Federal Circuit Dislikes “Common Sense”
The Federal Circuit recently reversed a PTAB decision in which the Board relied on common sense to invalidate a patent on obviousness grounds. Arendi S.A.R.L. v. Apple Inc., No. 2015-2073 (Fed. Cir. Aug. 10, 2016).
Background. Apple, Google, and Motorola filed an IPR petition challenging Arendi’s U.S. Patent No. 7,917,843 (“the ’843 patent”). The ’843 patent is directed to the coordination of two computer programs. Essentially, the claimed invention allows a user to input information into a first program, such as a word processor, and conduct a search related to that information in a second program, such as a database, without leaving the first program.
Apple et al. argued the claims were obvious in view of a single prior art reference, referred to as Pandit. Pandit teaches a program that recognizes different classes of text in a document and provides suggestions for further action based on the recognized class. For example, the program can detect a phone number in a document and suggest “Add to Address Book” in a pop-up menu. The petitioners argued that only the search limitation was absent from Pandit, and it would have been common sense to one of ordinary skill in the art to search for a phone number in an address book before adding it to avoid duplicate entries.
PTAB Decision. Siding with the petitioners, the Board stated, “We find it reasonable to presume, as a matter of common sense and at the time of invention . . . the subroutine in Pandit would search for duplicate telephone numbers.” The Board found that a person using a paper address book would not be expected to search for duplicates, but it would be obvious to utilize a computerized search to check for duplicates when using a digital address book.
Federal Circuit Reversal. The Court acknowledged that “common sense, common wisdom, and common knowledge” have a place in the obviousness analysis, but found that the Board had misapplied Federal Circuit law. The Court identified three caveats to the application of common sense to the obviousness inquiry. First, common sense analysis is typically invoked when looking at motivation to combine two references, not to supply a missing limitation. Second, where common sense is relied upon to satisfy a missing limitation, the invention at issue must be particularly straightforward. Third, the Court emphasized that common sense cannot be used in lieu of reasoned analysis and support, and “the Board’s utter failure to explain the common knowledge and common sense on which it relied is problematic.” Applying this guidance, the Court found the Board erred in relying on conclusory statements and unspecific expert testimony to supply the missing limitation. Moreover, the Court found the missing limitation went to the heart of the ’843 patent and, as such, a well-reasoned basis for applying common sense was particularly important. Accordingly, the Court reversed.
Takeaway: While the Supreme Court has confirmed a place for common sense in the obviousness analysis, the Federal Circuit has limited its applicability to circumstances where it is supported by evidence and a reasoned explanation. A reasoned explanation is particularly important when common sense is relied upon to supply a missing limitation, even more so when that limitation is an integral part of the invention.