On August 10, 2016, the Federal Circuit issued an important ruling in Arendi S.A.R.L. v. Apple, Inc.

The only question on appeal was whether the Board misused “common sense” to conclude that it would have been obvious to supply a missing limitation in a prior art reference to arrive at the conclusion that the claimed invention was in fact obvious. In fact, the Board stated in the final written decision, and the Appellees did not attempt to challenge on appeal, the fact that the key reference did not disclose one limitation of the claims — performing a search.

Appellees argued that a search for data in a database was known in the art, and since  “data is data” that means if searching a database for data was in the prior art, then searching that database for a telephone number is merely common sense.

Judge O’Malley, who wrote for the panel, explained the Court disagreed that this broader notion of searching for data in a database was found within the prior art.  The Appellees failed to show why it was proper to extrapolate from this general knowledge of searching a database to it being obvious to add a search for a telephone number to the Pandit reference (the aforementioned key reference). According to the Federal Circuit, the Appellees failed to show why it would be common sense for the “Add to address book” function to operate by first searching for entries with the same telephone number.

In the end this case seemed to come down to a simple problem of proof. Judge O’Malley wrote:

Rather than clearly explaining with concrete examples what benefit searching for entries with the same number would achieve, Appellees keep returning to their general mantra that Arendi’s argument against searching for a number would apply equally to a search based on a name. Yet the burden is Appellees’ to provide more than a mere scintilla of evidence of the utility of a search for a telephone number before adding the number to an address book, where such a search is not “evidently and indisputably within the common knowledge of those skilled in the art.”

Unfortunately for Apple, there was no evidence provided indisputably demonstrating that missing critical limitation was within the common knowledge of those skilled in the art. Under these circumstances, it is not proper to go most of the way, proclaim common sense without any evidence, and expect that the challenged invention will be ruled obvious.

Tags: CAFC, Federal Circuit, obvious, obviousness, patent, patents

This entry was posted on Monday, August 29th, 2016 at 16:17 and is filed under Federal Circuit Cases, Patent Issues. You can follow any responses to this entry through the RSS 2.0 feed. You can skip to the end and leave a response. Pinging is currently not allowed.