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December 3, 2009

Imperfect Web

Tom DiStefano got his quota-fulfilling bulk email patent, 6,631,400, when the PTO was still grinding out junk patents. Sued for infringement, InfoUSA snuffed the spam patent in summary judgment under obviousness after claim construction. With common sense, the CAFC licked the stamp that put that patent out of everyone else's misery, allowing a flood of spam email to go unpatented.

Perfect Web v. InfoUSA (CAFC 2009-1105) precedential

"Obviousness is a question of law based on underlying findings of fact." In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying factual inquiries are: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the pertinent art, and (4) secondary considerations of nonobviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).

As a patent holder, you should know you're hurting when one of skill in the art for your invention has "at least a high school diploma." That, and your claimed novelty is repetition. Ouch.

Independent claim 1 represents the asserted 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.

The district court began its obviousness analysis by stating that the relevant art in the '400 patent is "the art of e-mail marketing," and that the person of ordinary skill in that art possessed "at least a high school diploma, one year of experience in the industry, and proficiency with computers and e-mail programs." Opinion at 6. It then found that the prior art and '400 patent specification showed that steps (A)-(C) of the claim 1 method were previously known. According to the court, "[t]he question then becomes whether e-mail marketers of ordinary skill would have repeated the first three steps to deliver a prescribed quantity of e-mail to targeted recipients," as called for in step (D). Id. at 7. Citing the Supreme Court's teaching in KSR that "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton," the court found step (D) obvious: "the final step is merely the logical result of common sense application of the maxim 'try, try again.'" Id. at 11.

Perfect Web posits a carp about common sense.

Perfect Web argues that there are factual disputes on two issues: whether "common sense" would have taught step (D), and the presence of a long-felt need. It argues that common sense or knowledge "must be rooted in evidence and factual findings," because they play "the same role as the inquiry into whether the prior art contains any teaching, suggestion or motivation ('TSM') that would have led a person of ordinary skill to produce the claimed invention." Perfect Web's Br. 48-49. Perfect Web contends that the district court improperly viewed the invention through a hindsight-tinted lens, misconstrued step (D) to mean "try, try again," and discounted expert testimony that the patent was not a common-sense advance. Perfect Web also claims that the field of e-mail marketing had an unmet need for the invention because the industry previously relied on "oversending," which involved sending an excess of messages to ensure delivery to the desired quantity of recipients, in the process wasting resources and annoying consumers without guaranteeing delivery.

InfoUSA invokes the propitious power of common sense in case law. More philosophically, the commonality of sense is less than overwhelming in public appearance. Bunches of people aren't called mobs for nothing. What's so common about sense? Why the false-advertising adjective prefacing 'sense'?

In response, InfoUSA reiterates its position that step (D) was a common-sense addition to steps (A)-(C), citing its experts' opinions. It also argues that repetition of the selection and transmission steps would have been obvious to try because there were, at most, two or three predictable solutions at the time for ensuring e-mail delivery. Finally, InfoUSA claims that Perfect Web's assertion of long-felt need lacks evidentiary support or sufficient weight to overcome an otherwise strong case of obviousness.

The vague notion of common sense is now firmly codified case law, having a long tradition of existence in service of stripping patent protection.

In rejecting rigid application of the "teaching, suggestion, or motivation" test for obviousness, the Supreme Court observed that common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention. In KSR, the Court offered guidance that has now been cited repeatedly:

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.

550 U.S. at 421 (emphasis added). While the Court warned against "the distortion caused by hindsight bias and . . . ex post reasoning," it also noted: "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." Id. at 420-21.

The CAFC opines at length on the sense of the common.

Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning. Our predecessor court stated in In re Bozek, an appeal from the Board of Patent Appeals and Interferences, that it was proper for a patent examiner to rely on "common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference." 416 F.2d 1385, 1390 (CCPA 1969) (quotation marks omitted). We later clarified 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." In re Zurko, 258 F.3d 1379, 1383, 1385 (Fed. Cir. 2001). We explained that when the PTO rejects a patent for obviousness, it "must not only assure that the requisite findings are made, based on evidence of record, but must also explain the reasoning by which the findings are deemed to support the agency's conclusion." In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002). Lee recognized that, under Bozek, even though common knowledge and common sense do not substitute for facts, "they may be applied to analysis of the evidence." Id. at 1345. At the time, we required the PTO to identify record evidence of a teaching, suggestion, or motivation to combine references because "[o]mission of a relevant factor required by precedent is both legal error and arbitrary agency action." Id. at 1344. However, this did not preclude examiners from employing common sense. More recently, we explained that that use of common sense does not require a "specific hint or suggestion in a particular reference," only a reasoned explanation that avoids conclusory generalizations. Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006); see also In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (requiring "some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct"). And since KSR, this court has recognized that obviousness is not subject to a "rigid formula," and that "common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Leapfrog Enters. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).

News to me that examiners "may not invoke "good common sense" to reject a patent application without some factual foundation." Then again, maybe not, at least on the backhand of that. My extensive experience over the past decade is that examiners seldom evince good common sense. Ouch again.

In counseling that courts "need not seek out precise teachings directed to the specific subject matter of the challenged claim," the Supreme Court clarified that courts may look to a wider diversity of sources to bridge the gap between the prior art and a conclusion of obviousness. KSR, 550 U.S. at 418. We previously noted that "[t]he reason, suggestion, or motivation to combine may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved . . . ." Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000). KSR expanded the sources of information for a properly flexible obviousness inquiry to include market forces; design incentives; the "interrelated teachings of multiple patents"; "any need or problem known in the field of endeavor at the time of invention and addressed by the patent"; and the background knowledge, creativity, and common sense of the person of ordinary skill. 550 U.S. at 418-21.

When considering these sources, the Supreme Court remarked that "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it." Id. at 421. Thus, the Supreme Court instructed that factfinders may use common sense in addition to record evidence. As an example of this flexibility, KSR noted that courts should avoid "overemphasis on the importance of published articles and the explicit content of issued patents." Id. at 419. Nor are expert opinions always a prerequisite, for "[i]n many patent cases expert testimony will not be necessary because the technology will be easily understandable without the need for expert explanatory testimony." Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004) (quotation omitted); see also Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1365 (Fed. Cir. 2008) (affirming obviousness where "[t]he technology is simple and neither party claims that expert testimony is required"). We therefore hold that while 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.

Although the obviousness analysis should "take account of the inferences and creative steps that a person of ordinary skill in the art would employ," the Supreme Court emphasized that this evidentiary flexibility does not relax the requirement that, "[t]o facilitate review, this analysis should be made explicit." Id. at 418 (citing Kahn, 441 F.3d at 988 ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.")). "[T]he analysis that 'should be made explicit' refers not to the teachings in the prior art of a motivation to combine, but to the court's analysis." Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). We reiterate that, on summary judgment, to invoke "common sense" or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.

The synonym for "articulate" is "intelligible." This is not a high bar, folks. But, to Perfect Web, it was a low blow.

In this case, we find that the predicate evidence on which the district court based its "common sense" reasoning appears in the record, namely the facts that step (D) merely involves repeating earlier steps, and that a marketer could repeat those steps, if desired. The district court also adequately explained its invocation of common sense. In claim 1, steps (A)-(C) involve targeting a group of recipients, sending e-mail to those recipients, and calculating the number of successfully delivered e-mails. Perfect Web concedes that prior art references disclose these three steps. Step (D), the only remaining step, recites "repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity." Thus, this last step, and the claim as a whole, simply recites repetition of a known procedure until success is achieved. Recognizing this, the district court explained: "If 100 e-mail deliveries were ordered, and the first transmission delivered only 95, common sense dictates that one should try again. One could do little else." Opinion at 7-8. If the relevant technology were complex, the court might require expert opinions. E.g., Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 996-98 (Fed. Cir. 2009) (crediting expert testimony of unexpected results). Here, however, the parties agreed that ordinary skill in the relevant art required only a high school education and limited marketing and computer experience. No expert opinion is required to appreciate the potential value to persons of such skill in this art of repeating steps (A)-(C).

Marvel at how obvious in light of common sense dovetails with obvious to try.

The record also shows that step (D) would have been obvious to try... 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... There was thus a "finite number of identified, predictable solutions" to suggest that the '400 patent's methods would have been obvious to try. Id. at 421. As the Supreme Court explained, if trying such a limited number of solutions "leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." Id. (emphasis added). Meanwhile, no evidence indicates that a person of ordinary skill would have needed to "vary all parameters or try each of numerous possible choices," or "explore a new technology or general approach . . . where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it," which would counsel against an invention being obvious to try. Kubin, 561 F.3d at 1359 (quoting In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)).

Mere attorney argument is piss in the wind of common sense.

As noted, supra, the parties agreed that a person of ordinary skill possessed "at least a high school diploma, one year of experience in the industry, and proficiency with computers and e-mail programs." Opinion at 6. Perfect Web argues that such a person was "unsophisticated" and had "no knowledge of computer programming or system design." Perfect Web's Br. 57. However, Perfect Web does not explain how programming experience was necessary to appreciate the value of repeating known methods. Moreover, this position is merely attorney argument lacking evidentiary support. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (noting that "unsworn attorney argument . . . is not evidence").

Perfect Web's attorney team at least were in there and pitching, to make a dispute of no dispute.

Perfect Web also claims that the district court should have construed the claims before deciding validity. We have said that "a court may not invalidate the claims of a patent without construing the disputed limitations of the claims and applying them to the allegedly invalidating acts." Dana Corp. v. Am. Axle & Mfg., 279 F.3d 1372, 1376 (Fed. Cir. 2002). However, a district court need not "construe undisputed claim terms prior to issuing a summary judgment of invalidity." Unitherm Food Sys. v. Swift-Eckrich, Inc., 375 F.3d 1341, 1350 (Fed. Cir. 2004) (emphasis added), rev'd on other grounds, 546 U.S. 394 (2006).

Perfect Web argued long-felt need as secondary evidence of non-obviousness. The CAFC didn't feel it.

Perfect Web fails to show that these drawbacks constituted a long-felt, unmet need alleviated by the patent. Perfect Web provided no evidence to explain how long this need was felt, or when the problem first arose. See Tex. Instruments v. Int'l Trade Comm'n, 988 F.2d 1165, 1178 (Fed. Cir. 1993) ("[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem."). Nor does the evidence show that the '400 patent met any such "need." Krishnamurthy made the bare assertion that the patent provided "improved efficiency," J.A. 1959, but cited no supporting data to show, for example, that the invention actually reduced marketing costs, time, or the number of consumers who opt out. "Moreover, as we have often held, evidence of secondary considerations does not always overcome a strong prima facie showing of obviousness." Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (affirming judgment as a matter of law of obviousness). In the end, Perfect Web's unsupported contentions are legally insufficient to raise a genuine issue of material fact.

In the finale, why waste time and energy on facts and more interesting case law when invocation of common sense is all you need?!

Because we agree with the district court's holding of obviousness as to all asserted claims, we need not and do not reach its alternative reasons for holding the '400 patent invalid--namely, that the claims were anticipated and directed to unpatentable subject matter.


A different perspective from Patrick Anderson at IP Nav.

Posted by Patent Hawk at December 3, 2009 8:04 PM | Prior Art


What exactly is "...avoids conclusory generalizations."?

Posted by: breadcrumbs at December 4, 2009 7:45 AM

As I've said on other patent blogs, 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 required by precedent is both legal error and arbitrary 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 patent examiners to engage in unverifiable speculation. I can't tell you how many times a patent examiner has told me 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 Judge Linn's opinion saying that expert testimony was "not necessary in this case." But there was no other "evidence" presented to factually 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 factually supporting why this step not taught by the art is "common sense"?

As someone else has astutely said: "Common sense is the lazy man’s rationale for rejecting an application." 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 "common sense" is, a "phantom," when there's no verifiable evidence to support it.

Posted by: EG at December 4, 2009 8:33 AM