Inherency is a high standard to meet. It is not enough, for example, that a particular function is performed by a given device to infer that that device inherently includes a component for that function. “Inherency requires more than probabilities or possibilities.”
Background / Facts: The patent at issue relates to a mobile device containing a personal information manager (PIM). PIMs typically are applications that manage scheduling, communications and similar tasks. Microsoft Outlook is an example of a PIM. In this regard, the claims recite a mobile device comprising “a synchronization component configured to synchronize individual objects stored on the object store [of the mobile device] with remote objects stored on a remote object store.” In raising an invalidity defense, the accused infringer Motorola cited the Apple Newton MessagePad as a prior art personal digital assistant. While the Newton Connection Utilities manual describes a synchronization feature for synchronizing a desktop with the MessagePad, it only describes the synchronization tool as being installed on the desktop.
Issue(s): Whether a corresponding synchronization component is inherently present in the Apple Newton MessagePad itself to allow synchronization operation with the desktop.
Holding(s): No. “[T]he Newton Connection Utilities manual simply states that ‘[t]he Newton Connection Utilities work with the Newton 2.0 operating system,’ … and that synchronization may be initiated using the Apple Newton MessagePad. … However, the manual does not identify what role, if any, the operating system has in the synchronization of the Apple Newton MessagePad and the desktop. While the operating system presumably allowed the MessagePad to operate at all (without which synchronization, or anything else, might have been impossible), substantial evidence supports the Commission’s conclusion that Motorola did not present clear and convincing evidence that the operating system necessarily required any additional capacity that would qualify it as a component ‘to synchronize.’ Inherency requires more than probabilities or possibilities.”