Apple loses as Fed Circuit reverses PTAB decision

The US Court of Appeals for the Federal Circuit has reversed a decision which favoured  Apple in a patent dispute between the smartphone maker and Texas-based  Personal Web Technologies.

In a  precedential ruling on Friday, March 8, the Federal Circuit said the US Patent Trial and Appeal Board’s analysis was improper, after Apple sought to invalidate Personal Web’s patent for obviousness over prior art.

The court reversed the PTAB’s decision because one of its key findings “was not supported by substantial evidence”.

The patent in dispute covers technology for “controlling access to data in a data processing system” (As number 7,802,310).

In inter-partes review proceedings before PTAB, Apple had argued that five of the patent’s claims were obvious in view of two existing patents (US numbers 5,649,196 and 7,359,881).

The ‘196 patent, owned by James Woodhill, discloses a distributed management system for backing up and restoring data files.

In its decision, the Federal Circuit said that while it is possible Woodhill’s system outlines steps that are also claimed by Personal Web’s patent, “mere possibility is not enough”, noting that inherency “may not be established by probabilities or possibilities”.

Apple had argued that Woodhill’s patent claims a method for searching for a file in a distributed data storage system using a content-based identifier.

But, the court ruled that Woodhill’s only disclosed method of locating a file was by searching for it using standard information such as the file name and location.

It said that because of this, the prior art that Apple relies on does not necessarily exist in Woodhill and PTAB’s reliance on this in its obviousness analysis was improper.

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