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
(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
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.
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