Federal Circuit Says that PTAB Misused "Common Sense"

by Adam Philipp on September 16, 2016

What is "common sense"

when it comes to patent law?

Read on to find out…

image
By Scanned by uploader, originally by Thomas Paine. – http://www.indiana.edu/~liblilly/history/common-sense-larger.html, Public Domain, https://commons.wikimedia.org/w/index.php?curid=112772

The Federal Circuit, in the case of Arendi SARL v Apple Inc., recently reversed a decision by the Patent Trial and Appeal Board (PTAB). The decision was unusual in that reversals in inter partes review proceedings are rare, and also in that it turned on the issue of "common sense."

Arendi owned the patent in suit, for a "Method, system and computer readable medium for addressing handling from a computer program."

More specifically, "The patent allows a user to access and conduct a search using [a] second computer program while remaining in the first computer program displaying [a] document."

Apple, Google, and Motorola Mobility jointly filed a petition for inter partes review of the patent, saying that its claims were obvious in light of a prior art reference in the "Pandit" patent.

The Pandit patent "teaches recognizing different classes of text in a document and providing suggestions based on it."

For example, one embodiment of the Pandit patent involves a program that can recognize a telephone number in text and then dial it, add it to an address book, send a fax to it, etc.

The PTAB stated that

We find it reasonable to presume, as a matter of common sense and at the time of the invention, that the subroutine in Pandit would search for duplicate telephone numbers and, upon locating a duplicate entry, both the first information and associated (or second) information, such as the name and/or address associated with the telephone number, would be displayed to the user.

The PTAB thus found that the patent claims at issue were obvious in the light of Pandit.

Arendi appealed.

As the Federal Circuit noted,

The 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.

The court noted that

It is true that common sense and common knowledge have their proper place in the obviousness inquiry.

However, there are also limitations as to when "common sense" can be applied.

The court concluded that

the Board’s presumption that adding a search for phone numbers to Pandit would be “common sense” was conclusory and unsupported by substantial evidence…

Takeaway

What this case comes down to is that "common sense" (when it comes to the interpretation of what prior art would suggest to a person skilled in the art) is very much in the eye of the beholder.

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