Intellectual Property Law

Common sense held sufficient to invalidate claims as obvious on summary judgment

By McKee, Voorhees & Sease, P.L.C.

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.

More detail of Perfect Web Techs., Inc. v. InfoUSA, Inc. after the jump.

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Full post as published by FileWrapper on December 14, 2009 (boomark / email).