Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. Aug. 10, 2016) (Before Moore, Linn, and O’Malley, J.) (Opinion for the court, O’Malley, J.) Click Here for a copy of the opinion.
In Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (“Board”) inter partes review decision finding invalidity in which the Board relied on “common sense” to fulfill a claim limitation which was not particularly disclosed by prior art.
The patent at issue, challenged by Apple Inc., Google, Inc. and Motorola Mobility LLC (“Petitioners”) and owned by Arendi S.A.R.L. (“Arendi”), is directed toward 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.
More specifically, the patent discloses that the first program might display a letter that contains a person’s name while the second computer program uses the name as a search term to identify an address for that name. If the search finds a single related contact with only one address, that address is inserted into the document. If, instead, the search finds more than one related contact or address, the search results are displayed, and the user can select an address for insertion into the document. The sole prior art reference was U.S. Patent No. 5,859,636 (Pandit), which taught the concept of recognizing different classes of text in a document and providing suggestions based on it. Although not contained in Pandit, the PTAB found that it would have been obvious, as a matter of common sense, to modify Pandit to include the required preliminary step of searching for the identified number in the address book “in order to avoid multiple entries of the same address.”
The Federal Circuit’s analysis on appeal involved the single question of whether the Board misused “common sense” to conclude that it would have been obvious to supply a missing limitation in the Pandit prior art reference to arrive at the claimed invention. The Court recognized that “‘[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.’” However, “there are at least three caveats to note in applying ‘common sense’ in an obviousness analysis.” First, common sense is typically invoked to provide a known motivation to combine, and not to supply a missing claim limitation. Second, while some cases have allowed use of common sense to supply a missing claim limitation, “the limitation in question was unusually simple and the technology particularly straightforward.” Third, 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.”
The Court further cautioned that, particularly in cases where “the missing limitation goes to the heart of an invention,” invoking common sense must be “supported by evidence and a reasoned explanation.” The Court agreed that the broader notion of searching for data in a database is supported by substantial evidence, including the Petitioners’ citations to the testimony of experts and the Pandit reference. However, the Court found that Petitioners failed to show why it would be proper to extrapolate from general background knowledge of searches in a database to add a search for a telephone number to the Pandit reference.
This decision favors patent owners insofar as it recognizes that increasingly prevalent conclusory PTAB findings are subject to strong challenge on appeal. The case also counsels petitioners to use common sense arguments sparingly, and otherwise support such arguments with thoroughly-reasoned analysis.
Lindsay Henner, Parker Hancock, and Puja Dave also contributed to this summary.