Addressing the role of common sense in the post-KSR obviousness analysis, the U.S. Court of Appeals for the Federal Circuit held that common sense does not necessarily “require explication in any reference or expert opinion” in order to invalidate a patent claim for obviousness. Perfect Web Technologies, Inc. v. InfoUSA, Inc., Case No. 09-1105 (Fed. Cir., Dec. 2, 2009) (Linn, J.).
Perfect Web sued InfoUSA for infringing certain patent claims directed to “methods of managing bulk e-mail distribution to groups of targeted customers.” The claimed method included four steps. The first three steps involved sending bulk e-mails to a group of target recipients and calculating the quantity of e-mails successfully received by that group. The fourth step entailed “repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity [of successfully received e-mails].” InfoUSA moved for summary judgment of invalidity. The district court granted InfoUSA’s motion for summary judgment, finding that steps (A)-(C) of the asserted method claim were known in the prior art and that step (D) was “merely the logical result of common sense application of the maxim ‘try, try again.’”
On appeal, the parties agreed that steps (A)-(C) were disclosed in the prior art and that step (D) did not appear in the prior art. Thus, the principal issue before the Federal Circuit was whether common sense would have taught step (D). The Court affirmed the district court, holding that the method claim was obvious. The Court began its obviousness analysis by reiterating that “common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention.” The Court also noted that, while common sense must be based on a reasoned explanation that avoids conclusory generalizations, it does not require a specific hint or suggestion in a particular reference. In light of the Court’s prior statements regarding common sense and the Supreme Court’s statements in KSR, the Court held that “while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” The Court made clear, however, that a court must provide a clear and reasoned explanation for finding a patent claim to be obvious. In other words, “common sense” is not a synonym for “obviousness.” As the court warned, in order to invoke common sense as a basis for reaching a conclusion of obviousness, “a district court must articulate its reasoning with sufficient clarity for review.”
Turning to InfoUSA’s motion for summary judgment, the Court found that the district court’s common sense reasoning was based on sufficient evidence in the record even though it did not rely on expert opinion. The Court noted that “[i]f the relevant technology were complex, the court might require expert opinion.” However, because the technology at issue was simple, the Court concluded that no expert opinion was required to appreciate the common sense of repeating steps (A)-(C) to achieve success.
Practice Note: If the technology at issue is complex, an accused infringer might have to point to explicit references or expert opinion in order to succeed on a common sense obviousness argument.