Arendi S.A.R.L. v. Apple Inc.
832 F.3d 1355
| Fed. Cir. | 2016Background
- The appeal arises from an IPR petition by Apple, Google, and Motorola challenging U.S. Patent No. 7,917,843 (the ’843 patent) owned by Arendi; the PTAB found many claims obvious over a single prior art reference, Pandit.
- The ’843 patent claims a computer-implemented method where a first program displaying a document analyzes text (e.g., names/addresses), then a second program searches an external information source using that text and performs an action (e.g., insert an address).
- Pandit (prior art) discloses recognizing classes of text (e.g., phone numbers) and presenting pull-down menu options like “Add to address book,” but does not expressly disclose searching an address book for duplicates by phone number.
- The Board concluded it was "common sense" that Pandit would search for duplicate telephone numbers when adding to an electronic address book and therefore supplied the missing search limitation to find related information.
- The Federal Circuit reviewed whether the Board properly used "common sense" to supply a claim limitation missing from Pandit and reversed, holding the Board’s presumption was conclusory and unsupported by substantial evidence.
Issues
| Issue | Plaintiff's Argument (Arendi) | Defendant's Argument (Appellees) | Held |
|---|---|---|---|
| Whether the PTAB properly used "common sense" to supply a missing search limitation (search by telephone number) in Pandit to render claim 1 obvious | The Board lacked record evidence that it was common sense to search an address book by phone number; the search limitation is central to the claim and cannot be supplied without evidence | Searching databases was well-known; general database-search knowledge and expert declarations make it common sense to search for the phone number | Reversed: the Board’s reliance on common sense was conclusory and unsupported by substantial evidence; Board cannot supply this central missing limitation without reasoned record support |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (Sup. Ct.) (rejects rigid obviousness analysis; permits common sense and creativity in combining prior art)
- DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir.) (common sense usually supports motivation to combine where improvements are technology-independent)
- Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir.) (common sense may supply a simple missing limitation if explained with sufficient reasoning)
- K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362 (Fed. Cir.) (Board must support assertions of common knowledge with record evidence when limitation is important)
- In re Lee, 277 F.3d 1338 (Fed. Cir.) (vacated Board where conclusory examiner statements lacked factual explanation)
- In re Zurko, 258 F.3d 1379 (Fed. Cir.) (reversed where Board’s assessment of basic knowledge and common sense lacked record support)
- Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir.) (KSR permits reliance on common knowledge, but Board must consider well-documented technical background)