Case: 18-1599
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`Document:41
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`Page:1
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`Filed: 03/08/2019
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`nited States Court of Appeals
`for the Federal Circuit
`
`PERSONAL WEB TECHNOLOGIES, LLC,
`Appellant
`
`Vv.
`
`APPLE, INC.,
`Appellee
`
`2018-1599
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2013-
`00596.
`
`Decided: March 8, 2019
`
`LAWRENCE MILTON HADLEY, Glaser Weil Fink Howard
`Avchen & Shapiro LLP, Los Angeles, CA, argued for appel-
`lant. Also represented by JOEL LANCE THOLLANDER,
`McKool Smith, PC, Austin, TX.
`
`MICHAEL JAY, DLA Piper LLP (US), Los Angeles, CA,
`argued for appellee.
`Also represented by NANDAN
`PADMANABHAN.
`
`Before MOORE, TARANTO, and CHEN, Circuit Judges.
`
`

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`PERSONAL WEB TECHNOLOGIES, LLC v. APPLE, INC.
`
`CHEN, Circuit Judge.
`
`PersonalWeb Technologies, LLC (PersonalWeb) ap-
`peals the final written decision of the Patent Trial and Ap-
`peal Board (Board)
`in an inter partes review (IPR)
`proceeding concluding that Apple demonstrated by a pre-
`ponderanceof the evidence that claims 24, 32, 81, 82, and
`86 of U.S. Patent No. 7,802,310 (the ’310 patent) are un-
`patentable as obviousin viewof two prior art references—
`U.S. Patent No. 5,649,196 (Woodhill) and U.S. Patent No.
`7,359,881 (Stefik). Because one of the Board’s key under-
`lying fact findings as to Woodhill’s disclosure is not sup-
`ported by substantial evidence, we reverse.
`
`BACKGROUND
`
`A. The ’310 Patent
`
`The ’310 patent explains that in conventional data pro-
`cessing systems, data items suchasfiles are typically iden-
`tified by their user-created alphanumeric name and/or
`pathnameorlocation. J.A. 69 at 1:53-2:5. Certain prob-
`lems arise, however, using traditional naming conventions.
`For example, if one device transfers a data item to a second
`device using just the name associated with the data item,
`itis possible that the data item already exists on the second
`device, and a duplicate of the data item will be created.
`J.A. 69-70 at 2:63-3:9. The ’310 patent contemplates a
`method and apparatus for resolving this and other con-
`cerns by creating a substantially unique identifier for each
`data item in the data processing system that is independ-
`ent of the data item’s user-defined name, location, etc., but
`rather is dependent on only the content of the data item
`itself.
`J.A. 70 at 3:52-58. The identifier for a particular
`data item is created by applying a cryptographic hash func-
`tion to the data item. J.A. 74 at 12:21-26. The outputof
`the hash function is the content-based identifier or “True
`Name,” whichis “virtually guaranteed” to be unique to the
`data item. Jd. The system uses the content-based identi-
`fier alone to determine whether a particular data item is
`
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`present on the system. J.A. 70 at 3:59-62. When the data
`item’s contents are changed, the content-based identifier of
`the data item also changes. See J.A. 86 at 35:55-68.
`
`The ’310 patent explains that content-based identifiers
`can be used for various purposes in data processing sys-
`tems, including, for example, to identify data items in a “li-
`cense table.” J.A. 74 at 11:33-43. The patent describes a
`license table as a two-field database containinga list of con-
`tent-based identifiers and, for each content-based identi-
`fier, a list of users authorized to access the data item
`associated with the content-based identifier. Id.
`
`Claim 24 is illustrative:
`
`24. A computer-implemented method implemented
`at least in part by hardware comprising one or
`more processors, the method comprising:
`
`(a) using a processor, receiving at a first computer
`from a second computer, a request regarding a par-
`ticular data item, said request includingat least a
`content-dependent name for the particular data
`item, the content-dependent name being based, at
`least in part, on at least a function of the data in
`the particular data item, wherein the data used by
`the function to determine the content-dependent
`name comprisesat least someof the contentsof the
`particular data item, wherein the function that was
`used comprises a messagedigest function or a hash
`function, and wherein two identical data items will
`have the same content-dependent name; and
`
`(b) in responseto said request:
`
`(i) causing the content-dependent name of
`the particular data item to be compared to
`a plurality of values;
`
`Gi) hardware in combination with software
`determining whether or not access to the
`
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`PERSONAL WEB TECHNOLOGIES, LLC v. APPLE, INC.
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`particular data item is unauthorized based
`on whether the content-dependent name of
`the particular data item correspondsto at
`least one of said plurality of values, and
`
`(iil) based on said determiningin step (ii),
`not allowing the particular data item to be
`provided to or accessed by the second com-
`puterif it is determined that access to the
`particular data item is not authorized.
`
`J.A. 88.
`
`B.
`
`Initial IPR Proceedings
`
`In September 2013, Apple filed a petition requesting an
`IPR of claims 24, 32, 701, 81, 82, and 86 of the 310 patent,
`asserting multiple grounds of unpatentability. Personal-
`Web filed a preliminary patent owner response, and, in
`March 2014, the Board instituted review on the ground
`that the petition raised a reasonable likelihood that the
`challenged claims were unpatentable under 35 U.S.C.
`§ 103(a) for obviousness over Woodhill in view of Stefik. Af-
`ter PersonalWebfiled a patent owner response and Apple
`filed a reply, the Board held a hearing. In March 2015, the
`Boardissued a final written decision concluding that Apple
`had demonstrated by a preponderanceof the evidence that
`the challenged claims were unpatentable under § 103(a)
`over Woodhill in view of Stefik.
`
`C. Woodhill
`
`Woodhill discloses a distributed management system
`for backing up and restoring data files. See J.A. 1674 at
`1:11-17.
`In Woodhill, files are apportioned into 1 MB?
`
`Thoughpart of the IPR process, claim 70 is not be-
`1
`fore us on appeal.
`2
`The final binary object in the file may be less than
`1 MB insize.
`
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`“binary objects,” which in some instances are apportioned
`even further into 1 KB3 “granules.” J.A. 1675 at 4:21—30,
`J.A. 1677 at 7:47—-59, J.A. 1680-81 at 14:65-15:4. Woodhill
`explains that the system uses “Binary Object Identifiers,”
`or
`for granules, “contents
`identifiers,” to determine
`whether a binary object or granule has changed from one
`version of the file to the next.
`J.A. 1678 at 9:9-27, J.A.
`1682 at 17:50-64. Only those binary objects or granules
`whose content has changed need to be backed up, thereby
`reducing the amount of data that needs to be transmitted
`during a backup procedure.
`Id. at 9:6-9, 9:23-27, J.A.
`1680-81 at 14:53-15:8. Woodhill explains that.every new
`or changed binaryobject is backed up onto a remote backup
`file server, and that a compressed copy of every binary ob-
`ject that the system would need in order to restore a cur-
`rent version of a file to a previous version of thefile is
`stored somewhereon thelocal area network other than on
`the local computer. J.A. 1678 at 9:30—44.
`
`Woodhill discloses a File Database containing three
`levels of records. J.A. 1675 at 3:45-54. At the highestlevel,
`File Identification Records are stored for eachfile that has
`been backed up by the system.
`Id. at 3:54—56. Each File
`Identification Record includes, inter alia, the files name
`and location. Jd. at 3:57-63. At the secondlevel, each File
`Identification Record is associated with one or more
`Backup Instance Records, each of which contains infor-
`mation about a backup versionof the file. Id. at 3:64—4:2.
`Each Backup Instance Record includes, inter alia, a link to
`the File Identification Record. Jd. at 4:2-11. At the third
`level, each Backup Instance Record is associated with one
`or more Binary Object Identification Records (depending
`on the size of the file).
`Jd. at 4:12-47. A Binary Object
`Identification Recordis created for each binary object of the
`
`The final granule in the binary object may be less
`3
`than 1 KB insize.
`
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`Jd. at 4:30-34. Each Binary Object
`backup file version.
`Identification Record includes,
`inter alia, a link to the
`Backup Instance Record, the Binary Object Size, the Bi-
`nary Object Offset, and the Binary Object Hash.
`Id. at
`4:35—43.
`
`The Binary Object Size and the Binary Object Hash,
`together with other information not relevantto this appeal,
`make up the “Binary Object Identifier’ for that version of
`the binary object. Id. at 4:43-47. The Binary Object Iden-
`tifier is unique to a particular binary object because of the
`Binary Object Hash field, which is created by applying a
`cryptographic hash algorithm to contents of the binary ob-
`ject. J.A. 1677 at 8:22—35. Woodhill explainsthat thecrit-
`ical feature of the Binary Object Identifier is that, because
`it is based on the contents of the binary object, the identi-
`fier changes when the contents of the binary object change.
`Id. at 8:58-62. Duplicate binary objects can therefore be
`recognized from their identical Binary Object Identifiers
`even if they reside on different types of computers in the
`same network. Id. at 8:62-65.
`
`D. Stefik
`
`Stefik discloses an authentication system for control-
`ling access to digital works. J.A. 1632 at 3:58-4:12. Each
`digital work’s unique identifier and associated usage
`rights, among other information, are stored in a repository.
`J.A. 1635 at 9:15-61. A user accesses a digital work over a
`network using a “digital ticket,” which entitles the ticket
`holder to exercise usage rights associated with the work
`because, for example, the user has paid for access.
`J.A.
`1632 at 3:59-64.
`
`E. First Federal Circuit Appeal
`
`PersonalWeb appealed the 2015 Board unpatentability
`decision to our court, and on February 14, 2017, we issued
`an opinion affirming the Board’s claim construction and va-
`cating and remanding the Board’sobviousnessfinding for
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`further consideration. See Pers. Web Techs., LLC vu. Apple,
`Inc., 848 F.3d 987 (Fed. Cir. 2017) (PersonalWeb I. We
`noted that noneof the parties disagreed that Woodhill’s Bi-
`nary Object Identifier corresponded to the claimed content-
`based identifier’ for a data item of the 310 patent. Id. at
`991. However, we determined that the Board’s analysis
`with respect
`to obviousness—including both whether
`Woodhill and Stefik disclosed all of the elements recited in
`the challenged claims and whethera skilled artisan would
`have been motivated to combine them in the mannerre-
`cited in the 310 patent—wasinadequate. Id. at 993.
`
`The main claim element in dispute in that appeal, as
`in this appeal, was claim 24’s “causing the content-depend-
`ent nameof the particular data item to be compared toa
`plurality of values.” Jd. The Board had cited only Stefik as
`satisfying this element, but Apple madeclearin its petition
`that it relied on only Woodhill for this element.
`Jd. We
`disagreed with the Board’s use of Stefik and instructed the
`Board to evaluate whether column 17 of Woodhill, which
`was the only portion of Woodhill cited by Apple in its peti-
`tion, taught this element. Id. We also disagreed with the
`Board’s motivation-to-combine analysis, which merely af-
`firmed Apple’s allegation that a skilled artisan “would have
`allowed for the selective access features of Stefik to be used
`with Woodhill’s content-dependentidentifiers feature.” Id.
`(emphasis omitted). We explained that this reasoning said
`nothing more than that the two references could be com-
`bined, not that there would been a motivation to combine
`them,
`and lacked any explanation as
`to how the
`
`In PersonalWeb I, we used the term “content-based
`4
`identifier” to refer to multiple claim terms including “con-
`tent-dependent name,” “content-based identifier,” and “dig-
`ital identifier,” because no issue before us turned on any
`differences between them.
`Jd. at 990. We do the same
`here.
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`combination of the two references was supposed to work.
`Id. at 993-94. We remanded for the Board to reconsider
`the merits of the obviousness challenge. Id. at 994.
`
`The Board ordered additional briefing by the parties to
`explain where Apple did or did not make a propercase of
`obviousness onthe instituted ground. J.A.4.
`
`F. Board’s Remand Analysis
`
`On remand, the Board maintained the same obvious-
`ness theory of unpatentability, except that the Board re-
`placed its previous reliance on Stefik for teaching the
`“compared to a plurality of values” element with reliance
`on column 17 of Woodhill. J.A. 13-16. The Boardalso ex-
`panded its analysis of a skilled artisan’s motivation to com-
`bine Woodhill and Stefik. J.A. 16-18.
`
`Element (b)(i) of claim 24 is the main point of conten-
`tion between the parties.
`It recites, after “in response to
`said request,” “causing the content-dependent nameof the
`particular data item to be compared to a plurality of val-
`ues.” J.A. 88 at 40:15-17. The Board pointed to Apple’s
`petition, which cited column 17, lines 40 to 46 of Woodhill:
`
`then continues with step 446
`Program control
`where the Distributed Storage Manager program
`448 transmits an “update request” to the remote
`backup file server 12 which includes the Binary
`Object Identification Record 58 for the previous
`version of each binary object as well as thelist of
`“contents identifiers” calculated in step 444.
`
`J.A. 14. The Board continued to point to Apple’s petition,
`which cited Apple’s expert, and stated: “in order to deter-
`mine which data needs to be restored by the update re-
`quest, the remote backupfile server of Woodhill must be
`able to reference its local files using the informationit re-
`ceives - namely the Binary Object Identification Record.”
`Id.
`(emphasis added) (brackets and internal quotation
`marks omitted). The Board then adopted Apple’s expert’s
`
`

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`9
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`conclusion that the “referencing necessarily must be accom-
`plished” using “the remote backup fileserver,” which
`“maintains somesortoffile system or other mapping (..e.,
`a database) that allows the Binary Object Identification
`Record to serve as a lookupfor the requisite file data that
`is to be restored.” Jd. (emphasis added). The Board there-
`fore concluded that Woodhill, without saying so, neces-
`sarily comparesthe content-based identifier (Binary Object
`Identifier) of the particular data item (binary object) to a
`plurality of values (an unmentioned but necessarily pre-
`sent database of Binary Object Identifiers). In other words,
`the Board found that Woodhill inherently teaches compar-
`ing a Binary Object Identifier to a plurality of Binary Ob-
`ject Identifiers.
`
`As to Stefik, the Board described Stefik as “a system
`that addresses the problem of preventing unauthorized ac-
`cess to digital works with an access request utilizing a
`unique identifier for the digital work.” J.A. 15. The Board
`stated that it “agree[d] with Apple that access provided in
`Stefik would necessarily require a comparison between the
`unique identifier and other values to see if a match can be
`obtained,” citing Apple’s expert testimony as support. J.A.
`15-16. Apple further contended that “a skilled artisan
`would have combined the backup and restore system in
`Woodhill with the repository in Stefik to add an authoriza-
`tion layer to prevent unauthorized users from accessing a
`different user’s back upfiles.” J.A. 16. The Board con-
`cluded that this rationale was sufficient, and that Apple
`had demonstrated by a preponderanceof the evidence that
`the challenged claims were unpatentable under § 103(a) as
`obvious over Woodhill and Stefik. J.A. 17-18.
`
`PersonalWeb appealed both the Board’s inherency
`finding and its motivation-to-combine finding. We have ju-
`risdiction under 28 U.S.C. § 1295(a)(4)(A).
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`DISCUSSION
`
`“We review the Board’s ultimate determination of obvi-
`ousness de novo andits underlying factual determinations
`for substantial evidence.” PersonalWeb I, 848 F.3d at 991.
`“On the factual components of the inquiry, we ask whether
`a reasonable fact finder could have arrived at the agency’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.” Jd. (internal brackets
`and quotation marks omitted).
`
`We conclude that the Board’s inherency finding derived
`from column 17 of Woodhill for teaching the “compared to
`a plurality of values” limitation lacks substantial evidence.
`While it is possible that Woodhill’s system utilizes an un-
`stated Binary Object Identifier lookup table to locate bi-
`nary objects of a previous version of a file that is going to
`be restored (column 17 of Woodhill), mere possibility is not
`enough. “Inherency ... may not be established by proba-
`bilities or possibilities.” PAR Pharm., Inc. v. TWI Pharm.,
`Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). “The mere fact
`that a certain thing may result from a given set of circum-
`stances is not sufficient.” Jd. (emphasis added). Rather, a
`party must “show that the natural result flowing from the
`operation as taught would result in the performanceof the
`questioned function.” Jd. (emphasis in original).
`
`As PersonalWeb suggests, an equally plausible, if not
`more plausible, understanding of Woodhill
`is
`that
`Woodhill’s system uses conventional file names and loca-
`tions to locate files and the Binary Object Offset field to
`locate a given binary object within a file. Before the pas-
`sage relied on by Apple and the Board(lines 40 to 46), col-
`umn 17 states that Woodhill’s system “obtains from the
`user the identities of the current and previous versions of
`the file (comprised of binary objects) which needsto be re-
`stored.” J.A. 1682 at 17:28-32 (emphasis added); see also
`J.A. 1670 at Fig. 5I (step 442). The next sentence confirms
`
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`jl
`
`that the file is “user-specified.” J.A. 1682 at 17:32-35. The
`Board’s proffered look-up table is therefore unnecessary to
`locate the current or previous versionof thefile.
`
`Even if the file was not specified by the user, Woodhill’s
`only disclosed methodof locating a current or previousfile
`is by searchingfor the file using standard file block infor-
`mation, including thefile name and location. J.A. 1676 at
`5:46-6:11. Woodhill does not disclose searching for a file
`based on a content-based identifier.
`
`As to locating binary objects within a file, Woodhill ex-
`plains that the system compiles a list of these binary ob-
`jects using “information .
`.
`. obtained from File Database
`25” after the identity of the file is obtained. J.A. 1682 at
`17:32-36, J.A. 1670 at Fig. 5I (step 448). Although this
`portion of Woodhill’s specification does not specify what ex-
`actly in the File Database is used to locate a particular bi-
`nary object within a given file, Woodhill explains in column
`9 that binary objects can be located within a particularfile
`using the Binary Object Stream Type field and the Binary
`Object Offset field of each Binary Object Identification Rec-
`ord. J.A. 1678 at 9:14-22. That disclosure, albeit at a dif-
`ferent
`location in Woodhill’s written description than
`column 17, suggests that Woodhill contemplated a means
`for locating binary objects that would make Apple and the
`Board’s proposed look-up table unnecessary for Woodhill’s
`restore process described at column 17. As PersonalWeb
`correctly points out, the only disclosed use of Woodhill’s Bi-
`nary Object Identifier is to perform a one-to-one compari-
`son with the Binary Object Identifier associated with the
`backed-up version of the binary object, which occurs after
`the appropriate binary object has been located, according
`
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`to column 9. Neither Apple nor its expert provided any ad-
`equate responseto this reading of Woodhill.6
`
`Because wefind that the proposed, theoretical Binary
`Object Identifier look-up table that Apple and the Board
`rely on does not necessarily exist in Woodhill, the Board’s
`reliance on inherency for that element in its obviousness
`analysis was improper. Apple provided nootherbasis for
`this element of comparing a content-based identifier to a
`plurality of values being disclosed or otherwise obvious to
`a skilled artisan at the time of the invention. Wetherefore
`reverse the Board’s finding of obviousness over Woodhill in
`view of Stefik. We need not reach the question of motiva-
`tion to combine. We have considered the parties’ remain-
`ing arguments and find them unpersuasive.
`
`REVERSED
`
`5 We also note that the binary object look-up table
`proffered by Apple and the Board could lead to a peculiar
`design if it contained multiple binary objects for every large
`file on the system, as Apple’s counsel alleged at oral argu-
`ment, thereby requiring a comparison of a particular Bi-
`nary Object
`Identifier
`to millions of Binary Object
`Identifiers not even associated with the correct file. See
`Oral Argument at 14:20-15:50 (acknowledging that there
`could be ten million Binary Object Identifiers in the look-
`up table for a far smaller numberoffiles).
`
`

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`Anited States Court of Appeals
`for the federal Circuit
`
`PERSONAL WEB TECHNOLOGIES, LLC,
`Appellant
`
`APPLE, INC.,
`Appellee
`
`2018-1599
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2013-
`00596.
`
`JUDGMENT
`
`THIS CAUSE having been considered,it is
`
`ORDERED AND ADJUDGED:
`
`REVERSED
`
`ENTERED BY ORDER OF THE COURT
`
`

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`March8, 2019
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`

`

`Case: 18-1599
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`Document:52
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`Page:1
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`Filed: 06/12/2019
`
`Antted States Court of Appeals
`for the federal Circuit
`
`PERSONAL WEB TECHNOLOGIES, LLC,
`Appellant
`
`Vv.
`
`APPLE, INC.,
`Appellee
`
`2018-1599
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2013-
`00596.
`
`MANDATE
`
`In accordance with the judgmentof this Court, entered
`March 08, 2019, and pursuant to Rule 41 of the Federal
`Rules of Appellate Procedure,
`the formal mandate is
`hereby issued.
`
`awarded to appellant Personal Web
`are
`Costs
`Technologies, LLC in the amount of $444.96 and taxed
`against the appellee Apple, Inc.
`
`FOR THE COURT
`
`

`

`Case: 18-1599
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`Document:52
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`Page:2
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`Filed: 06/12/2019
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`June 12, 2019
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`