Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was not disclosed by the prior art. When used to support a finding of obviousness, common sense is typically applied to provide a motivation to combine references, rather than to provide a limitation that is missing from the prior art. The court’s decision in this case is worth noting because it signals the Federal Circuit’s growing concern about conclusory PTAB findings of obviousness that are not supported by the record.
The technology at issue in Arendi provides coordination between a first computer program that displays a document and a second computer program that conducts a search based on the contents of the first program’s document while the document is being displayed. For example, the first program might display a letter that contains a person’s name. The second computer program then uses that name as a search term to identify an address for that name. The second program then coordinates with the first program to insert the address into the document.
The parties identified a representative claim that recited the following step:
(i) performing a search using at least part of the first information as a search term in order to find the second information, of a specific type or types, associated with the search term in an information source external to the document, wherein the specific type or types of second information is dependent at least in part on the type or types of the first information.
The sole prior art reference, U.S. Patent No. 5,859,636 (Pandit), taught the concept of recognizing different classes of text in a document and providing suggestions based on it. For example, as shown in one of its figures, Pandit disclosed recognizing a telephone number and then providing options for what could be done with that telephone number, such as adding it to an address book.
The PTAB found that it would have been obvious, simply as a matter of common sense, to modify Pandit to include a preliminary step of searching for the identified number in the address book “in order to avoid multiple entries of the same address.” Slip op. at 7 (citing Apple Inc. v. Arendi S.A.R.L., IPR2014-00208, 2015 Pat. App. LEXIS 6053, at *9 (PTAB June 9, 2015)). According to the PTAB, this preliminary step would map to the missing limitation.
The Federal Circuit’s opinion centered on a single question: whether the Board misused the concept of common sense to conclude that it would have been obvious to modify Pandit to include the missing limitation. The Federal Circuit noted that “‘[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.’” Slip op. at 9 (quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009)). But its opinion went on to state that “there are at least three caveats to note in applying ‘common sense’ in an obviousness analysis.” Slip op. at 10.
First, common sense is typically invoked to provide a known motivation to combine references, rather than to supply a missing claim limitation. Second, while in Perfect Web, common sense was used to supply a missing claim limitation, “the limitation in question was unusually simple and the technology particularly straightforward.” Id. 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.” Id. at 11.
The Federal Circuit warned that especially in cases in which “the missing limitation goes to the heart of an invention,” resorting to common sense must be “supported by evidence and a reasoned explanation.” Id. at 12-13. The court analogized the claim at issue to the claim in K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362 (Fed. Cir. 2014), where it previously distinguished the use of basic knowledge for laying out a motivation to combine references from the use of such knowledge for making “core factual findings,” such as the presence of structure meeting a particular limitation in the prior art. The court found that the appellees failed to show why it would have been common sense to modify Pandit to include the missing limitation.
This decision, along with Hear-Wear before it, is helpful for patent owners and applicants alike in rebutting findings by PTAB judges or examiners that are based on conclusory analysis. It also serves to warn post-grant petitioners or others seeking to invalidate a patent that common sense can only go so far toward a finding of obviousness post-KSR.