Common sense held sufficient to invalidate claims as obvious on summary judgmentDecember 14, 2009

If anyone needed further proof that patents are more easily held obvious after KSR, look no further. The Federal Circuit held that a patent directed to a method of email marketing with improved efficiency was obvious based on the "common sense" of one in the art.

The claimed method had four steps, the fourth of which was (as described by the court) repeating the first three steps until a minimum threshold of emails were successfully received. It was undisputed that the first three steps were known in the art and that the final step was not in the prior art. The district court held the addition of the final step "would be obvious to virtually anyone."

The Federal Circuit agreed. After citing the relevant passages from KSR regarding common sense, the court observed:

[W]hile an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.

The court did reiterate that the analysis underlying the application of common sense "must be made explicit" in order to facilitate review, but held the district court had done so here. The court observed that if the relevant technology were complex, expert opinions may be required. However, in this case the level of ordinary skill in the art was a high school education and limited experience. Of course, the court also held that even if the expert witness testimony was considered, it also confirmed the conclusion of obviousness. Accordingly, the Federal Circuit affirmed the district court's grant of summary judgment.

Perfect Web Technologies owns a patent claiming methods for managing bulk email distribution to groups of targeted customers. The patent's priority date is April 13, 2000. Perfect Web asserted six claims of the patent against InfoUSA. Claim 1 is representative of these claims:

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.

InfoUSA asserted the claims were invalid as anticipated, obvious, and directed to nonstatutory subject matter. Perfect Web did not argue the various claims were separately valid. The district court, after holding a claim construction hearing but not issuing a formal order, held the claims invalid on each of these grounds. Specifically with regard to obviousness, the district court (assuming Perfect Web's claim constructions were correct for purposes of summary judgment) observed steps (A)-(C) were known in the prior art, and step (D) "would be obvious to virtually anyone," as it was simply a repetition of the previous steps. Perfect Web appealed.

The Federal Circuit affirmed the determination that the claims were obvious, declining to reach the remaining grounds of invalidity. Perfect Web raised three issues on appeal: (1) it was improper for the district court to use "common sense" to invalidate the claims on obviousness grounds, and its expert testimony undercut this conclusion; (2) the claims were not obvious to try; and (3) secondary indicia, specifically a long-felt need, overcame any prima facie case of obviousness that had been shown.

Common Sense

The court first addressed the district court's conclusion that the claims were invalid based on simple common sense. Specifically, the district court stated step (D) of the method was "merely the logical result of common sense application of the maxim, 'try, try again.'" In this regard, the Federal Circuit observed several relevant passages from KSR regarding common sense, such as the statements that:

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.

. . .

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.

. . .

Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.

The court then cited several of its own opinions regarding application of common sense, such as the principle that "an examiner may not invoke 'good common sense' to reject a patent application without some factual foundation, where 'basic knowledge and common sense was not based on any evidence in the record,' but that "even though common knowledge and common sense do not substitute for facts, 'they may be applied to analysis of the evidence.'"

With these principles in mind, the court had little trouble affirming the district court's conclusion. The court noted the only step allegedly missing from the prior art was the repetition of the first three. As such, "this last step, and the claim as a whole, simply recited repetition of a known procedure until success is achieved." Accordingly, the obviousness determination, as supported by common sense, was correct.

The court held in this circumstance that expert testimony was unnecessary, as the level of skill in the art was low: a high school diploma and a small amount of marketing and computer experience. However, even if the expert testimony was considered, the claims were still obvious. Perfect Web's expert did state that "mere common sense and general knowledge in the art" would not render the claims obvious, but this was after a discussion of combining prior art patents. The Federal Circuit held this was not on point, and instead observed the expert testified that if an initial deliver of email was insufficient, there were realistically two options: stop or find more email addresses. Accordingly, the court held the expert testimony did not undercut the determination of obviousness.

Obvious to Try

Even if common sense was not applied, the Federal Circuit held the claims were still obvious, as they were obvious to try. The parties' experts collectively identified only three solutions to sending too few successful emails: (1) oversending, or sending more than requested to ensure meeting a quota; (2) resending messages that "bounced"; or (3) identifying a new group of addresses and sending messages to them to make up the difference between the successfully sent messages and the quota. Option (3) is the claimed method. As stated by the court:

Even without experimentation, simple logic suggests that sending messages to new addresses is more likely to produce successful deliveries than re-sending messages to addresses that have already failed. Perfect Web presented no evidence that the patented method offered any unexpected results or was not reasonably expected to succeed; indeed, the predictable and actual result of performing step (D) is that more e-mail messages reach more recipients. There was thus a "finite number of identified, predictable solutions" to suggest that the '400 patent’s methods would have been obvious to try.

Accordingly, the claims were obvious for this independent reason as well.

Secondary Indicia

Finally, Perfect Web argued there was a long-felt need for the claimed method, such that this secondary indication of nonobviousness overcame whatever prima facie case of obviousness was otherwise shown. The court rejected this assertion. While there was a need identified by the experts, namely preventing "oversending" (the first solution above), there was no evidence of how long the need was felt, when the problem first arose, or that the patented method met this need. There was simply no issues of material fact on this issue.

For all these reasons, the court affirmed the district court's summary judgment of obviousness of the asserted claims.

To read the full decision in Perfect Web Techs., Inc. v. InfoUSA, Inc., click here.

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