Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

PersonalWeb Techs., LLC v. Apple, Inc., Appeal No. 2018-1599 (Fed. Cir. March 8, 2019)

In a second appeal in this inter partes review matter, the Federal Circuit reversed the PTAB’s finding of invalidity, ending this five-year old case.

The patent in this case concerns certain improvements in data processing systems.  In 2015, the PTAB found the challenged claims unpatentable over two prior art references.  On February 14, 2017, the Federal Circuit affirmed the PTAB’s claim construction, but remanded the obviousness findings.  PersonalWeb Techs., LLC v. Apple, Inc., 848 f. 3d 987 (Fed. Cir. 2017).  In that case, the primary dispute was about a single claim element.  The Board had cited only “Stefik” as satisfying that element, but Apple had “made clear in its petition that it relied on only Woodhill for this element.”  The Court disagreed with the Board’s reliance on Stefik and instructed the Board to evaluate whether the limited portion of Woodhill taught the element.  The Court also reversed the Board’s analysis concerning the purported motivation to combine the art, finding it insufficient.

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Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt