Earlier today in Perfect Web Technologies, Inc. v. Infousa, Inc. the United States Court of Appeals for the Federal Circuit determined that the district court properly ruled the relevant patent claims of US Patent No. 6,631,400 were invalid as a result of being obvious. In so doing, Judge Linn writing for the panel (consisting additional of Judges Prost and Dyk) determined that the claims in question were obvious as a result of being common sense. Undoubtedly the Supreme Court ushered in a new era when it decided that rather than ground obviousness determinations in objective fact they should be subjectively open to whim and fancy. See KSR v. Teleflex. Yes, now patent claims can be declared obvious because they are obviously common sense because, well, they are obviously common sense. Never mind that a common sense test is hardly reproducible with any kind of clarity or predictability, never mind that it cannot be evenly applied and therefore violates the 5th and 14th Amendments (or at least the spirit thereof) and never mind that while this panel decision reads like fingers scratching on a black board. The truth is that is what the Supremes in their infinite wisdom told the Federal Circuit to do. As much as I hate to say it, and as much as Congress really needs to undo the KSR obviousness test, this particular “invention” was, well obviously obvious and pretty clearly nothing more than the application of common sense. But wouldn’t this have been obvious even under a teaching, suggestion or motivation standard? It certainly should have been obvious under any standard, so KSR advocates (if there are any) don’t boast too loudly.
The patent claims in question relating to the ‘400 patent relate to methods of managing bulk e-mail distribution to groups of targeted consumers. The ’400 patent’s application was filed on April 13, 2000, and the specification explains that the Internet was still at an early stage of development, almost as if the authors of the patent application knew full well that what was about to follow in the claims was trivial. If you recall this was the time when applications relating to virtually ever form of known business method were being filed and claimed to be unique because they had never been done over the Internet, as if the marriage of a new technology with an old concept would miraculously make the resulting combination patentable. In any event, the patented invention involved comparing the number of successfully delivered e-mail messages against a predetermined desired quantity, and if the delivery did not reach the desired quantity the invention called for the step of repeating the process of sending until the desired number of delivered messages has been achieved. Remarkable!
Claim 1 represents the asserted claims in the litigation and states:
1. A method for managing bulk e-mail distribution comprising the steps:
(A) matching a target recipient profile with a group of target recipients;
(B) transmitting a set of bulk e-mails to said target recipients in said matched group;
(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,
(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.
Surely back before the critical date this must have been unique, right? Apparently not. It seems that steps A, B and C were within the prior art and known. Only step D was not specifically in the prior art, so if this claim were to survive it would have to do so because repeating until desired outcome made an otherwise unpatentable innovation miraculously patentable.
Are you kidding me? That is probably what you are thinking about now. Sadly, I am not. So as hard as it is for me to read anything that purports to find patent claims unpatentable as a result of common sense, I am hard pressed to figure out any other way to describe these claims. As the Federal Circuit pointed out: “this last step, and the claim as a whole, simply recites repetition of a known procedure until success is achieved.” That simply does not and cannot make an otherwise unpatentable invention patentable. This is even worse than taking an object that has nothing to do with a radio and integrating a radio and the resulting output being magically transformed. See The 65 Year Old Integrated Radio Strategy.
Is it possible that the KSR standard did what it was supposed to do? Yes, but unlikely. Can anyone really make a case suggesting that a repeating until desired outcome is reached step would not also have been obvious under TSM? If I were a betting man, and I am, I would wager that a repeating step without anything else unique would have been plenty obvious even without KSR thank you very much. So the real tragedy here is not that the CAFC got it right, but that they have been forced by the Supreme Court to get it right for the wrong reason. KSR has done damage and will do much more damage in the future, so please resist the temptation to applaud common sense as a standard. There is simply no justification for bringing out a shotgun to kill a fly when a fly swatter would suffice. Yes, you kill the fly but there is all kinds of needless collateral damage.
The only other instance I can find where the Federal Circuit determined that a claim was invalid as a result of common sense was in Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984 (2009), decided in February of 2009. Certainly the Federal Circuit has quoted the KSR language relating to “common sense” but the Perfect Web and Ball Aerosol cases are the only ones where an invention was determined to be within the common sense of one skilled in the art without any other justification. In Ball Aerosol, when discussing U.S. Patent 6,457,969, the Federal Circuit explained:
The combination of a cover-stand and feet on the bottom of the candle holder was obvious to try in an effort to minimize scorching, as the combination would further raise the bottom of the candle holder above the supporting surface. The resulting, and desired, decreased heat transfer between the candle holder and the supporting surface from the combination would have been entirely predictable and grounded in common sense.
Heat transfer probably is trivial and within the collective common sense of those skilled in the art, but like a repeating step couldn’t simple heat transfer also have been proved to be obvious without resorting to common sense? You can’t tell me that there is no teaching, suggestion or motivation to employ basic heat transfer principles in any analogous art. For crying out loud virtually everything is analogous art. Yet another example of pulling out a shotgun instead of a fly swatter!
Not forcing the Patent Office, district courts and the Federal Circuit to adhere to objective standards that can be measured, reviewed and verified factually allows for the day when common sense will be used not to invalidate claims that should be obvious under any standard, but when common sense will be used to supplant innovation as a result of hindsight. Monday morning Quarterbacking, peanut gallery commentary and decisions by those who are not skilled in the art but feel equipped to opine what is common sense must not be celebrated even when the outcome is right. The process matters, truth matters and by the very nature of what I observe every day a good many things that I think are common sense simply are not common or sensible in the minds of others. A moving, unpredictable target just cannot be the standard.
Join the Discussion
7 comments so far.
wholesale candle holdersJanuary 4, 2010 11:52 pm
i love your blog ..
OldTimerDecember 3, 2009 12:54 pm
Kappos’ primary job will be to turn out the lights at the PTO at the end of Obama’s term.
In all honesty, given the state of the case law it is becoming very hard for me to advise clients to file patent applications on anything now. I’m getting cases allowed, but I don’t see any of them withstanding judicial scrutiny. Is anyone else struggling with this?
Dale B. HallingDecember 3, 2009 11:44 am
The problem with the “common sense” test or obvious to try test is if it was common sense then why didn’t someone else come up with the idea before the inventor. There is no answer to this question, which means that the court (PTO) failed to provide a coherent reason for their rejection.
Bill RalstonDecember 3, 2009 10:41 am
This does not bode well for getting the USPTO to produce better quality obviousness rejections. I had hoped that KSR’s requirement for explicit analysis might eventually require the PTO to produce more than one-line “it would be obvious to include the features of the second reference in the first reference to make it .” Alas, we will now probably see rejections with little more than “it would be obvious as a matter of common sense” as the reasoning for modifying or combining references. Yes, this is going to be hard to challenge short of explicit teachings in the references that directly contradict what the inventor has done. (I assume the courts will recognize that common sense dictates not doing the opposite of what is suggested by the prior art… but we will see….)
EGDecember 3, 2009 08:35 am
I’m with you. The Federal Circuit got the conclusion right, but using a horribly bad analytical approach. I’m not opposed to using “common sense” but in this context it needs to be supported by verifiable evidence of some sort. SCOTUS should be excoriated for what they said about using “common sense” in KSR International.
This case sends at least 2 really awful signals:
1. Suggesting that patent examiners may base obviousness rejections on “common sense” that isn’t supported by verifiable evidence. In commenting on the Lee case that “said omission of a relevant factor requireed by precedent is both legal error and arbitrart agency action,” Judge Linn’s opinion goes on to say: “However, this did not preclude examiners from employing common sense.” This is nothing more than a license to engage in unverifiable speculation by patent examiners. I can’t tell you how many times a patent examiner has said a missing claim feature or element is “well known in the art” or “inherent” in the reference relied upon. If that’s true, why is the patent examiner unable to factually support what is “well known” or “inherent.”
2. Allows judges to completely discount expert testimony when there is no other evidence to support what is and is not “common sense.” I’m completely aghast at the following statement:in this case that expert testimony was “not necessary in this case.” But there was no other “evidence” presented to support whether novel step (D) (which the alleged infringer conceded wasn’t taught by the art) was “common sense.” How can you suggest ignoring the only evidence facturally supporting why this step not taugth by the art is “common sense”?
“Common sense is the lazy man’s rationale for rejecting an application.”
Well stated. Mark my words, this case is going to be cited by the PTO for basing obviousness rejections on nothing more than unverifiable “common sense.” It’s hard to challenge a “phantom” and that’s exactly what this “common sense” is, a “phantom.”
Patrick AndersonDecember 3, 2009 05:51 am
I agree, the outcome would have been the same under the pre-KSR standard. The only difference is, before KSR, a rationally minded attorney would have said that Perfect Web had a decent argument given the lack of evidence related to the “repeating” step.
However, the Plaintiff’s own expert testified that the only two available options after step C would be to give up, or keep trying. “Giving up” doesn’t add to the prior art at all, so from a patentability perspective, there was really only one option. More detail here: http://www.ipnav.com/ipnav-blog/view/p/cry-cry-again/
The “common sense” dicta is problematic in that it can potentially be misinterpreted by district courts. I think a better framework for evaluating obviousness when it really is “common sense” is more factual inquiry into the specific knowledge that “one of ordinary skill” possesses. Simple statements like, “at least a high school diploma, one year of experience in the industry, and proficiency with computers and e-mail programs” do little to actually inform a jury of the level of skill in the art.
I would have preferred the district court to have made a factual finding (perhaps based on Perfect Web’s testimony) that the person of ordinary skill would have known to take additional step D because it is the only available option. I suspect the CAFC felt that reversing and instructing the district court to make this factual determination for the record would have simply wasted everyone’s time and money.
Just visitingDecember 2, 2009 09:37 pm
The problem with KSR and it’s now ever-growing progeny, is that it ignored that the TSM test was not an “obviousness test” per se. Instead, it was an evidence test. It simply required that if you were going to make a conclusion on obviousness that you rely upon some evidence (i.e., the teaching, suggestion, or motivation) that is found in the prior art.
By ejecting that standard and relying upon the undefinable “common sense,” anybody can reject a claim for any reason whatsoever under the rubic of that one having ordinary skill in the art could have employed “common sense” to come up with the invention. Thus, who needs proof when one can rely upon common sense. Hindsight reconstruction …. a dead argument because the Examiner wasn’t relying upon hindsight reconstruction. Instead, the Examiner was relying upon common sense. The great thing about common sense is that how do you refute it? What proof can you supply to establish that a particular rationale would not have been considered common sense.
Common sense is the lazy man’s rationale for rejecting an application. Of course, the way the USPTO works where doing the least amount as possible while still making your production is the norm, this is going to be a favored argument among Examiners.
Welcome to the world of no evidence obviousness rejections. We saw that KSR opened the door for them, now the Federal Circuit has bought into it hook, line, and sinker.