Federal Circuit Report

• Jurisdiction: United States,Federal
• Citation: Vol. 45 No. 3
• Publication year: 2020
• Author: Rex Hwang
• topic: Patent law,Intellectual Property,Federal,Civil Procedure,Technology

Federal Circuit Report

Rex Hwang

Jeffer Mangels Butler & Mitchell LLP

Shenel Ozisik

Jeffer Mangels Butler & Mitchell LLP

This quarter we will review the Federal Circuit's decision in B/E Aerospace, Inc. v. C&D Zodiac, Inc.¹ In this case, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board ("Board") to invalidate a patent where "common sense" was used to supply a missing element in a § 103 obviousness analysis. This decision provides another data point as to how patents may potentially be invalidated under § 103 involving "common sense" grounds, particularly where the underlying technology is "simple" to those having skill in the relevant art.

GENERAL LEGAL BACKGROUND

In KSR International Co. v. Teleflex Inc.,² the Supreme Court opined that common sense serves a critical role in determining obviousness.³ As the Court explained, common sense teaches 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.⁴ The Court therefore held that "common sense" can be considered in concluding that a claimed invention is obvious.⁵ The KSR decision, however, failed to fully resolve the extent to which a claimed invention could be invalidated as being obvious based on "common sense."

Following KSR, the Federal Circuit decided Arendi S.A.R.L. v. Apple Inc.,⁶ which provided at least three caveats to 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.⁷ Second, common sense can be invoked to supply a limitation missing from the prior art where the limitation in question is "unusually simple and the technology particularly straightforward."⁸ However, the Federal Circuit stated that this ought to be treated as the exception, rather than the rule.⁹ 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.¹⁰ Applying that framework, the Federal Circuit reversed the Board's ruling that a patent was invalid under § 103 where "common sense" provided a missing claim limitation because the Board's determination was not supported by analysis or evidence. Significantly, the Arendi decision stated that the Board's analysis was flawed because it relied on nothing more than conclusory statements and unspecific expert testimony in finding that it would have been common sense to supply a limitation that was admittedly missing from the prior art.¹¹

Earlier this year, the Federal Circuit issued its decision in Konin-klijke Philips N.V. v. Google LLC,¹² which again involved a situation where "common sense" was used to invalidate a patent under § 103. In Philips, the Board invalidated a patent's claims as being obvious based on a combination of a single prior art reference for most of the claimed features, and "common sense" for the remaining features. Notably, the Board relied on an expert's opinions in a declaration, which was corroborated by disclosures in a prior art reference, to conclude that the features missing from the prior art reference...