanded this decision because Apple had relied on Woodhill, not Stefik for this claim element, and because the PTAB’s reason to have combined the references was “nothing more than that the two references could be combined,” and moreover lacked “explanation as to how the combination of the two references was supposed to work.” (Emphasis in original.)
On remand, the PTAB then found that Woodhill disclosed “causing the content -dependent name of the particular data item to be compared to a plurality of values” by disclosing a file update request that included “the Binary Object Identification Record 58 for the previous version of each binary object as well as the list of ‘contents identifiers’ calculated in step 444.” The PTAB relied on Apple’s expert’s declaration that, were Woodhill to fulfill its update request, “the remote backup fileserver of Woodhill must be able to reference its local files using the information it receives – namely the Binary Object Identification Record.” (Emphasis by Federal Circuit.) Even though Woodhill did not disclose comparing “a Binary Object Identifier to a plurality of Binary Object Identifiers,” the PTAB found this comparison inherently disclosed by agreeing with the expert that Woodhill would have had to have maintained reference data allowing “the Binary Object Identification Record to serve as a lookup of the requisite file data that is to be restored.”
But Woodhill’s purported comparison of its Binary Object Identification Record to reference data was at most possible, not necessary, found the Federal Circuit, citing PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186 (Fed. Cir, 2014).The patent owner plausibly suggested that it was equally possible for Woodhill to have used “conventional file names and locations to locate files and the Binary Object Offset field to locate a given binary object within a file.” Woodhill’s file could be “user-specified,” and therefore the “Board’s proffered look-up table is therefore unnecessary.”
Lessons for Practice
When patent examiners are missing a claim element in prior art, they often will allege that the element is inherent in one reference or another. This case reinforces what the Federal Circuit’s repeated admonition in cases such as PAR Pharm., Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306 (Fed. Cir 2017), and others: inherency has a high bar. That bar is not met were a reference could include a feature, but might not, or might include some other feature.