Even if something may be inherent it may not be obvious. PERSONAL WEB v. APPLE

A patent is a set of exclusive rights granted to the inventor of a new invention. An inventor can be granted a patent in the United States by filing a patent application with the United States Patent and Trademark Office. The patent application must demonstrate that the invention meets all the requirements for patentability. Namely, the subject matter of the invention must be eligible for patent protection and the invention must be new, useful and not obvious. The United States Patent and Trademark Office will assign an examining attorney to review a patent application when it is submitted. If the examining attorney determines that a patent application meets all the requirements for patentability, the inventor will be granted a patent on the invention. A patent grants its owner the exclusive right to make, use, sell and import the invention in the United States.

Obviousness, in the context of patent analysis, is a difficult concept to grasp. It is human nature to use hindsight when determining if something is obvious. Hindsight is looking at a result only after it has developed and leads most people to believe that something is obvious because the solution is known. However, using hindsight ignores the fact that when a solution is unknown, reaching that solution can be a laborious task.

To remove the bias of hindsight from an obviousness analysis in patent applications, United States patent law requires prior art to demonstrate that an invention is obvious. Prior art, simply stated, is all public knowledge available at the time a patent application was filed. Printed publications, scientific articles, patent applications, advertisements, web pages, or instructions that accompany a product can all qualify as prior art. For prior art to make an invention obvious, it must disclose all the aspects of an invention. If multiple pieces of prior art combined disclose all the aspects of an invention, there must be some motivation for the two pieces of prior art to be combined to make the invention obvious.

Once a patent is issued in the United States, it is still subject to scrutiny on the basis that it is obvious. A third party can institute an inter partes review to get a patent invalidated on the basis that the invention is obvious in view of the prior art. However, the prior art must still disclose all the aspects of the patented invention for the prior art to make an invention obvious.

A court decision the deals with the issues of prior art disclosing all the aspects of an invention is: PERSONAL WEB TECHNOLOGIES, LLC v. APPLE, INC., 2018-1599 (C.A.F.C. 2019). The plaintiff in this case owns U.S. Patent No. 7,802,310 (the ’310 patent) which relates to the prevention of duplicate data in computer systems. The patent claims a method of identifying computer files based on the contents of the file rather than the name of the file. In September 2013, Apple filed a petition requesting an inter partes review of the ’310 patent, on the grounds that it was obvious in light of two pieces of prior art. The two pieces of prior are were U.S. Patent No. 5,649,196 (Woodhill) and U.S. Patent No. 7,359,881 (Stefik). Woodhill discloses a distributed management system for backing up and restoring data files. Stefik discloses an authentication system for controlling access to digital works.

In March 2015, the Patent Trial and Appeal Board issued a final written decision concluding that Apple had demonstrated by a preponderance of the evidence that the challenged claims were unpatentable under § 103(a)
over Woodhill in view of Stefik. Apple persuaded the Patent Trial and Appeal Board that Woodhill’s patent inherently disclosed a method of searching for files using the contents of the file, even though the patent did not explicitly disclose such a method. The plaintiff appealed the decision the the Court of Appeals for the Federal Circuit.

The Federal Circuit reversed the Patent Trial and Appeal Board’s decision on the grounds that Woodhill did not disclose a key element of the ‘310 patent. The Federal Circuit held that the mere fact that a certain thing may result from a given set of circumstances is not sufficient. Rather, the prior art must show that the natural result flowing from the operation as taught would result in the performance of the questioned function. Because Woodhill did not disclose a key element of the ‘310 patent it did not render the invention obvious.

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