Docket No. 2015-2073 (IPR2014-00208)
MOORE, LINN, O’MALLEY
August 10, 2016
Brief Summary: Board’s obviousness decision found to lack “a reasoned explanation that avoids conclusory generalizations” regarding the role of common sense and was therefore reversed.
Summary: Arendi appealed PTAB final IPR decision that the claims of its US 7,917,843 relating to “[a] computer-implemented method for finding data related to the contents of a document using a first computer program running on a computer” would have been obvious. Claim 1, the only claim for which arguments were presented, requires “performing a search using at least part of the first information as a search term in order to find the second information, of a specific type or types, associated with the search term in an information source external to the document, wherein the specific type or types of second information is dependent at least in part on the type of types of the first information”. “The sole prior art reference on appeal” is US 5,859,636 (“Pandit”) that “teaches recognizing difference classes of text in a document and providing suggestions based on it” (e.g., using a pull-down menu). The FC opinion explains that “[t]he key question in this appeal is whether the Board erred in finding that it would be ‘common sense’ to a person of ordinary skill in the art to search for the telephone number that is detected in a document when the ‘Add to address book’ option disclosed in Pandit is selected” (“it would be ‘reasonable to presume, as a matter of common sense; that Pandit would search for duplicate phone numbers and information with such numbers…the obviousness inquiry ‘not only permits, but requires consideration of common knowledge and common sense” (DyStar, FC 2006; Perfect Web Techs., FC 2009). The Board rejected Arendi’s argument based on K/S HIMPP (FC 2014) that “‘common sense’ may only be applied when combining references hat disclose all the required limitations.” The FC opinion explained that in concluding obviousness, “the court must avoid ‘hindsight bias and must be cautious of arguments reliant upon ex post reasoning” (KSR, US 2007), “a patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention” (Takeda Chem., FC 2007; SIBIA, FC 2000, and “we do consider common sense, common wisdom, and common knowledge” (Randall, FC 2013). It also describes “at least three caveats…in applying ‘common sense’ in an obviousness analysis”: 1) it is “typically invoked to provide a known motivation to combine, not to supply a missing claim limitation” (DyStar); 2) “the only case Appellees identifies in which common sense was invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question was unusually simple and the technology particularly straightforward” (PerfectWeb); and, 3) “‘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” (DyStar; In re Lee (FC 2002); K/S HIMPP (“while ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation”); PerfectWeb (“a ‘specific hint or suggestion” is not required, “only a reasoned explanation that avoids conclusory generalizations”)). The FC panel could not “glean from the record” “a more reasoned explanation than that provided by the Board” and “conclude[d], in fact, that the application of common sense to the evidence of record would lead to a conclusion that the petitioner failed to meet its burden of establishing unpatentability of the ‘843 patent” and reversed the Board’s decision.