Common sense is no substitute for reasoned analysis and evidentiary support

By Gene Quinn
August 11, 2016

Common Sense PillsYesterday 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.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 15 Comments comments.

  1. Bemused August 11, 2016 9:26 am

    Gene,

    Nice to see the CAFC starting to push back on (some) of the more absurd PTAB rulings. Don’t know that I’d classify this as a trend just yet but every little bit helps.

  2. step back August 11, 2016 10:49 am

    Bemused @1, don’t fool yourself. “Common sense” is the demon seed offspring of KSR v. Teleflex, another piece of buffoonery by the know it all demigods of the SCOTUS.

    If you will recall, in KSR the SCOTeti (Supreme Courtesans of the Empire, taken individually) made findings of fact as to “market forces” and the simplicity of converting a mechanical brake interface into an electronic one. That is just another way of saying “Apply it”. To them all technology is an easy make-it-so project over the weekend. All technology is the outcome of “common sense”. There are no “significantly more” things to be found, try hard as you may to spot them from that high up view off the bench. 😉

  3. IPdude August 11, 2016 9:16 pm

    This provides some hope that we still have some semblance of checks and balances. Especially given the cozy relationship Google has with our Government.

    Gene – I know you feel Clinton is middle of the road but the Wikileaks disclosure about how entrenched Google is with Clinton, the Pentagon and White House makes for a bad formula for IP rights under her regime. I hope I’m wrong.

  4. Gene Quinn August 11, 2016 11:16 pm

    Bemused-

    I agree. It is not a trend, but a ray of hope. Will examiners follow it or ignore it like DDR and Enfish? We will know in about 6 months the true impact of the case.

    -Gene

  5. Gene Quinn August 11, 2016 11:20 pm

    IPdude-

    I can’t say that I’ve kept up with the Wikileaks documents. I’ve been doing an unusual amount of business travel this summer.

    Having said that, I’m skeptical of anything that suggests that Clinton is close to Google. Google was extraordinarily close to the Obama Administration, yes. From what I’ve heard a President Hillary Clinton will not be following the Google playbook on patents. Who knows what will happen. It looks like we will know soon enough though.

    -Gene

  6. Paul F. Morgan August 12, 2016 10:36 am

    PTAB APJs must have the normal human aversion to being criticized and overruled. Also, PTAB reversals are not that common, so they are all likely to be aware of them. Thus, I would be surprised to see many more PTAB decisions risking relying on the words “common sense.”

  7. Night Writer August 12, 2016 1:55 pm

    @5 Gene, IDK. Clinton has a long history of following the ivy pseudo-intellectuals on these type of matter, e.g., trade, de-regulation of Wall Street.

    Lemley and Google are quite a block saying to burn down all patents and Google has an infinite supply of money to help that happen. Still, you can’t get worse than Obama with Lee, Taranto, and Stoll.

  8. IPdude August 12, 2016 11:45 pm

    @7 Night Writer, the Clinton Foundation has taken a fair amount of money from Pfizer. One would hope that big pharma would have some influence on her. She could make both Google and big pharma happy by creating carve outs for IPRs, etc. as it applies to pharma patents and continue to dilute software.

  9. Anon August 13, 2016 9:16 am

    IPdude,

    “Divide and Conquer” is hardly a “good thing” – for anyone who understands the nature of innovation and why we (the Royal We) would want to have a strong patent system.

  10. Paul F. Morgan August 13, 2016 12:23 pm

    An amazing number of voters seem to think that legislative changes get made Presidents, rather than Congress.

  11. IPdude August 13, 2016 11:40 pm

    @9 Anon, I completely agree. I was trying to guesstimate how Clinton would try to appease her donors. I’m pro patent, small business and innovation, as I’m the ceo of a software startup and inventor of a portfolio of patents (with a number of “efficient infringers” profiting from my R&D).

    @10 Paul, Presidents do have an impact with their appointments, e.g., M. Lee with the USPTO. Google lobbied Congress to pass the AIA. Also lobbied Obama to appoint Lee, who abused the AIA to invalidate an astonishing number of patents. It’s all tied together. It takes a village to destroy the patent system.

  12. step back August 14, 2016 8:09 am

    @11 IP-dude:

    Excellent one liner: “It takes a village …”

    Yes indeed. Especially a village populated by village idiots each of whom is willing to close his/her eyes as the Emperor parades by stark naked. Their eyes remain shut and their mouths remain closed under the theory that the Emperor (aka the SCOTeti) can do no wrong (in Alice/Mayo).

    IMHO, those of the patent bar who know better should not be keeping their eyes closed and their mouths shut. We should be persistent in insisting that everyone in the village, from President on down should be calling out the SCOTeti on the illegality and ridiculousness of their Alice/Mayo proclamations. Maybe a vote swinging one or two of the SCOTeti will wake up and realize, OMG what we said in Alice/Mayo is unsupported total nonsense disconnected from our appellate functions and driven by the mind-bending briefs of them who we thought were our “friends” (the amici curie).

  13. Anon August 14, 2016 8:47 am

    Let me add one wrinkle to “the village” meme:

    The “voices” of that village are accorded to how much money is flowing – with “voices” being skewed by Citizens United (along with just plain good ol graft and “lobby dollars” being whispered in the captured ears of key Congressional players), the village is no longer controlled by or for the good of everyone.

    Sure, everyone is equal, it is just that some are more equal than others (and those some one are the ones with the louder Citizen United style “voices”)

  14. Eric Berend August 14, 2016 9:15 pm

    @ 5. (Gene), 7. (Night Writer) and 8. (IPDude): After what has been seen from the likes of Alphabet/Google, can anyone doubt that maintaining illicit influence with a H.R. Clinton administration has been perceived as a strategic priority, for that mendacious plunderer and its allies? It’s all about ensuring that their little captive government ‘of the infringers, by the infringers and for the infringers, shall not perish from this Earth’.

  15. Anon August 15, 2016 6:32 am

    Follow the dollar$