United States: When Obvious Isn't Obvious: Personal Web Technologies

Last Updated: February 28 2017
Article by Brendan E. Clark

On Valentine's Day 2017, the Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board's conclusions of obviousness in Personal Web Technologies, LLC due to insufficient analysis in the board's decision. Judge Taranto, joined by Judge Chen and Judge Stoll, explicitly asserted the court's role in enforcing the principles of administrative law to ensure the agency is not acting in an arbitrary or capricious manner.1 The decision serves to sharpen the teeth of the oft-repeated requirement that analysis supporting a conclusion of obviousness be made explicit.2

This case arrived at the Federal Circuit following the board's final written decision in an inter partes review (IPR) of Personal Web Technologies' (PersonalWeb) U.S. Patent No. 7,802,310 (the '310 Patent) finding six of its claims invalid for obviousness. PersonalWeb appealed the adequacy of the board's conclusions, submitting that the board decision provided little detail explaining why it would have been obvious to a relevant skilled artisan to combine the two references on which the validity challenge rested.

After introducing the legal bases of obviousness analysis, the court presented a bigger picture, stating:

Our review of the Board is rooted not just in the law of obviousness but in basic principles of administrative law. We review the Board's IPR decisions to ensure that they are not "arbitrary, capricious, an abuse of discretion, . . . otherwise not in accordance with law . . . [or] unsupported by substantial evidence."3

The opinion spoke to the board's obligation to provide a thorough administrative record showing the evidence and reasoning supporting its conclusion.

With this foundation, the court took the final written decision to task, offering several examples of its shortcomings. Turning to the first independent claim found obvious, Judge Taranto noted inconsistencies between the IPR petition's obviousness contentions and the board's application of the references to this claim's elements. The opinion also drew attention to the board's failure to clearly address certain elements of the independent claims.4 While the panel did not deny that obviousness may exist, it emphasized that parsing an explicit case for obviousness from the references and record is the board's responsibility in a Patent Trial and Appeal Board trial decision.5

Perhaps more decisively, the court concluded that the board's reasoning for combining the references was deficient. The IPR petition argued two references: U.S. Patent No. 5,649,196 to Woodhill, which concerns a system for using content-based identifiers in performing file-management functions, and U.S. Patent No. 7,359,881 to Stefik, which concerns an authentication system for controlling access to digital works in a repository based on unique identifiers of the works. In comparison, the '310 Patent concerns techniques for locating files and controlling access by giving the files substantially unique names dependent on their content. The challenged claims recite, for example:

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.6

In concluding that the reasoning for combining the references against claims of the '310 Patent was deficient, the court noted that motivation to combine requires more than a statement that a skilled artisan would understand the separate teachings could be combined. Instead, efforts must be made to express more than an offhand possibility of a combination and how such a combination would work.7

The court observed that the threshold level of detail explaining motivation to combine will vary by technical context. For simple and familiar technology, a brief explanation may suffice, but for complex or obscure technology, the board is obliged to offer greater specificity. The court did not specifically state where on this spectrum PersonalWeb's claims fell, but concluded that the amount of scrutiny the board provided justified vacating and remanding the final written decision on the issue of obviousness.

While this opinion largely summarizes settled law, it is valuable to note the continued influence of the "all elements" test for obviousness, and that even where all elements are found in prior art, obviousness may not follow. The Federal Circuit's decision reminds parties asserting obviousness of the challenge presented in establishing the motivation to combine references even if the prior art and claims exist in similar technological fields. And once an argument for motivation to combine is submitted, petitioners before the Patent Trial and Appeal Board should drive these points aggressively to ensure that a favorable final written decision in a Patent Office trial is not avoidably vacated.

Footnotes

1. Personal Web Technologies, LLC v. Apple, Inc., No. 2016-1174, slip op. at 8 to 9.

2. See, e.g., MPEP § 2143.

3. Personal Web Technologies, slip. op. at 8 (citations omitted).

4. Id., slip. op. at 10 to 11.

5. Id.

6. U.S. Patent No. 7,802,310, claim 24.

7. Personal Web Technologies, slip op. at 12.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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