In a recent opinion [DSS Technology Management. v. Apple Inc., (Fed. Cir. 3/23/2018)], the Federal Circuit iterated that the Patent Trial and Appeal Board (“the Board”) must provide additional rationale beyond “ordinary creativity” and “common sense” for modifying a single reference for rendering a claim invalid.
Reference to the “ordinary creativity” of the ordinary skilled artisan by the Board was deemed equivalent to a reference to “common sense.”
There are three caveats for invoking “common sense” in an obvious analysis (Arendi S.A.R.L. v Apple Inc.):
1. Common sense is typically invoked to provide a known motivation to combine, not to supply a missing link;
2. Common sense can be invoked to fill in a missing limitation only when the limitation in question is unusually simple and the technology particularly straightforward; and
3. References to “common sense” – whether to supply a motivation to combine or provide 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 reference.
According to DSS Technology Management, the Board’s conclusion in an inter partes review, that a person of ordinary skill would have been motivated to modify a prior art reference to incorporate a technique in a device disclosed in such reference, because such a modification would have been within the skill of the ordinarily skilled artisan who is a person of ordinary creativity, without more was not enough to render a claim obvious.
The Federal Circuit found that neither of the three Arendi S.A.R.L. caveats applied. In this case, the technology was not particularly straight forward and the missing limitation played a major role in the subject matter claimed. Though the petitioner argued that this characterization ignored the testimony made by its expert, the expert’s testimony was never cited and was deemed conclusory and unspecific, thus, insufficient to support the Board’s findings.