from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2013-00596.
Lawrence Milton Hadley, McKool Smith Hennigan, PC, Los
Angeles, CA, argued for appellant. Also represented by
Phillip Lee; Joel Lance Thollander, Austin, TX.
Michael Jay, Boies, Schiller & Flexner LLP, Santa Monica,
CA, argued for appellee. Also represented by Donald William
Ward, Joseph E. Lasher; William A. Isaacson, Washington, DC.
Matal, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for intervenor
Michelle K. Lee. Also represented by Thomas W. Krause, Scott
Weidenfeller, Kakoli Caprihan.
Taranto, Chen, and Stoll, Circuit Judges.
Taranto, Circuit Judge.
Inc. petitioned for inter partes review of various
claims of PersonalWeb Technologies, LLC's U.S. Patent No.
7, 802, 310, asserting unpatentability for obviousness based
on two prior-art references. After instituting review, the
Patent Trial and Appeal Board reviewed the claims and agreed
with Apple. PersonalWeb appeals the Board's construction
of certain claim terms and the ultimate obviousness
determination. We affirm the Board's claim construction.
We vacate the Board's obviousness determination as to the
appealed claims, because the Board did not adequately support
its findings that the prior art disclosed all elements of the
challenged claims and that a relevant skilled artisan would
have had a motivation to combine the prior-art references to
produce the claimed '310 inventions with a reasonable
expectation of success. We remand for further proceedings.
'310 patent describes and claims methods (or devices for
carrying out methods) of locating data and controlling access
to data by giving a data file a substantially unique name
that depends on the file's content-a so-called "True
Name." '310 patent, col. 3, lines 50-62;
id., col. 6, lines 20-23; id., col. 37,
lines 44-64. The patent describes generating a True Name
using mathematical algorithms (called "hash
functions" in the abstract and some claims) that use
contents of the file to generate a comparatively small-size
identifier for the file. Id., col. 12, line 21,
through col. 13, line 9. As relevant here, the patent calls
for comparing that name with a plurality of values in a
network, determining whether a user is authorized to access
the data, and providing or denying access to the data based
on that determination. See, e.g.,
id., col. 3, line 50, through col. 4, line 52;
id., col. 37, lines 44-62.
petitioned for inter partes review (IPR) of claims
24, 32, 70, 81, 82, and 86, arguing unpatentability, under 35
U.S.C. § 103, for obviousness based on a combination of
the Woodhill reference (U.S. Patent No. 5, 649, 196) and the
Stefik reference (U.S. Patent No. 7, 359, 881). Woodhill
focuses on a system for backing up or restoring data. Stefik
focuses on a system for managing rights to access data.
specifically, Woodhill discloses a system for using
content-based identifiers in performing file-management
functions, such as backing up files. It includes a
distributed storage system that identifies data items (called
"binary objects") using content-based identifiers
(called "binary object identifiers"). '196
patent, col. 1, line 66, through col. 2, line 11. A binary
object identifier is calculated using the contents of a data
item. Id., col 8, lines 38-42. Each binary object
identifier is stored (with certain other information) in a
binary object identification record. Id., col. 7,
line 60-64. Woodhill uses its content-based binary object
identifiers for file-management purposes, including in a
backup/restore system, which checks to see if binary objects
have changed since the system's most recent backup.
Id., col. 2, lines 11-46.
discloses an authentication system designed to control access
to digital works stored in a repository. Each digital work is
assigned a "unique identifier." '881 patent,
col. 9, lines 47-50, 56-59. Each digital work also has
associated usage rights that control access to the work.
Id., col. 9, lines 52-53; id., col. 3,
lines 58-65. A user demonstrates authorization to access a
digital work through a "digital ticket, " which
identifies the ticket holder as having access to the digital
file because the holder has paid for access or is otherwise
entitled to access. Id., col. 3, lines 58-65.
Board instituted review on March 26, 2014. Apple Inc. v.
PersonalWeb Technologies, LLC, IPR2013-00596, 2014 WL
1477691 (PTAB Mar. 26, 2014). On March 25, 2015, after
conducting the review, the Board issued its Final Written
Decision, holding claims 24, 32, 70, 81, 82, and 86
unpatentable as obvious based on a combination of the
Woodhill and Stefik references. Apple Inc. v. PersonalWeb
Technologies, LLC, IPR2013-00596, 2015 WL 1777147 (PTAB
Mar. 25, 2015), at *7-13 (hereafter "Apple v.
PersonalWeb"). In doing so, the Board applied the
broadest-reasonable-interpretation standard in construing
several phrases referring to content-based identifiers.
Id. at *4. On April 24, 2015, thirteen days after
the '310 patent expired, PersonalWeb sought rehearing,
but the Board denied the motion on August 3, 2015.
appeals the Final Written Decision, under 35 U.S.C.
§§ 141(c), 319, except as to claim 70. We have