In Arendi S.A.R.I. v. Apple Inc., et al., the Federal Circuit reversed a PTAB decision finding all instituted claims in an IPR invalid as obvious based on the prior art and “common sense.” No. 2015-2073 (Fed. Cir. Aug. 10, 2016).
The challenged patent claimed, in part, a method for accessing a document and searching for information outside the document using a second computer program based on certain types of information contained in the document as identified by a first computer program. The only reference cited as prior art disclosed a computer program that recognizes a telephone number as a class of text in a document and includes an “Add to address book” option.
Relying on expert testimony, the Board found that it would have been “common sense” to search for the recognized telephone number when selecting the option to “Add to address book,” in order to avoid duplicate entries.
While the Court recognized that “common sense and common knowledge have their proper place in the obviousness inquiry,” it provided “three caveats” when applying it:
- First, “common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.”
- Second, using common sense to supply a missing claim limitation “ought to be treated as the exception, rather than the rule” and applied where the missing limitation in question 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.”
Applying these principles to the Board’s decision, the Court found first that the Board used common sense to supply a missing claim limitation and that the missing claim limitation “is central to representative claim 1,” rather than merely “peripheral.” In particular, if the element were missing, then “the claims would be almost void of content.”
Second, the Court found that the Board relied “precisely” on “conclusory statements and unspecific expert testimony” in finding it would have been common sense to supply the missing claim limitation. Accordingly, the Court reversed the Board’s decision.