In Arendi S.A.R.L. v Apple, Inc., et al. (“Arendi”), the Federal Circuit (“CAFC”) provided guidance on when and how common sense can be properly applied when assessing obviousness under 35 USC §103.
Apple, Google and Motorola Mobility (“Appellees”) filed a petition for inter partes review (“IPR”) with the Patent Trial and Appeal Board (“PTAB”) challenging the validity of patent claims asserted against them by Arendi. The PTAB relied on “common sense” to supply a key structural feature of the asserted claims which was not specifically disclosed in the applied prior art reference and found the claims invalid as obvious. Arendi appealed.
In reversing the PTAB, the CAFC stated that the PTAB had “misapplied our law on the permissible use of common sense in an obviousness analysis….” Though the CAFC acknowledged that common sense, common wisdom, and common knowledge can be considered in analyzing obviousness, the Court identified three caveats to such use. First, the Court noted that common sense is typically invoked to provide a known motivation to combine prior art teachings, not to supply a missing claim limitation. Second, the Court noted that in the only case identified by Appellees which had invoked common sense to supply a missing limitation, the supplied limitation was “unusually simple and the technology particularly straightforward,” and did not play a major role in the claimed subject matter. Third, the CAFC noted 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 Court criticized the PTAB for its “utter failure to explain the ‘common knowledge and common sense’ on which it relied,” and for accepting Appellees’ conclusory assertions and “unspecific expert testimony” about the general knowledge in the art without “more than a mere scintilla of evidence on the record.” Accordingly, the Court held that the Appellees had not met their burden of establishing the unpatentability of Arendi’s patent on obviousness grounds and reversed the PTAB’s finding of invalidity.
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