Yesterday the United States Court of Appeals for the Federal Circuit issued an important ruling in Arendi S.A.R.L. v. Apple, Inc. In this case the Federal Circuit panel, which was made up of Judges Moore, Linn and O’Malley, overruled an obviousness ruling by the Patent Trial and Appeal Board made in an inter partes review.
On June 9, 2015, the Board issued a decision finding claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 would have been obvious. Because the Board misapplied the law on the permissible use of common sense in an obviousness analysis the Federal Circuit reversed. In a nutshell, the Federal Circuit ruled that the single reference used to support the obviousness rejection did not mention a critical element of the claim, which ordinarily cannot result in an obviousness rejection. Common sense cannot supply a missing element or limitation unless that which is missing is “unusually simple.”
Proper Use of Common Sense
The single question at issue in this case was whether the Board misused “common sense” to conclude that it would have been obvious to supply a missing limitation in a prior art reference to arrive at the conclusion that the claimed invention was in fact obvious.
The Federal Circuit, with Judge O’Malley writing for the panel, acknowledged that common sense and common knowledge do have a proper place in the obviousness inquiry, but that the Board went too far in this case.
Judge O’Malley explained that common sense is ordinarily invoked to provide a known motivation to combine and not to supply a missing claim limitation.
O’Malley recognized that in Perfect Web the Federal Circuit did authorize the use of common sense to supply a missing claim limitation, but she pointed out that this was the only case where that has been done. O’Malley further explained that in Perfect Web that which was missing was “unusually simple and the technology particularly straightforward.” In fact, in Perfect Web, which dealt with sending e-mail to an e-mail list, the missing claim limitation was nothing more than merely repeating the step of resending e-mails in accordance with the claim. Thus, O’Malley explained that Perfect Web is properly considered an exception to allowing common sense to supply a missing claim limitation, rather than the rule.
Judge O’Malley also pointed out that Federal Circuit cases have repeatedly warned against the use of common sense to supply either a motivation to combine or a missing limitation. Common sense “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified,” O’Malley wrote.
The Claimed Invention
The patent in question, U.S. Patent No. 7,917,843, is directed to providing coordination between a first computer program displaying a document and a second computer program for searching an external information source. The patent allows a user to access and conduct a search using the second computer program while remaining in the first computer program displaying the document. A computer process analyzes first information in the document to determine if it is of a type that can be used in another program to find related second information. Specifically, the ’843 patent discloses mechanisms for analyzing the document to identify the presence of name and address information.
The Board and Party Arguments
The Board stated in the final written decision that “it would have been obvious that the first step in adding to an address book is to search the address book to determine if an entry already exists with the entered information…”
The sole prior art reference was U.S. Patent No. 5,859,636 to Pandit (“Pandit”), which teaches recognizing different classes of text in a document and providing suggestions based on it. One embodiment of Pandit involves a program that recognizes a phone number as a class of text.
Arendi argued there was no evidence, much less substantial evidence, to support the Board’s finding that, as a matter of common sense, the subroutine in Pandit for “Add to address book” would start by searching for duplicate telephone numbers before adding the number to an entry for a contact in the book. Rather, Pandit is about text-dependent word recognition.
Federal Circuit Ruling
As the Board stated and Appellees did not attempt to rebut on appeal, the Pandit reference disclosed each limitation except for performing a search. Thus, the Federal Circuit was faced with a scenario where the prior art reference was missing a critical limitation. The Board used common sense to fill in this critical missing limitation and find the claim obvious.
Appellees argued simply that a search for data in a database was known in the art. According to the Appellees, “data is data,” and if searching a database for data was in the prior art, then searching that database for a telephone number is merely common sense.
The Federal Circuit wasn’t buying the Appellees argument.
Judge O’Malley wrote that the Federal Circuit did agree with the Appellees that this broader notion of searching for data in a database is found within the prior art. Where the Federal Circuit took issue was with the extrapolation relied upon by the Appellees. The Appellees failed to show why it was proper to extrapolate from this general knowledge of searching a database to it being obvious to add a search for a telephone number to the Pandit reference. According to the Federal Circuit, the Appellees failed to show why it would be common sense for the “Add to address book” function to operate by first searching for entries with the same telephone number.”
In the end this case seemed to come down to a simply problem of proof. Judge O’Malley wrote:
Rather than clearly explaining with concrete examples what benefit searching for entries with the same number would achieve, Appellees keep returning to their general mantra that Arendi’s argument against searching for a number would apply equally to a search based on a name. Yet the burden is Appellees’ to provide more than a mere scintilla of evidence of the utility of a search for a telephone number before adding the number to an address book, where such a search is not “evidently and indisputably within the common knowledge of those skilled in the art.”
In other words, rather than finding a reference that supplied the critical missing piece and explaining why a combination was proper Apple only went 95% of the way and simply thought common sense could carry them across the finish line. Unfortunately for Apple, there was no evidence provided indisputably demonstrating that missing critical limitation was within the common knowledge of those skilled in the art. Under these circumstances it is not proper to go most of the way, proclaim common sense without any evidence, and expect that the challenged invention will be ruled obvious.
Apple had the burden and they just didn’t meet it. Common sense is no substitute for evidentiary support and a well-reasoned argument.