Mmm, Mmm, Obvious

In Campbell Soup Company v. Gamon Plus, Inc., [2020-2344, 2021-1019](August 19, 2021), the Federal Circuit reversed the PTAB determination that U.S. Design Patent Nos. D612,646 and D621,645 would not have been obvious.

The ’646 and ’645 patents, which each claim “[t]he ornamental design for a gravity
feed dispenser display, as shown and described. The ‘646 patent has one figure:

U.S. Patent No. D612646, Fig. 1

Most of the features in the drawings are shown in dashed lines meaning that they are not part of the claimed design. In the ‘646 patent, the only parts claimed, were athe label area, the can stops, and one of the cans:

The ‘645 patent similarly excludes most of the drawing, except the label area and the cylindrical object in the display.

Linz, discloses a similar dislay rack. that has a similar display area and stops:

Linz, U.S. Patent No. D405,622

After buying $31 million of display racks from Gamon, Campbell’s began buying similar displays from Trinity, which caused Gamon to sue Campbells. Campbells petitioned for inter partes review of Gamon’s patents. The Board held that Appellants had failed to prove unpatentability, finding that Linz is not similar
enough to the claimed designs to constitute a proper primary reference.
The Federal Circuit vacated and remanded, reasoning that the “ever-so-slight differences” the Board identified between Linz and the claimed designs did not
support its finding that Linz is not a proper primary reference. On remand, the Board again help that the patents had not been shown to be obvious. The Board reasoned Abbate was not a proper primary reference, and while Linz was a proper primary references, the claimed designs would not have been obvious over Linz alone or in combination with other references. The Board acknowledged that Linz had the same overall visual appearance as the claimed designs, but objective indicia nonobviousness, namely: commercial success, Campbell praise for the design, and the copying of the design.

On this second trip to the Federal Circuit the Federal Circuit agreed that Linz creatd the same overall visual appearance as the claimed designs. However, as to objective indicia, the Federal Circuit found that the Board erred in presuming a nexus between any commercial success and the claimed designs. The Board found that the unclaimed portions of the desings were insignificant to the ornamental design, but the Federal Circuit held that: “[i]n determining coextensiveness, the question is not whether unclaimed features are insignificant to a product’s ornamental design. The question is instead whether unclaimed features are
“insignificant,” period. The Federal Circuit explained that the purpose of the coextensiveness requirement is to ensure that nexus is presumed only when the
product “is the invention disclosed and claimed. The Federal Circuit said by limiting its analysis to ornamental significance, the Board simply did not answer the relevant
question: whether the commercial produtc “is the invention.”

Under the correct legal standard, substantial evidence does not support the Board’s finding of coextensiveness, the Federal Circuit finding that at most, the claims cover only a small portion of the commercial product: its label area, cylindrical object, and stops. Thus it was improper to presume a nexus between the claimed invention and the commercial success, and it was up to Gamon to establish a nexus, which it failed to do.

The Board found nexus from the success and praise for the label area, but the Federal Circuit pointed out, this was not new. To establish nexus, Gamon needed to present evidence that the commercial success and praise of the commercial product derived from those “unique characteristics.” The evidence of commerical success presented was tied only to the label area, which was old. The Federal Circuit rejected testimony of the inventor tying the commercial success to the label area, noting that it was both self-serving and unssupported by any other evidence. Furthermore the Federal Circuit rejected the Boards view that in design patent cases, objective indicia need not be linked to the claimed design’s unique characteristics.

The Federal Circuit also relied upon evidence of copying as establishing non-obviousness, saying that even if there were copying, that alone did not overcome the strong evidence if obviousness.

Weighing all of the Graham factors, including (1) the Board’s finding that, from the perspective of a designer of ordinary skill, Linz creates the same overall visual impression as the claimed designs and (2) copying by Trinity of the claimed designs’ unique characteristics, the Federal Circuit concluded that the claimed designs would have been obvious over Linz.

Broad, Functional Claims Made it Hard to Presume Nexus for Commerical Succes

In Teva Pharmaceuticals International GmbH v. Eli Lilly and Company, [2020-1747, 2020-1748, 2020-1750] (August 16, 2021), the Federal Circuit affirmed that Board’s determination that the claims of U.S. Patent Nos. 9,340,614, 9,266,951, and 9,890,210 are unpatentable because they would have been obvious over the cited prior art. The patents are directed to humanized antagonist antibodies that target calcitonin gene-related peptide (“CGRP”), that has been shown to be a potent vasodilator in the periphery.

Teva raised three challenges to the Board’s decision. First, Teva contended that the Board erred as a matter of law in its motivation to combine analysis by deviating from the motivation asserted by Lilly in its petitions for inter partes review. Second, Teva contended that even under the motivation to combine that the Board did analyze, substantial evidence does not support the Board’s factual findings. And third, Teva contended that the Board erred in its analysis of secondary considerations of nonobviousness.

Lilly asserted that a skilled artisan would have been motivated to combine the teachings of the references to make a humanized anti-CGRP monoclonal antibody for therapeutic use in humans, but the Board instead considered whether a skilled artisan would have been motivated to make the antibody merely to study or use it. Teva insists that by not requiring Lilly to support its therapeutic motivation, the Board incorrectly discounted important safety and efficacy concerns that would have been demotivating factors—i.e., reasons why a skilled artisan would have been motivated not to make a humanized anti-CGRP monoclonal antibody. The Federal Circuit held that the Board did apply the motiviation that Lilly asserted. The Federal Circuit said that “common sense and scientific reality dictate that scientists do not “study or use” humanized anti-bodies with an end goal of treating diseases in test tubes or in rats. At bottom, the prior art supports a motivation to humanize antibodies with the goal of treating human disease.”

Teva also argued that the substantial evidence did not support the Board’s factual findings. The Federal Circuit agreed with Lilly that substantial evidence supports a motivation to make a humanized anti-CGRP antibody to study its therapeutic potential for use in treatment of human disease, noting that Lilly identified evidence that supports the Board’s reasonable readings of each reference. Under the deferential standard of review, the Federal Circuit could not replace the Board’s reasonable interpretation of references with Teva’s interpretation.

Finally, with respect to secondary considerations, the Board found that the commercial products and the license lacked sufficient nexus to the challenged claims. Teva argued that the Board made two legal errors: first, in finding no presumption of nexus between the claims and the secondary considerations based on the commercial products; and second, with regard to the asserted licenses, Teva argued that the Board erred by focusing on the licensee’s products rather than the scope of the license.

The Federal Circuit found that the Board erred in its articulation of the standard for presuming nexus, but nonetheless conducting the necessary factual analysis of the unclaimed features of the commercial products, and reached the correct conclusion that no presumption of nexus applied. The Federal Circuit noted that the claims at issue used functional language, and that a claim to “anything that works” hardly has a nexus to any particular product. Because the claims in this case have a broad scope due to their lack of structural limitations, the unclaimed features in the commercial products cited here are of particular importance to the coextensiveness analysis. The Federal Circuit thus found that the Board’s factual findings regarding unclaimed features are thus supported by substantial evidence, and Teva has not shown otherwise.

Teva also argued that the Board erred by requiring a direct nexus between the challenged claims and the licensee’s products. The Federal Circuit found that the Board’s conclusion that the license lacked nexus to the challenged claims was supported by substantial evidence. The significance of licensing a patent as a secondary consideration in enhancing the nonobviousness of an invention is that an independent party with an interest in being free of the patent has chosen to respect it and pay a royalty under it rather than litigate and invalidate it. Such action tends to support its validity. The Federal Circuit said that given that 188 patents were licensed, the nexus between the license and the validity of any particular claim is rather tenuous to say the least. The Federal Circuit noted that Teva failed to show anything more than the existence of the license. Teva did not present direct evidence that the licensee’s motivation for entering into the license was related to the validity or enforceability of the patents at issue.

It is not Obvious to Ignore the Teachings of the Prior Art

In Chemours Company FC, LLC v. Daikin Industries, LTD., [2020-1289, 2020-1290] (July 22, 2021), the Federal Circuit concluded that the Board’s decision on obviousness is not supported by substantial evidence and that the Board erred in its analysis of objective indicia of nonobviousness, and reversed.

U.S. Patent No. 7,122,609 relates to a unique polymer for insulating communication cables formed by pulling wires through melted polymer to coat and insulate the wires, a process
known as “extrusion.”

Chemours argues that the Board’s final written decision on obviousness is erroneous because its factual findings on motivation to combine were unsupported by substantial evidence, and specifically that Daikin did not meet its burden of proof because it failed to show that a person of ordinary skill in the art would modify the polymer of the prior art reference to achieve the claimed invention. However the reference also taught that a narrow distribution of molecular weights was important, while the claimed invention did not use the narrow distribution of molecular weights.

The Federal CIrcuit found that Board’s obviousness findings are not supported by substantial evidence. The Federal Circuit said the Board appears to have ignored the express disclosure in the reference that teaches away from the claimed invention and relied on teachings from other references that were not concerned with the particular problems the reference sought to solve. More specifically, the Board did not explain why one would be motivated to increase the melt flow rate to the claimed range, when doing so would necessarily involve altering the inventive concept of a narrow molecular weight distribution polymer. The Federal Circuit cited Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) where it found no motivation to modify the prior art where doing so “would destroy the basic objective” of the prior art).

The Federal Circuit found that this was particularly true in light of the fact that the reference appears to teach away from broadening molecular weight distribution and the known methods for increasing melt flow rate. The Federal Circuit said that the Board relied on an inadequate evidentiary basis and failed to articulate a satisfactory explanation that is based on substantial evidence for why one would have been motivated to modify the reference.

The Federal Circuit also agreed that the Board erred in its analysis of objective indicia. The Board found no nexus between the claimed invention and the alleged commercial success because all the features were disclosed in the prior art. The Federal Circuit instructed that contrary to the Board’s decision, the separate disclosure of individual limitations, where the invention is a unique combination of three interdependent properties, does not negate a nexus, explaining that concluding otherwise would mean that nexus could never exist where the claimed invention is a unique combination of known elements from the prior art.

The Federal Circuit also agreed that the Board erred in its demand that market share evidence is necessary to sustain a finding of commercial success. Chemours contended that sales data
alone should be enough for commercial success, and the Federal Circuit agreed. The Federal Circuit said that market share data, though potentially useful, is not required to show commercial success. While the Board was entitled to weigh evidence and find, if appropriate, that Chemours’s gross sales data were insufficient to show commercial success without market
share data, the Board, erred in its analysis that gross sales figures, absent market share data, “are inadequate to establish commercial success.”

Lastly, the Federal Circuit agreed that the Board erred when it found that the patents in suit were blocking patents. A blocking patent is an earlier patent that prevents practice of a later invention—the invention of the patent-in-dispute. The Board concluded that the evidence proffered to establish commercial success was weak because the patent-in-suit blocked others
from entering the market. The Federal Circuit said that the challenged patent, which covers the claimed invention at issue, cannot act as a blocking patent.

The References are not the Only Sources a Person of Ordinary Skill Would Consider

In Becton, Dickinson and Company v. Baxter Corporation Englewood, [2020-1937] (May 28, 2021), the Federal Circuit reversed that PTAB determination that certain claims of U.S. Patent No. 8,554,579 were not invalid as obvious. The’579 Patent is directed to systems for preparing patient-specific doses and a telepharmacy method in which data captured while following a protocol associated with each received drug order and specifying a set of steps to fill the drug order are provided to a remote site for review and approval by a pharmacist.

At issue was whether the art disclosed a verification step. Baxter successfully argued to the PTAB that the art taught that there may be a verification step, but not that there must be a verification step. The Federal Circuit concluded that the Board’s determination was not supported by substantial evidence. The Federal Circuit said that in the context of the prior art, “may” does not mean “occasionally,” but rather that one “may” choose to systematically check each step. Examining the reference, the Federal Circuit concluded that the purpose was to provide verification, and thus it satisfied the verification step.

Also at issue was whether the art diclosed the highlighting limitation, which requires “an interactive screen that includes prompts that can be highlighted by an operator to receive additional information relative to one particular step.” The Federal Circuit found that one of the references teaches highlighting in the pharmacy context, and said that the Board erred in looking to the reference as the only source a person of ordinary skill would consider for what “additional information might be relevant. A person of ordinary skill is also a person of ordinary creativity, not an automaton.

Finally, the Federal Circuit said that Baxter does not meaningfully argue that the weak showing of secondary considerations here could overcome the showing of obviousness based on the prior art.

Intrinsic Evidence > Dictionary Definitions, Analogies, and Purported Plain Meaning

 In Uniloc 2017 LLC v. Apple Inc., [2020-1403, 2020-1404] (May 12, 2021), the Federal Circuit affirmed the PTAB determination that claims 1–17 and 23–25 of  U.S. Patent No. 8,539,552 were invalid for obviousness.

The ’552 patent is directed to a system and method to police the use of various optional features, such as caller-ID, call waiting, multi-line service, and different levels of service quality known as the “codec specification.”

On appeal, Uniloc contended that the Board’s construction of “intercepting” in the independent claims was erroneous and that the Board incorrectly held claims 1–17 and 23–25 invalid as a result. In its cross-appeal, Apple argued that the Board erroneously rejected its challenge to claims 18–22.

As to Unilock’s appeal the Federal Circuit noted that because the receiving client device is the ultimate “intended recipient” does not mean that the sending client device cannot intentionally direct the message to the intercepting entity.  The Federal Circuit held that the claims encompass the situation in which a sending client device intentionally sends a signaling message to the intermediate network entity that per-forms the interception. Contrary to Uniloc’s contention, the Federal Circuit said that construction is not at odds with the plain meaning of the claims. The receiving client device is still “the intended recipient” of the message because it is the ultimate, in-tended destination of that message.  The Federal Circuit further further noted that the Board’s construction is supported by the prosecution history. The Federal Circuit said it arrived at its construction by focusing on the prosecution history, the specification, and the context of the particular claims in which the term “intercepting” appears, which outweighed Uniloc’s reliance on dictionary definitions, analogies, and the purported plain meaning of “intercepting” in isolation.

The Federal Circuit said it arrived at its construction by focusing on the prosecution history, the specification, and the context of the particular claims in which the term “intercepting” appears, which outweighed Uniloc’s reliance on dictionary definitions, analogies, and the purported plain meaning of “intercepting” in isolation.

Looking Back at Hindsight

Obviousness may not be established using hindsight or in view of the teachings or suggestions of the inventor. Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 U.S.P.Q.2d 1237, 1239 (Fed. Cir. 1995), citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984).

Hindsight is inherent in the patent examination process. Examiner’s look at what the inventor claims, and with this information look for prior art to determine whether or not the claimed invention is obvious, flirting with “tempting but forbidden zone of hindsight.” See, Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 873, 228 USPQ 90, 98 (Fed.Cir.1985). The problem of hindsight is exacerbated by modern search technology which allows Examiner to quickly and easily find each and every element of the claimed invention, and all that the is needed is to stitch the individual elements together. Patent law has developed several tools to combat hindsight. First, 35 USC 103 requires obviousness of the invention “as a whole,” so merely finding the elements individually in the prior art does not mean that the invention was obvious. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 U.S.P.Q.2d 1686 (Fed. Cir. 2004). Second, there is the requirement that there be some reason to modify or combine the prior art. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 U.S.P.Q.2d 1686 (Fed. Cir. 2004). Without some reason the modification/combination is not obvious, and neither is the invention. Finally, there are objective indicia of non-obvious, often called “secondary considerations,” that guard against the hindsight reconstruction of the invention. See, In re Sernaker, 702 F.2d 989, 996, 217 USPQ 1, 7 (Fed.Cir.1983).

When confronted with a hindsight reconstruction, there are a number of colorful descriptions of hindsight that can help frame the argument:

Using the Claims as a Frame, and the Prior Art as a Mosaic. In W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed.Cir.1983), the Federal Circuit reversed the district court’s finding of obviousness, noting that “[t]he result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention.”  721 F.2d at  1551, 220 USPQ at 311.

Using What the Inventor Taught Against its Teacher. Also in W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed.Cir.1983), in reversing the district court’s finding of obviousness, the Federal Circuit explained the problem of hindsight: “To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher.” 721 F.2d at  1553, 220 USPQ at 312-13.

Throwing Metaphorical Darts at a Metaphorical Dartboard. In re Kubin, 561 F.3d 1351, 90 U.S.P.Q.2d 1417 (Fed. Cir. 2009), in affirming a finding of obviousness, the Federal Circuit cautioned that in the situation where a challenger, “merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.” See, also, Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 107 U.S.P.Q.2d 1943 (Fed. Cir. 2013); In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.(Eurand, Inc. v. Mylan Pharm., Inc.), 676 F.3d 1063, 102 U.S.P.Q.2d 1760 (Fed. Cir. 2012).

Collapsing the Obviousness Analysis into a Hindsight-Guided Combination. In Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 107 U.S.P.Q.2d 1943 (Fed. Cir. 2013), the Federal Circuit reversed the obviousness determination in a reexamination, finding that “the Board erred by collapsing the obviousness analysis into a hindsight-guided combination of elements.”

A Hindsight Combination of Components Selectively Culled from the Prior Art to fit the Parameters of the Invention. In ATD Corp. v. Lydall, Inc., 159 F.3d 534 , 546 (Fed. Cir. 1998), the Federal Circuit reversed a judgment of invalidity, stating “Determination of obviousness can not be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention. There must be a teaching or suggestion within the prior art, or within the general knowledge of a person of ordinary skill in the field of the invention, to look to particular sources of information, to select particular elements, and to combine them in the way they were combined by the inventor.”

Using the Inventor’s Disclosure as a Blueprint. In Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 227 U.S.P.Q. 543 (Fed. Cir.1985), the Federal Circuit vacated the district court’s summary judgment of invalidity, noting that the court reconstructed the invention, using the blueprint of the inventor’s claims, and saying [t]he invention must be viewed not with the blueprint drawn by the inventor, but in the state of the art that existed at the time.” See, also, In re Dembiczak, 175 F.3d 994, 50 U.S.P.Q.2d 1614 (Fed. Cir. 1999); Ecolochem, Inc. v. So. Cal. Edison Co., 227 F.3d 1361, 1371-72 (Fed.Cir.2000);

A Poster Child for Impermissible Hindsight Reasoning. In Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 102 U.S.P.Q.2d 1729 (Fed. Cir.2012), in affirming the district court’s determination that the claims were not invalid, the Federal Circuit noted that the district court’s careful analysis exposed the Defendants’ obviousness case for what it was — “a poster child for impermissible hindsight reasoning.”

Simple Things are the Best (and They can be Patentable Too)

Simplicity is not inimical to patentability. In re Oetiker, 977 F.2d 1443, 24 U.S.P.Q.2d 1443, citing Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 594, 88 L.Ed. 721 (1944) (simplicity of itself does not negate invention); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1572, 1 USPQ2d 1593, 1600 (Fed.Cir.) (the patent system is not foreclosed to those who make simple inventions), cert. denied, 481 U.S. 1052, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987). Roberts v. Sears, Roebuck, Co., 723 F.2d 1324, 1334, 221 U.S.P.Q. 504 (7th Cir. 1983)(“[I]ntuitive analysis distorted by the invention’s simplicity and retrospective self-evidence must be avoided. Simplicity is not to be equated with obviousness.”); Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 218 U.S.P.Q. 673 (Fed.Cir. 1983)(“That is not to say that simplicity of the invention, or its ready understandability by a judge, constitute evidence of obviousness.”) 

In DatCard Sys., Inc. v. PacsGear, Inc., No. 8:10-cv-01288-MRP, 2013 BL 440221 (C.D.Cal. Mar. 12, 2013), the district court said:

To be sure, the Court’s characterization of the patents-in-suit as “simple” is hardly a clue regarding its opinion regarding their validity under, for example, Section 103 . Patent law lacks a doctrine of simplicity. To be sure, as a matter of logic, technically simple patents are perhaps more vulnerable to obviousness-based invalidity than technically complex patents. But they are not obvious because they are technically simple.

(emphasis added)

But, see, Skee-Trainer, Inc. v. Garelick Mfg. Co., 361 F.2d 895, 150 U.S.P.Q. 7 (8th Cir. 1966)(“[A]lthough the simplicity of a mechanical innovation will not automatically render it unpatentable, simplicity is itself strong evidence that ‘invention’ is lacking.”)

Making (Common) Sense of Non-Obviousness

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 , 416 , 127 S. Ct. 1727 , 167 L. Ed. 2d 705 (2007), the Supreme Court cemented the role of common sense in the obviousness inquiry, noting that “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” The Supreme Court instructed that “[c]ommon sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Thus the Supreme Court said that:

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

550 U.S. at 421; 127 S.Ct. at 1742; 167 L.Ed.2d at 723-4.

After KSR, the Federal Circuit has affirmed the application of common sense in a number of cases. In B/E Aerospace, Inc. v. C&D Zodiac, Inc, 962 F.3d 1373, 1379-80, 2020 U.S.P.Q.2d 10706 (Fed.Cir. 2020), the Federal Circuit affirmed the PTAB’s determination of obviousness of U.S. Patent Nos. 9,073 ,641 and 9,440,742 relating to space-saving technologies for aircraft enclosures such as lavatory enclosures, agreeing with the PTAB that it would have been a matter common sense to modify the prior art. In Perfect Web Techs., Inc. v. Infousa, Inc., 587 F.3d 1324, 92 U.S.P.Q.2d 1849, (Fed. Cir. 2009), the Federal Circuit affirmed summary judgment of invalidity of U.S. Patent No. 6,631,400 directed to managing bulk e-mail distribution to groups of targeted consumers, affirming the district court application of common sense and noting that common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning. In Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 2020 U.S.P.Q.2d 32509 (Fed.Cir. 2020), the Federal Circuit affirmed a PTAB decision that relied on common sense to supply a missing claim element, where corroborated expert testimony established that that element was not only in the prior art, but also within the general knowledge of a skilled artisan.

Of course, what is important to prosecutors is combatting the misapplication of common sense in the obviousness inquiry. That is what happened in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 119 U.S.P.Q.2d 1822 (Fed. Cir. 2016) where the Federal Circuit reversed the PTAB determination that challenged claims of U.S. Patent No. 7,917,843 were obvious, because the Board misapplied the law on the permissible use of common sense in an obviousness analysis. The Federal Circuit identified at least three caveats to note in applying “common sense” in an obviousness analysis: First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation. Second, as in Perfect Web, when common sense is invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question must be unusually simple and the technology particularly straightforward. Third, references to “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 references specified.  The Federal Circuit said that the Board relied upon conclusory statements and unspecific expert testimony in drawing its conclusion that the invention would have been “common sense.” Because the application of “common sense” was conclusory and unsupported by substantial evidence, the missing limitation was not a “peripheral” one, and there was 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, the Federal Circuit reversed the Board’s finding of unpatentability.

In DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 126 U.S.P.Q.2d 1084 (Fed. Cir.2018), the Federal Circuit reversed the PTAB’s determination that the challenged claims of U.S. Patent No. 6,218,290 were invalid for obviousness, because the Board did not provide a sufficient explanation for its conclusions, and because it could not glean any such explanation from the record.

The PTAB invoked the “ordinary creativity” which the Federal Circuit said was no different from the reference to “common sense” that it considered in Arendi. The Board relied on a gap-filler—”ordinary creativity” instead of “common sense”—to supply a missing claim limitation. The Federal Circuit said that in cases in which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, the search for a reasoned basis for resort to common sense must be searching. The Federal Circuit said that the Board’s reliance on “ordinary creativity” calls for the same “searching” inquiry. The Federal Circuit found that the Board’s decision did not satisfy the standard set forth in Arendi. The full extent of the Board’s analysis is contained in a single paragraph. In reaching its conclusion that the missing element would have been obviousness, the Board made no citation to the record, referring instead to the “ordinary creativity” of the skilled artisan. This was not enough to satisfy the Arendi standard.

In re Van Os, 844 F.3d 1359, 121 U.S.P.Q.2d 1209 (Fed. Cir. 2017), the Federal Circuit vacated and remanded the PTAB affirmance of the Examiner’s rejection of Van Os’ claims. The Federal Circuit said that it has repeatedly explained that obviousness findings grounded in “common sense” must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness. ” The Federal Circuit said that “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.'” The Federal Circuit concluded that “Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine. This type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason why a skilled artisan would have combined the elements in the manner claimed.”

When faced with an obviousness rejection based upon “common sense” or “ordinary creativity” or “intuition,” it is important to note that these are not a substitute for reasoned analysis and evidentiary support. This is especially true when dealing with a limitation missing from the prior art references specified. Demand this reasoned analysis where it is lacking.

A Preference for Something Else is not a Teaching Away

In General Electric Company v. Raytheon Technologies Corporation, [2019-1319] (December 23, 2020), the Federal Circuit vacated the Board’s decision finding Raytheon Technologies Corporation’s U.S. Patent No. 8,695,920 on a gas turbine engine not unpatentable for obviousness, and remanded the case for further consideration because the Board lacked substantial evidence for its conclusions.

The Board found that prior art disclosed all of the elements of the claimed invention, but then found that by expressly considering at least some of the one-stage versus two-stage tradeoffs and specifically chosing the one-stage option, the reference taught away from the combination asserted by GE. The Board alternatively held that, even if the reference did not teach away from the proposed combination, the evidence presented did not persuasively demonstrate a motivation to combine.

The Federal Circuit found that the Board lacked substantial evidence for its finding that reference taught away form the combination. The Federal Circuit said a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.

The Federal Circuit also found that the Board lacked substantial evidence for its conclusion that GE did not establish a motivation to combine the references. The Federal Circuit said that the Board made certain findings that, on their own, could establish obviousness. The Federal Circuit said that these findings set forth reasons that an artisan might seek to modify the prior art, and a reasonable expectation of success in doing so.

Finally, the Board lacked substantial evidence for holding that GE did not establish the obviousness of claim 10 “as a whole.” The Federal Circuit said that the law has always evaluated the motivation to combine elements based on the combination of prior art references that together disclose all of the elements of the invention. The Federal Circuit said that

the Board’s approach would require a motivation to com-bine each element of the claim—even those present together in a reference. This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to re-do the work al-ready done in the prior art reference. The claimed invention and an invention in the prior art must both be analyzed as a whole for the same reason: an invention is more than the sum of its individual elements.

Because the Board lacked substantial evidence for its underlying factual conclusions from which it found the claims non-obvious, the Federal Circuit vacated the Board’s decision and remanded the case to the Board for further proceedings.

Finding Claims Non-obvious Was Not Error; It Was the Application of the Proper Evidentiary Standard

In Apple Inc. v. VOIP-PAL.com, Inc., [2018-1456, 2018-1457] (September 25, 2020), the Federal Circuit affirmed the PTAB’s determination that claims of U.S. Patent No. 8,542,815 and 9,179,005 were not invalid for obviousness, and the PTAB’s imposition of sanctions against VOIP-PAL.

The ‘815 and ‘005 patents describe the field of invention as “voice over IP communications and methods and apparatus for routing and billing” and relate to routing communications between two different types of networks—public and private.

The Federal Circuit noted that the appeal was moot as to 18 claims that a court held were directed to unpatentable subject matter. As to the 15 remaining claims, the Federal Circuit rejected Apple’s argument of mootness, and considered the merits of the non-obviousness determination.

Apple argued that the Board violated the Administrative Procedures Act (“APA”) and its due process rights when the Board imposed non-enumerated sanctions for Voip-Pal’s ex parte communications. The Board’s actions are reviewed for abuse of discretion, and the Board abuses its discretion if the sanction (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.

37 C.F.R. § 42.12(b) provides that sanctions “include” those enumerated subsection (b). The Federal Circuit said that “key” here was that Section 42.12(b) uses the term “include,” which signifies a non-exhaustive list of sanctions. The Federal Circuit held that the plain reading of Section 42.12(b) provides the Board with discretion to issue sanctions and that the Board did not commit an APA violation when it issued a sanction not explicitly listed under Section 42.12. The Federal Circuit noted that the Board’s decision to (a) allow Apple to petition for rehearing before a new panel, and (b) provide Apple with a meaningful opportunity to respond to Voip-Pal’s letters was a reasonable course of action and one that it would not not disturb, and did not find that Apple was deprived of due process.

Apple argued on appeal that the Board legally erred in rejecting its motivation-to-combine argument by improperly applying the now-rejected teaching, suggestion, motivation test rather than the flexible obviousness analysis required under KSR. The Federal Circuit found that the Board did not fault Apple for not citing explicit teachings, suggestions, or motivations to combine the prior art. Rather, the Federal Circuit said, the Board noted that Apple’s expert provided only “conclusory and insufficient” reasons for combining the prior art and failed to articulate reasoning with some rational underpinning. The Board did not legally err but rather held Apple to the proper evidentiary standard.