All patent practitioners recognize that a single prior art reference can be used to reject claims in an obviousness rejection. However, the issue is whether the Patent Office must provide additional evidence, above and beyond the sole prior art reference, when using common sense to conclude the invention is obvious. Recently, the Federal Circuit held that the Board misapplied the law on the permissible use of common sense in an obviousness analysis. Arendi S.A.R.L. v. Apple Inc., No. 2015-2073, 2016BL258032, 5 (Fed. Cir. Aug. 10, 2016).
The Arendi case began as an IPR petition filed December 2, 2013 by Apple Inc., Google, Inc., and Motorola Mobility LLC claiming U.S. Patent No. 7,917,843 (the ‘843 Patent), owned by Arendi S.A.R.L., was invalid as obvious. The IPR was instituted and the Board issued an opinion on June 9, 2015 finding the claims unpatentable as obvious. On appeal, the Federal Circuit reverses the Board.
As described by the patent owner, the “’843 Patent is directed, among other things, to computer-implemented processes for automating a user’s interaction between a first application, such as a word processing application or spreadsheet application, on the one hand, and a second application, such as contact management application having a database, on the other.” IPR2014-00208, Paper 6 page 1. The sole prior art reference used to invalidate the ‘843 Patent as obvious was U.S. Patent No. 5,859,636 (“Pandit”). Pandit taught recognizing different classes of text in a document and providing suggestions based on it.
The Federal Circuit acknowledged that there is a place for common sense, common wisdom, and common knowledge in the obviousness analysis. However, Judge O’Malley provides three caveats when applying common sense in these instances.
First, common sense is acceptable to use to provide a motivation to combine, not to supply a missing claim limitation. O’Malley noted the suggestion test described in Dystar. The suggestion test does not require that an explicit teaching to combine be found in a particular prior art reference, the motivation to combine “may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved. When not from the prior art references, the ‘evidence’ of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied.”. Dystar Textilfarben GmbH v. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006). The Dystar decision further explained that an “implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient…In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368.
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