587 F.3d 1324, 2009 U.S. App. LEXIS 26245 (Fed. Cir. 2009) (LINN, Dyk & Prost)
MAJOR ISSUES: Obviousness–common sense not reflected in specific reference or expert opinion
Obvious to try
Common sense and the Supreme Court’s decision on the non-obviousness requirement for patentability, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007), proved fatal to a patent’s claims. For a discussion of KSR, see Chisum on Patents § 5.02; Chisum, Patent Law Digest § 1542.10.
The patent concerned a method for managing bulk electronic mail (”e-mail”) distribution to groups of targeted consumers. uspatno6631400 The representative claim 1 recited four steps ((A)-(D)), to wit, matching, transmitting, calculating, and repeating (A) and (D) until the “calculated quantity” of “successfully received e-mails” “exceeds [a] prescribed minimum quantity.” The patent owner conceded that the first three steps were disclosed in a prior art reference. The accused infringer conceded that the fourth “repeating” step did not appear in the prior art. The issue for validity of the patent became: would it have been obvious to a person of ordinary skill to add the fourth step, that is, to repeat the first three steps to achieve success? A district court granted summary judgment of invalidity for obviousness, reasoning that ” `the final step is merely the logical result of common sense application of the maxim “try, try again.” ‘ ”
The Federal Circuit affirmed. In reaching an obviousness conclusion, a district court may rely on common sense not reflected in a specific prior art reference or expert opinion. The court cautioned that, on summary judgment, “a district court must articulate its reasoning with sufficient clarity for review.” However, here, the district court met that standard. The record contained the “predicate evidence on which the district court based its `common sense’ reasoning.” The evidence was the two facts: (1) “step (D) merely involves repeating earlier steps,” and (2) “a marketer could repeat those steps, if desired.” “The district court … adequately explained its invocation of common sense.” It explained that claim merely requires “repetition of a known procedure until success is achieved.” The district court noted: ” `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.’ “ The court noted that expert opinion might have been necessary if “the relevant technology” were complex, but no expert opinion “was required to appreciate the potential value” of repeating the claim’s first three steps. The parties agreed that “ordinary skill in the relevant art required only a high school education and limited marketing and computer experience.” Though unnecessary, the testimony by the parties’ experts supported the common sense conclusion of obviousness.
The record showed that the fourth, repeating step “would have been obvious to try,” and thus obvious under the Supreme Court’s analysis in KSR. KSR referred to a “finite number of identified, predictable solutions” leading to “anticipated success” as a product of “ordinary skill and common sense,” not “innovation.” The experts identified only three potential solutions, one being “identifying a new group of addresses and sending messages to them, which is step (D) in the … patent.” Simple logic suggested that sending new messages was “more likely to produce successful deliveries than re-sending messages to addresses that have already failed.” The patent owner “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 no evidence of a need to vary all parameters or to explore a new technology, which might “counsel against an invention being obvious to try.” See In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894 (Fed. Cir. 1988).
For a discussion of “obvious to try,” see Chisum on Patents § 5.04[f]; Chisum, Patent Law Digest § 1543.10.
Finally, the patent owner argued that there was a fact issue on whether the patented invention met a “long-felt and unmet need” by solving an “oversending” problem in the bulk e-mail industry and that this precluded summary judgment of invalidity for obviousness. The argument lacked merit. “Evidence that an invention satisfied a long-felt and unmet need that existed on the patent’s filing date is a secondary consideration of nonobviousness.” However, the patent owner provided no evidence on when the need arose or how the patented invention met the need. See Texas Instruments v. Int’l Trade Comm’n, 988 F.2d 1165 (Fed. Cir. 1993). Secondary considerations do “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).”
For a discussion of “long felt need,” see Chisum on Patents § 5.05; Chisum, Patent Law Digest § 1534.