On August 10, 2016, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a Patent Trial and Appeal Board (PTAB) finding in the case of Arendi S.A.R.L. v. Apple Inc., Google Inc., Motorola Mobility LLC. The PTAB had invalidated an Arendi patent in a decision partially based on so called “common sense”.
The Arendi patent in question, (U.S. Patent No. 7,917,843, claiming 1998 priority), relates to a technology that provides coordination between a first computer program that displays a document and then a second computer program that searches an external source for information based on the contents of the first program while the document is being displayed.
The sole prior art reference on appeal is U.S. Patent No. 5,859,636, which is issued to Pandit. This reference teaches the recognition of different classes of text in a document and gives suggestions based on the recognition. In addition to text recognition, the Pandit patent also covers subject matter related to a program that recognizes phone numbers as a class of text.
In June of this year, the PTAB instituted a review of claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39, 40 and 43. In its decision, the PTAB stated “Petitioner submits . . . that Pandit discloses adding an identified number to an address book.” The Board further explained it found Arendi’s argument unpersuasive and instead found it would be “reasonable to presume, as a matter of common sense” that Pandit would search for duplicate phone numbers and information associated with such numbers.
In their final written decision, the Board stated that “it would have been obvious that the first step in adding to an address book is to search the address book to determine if an entry already exists with the entered information and displaying any associated information that is located”.
Arendi argued that there was a lack of evidence to support the Board’s common sense findings because the subroutine in the Pandit reference for “Add to address book” would begin with a search for duplicate telephone numbers prior to adding the number to a contact entry in the address book. Rather, Arendi submitted that Pandit was related to text-dependent word recognition.
The CAFC’s decision centers around a single question: whether the Board misused “common sense” to conclude that it would have been obvious to alter the Pandit subject matter to supply the missing limitation in the prior art reference. The CAFC noted that “‘[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.’” The CAFC, warned that in cases where “the missing limitation goes to the heart of an invention,” resorting to common sense needs to be “supported by evidence and a reasoned explanation. [It] 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 CAFC found that Apple Inc., Google Inc., Motorola Mobility LLC, failed to show the reasoning as to why it would have been common sense to modify Pandit to include the missing limitation. Judge O’Mally with the The Federal Circuit Court wrote:
Rather than clearly explaining with concrete examples what benefit searching for entries with the same number would achieve, Appellees keep returning to their general mantra that Arendi’s argument against searching for a number would apply equally to a search based on a name. Yet the burden is Appellees’ to provide more than a mere scintilla of evidence of the utility of a search for a telephone number before adding the number to an address book, where such a search is not “evidently and indisputably within the common knowledge of those skilled in the art.”
The CAFC concluded:
Because the Board’s presumption that adding a search for phone numbers to Pandit would be “common sense” was conclusory and unsupported by substantial evidence, the missing limitation is not a “peripheral” one, and there is nothing in the record to support the Board’s conclusion that supplying the missing limitation would be obvious to one of skill in the art, we reverse the Board’s finding of unpatentability.