by Dennis Crouch
Decisions by the Patent Trial & Appeal Board are rarely overturned on appeal. I expect that result is largely due to the fact that the Patent Office has staffed the Board with highly trained and skilled patent law experts. The other important factor though, is the standard of review. Factual findings made by the Board are reviewed for “substantial evidence” — meaning that the findings need not be “correct” but rather rather merely supported by “more than a mere scintilla of evidence.” Thus, patentees are hard-pressed to get a reversal based upon erroneous factual conclusions. (For a counter-example, see In re Warsaw Ortho (Fed. Cir. 2016).
In the new decision captioned Arendi S.A.R.L. v. Apple Inc., Appeal No. 15-2073 (Fed. Cir. 2016) [ArendiApple], the court has reversed the Board – finding an erroneous application of the law. This approach to an appeal tends to work better – because issues of law decided by the PTAB are ordinarily reviewed de novo on appeal (except where the agency’s interpretation is given deference).
Because the Board misapplied our law on the permissible use of common sense in an obviousness analysis, we reverse.
The software patent at issue involves a identifying a key in a document (such as a person’s name) and then searching a separate data-source for further information on that key. U.S. Patent No. 7,917,843 (claiming 1998 priority).
Single Reference Plus Common Sense: In its obviousness decision, the Board identified a single prior art reference (Pandit) that teaches the recognition of text classes (such as phone numbers) and then providing additional suggestions based upon that recognition (such as dial, add to contacts, etc.). However, Pandit did not expressly teach a search of the separate data-source. In concluding that the invention was obvious, the Board found that it would have been “reasonable . . . common sense” that Pandit would search through the contact list for the phone number before actually adding a new contact number. The board wrote:
[I]t would have been obvious to the ordinary artisan to utilize a computerized search for duplicate telephone entries when entering a telephone number in an electronic address book database as taught by Pandit.
In making its determination, the Board held that common sense must be applied throughout the obviousness analysis, and not only when combining references that disclose all the required limitations.
On appeal, the Federal Circuit rejected the Board’s analysis – holding that Common Sense must be confined to its “proper place in the obviousness inquiry.” (I expect that this line from the opinion is one that will likely upset members of the Supreme Court because it is ridiculous.).
Caveats to Common Sense: In confining the use of common sense, the Federal Circuit identified three “caveats” to its use:
- “First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.”
- Second, when common sense is used to supply a missing claim limitation, it should only apply where the missing limitations is “unusually simple and the technology particularly straightforward.”
- “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.”
Although not listed specifically as a caveat, the court also discussed a fourth – that statements of common sense or general knowledge cannot overcome “important” claim limitations without supporting evidence.
Question of Substantial Evidence: Stepping back from these broad statements of law, the court partially reforms its opinion to the proper question – “whether there was substantial evidence supporting the Board’s finding that common sense would lead one to search for the telephone number in Pandit.” In the appeal, the Federal Circuit found that no evidence had been presented regarding the common sense conclusion but rather only attorney argument. “Specifically, Appellees have failed to show why it would be common sense for the ‘Add to address book’ function to operate by first ‘search[ing] for entries with the same telephone number.'”
To be clear – I am 100% on board here – that an obviousness finding must be supported by evidence. Unfortunately, that is not what the Supreme Court appeared to rule in KSR v. Teleflex — where it suggested that “analysis” can do the trick.
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Arendi has infringement cases pending in Delaware against Blackberry, Motorola, Google, Apple, Sony, Nokia, HTC, Yahoo!, Samsung, and LG. Arendi is a Luxembourg patent owner created by the ‘843’s Norwegian inventor Atle Hedløy.