Perfect Web Technologies, Inc. v. InfoUSA, Inc., 2009-1105 (Fed. Cir. Dec. 2, 2009)

The asserted patent claimed a method for bulk e-mailing, where the number of successfully delivered e-mail messages was compared against a predetermined desired quantity. If the number of delivered e-mails did not reach the desired quantity, the process repeated until the desired number of delivered messages was reached. The district court granted the alleged infringer´s motion for summary judgment on invalidity based on obviousness, and the Federal Circuit affirmed. Recounting previous Supreme Court and Federal Circuit case law on the use of “common sense” in deciding obviousness, the Federal Circuit held that while the obviousness analysis depends on standard 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.” Moreover, “to invoke common sense or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.” Here, the district court adequately explained its use of common sense. In particular, the patent simply recited the repetition of a known procedure for which no expert opinion was required — repeating certain steps until a calculated quantity of sent e-mails exceeded the prescribed minimum quantity. Similarly, there was a finite number of identified, predictable solutions to suggest that the patent´s methods would have been obvious to try.

A copy of the opinion can be found here.