Common Sense Cannot Supply Missing Limitation in Obviousness Analysis: Fed. Cir. | Practical Law

Common Sense Cannot Supply Missing Limitation in Obviousness Analysis: Fed. Cir. | Practical Law

In Arendi S.A.R.L. v. Apple Inc., the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB)'s decision, holding that the PTAB erred in presuming that the common sense of a person of skill in the art would have made it obvious to supply a claim limitation missing from the prior art.

Common Sense Cannot Supply Missing Limitation in Obviousness Analysis: Fed. Cir.

Practical Law Legal Update w-002-9749 (Approx. 3 pages)

Common Sense Cannot Supply Missing Limitation in Obviousness Analysis: Fed. Cir.

by Practical Law Intellectual Property & Technology
Law stated as of 11 Aug 2016 • USA (National/Federal)
In Arendi S.A.R.L. v. Apple Inc., the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB)'s decision, holding that the PTAB erred in presuming that the common sense of a person of skill in the art would have made it obvious to supply a claim limitation missing from the prior art.
On August 10, 2016, in Arendi S.A.R.L. v. Apple Inc., the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) erred in presuming that the common sense of a person of ordinary skill in the art (POSA) would have made it obvious to supply a missing claim limitation to arrive at the claimed invention ( (Fed. Cir. Aug. 10, 2016)). The court also explained that there are several caveats to using the common sense of a POSA in an obviousness analysis.
This case was an appeal from a PTAB inter partes review (IPR) decision involving US Patent No. 7,917,843 ('843 patent), owned by Arendi S.A.R.L. The PTAB issued a Final Written Decision finding a number of claims of the patent unpatentable as obvious.
Representative claim 1 of the '843 patent describes a computer-implemented method for finding data related to the contents of a document by:
  • Displaying the document using a first computer program.
  • Simultaneously determining if the document contains information that can be searched to find related additional information that is external to the document, and then allowing the user to perform an action using the additional information (such as using a name to retrieve the person's address and then allowing the user to insert the contact information into the document).
The only prior art reference on appeal was US Patent No. 5,859,636 to Pandit, which teaches recognizing different classes of text in a document and providing suggestions for actions using this information. In one embodiment of Pandit, a program recognizes a telephone number from a document and a pull-down menu offers options for actions to perform, such as adding the number to an address book.
The PTAB found claim 1 obvious and reasoned that, as a matter of common sense, Pandit's program would search for duplicate telephone numbers when adding a number to the address book, thereby satisfying the limitation in claim 1 of the '843 patent that requires using first information to find related second information. Arendi appealed.
On appeal, the Federal Circuit reversed and held that the PTAB misused common sense to supply a missing limitation in Panduit to arrive at the claimed invention. While the court acknowledged that the common sense and knowledge of a POSA are relevant to the obviousness inquiry, it highlighted several caveats to using common sense in this context, explaining that:
  • Common sense is typically used to provide a known motivation to combine, not to supply a missing claim limitation.
  • Common sense may only supply a missing claim limitation if the limitation is unusually simple and the technology particularly straightforward (see Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1326 (Fed. Cir. 2009)).
  • References to common sense—whether to supply a motivation to combine or a missing limitation—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.
The court then noted that the Pandit reference:
  • Is about text-dependent word recognition, not searching using information derived from the document.
  • Does not mention or imply that a search of any kind is involved with the add-to-address-book function.
  • Is missing the limitation of claim 1 of the '843 patent that requires using first information to find related second information.
Accordingly, the court reversed the PTAB's decision finding the patent claims obvious because there was nothing in the record to support the PTAB’s conclusion that supplying the missing limitation would have been obvious to a POSA.