Personal Web Techs., LLC v. Apple, Inc.
February 14, 2017
Federal Circuit No. 2016-1174
Author: Michael Tobin
In Personal Web Techs., LLC v. Apple, Inc., the Federal Circuit reversed the final written decision of the Patent Trial and Appeal Board (“the Board”) in IPR2013-00596 holding that claims of U.S. Patent No. 7,802,310 were unpatentable as obvious over Woodhill (U.S. Patent No. 5,649,196) and Stefik (U.S. Patent No. 7,359,881). Though the ultimate conclusion of obviousness is a question of law, it must be based on findings of fact, which are reviewed for substantial evidence, and thus the Board must create a sufficient reviewable record to support its conclusions. The Federal Circuit’s review of the facts inquired whether a reasonable fact finder could have arrived at the Board’s decision, which requires examination of the record as a whole, taking into account evidence that both justifies and detracts from an agency’s decision.
In particular, the Federal Circuit explained that the Board’s decision must not only conform with substantive patent law, but the requirements of the Administrative Procedure Act. In order to allow effective judicial review, the Board is obligated to provide an administrative record showing evidence on which the findings are based, accompanied by the reasoning in reaching its conclusions. At issue was the claimed feature, “causing content-dependent name of a particular data item to be compared to a plurality of values.” In finding this feature obvious over the cited prior art, the Board’s decision merely affirmed Petitioner’s conclusory contention that “a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination … would have allowed for the selective access of features of Stefik to be used with Woodhill's content-dependent identifiers.”
Accordingly, the Federal Circuit found the Board’s record deficient both in terms of 1) explanation and support that the combination of two prior art references Woodhill and Stefik disclosed all features of the patent, and 2) the motivation that one skilled in the art would have combined Woodhill and Stefik in the way of the subject patent claims with a reasonable expectation of success. As such, the court vacated the obviousness determination and remanded the matter to the Board, noting “[t]he remand is not for explanation or clarification of what the Board meant in the decision we have under review now, or what it considered in reaching that decision... [t]he remand is for the Board to reconsider the merits of the obviousness challenge, within proper procedural constraints.”