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'Must have' argument fails to fly in Apple IPR appeal

A common element of patent challenges these days through inter partes review (IPR) is the claim that a patent shouldn't have been granted in the first place because of obviousness due to prior art. This is a claim that Apple attempted to use in responding to allegations that it had infringed on a patent held by PersonalWeb Technologies, LLC. Apple's argument succeeded in IPR before the Patent Trial and Appeal Board (PTAB). However, PersonalWeb won on appeal.

The U.S. Court of Appeals for the Federal Circuit faulted the board for accepting an Apple expert's view that the PersonalWeb patent for data processing "must" have combined elements of two earlier patents, therefore making the PersonalWeb patent invalid. The problem, in the court's view, is that Apple's narrative represented only one possible method of application, not the only one.

"Mere possibility is not enough"

The process of the PersonalWeb patent, as noted in one claim, outlines how traditional naming conventions in data processing can create trouble retrieving information from data bases. That might happen if a file exists on one device under a certain name and another batch of data is transferred from a second device to the first using the same name. The PersonalWeb system claims to prevent retrieval errors by generating a separate encrypted name for each file based on the unique data content it contains.

In challenging the validity of the patent, Apple argued that PersonalWeb "must" have relied on the protocols of the two earlier patents identified as representing prior art. It supplied an example using just one of the previous patents. The board accepted that meeting a standard of a preponderance of evidence. But in its decision, the board also tied the combining practice to the second of the earlier patents.

The bottom line; the appeals court said that the scenario presented by Apple "might" be accurate. But it said there are other possibilities. So, Apple's version isn't substantial enough evidence to support invalidating PersonalWeb's patent.

Law practice demands attention to detail. Success in intellectual property litigation requires extreme exactitude, as this case reflects.

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