CAFC: Obviousness Analysis Must be Based on More than Common Sense

Federal CircuitArendi 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.

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Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 3 Comments comments.

  1. Peter R. Kramer August 22, 2016 8:40 am

    If one considers the exemplary rationales given by the USSC in KSR it becomes evident that an obviousness rationale must be a general definition or principle for which a particular example of obviousness fits. A primary property these rationales have in common is that they are presented in abstract form (per a proper definition). None of the rationales contain a reference to any particular apparatus, manufactured item, composition or process. The inference here is that the abstracted rationale forms a proper definition which itself includes a common sense justification or strong suggestion supporting the conclusion of obviousness. It should also be noted that each of these rationales explains why, in view of their definitions, that it would be a matter of common sense to apply the obvious modification to solve the problem at hand. This is true because if a modification is obvious to a person of ordinary skill in the art, it is obviously a matter of common sense to apply it. Anything that is a matter of common sense is itself obvious. It should be evident that all of the exemplary rationales recited by the Court in KSR share the character of not only obviousness but also common sense. Common sense does not form a separate category of rationale. It is part and parcel of every rationale for obviousness because, as noted above, if a solution is obvious then it is a matter of common sense to apply it. “Common sense” therefore is descriptive of a category that encompasses rationales for obviousness but is not in itself a rationale. In other words, without a rationale which is comprised of its definition in abstract form (i.e. a principle) so that it can be generally applied, an explanation for obviousness fails to qualify as a legitimate rationale. Any time a proposed rationale fails to recite a general principle that explains why the rationale is obvious, it also fails to explain why it would be a matter of common sense.
    For a more complete discussion of this problem I (quite coincidentally) wrote an article on the subject of common sense and hindsight reconstruction earlier today and published it on LinkedIn.

    https://www.linkedin.com/pulse/obviousness-hindsight-rationale-common-sense-proxy-problem-kramer?published=u

  2. Peter R. Kramer August 22, 2016 8:49 am

    Whenever I add a new entry into my Outlook contact list, if there is another entry under the same name, it asks me if In wish to replace the existing record. Similarly when titles of references are collected from multiple databases, duplicate deletion is practiced before sending the list to recipients. Thus is is a widely known general principle that itemized lists should be checked for duplicates either before or after entries are entered into the list. However, simply saying it would have been a matter of common sense, without establishing that it is well known principle that duplicates should either be prevented by a preliminary lookup or by duplicate removal after the fact, would fail to qualify as an actual rationale but rather a cursory or conclusory statement.

  3. Gene Quinn August 22, 2016 10:36 am

    Peter-

    It is also important to remember that the priority filing date for this application goes all the way back to applications filed in 1998 and in 2001, so whether it is well known today isn’t the relevant question. Since this application was examined under pre-AIA the question would have been whether it was obvious at the time of conception, which would have been earlier than any priority filing date.

    -Gene