In Arendi S.A.R.L. v. Apple, Inc., Appeal No. 2015-2073 (Fed. Cir. 2016), the Federal Circuit reversed the PTAB’s final written decision canceling claims for obviousness, on the basis that the PTAB improperly relied on “common sense” to determine that the claims were obvious.

The challenged patent is directed to a computer-implemented method for providing beneficial coordination between a first computer program displaying a document and a second computer program for searching an external information source. The Board determined that the claims were obvious over a single reference (Pandit), although Pandit did not expressly disclose a step of “performing a search” of an information source, as recited in the claims. Pandit disclosed, according to the Board, a computer program that recognizes a telephone number as a class of text in a document, and includes a menu option to add the detected number to an electronic address book. The Board relied on common sense to determine that it would be obvious to search the electronic address book for the detected phone number, to determine if an entry for the number already existed in the address book, which would satisfy the “performing a search” step not expressly disclosed in Pandit.

Although the Federal Circuit has previously recognized that common sense may properly be used in an obviousness inquiry, the court identified at least three caveats when relying on common sense:

  • First, “common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.” (p. 10).
  • Second, in Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009), the only case cited in which common sense was invoked to supply a missing claim limitation, the missing claim limitation was “unusually simple and the technology particularly straightforward.” (p. 10).
  • Finally, 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.” (p.11).

The court determined that substantial evidence did not support the Board’s finding that common sense would lead one to search for the telephone number in Pandit. The court also determined that the step of “performing a search” of an information source was a missing claim limitation and that, unlike in Perfect Web, the challenged claims would be “‘almost void of content’” if the limitation were missing because “the premise of the patent is to use information in a first program to find related information in a second program.” According to the court, the petitioners failed to clearly explain with concrete examples the benefit that searching for entries with the same phone number would achieve if added to the prior art reference, and found nothing in the record to support the Board’s conclusion that supplying the missing limitation in the challenged patent would be obvious to one of skill in the art.

Rather than vacating and remanding the case, the court reversed the PTAB’s decision, noting “this is not a case where a more reasoned explanation than that provided by the Board can be gleaned from the record.” In light of the court’s decision, practitioners should ensure a reasoned and detailed explanation supporting the use of common sense is entered into the record in any obviousness challenge relying on common sense.