The United States Court of Appeals for the Federal Circuit recently addressed the issue of when and how “common sense” may be used to determine the obviousness of patent claims over a single prior art reference. In reversing a final determination of obviousness by the Patent Trial and Appeals Board (the “PTAB”), the Federal Circuit in Arendi S.A.R.L. v. Apple Inc.1 held that, in cases where “common sense” is used to supply a missing claim limitation as opposed to providing motivation to combine, such common sense must “be supported by evidence and a reasoned explanation.”2
The Patent at Issue
Arendi S.A.R.L. (“Arendi”) is the owner of U.S. Patent Number 7,917,843 (the “‘843 patent”) whose claims provide a coordinated system between a first computer program which displays a document, and a second computer program which has the ability to search an external information source. The patented technology allows users to conduct an active information search via the second computer program while maintaining access to the displayed document on the first computer program. In particular, the ‘843 patent provides a mechanism for analyzing a document in order to identify the presence of name and address information in the first computer program. After this information is identified, the second computer program may use this information to perform a search for additional information that is associated with the information identified by the first computer program. Once this additional information is located, the patented invention can then perform some action utilizing the additional information.
By way of example, the first computer program may display a document that includes a person’s name, while the second computer program may use that person’s name to find additional information related to that name, such as a person’s address. If the search by the second computer program finds only a single address result related to the person’s name, that address will be inserted into the original document. If however the search by the second program finds multiple related addresses, the search results will be displayed to the user who may then select an appropriate address to be inserted into the original document.
Arendi sued a number of technology companies, including Apple Inc., Google Inc., and Motorola Mobility LLC (collectively the “Appellees” in this case) alleging that these companies had infringed the claims of Arendi’s ‘843 patent. In response to this assertion, the Appellees filed a petition for inter partes review on the basis that the claims of the ‘843 patent were unpatentable as obvious over a single prior art reference, U.S. Patent No. 5,859,636 to Pandit (“Pandit”).3
Pandit discloses a computer-implemented method for processing a selected text, where one particular embodiment recognizes a phone number as a class of text.4 For instance, Pandit provides a program where a telephone number may be highlighted within a document, producing a pull down menu, where one of the possible options within the pull-down menu is an “add to address book” option.5
During the IPR proceeding, Arendi reasoned that the claims of the ‘843 patent were valid over the Pandit reference, arguing that Pandit does not disclose each limitation of illustrative claim 1 of the ‘843 patent. Specifically, Arendi argued that Pandit’s disclosed subroutine including a pull down “add to address book” menu does not disclose the limitation for performing a search by a second computer program as specified in claim 1.6 The Appellees however, argued that while Pandit does not disclose performing a search as specified in claim 1, it would be obvious to do so. Appellees argued that to avoid duplicate entries of the same address when using the “add to address book” subroutine disclosed by Pandit, it would be obvious to first search the address book to determine if any duplicate entries exist, and if so, to display any associated information that is found.7 The PTAB, finding the Appellees arguments persuasive, held the ‘843 patent unpatentable as obvious over Pandit. In its decision, the PTAB stated that it is “reasonable to presume, as a matter of common sense . . . that the subroutine in Pandit would search for duplicate telephone numbers and, upon locating a duplicate entry, both the first information and [second] information . . . would be displayed to the user” and that a computerized search for duplicate entries would qualify as a search as limited by claim 1 of the ‘843 patent.8 Arendi then appealed the PTAB’s decision to the Federal Circuit.
Federal Circuit’s Analysis of “Common Sense”
The Federal Circuit reversed the PTAB’s finding of obviousness, concluding that the PTAB misused the phrase “common sense” in determining that it would have been obvious to supply the missing claim limitation to Pandit in order to arrive at Arendi’s claimed invention.
In its analysis, the Federal Circuit acknowledged that “common sense and common knowledge have their proper place in the obviousness inquiry” but that common sense can only be used to inform this analysis if it is “explained with sufficient reasoning.”9 The Federal Circuit then provided three caveats that must be regarded when applying “common sense” in an obviousness analysis.10
The first caveat is that common sense may typically be invoked only to provide a known motivation to combine, but not to supply a missing claim limitation as was proffered here.11 The second caveat is that, in rare circumstances where common sense is invoked in order to supply a limitation that is missing from the prior art, the limitation generally must be unusually simple and the technology at issue must be straightforward.12 In this case, the Federal Circuit found that the missing claim limitation in Pandit was not unusually simple, and in fact played a “major role in the subject matter claimed” by the ‘843 patent.13 The third and final caveat made note of the fact that the Federal Circuit has repeatedly warned that 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.”14 In this case, the only prior art relied on to show obviousness was Pandit, which is explicitly missing a limitation that goes to the heart of Arendi’s invention. Under these circumstances, in order to find Arendi’s claims were obvious, the PTAB needed to provide evidentiary support to show that common sense would lead an ordinary person to search for duplicate telephone numbers before using the “add to address book” function to add numbers to an entry in an address book. The only evidence that the PTAB relied on was a declaration by Appellees’ expert. This declaration provided no testimony regarding searching an address book with a telephone number, but instead stated that it would have been obvious for a person of ordinary skill in the art to determine whether an address book entry already existed before adding an entry and that generally searching for data in a database was well-known in the art. The Federal Circuit however held that, in order for the common sense obviousness argument to fly, the Appellees needed 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” in order to show that such a search would be within the common knowledge of a person skilled in the art.15 In this case, the Appellees failed to do so.
Practical Implications of Arendi v. Apple
Based on the Federal Circuit’s analysis in this case, it would seem that findings of invalidity based merely on common sense may be facing more scrutiny and may be challenged in PTAB proceedings and in response to rejections from patent examiners during prosecution. This case may thus provide a positive outlook for patent owners facing validity challenges based on obviousness.
This case also serves as a warning to those parties seeking to invalidate patent claims in post grant proceedings or otherwise, that without sufficient and completely-reasoned evidentiary analysis, any argument for common-sense based obviousness objections will likely be rejected.