IP Law Daily PTAB misapplied ‘common sense’ in analyzing obviousness of software patent
Wednesday, August 10, 2016

PTAB misapplied ‘common sense’ in analyzing obviousness of software patent

By Jody Coultas, J.D.

The Patent Trial and Appeal Board misapplied the law on permissible use of common sense in an obviousness analysis of Arendi S.A.R.L.’s patent asserted against Apple Inc., Google Inc., and Microsoft Mobility LLC, according to the U.S. Court of Appeals for the Federal Circuit. The court, therefore, reversed the Board’s obviousness decision (Arendi S.A.R.L. v Apple Inc., August 10, 2016, O’Malley, K.).

U.S. Patent No. 7,917,843 (the ’843 patent) is directed to providing coordination between a first computer program displaying a document and a second computer program for searching an external information source. The patent allows a user to access and conduct a search using the second computer program while remaining in the first computer program displaying the document. Arendi sued Apple and several other technology companies alleging infringement of claims of the ’843 patent and related patents.

The technology companies filed for inter partes review with the Board. The Board held that claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 would have been obvious in light of prior art reference U.S. Patent No. 5,859,636 (Pandit). Arendi appealed.

At issue was whether the Board misused "common sense" to conclude that it would have been obvious to supply a missing limitation in the Pandit prior art reference to arrive at the claimed invention. Common sense is recognized as part of an analysis of obviousness if explained with sufficient reasoning. However, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation. Where common sense is invoked to supply a missing limitation, the limitation is generally simple and straightforward. The Federal Circuit has warned that references to 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.

The Board erred in its conclusion that the claims were invalid as obvious in light of prior art, according to the court. The broad notion of searching for data in a database was supported by substantial evidence, but Apple failed to show why it was proper to extrapolate from this general background knowledge of searches in a database to add a search for a telephone number to the Pandit reference. It was not common sense for the "Add to address book" function to operate by first "search[ing] for entries with the same telephone number." The Board relied on conclusory statements and unspecific expert testimony regarding searches in general to conclude that it would have been "common sense" to search a database for a telephone number to be added. This was particularly problematic considering the fact that a key limitation of the ’843 patent was missing from the prior art reference in dispute. Application of common sense to the evidence would lead to a conclusion that the petitioner failed to meet its burden of establishing unpatentability of the ’843 patent on obviousness grounds, according to the court.

The case is No. 2015-2073.

Attorneys: Robert M. Asher and Bruce D. Sunstein (Sunstein Kann Murphy & Timbers LLP) for Arendi S.A.R.L. Brian Robert Matsui (Morrison & Foerster LLP) for Apple Inc., Google Inc., and Motorola Mobility LLC. Seth W. Lloyd, Joseph R. Palmore, David Lee Fehrman, and Mehran Arjomand for Apple Inc. Matthew A. Smith and Robert J. Kent (Turner Boyd LLP) for Google Inc. and Motorola Mobility LLC.

Companies: Arendi S.A.R.L.; Apple Inc.; Google Inc.; Motorola Mobility LLC

MainStory: TopStory Patent FedCirNews

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