Arendi S.A.R.L. v. Apple Inc.

United States Court of Appeals
for the Federal Circuit
______________________
ARENDI S.A.R.L.,
Appellant
v.
APPLE INC., GOOGLE INC., MOTOROLA
MOBILITY LLC,
Appellees
______________________
2015-2073
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00208.
______________________
Decided: August 10, 2016
______________________
ROBERT M. ASHER, Sunstein Kann Murphy & Timbers
LLP, Boston, MA, argued for appellant. Also represented
by BRUCE D. SUNSTEIN.
BRIAN ROBERT MATSUI, Morrison & Foerster LLP,
Washington, DC, argued for all appellees. Appellee Apple
Inc. also represented by SETH W. LLOYD, JOSEPH R.
PALMORE; DAVID LEE FEHRMAN, MEHRAN ARJOMAND, Los
Angeles, CA.
2 ARENDI S.A.R.L. v. APPLE INC.
MATTHEW A. SMITH, Turner Boyd LLP, Redwood City,
CA, for appellees Google Inc., Motorola Mobility LLC.
Also represented by ROBERT J. KENT.
______________________
Before MOORE, LINN, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
On December 2, 2013, Apple Inc., Google, Inc. and
Motorola Mobility LLC (collectively “Appellees”)) filed a
petition for inter partes review (“IPR”) of U.S. Patent No.
7,917,843 (the “’843 patent”), which is owned by appellant
Arendi S.A.R.L. (“Arendi”). On June 9, 2015, the Patent
Trial and Appeal Board (“Board”) issued a decision find-
ing claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43
would have been obvious. Because the Board misapplied
our law on the permissible use of common sense in an
obviousness analysis, we reverse.
BACKGROUND
A. The Patent-at-Issue
The ’843 patent is the only patent at issue in this ap-
peal. The ’843 patent was filed in 2008 as a continuation
of an application that issued as U.S. Patent No. 7,496,854
(“’854 patent”), which in turn issued from a continuation
of an application that issued as U.S. Patent No. 6,323,853
(“’853 patent”), filed in the United States on November 10,
1998. The ’843 patent shares a common specification with
the ’854 patent, the subject of the companion appeal No.
2015-2069, -2070, -2071, which we affirmed under Rule 36
on July 11, 2016, as well as the ’853 patent.
The ’843 patent is directed to providing beneficial co-
ordination between a first computer program displaying a
document and a second computer program for searching
an external information source. The patent allows a user
to access and conduct a search using the second computer
program while remaining in the first computer program
ARENDI S.A.R.L. v. APPLE INC. 3
displaying the document. A computer process analyzes
first information in the document to determine if it is of a
type that can be used in another program to find related
second information. Specifically, the ’843 patent discloses
mechanisms for analyzing the document to identify the
presence of name and address information, including by
analyzing:
(i) paragraph/line separations/formatting, etc.; (ii)
street, avenue, drive, lane, boulevard, city, state,
zip code, country designators and abbreviations,
etc.; (iii) Mr., Mrs., Sir, Madam, Jr., Sr. designa-
tors and abbreviations, etc.; (iv) Inc., Ltd., P.C.,
L.L.C, designators and abbreviations, etc.; and (v)
a database of common male/female names, etc.
’843 patent, col. 4 ll. 33-39. A search by the second com-
puter program using at least part of the first information
as a search term then looks for second information associ-
ated with the first information in the information source.
Id. at col. 4 ll. 43-57, Fig. 1. Once the second information
is located, the claimed invention performs an action using
the second information.
For example, if a name is detected, a database can be
searched for the name. Id. at col. 5 l. 65–col. 6 l. 3. If the
search finds a single related contact with only one ad-
dress, that address is inserted into the document. Id. If,
instead, the search finds more than one related contact or
address, the search results are displayed, and the user
can select an address for insertion into the document. Id.
at Fig. 10, col. 7 ll. 33-49.
The parties agree that claim 1 of the ’843 patent is
representative of the claims on appeal:
A computer-implemented method for finding data
related to the contents of a document using a first
computer program running on a computer, the
method comprising:
4 ARENDI S.A.R.L. v. APPLE INC.
displaying the document electronically using the
first computer program;
while the document is being displayed, analyzing,
in a computer process, first information from the
document to determine if the first information is
at least one of a plurality of types of information
that can be searched for in order to find second in-
formation related to the first information;
retrieving the first information;
providing an input device, configured by the first
computer program, that allows a user to enter a
user command to initiate an operation, the opera-
tion comprising (i) performing a search using at
least part of the first information as a search term
in order to find the second information, of a specif-
ic type or types, associated with the search term in
an information source external to the document,
wherein the specific type or types of second infor-
mation is dependent at least in part on the type or
types of the first information, and (ii) performing
an action using at least part of the second infor-
mation;
in consequence of receipt by the first computer
program of the user command from the input de-
vice, causing a search for the search term in the
information source, using a second computer pro-
gram, in order to find second information related
to the search term; and
if searching finds any second information related
to the search term, performing the action using at
least part of the second information, wherein the
action is of a type depending at least in part on
the type or types of the first information.
Id. at col. 10 l. 38–col. 11 l. 3 (emphasis on limitation at
issue added). Because Arendi makes no arguments based
ARENDI S.A.R.L. v. APPLE INC. 5
on any other claim limitation or claim, the claims on
appeal stand or fall with claim 1. See In re Kaslow, 707
F.2d 1366, 1376 (Fed. Cir. 1983).
B. The Pandit Reference
The sole prior art reference on appeal is U.S. Patent
No. 5,859,636 to Pandit (“Pandit”). Pandit was filed on
December 27, 1995, and teaches recognizing different
classes of text in a document and providing suggestions
based on it. See Pandit Abstract.
One embodiment of Pandit involves a program that
recognizes a phone number as a class of text. Pandit, col.
2 ll. 25-31. Figure 1e and Figure 1f of Pandit illustrate
the relevant embodiment:
Id. at Fig. 1e, Fig. 1f. The specification explains that, in
Figure 1e, “a telephone number 16 is accented. The pull
down menu named Phone #17 is highlighted and prefera-
bly identifies [ ] executable operations.” Id. at col. 2 ll. 64-
67. The specification further explains:
As shown in FIG. lf on pulled-down menu 20, pos-
sible programs include a writable computer data-
6 ARENDI S.A.R.L. v. APPLE INC.
base of telephone and telefax numbers, a program
which instructs a properly equipped computer to
dial the number accented, a program which gen-
erates a template for the preparation of a fax mes-
sage and which subsequently causes a properly
equipped computer to transmit the message to the
accented number, etc. Again, any program relat-
ed to telephone or telefax numbers can be includ-
ed in pulled-down menu 20 for direct accessing in
accordance with the teachings of this disclosure.
Id. at col. 3 ll. 1-11. In Figure 1f, “Add to address book,” is
one of several options displayed in pull-down menu 20.
The key question in this appeal is whether the Board
erred in finding that it would be “common sense” to a
person of ordinary skill in the art to search for the tele-
phone number that is detected in a document when the
“Add to address book” option disclosed in Pandit is select-
ed.
C. Procedural History
Arendi sued Appellees and several other technology
companies alleging infringement of claims of the ’843
patent and related patents. Appellees responded by filing
a petition requesting an IPR of claims 1-44 of the ’843
patent. The Board instituted review of claims 1, 2, 8, 14-
17, 20, 21, 23, 24, 30, 36-39, 42, and 43, and declined to
institute review of the other challenged claims.
In its Institution Decision, the Board stated that “Pe-
titioner submits . . . that Pandit discloses adding an
identified number to an address book.” Joint Appendix
(“J.A.”) 489. The Board then explained that it found
unpersuasive the Patent Owner’s argument that a poten-
tial search for duplicate phone numbers, with respect to
the embodiment shown in Figure 1f, would not meet the
limitation requiring a search “in order to find a second
information” using a search for “first information.” J.A.
491-92. Instead, the Board found that it would be “rea-
ARENDI S.A.R.L. v. APPLE INC. 7
sonable to presume, as a matter of common sense” that
Pandit would search for duplicate phone numbers and
information associated with such numbers. Id.
The Board’s Final Written Decision reaffirmed its ini-
tial determination, holding claims 1-2, 8, 14-17, 20-21, 23-
24, 30, 36-39, and 42-43 unpatentable for obviousness
over Pandit. The Board noted that:
Petitioner submits that Pandit discloses each lim-
itation of illustrative claim 1 except for perform-
ing a search as specified in step (i) of the claim.
Petitioner, however, submits further that in order
to avoid multiple entries of the same address, it
would have been obvious that the first step in
adding to an address book is to search the address
book to determine if an entry already exists with
the entered information, and displaying any asso-
ciated information that is located.
Apple Inc. v. Arendi S.A.R.L., IPR2014-00208, 2015 Pat.
App. LEXIS 6053, at *9 (PTAB June 9, 2015).
The Board then stated, just as it did in the Institution
Decision, that:
We find it reasonable to presume, as a matter of
common sense and at the time of the invention,
that the subroutine in Pandit would search for
duplicate telephone numbers and, upon locating a
duplicate entry, both the first information and as-
sociated (or second) information, such as the name
and/or address associated with the telephone
number, would be displayed to the user.
Id. at *10. Although the Board recognized that “a human
being entering a contact into a paper address book would
not be expected to search for duplicate telephone number
entries,” it, nevertheless, found that “it would have been
obvious to the ordinary artisan to utilize a computerized
search for duplicate telephone entries when entering a
8 ARENDI S.A.R.L. v. APPLE INC.
telephone number in an electronic address book database
as taught by Pandit.” Id. at *13.
The Board further explained that the obviousness in-
quiry “not only permits, but requires consideration of
common knowledge and common sense.” Id. at *14 (citing
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006); Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009)). It rejected Arendi’s argument, relying
on K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d
1362, 1365 (Fed. Cir. 2014), that “common sense” may
only be applied when combining references that disclose
all the required limitations. The Board stated that the
conclusion of obviousness follows from the readily appar-
ent benefit provided by the retrieval and display of pre-
existing information to a user. The Board found, in any
event, that in this case, “a claimed structural feature is
not missing from the applied prior art.” Arendi, 2015 Pat.
App. LEXIS 6053, at *15.
Arendi appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s factual findings for substantial
evidence and its legal conclusions de novo. In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). “Substantial evi-
dence is something less than the weight of the evidence
but more than a mere scintilla of evidence.” In re Mouttet,
686 F.3d 1322, 1331 (Fed. Cir. 2012). It is “such relevant
evidence as a reasonable mind might accept as adequate
to support a conclusion.” In re Applied Materials, Inc.,
692 F.3d 1289, 1294 (Fed. Cir. 2012) (quoting Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)).
“Obviousness is a question of law based on underlying
findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009). A patent is obvious “if the differences between
ARENDI S.A.R.L. v. APPLE INC. 9
the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have
been obvious at the time the invention was made to a
person having ordinary skill in the art to which said
subject matter pertains.” 35 U.S.C. § 103(a) (2012). In
reaching this conclusion, the court must avoid “hindsight
bias and must be cautious of arguments reliant upon ex
post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007). Though less common, in appropriate
circumstances, a patent can be obvious in light of a single
prior art reference if it would have been obvious to modify
that reference to arrive at the patented invention. See,
e.g., Takeda Chem. Indus., Ltd. v. Alphapharm Pty, Ltd.,
492 F.3d 1350, 1357 (Fed. Cir. 2007); SIBIA Neuroscienc-
es, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed.
Cir. 2000).
The single question at issue here is whether the
Board misused “common sense” to conclude that it would
have been obvious to supply a missing limitation in the
Pandit prior art reference to arrive at the claimed inven-
tion. It is true that common sense and common
knowledge have their proper place in the obviousness
inquiry. We stated in Perfect Web that “[c]ommon sense
has long been recognized to inform the analysis of obvi-
ousness if explained with sufficient reasoning.” 587 F.3d
at 1328. And we stated in Randall that “[i]n KSR, the
Supreme Court criticized a rigid approach to determining
obviousness based on the disclosures of individual prior-
art references, with little recourse to the knowledge,
creativity, and common sense that an ordinarily skilled
artisan would have brought to bear when considering
combinations or modifications.” Randall Mfg. v. Rea, 733
F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR, 550 U.S. at
415-22); see also DyStar, 464 F.3d at 1367. Hence, we do
consider common sense, common wisdom, and common
knowledge in analyzing obviousness.
10 ARENDI S.A.R.L. v. APPLE INC.
But there are at least three caveats to note in apply-
ing “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. In DyStar, a pre-KSR case, we held a patent
obvious where “all claim limitations [were] found in a
number of prior art references,” 464 F.3d at 1360, and a
person of ordinary skill in the art would have combined
the references to achieve a “cheaper, faster, and more
convenient” process. Id. at 1371 (quoting Sandt Tech.,
Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1355
(Fed. Cir. 2001)). We stated that: “an implicit motivation
to combine exists not only when a suggestion may be
gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combi-
nation of references results in a product or process that is
more desirable.” DyStar, 464 F.3d at 1368. Similarly, in
Randall, we invoked common sense to vacate the Board’s
determination of non-obviousness where “the Board failed
to consider a wealth of well-documented knowledge that is
highly material to evaluating the motivation to combine
references.” Randall, 733 F.3d at 1356. There, the
Board’s decision to ignore the existence of a “prevalent,
perhaps even predominant method” of achieving the
limitation at issue was prejudicial error. Id. at 1363.
Second, in Perfect Web, the only case Appellees identi-
fies in which common sense was invoked to supply a
limitation that was admittedly missing from the prior art,
the limitation in question was unusually simple and the
technology particularly straightforward. “The patented
invention involves comparing the number of successfully
delivered e-mail messages in a delivery against a prede-
termined desired quantity, and if the delivery does not
reach the desired quantity, repeating the process of
selecting and e-mailing a group of customers until the
desired number of delivered messages has been achieved.”
Perfect Web, 587 F.3d at 1326. There, the missing claim
ARENDI S.A.R.L. v. APPLE INC. 11
limitation—step D of steps A-D—was nothing more than
an instruction to repeat steps A, B, and C until a particu-
lar quantity of email was sent in accordance with the
claim. By contrast, the missing search at issue here
“plays a major role in the subject matter claimed” and
“affects much more than step (i).” Appellant’s Br. 24.
That is—if the search in step (i) is missing, then “the
claims would be almost void of content” because the
premise of the patent is to use information in a first
program to find related information in a second program.
Id. at 25. Thus, the facts in Perfect Web are distinguisha-
ble from the case at bar and ought to be treated as the
exception, rather than the rule.
Third, our cases repeatedly warn that 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 eviden-
tiary support, especially when dealing with a limitation
missing from the prior art references specified. Indeed,
we stated that although there is no problem with using
common sense “without any specific hint or suggestion in
a particular reference,” the Board’s “utter failure to
explain the ‘common knowledge and common sense’ on
which it relied” is problematic. DyStar, 464 F.3d at 1366
(explaining our reasoning in In re Lee, 277 F.3d 1338,
1341, 1344 (Fed. Cir. 2002)). See also In re Zurko, 258
F.3d 1379, 1383, 1385 (Fed. Cir. 2001) (reversing Board
where it adopted examiner’s unsupported assertion that
claim limitation missing from cited references was “basic
knowledge” and it “would have been nothing more than
good common sense” to combine the references).
For example, in In re Lee, the Board adopted the ex-
aminer’s statements during prosecution that combining
two prior art references to achieve the claimed inven-
tion—a method of automatically displaying the functions
of a video display device and demonstrating how to select
and adjust the functions—would have been obvious to a
12 ARENDI S.A.R.L. v. APPLE INC.
person of ordinary skill. The examiner had stated that
the combination would have been obvious “since the
demonstration mode is just a programmable feature
which can be used in many different devices for providing
automatic introduction by adding the proper program-
ming software,” and that “another motivation would be
that the automatic demonstration mode is user friendly
and it functions as a tutorial.” In re Lee, 277 F.3d 1338,
1341 (Fed. Cir. 2002). We vacated the Board’s decision,
holding that “[c]onclusory statements such as those here
provided do not fulfill the agency’s obligation” to explain
all material facts relating to a motivation to combine. Id.
at 1344.
In Hear-Wear, a more recent case and one that in-
volves a missing limitation, we stated that “the Board was
correct to require record evidence to support an assertion
that the structural features of claims 3 and 9 of the ’512
patent were known prior art elements. The patentability
of claims 3 and 9 with the limitation ‘a plurality of prongs
that provide a detachable mechanical and electrical
connection’ presents more than a peripheral issue.” Hear-
Wear, 751 F.3d at 1365 (emphasis added). We distin-
guished KSR, finding that “the present case does not
present a question” regarding “combining or modifying
references” but “[i]nstead, it is about whether the Board
declined to accept a conclusory assertion from a third
party about general knowledge in the art without evi-
dence on the record, particularly where it is an important
structural limitation that is not evidently and indisputa-
bly within the common knowledge of those skilled in the
art.” Id. at 1365-66 (emphasis added and deleted). Based
on this prior precedent, we conclude that while “common
sense” can be invoked, even potentially to supply a limita-
tion missing from the prior art, it must still be supported
by evidence and a reasoned explanation. In cases in
which “common sense” is used to supply a missing limita-
tion, as distinct from a motivation to combine, moreover,
ARENDI S.A.R.L. v. APPLE INC. 13
our search for a reasoned basis for resort to common sense
must be searching. And, this is particularly true where
the missing limitation goes to the heart of an invention.
Keeping these principles in mind, we now examine
whether there was substantial evidence supporting the
Board’s finding that common sense would lead one to
search for the telephone number in Pandit. Arendi argues
there was no evidence, much less substantial evidence, to
support the Board’s presumption that, as a matter of
common sense, the subroutine in Pandit for “Add to
address book” would start by searching for duplicate
telephone numbers before adding the number to an entry
for a contact in the book. Arendi is correct that Pandit
itself is not about a search and does not mention or imply
that a search of any kind is involved with the “Add to
address book” function that is the subject of the parties’
dispute. Rather, Pandit is about text-dependent word
recognition. Moreover, as the Board stated and Appellees
do not directly attempt to rebut on appeal, “Petitioner
submits that Pandit discloses each limitation of illustra-
tive claim 1 except for performing a search as specified in
step (i) of the claim.” Arendi, 2015 Pat. App. LEXIS 6053,
at *9. Thus, we are facing a scenario in which the prior
art reference is missing a particular limitation.
As in Hear-Wear, and unlike Perfect Web, the disputed
search of step (i) is central to representative claim 1:
(i) performing a search using at least part of the
first information as a search term in order to find
the second information, of a specific type or types,
associated with the search term in an information
source external to the document, wherein the spe-
cific type or types of second information is de-
pendent at least in part on the type or types of the
first information,
See Claim 1 of the ’843 patent. As discussed above, both
parties describe the patented technology as directed to
14 ARENDI S.A.R.L. v. APPLE INC.
searching for information related to text in a document
and performing an action using the information found by
the search. See Appellant’s Br. 2 (“In accordance with the
’843 patent . . . a user can access and conduct a search in
an external information source while remaining in the
first computer program displaying the document.”); Ap-
pellee’s Br. 3 (“The claimed method requires an operation
involving searching for information related to text in a
document and performing an action using the information
found by the search.”).
In the words of Hear-Wear, this is not a case about
“peripheral” limitations or about the Board substituting
documentary evidence of a motivation to combine with its
expertise about common motivations in that field of
technology. 751 F.3d at 1365. Instead, it is about wheth-
er the Board accepted “a conclusory assertion from a third
party about general knowledge in the art without evidence
on the record, particularly where it is an important [ ]
limitation that is not evidently and indisputably within
the common knowledge of those skilled in the art.” Id. at
1365-66 (emphases added). Thus, we must approach the
question of “common sense” in this case with the fact that
the search is an important limitation in mind.
The parties talk past each other in their briefing. Ar-
endi focuses on the lack of evidence that it would be
common sense to search a database specifically for a
telephone number in order to prevent duplicates before
adding the number to the database. Arendi argues there
was no evidence, much less substantial evidence, to
support the Board’s presumption that, as a matter of
common sense, the subroutine in Pandit for “Add to
address book” would begin by searching for duplicate
telephone numbers before adding the number to an entry
for a contact in the book. Arendi asserts that, as a
threshold matter, there is no explicit mention or sugges-
tion of performing a search with a telephone number in
Pandit.
ARENDI S.A.R.L. v. APPLE INC. 15
Second, the only documentary support the Board re-
cited was the declaration of Dr. Menasce, Appellees’
expert. Arendi, 2015 Pat. App. LEXIS 6053, at *9. But
Dr. Menasce did not testify about searching an address
book with a telephone number; he stated only that it
would have been obvious for a POSA to determine if “an
entry already exists with this information” before adding
to an address book “in order to avoid multiple entries of
the same address,” a goal which a search for a phone
number would not necessarily accomplish. Menasce Decl.
¶ 99. Cf. Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d
1186, 1195-96 (Fed. Cir. 2014) (noting that “[a] party
must . . . meet a high standard in order to rely on inher-
ency to establish the existence of a claim limitation in the
prior art in an obviousness analysis”). If anything, Arendi
continues, the evidence of record shows that a rational,
common sense method of accomplishing the goal articu-
lated by Dr. Menasce would be to search for the name of
the person with whom the telephone number is associat-
ed.
Finally, Arendi says that the testimony of its own ex-
pert, Dr. Levy, further supports this understanding of
how the “Add to address book” option would work. Dr.
Levy testified that, since address book entries are orga-
nized by and require a name, the most straightforward
way to implement Pandit’s function would be to display a
template into which the user would be able to enter the
name and the telephone number to be added thereto.
Levy Decl. ¶ 21-22.
By contrast, Appellees focus on proving the more gen-
eral proposition that a search for data in a database was
known in the art. According to Appellees, “data is data,”
and if searching a database for data was in the prior art,
then searching that database for a telephone number is
merely common sense. See Appellee’s Br. 24. Appellees
argue that searching a database for certain data was
clearly within the prior art. The Board cited Arendi’s
16 ARENDI S.A.R.L. v. APPLE INC.
own expert’s testimony that “some database programs
conduct a search for duplicates by default.” Arendi, 2015
Pat. App. LEXIS 6053, at *16 (citing Levy Decl. ¶ 25).
Similarly, Appellees contend that the Board relied on Dr.
Menasce’s testimony that “[i]t would also have been
obvious . . . that the first step in adding to an address
book is searching the address book to determine if any
entry already exists with this information.” Id. at *9-10
(citing Menasce Decl. ¶ 99). Dr. Menasce also testified
that “Database operations such as searching for da-
ta/information in the database . . . are very well known in
the art.” Menasce Decl. ¶ 37.
Aside from the expert testimony verifying that search-
ing for data in a database was well-known in the art,
Appellees argue that Pandit itself discloses that the
claimed searching was known in the art. Specifically,
Pandit teaches that methods for “searching of large
volumes of text, such as encyclopedias or legal case books,
using key words or search terms” were well known in the
art. Pandit, col. 1 ll. 11-13. 1 Appellees maintain, there-
1 Appellees also point to a passage in Pandit stating
that, “[w]here the invention is capable of recognizing
nouns or verbs, pull-down menus can, for example, identi-
fy executable programs which provide the meaning of the
highlighted word, appropriate synonyms and the singular
or plural version of the noun or conjugation of the verb.”
Pandit, col. 3 ll. 11-15. The Board excluded Appellees’
argument regarding the noun/verb search mentioned in
Pandit as undeveloped in its Institution Decision. The
Institution Decision explicitly stated that, “Petitioner does
not seem to allege that the disclosed dictionary search
relates to the first and second types of information de-
pendency in the claim.” J.A. 489. Neither Appellees’
Petition for IPR nor their expert, Dr. Menasce, addressed
the noun/verb search in Pandit. J.A. 134; J.A. 203-208.
ARENDI S.A.R.L. v. APPLE INC. 17
fore, that the Board properly found that “the mere re-
trieval and display of useful pre-existing information to a
user, using known methods” would have provided a
“benefit that readily would have been apparent to one of
skill in the art.” Arendi, 2015 Pat. App. LEXIS 6053, at
*15.
We agree with Appellees that this broader notion of
searching for data in a database is supported by substan-
tial evidence, including Appellees’ citations to the testi-
mony of Dr. Menasce and Dr. Levy, as well as Pandit
itself. But Appellees have failed to show why it is proper
to extrapolate from this general background knowledge of
searches in a database to add a search for a telephone
number to the Pandit reference. Specifically, Appellees
have failed to show why it would be common sense for the
“Add to address book” function to operate by first
“search[ing] for entries with the same telephone number.”
Appellee’s Br. 24.
Rather than clearly explaining with concrete exam-
ples what benefit searching for entries with the same
number would achieve, Appellees keep returning to their
general mantra that Arendi’s argument against searching
for a number would apply equally to a search based on a
name. Id. Yet the burden is Appellees’ to provide more
than a mere scintilla of evidence of the utility of a search
for a telephone number before adding the number to an
address book, where such a search is not “evidently and
indisputably within the common knowledge of those
skilled in the art.” Hear-Wear, 751 F.3d at 1365-66.
Because Appellees may not now make an argument
regarding that search for the first time and the noun/verb
search was not a ground of rejection alleged or relied upon
by the Board, we do not address it on appeal.
18 ARENDI S.A.R.L. v. APPLE INC.
Appellees point to Dr. Menasce’s articulation of the
goal of preventing duplicate entries, but Dr. Menasce
never refers to duplicate telephone numbers and instead
refers to duplicate addresses or “entries,” which are
generally understood to refer to names. Even if we accept
Dr. Menasce’s articulation of the goal of a search for
information in a database as preventing the entry of
duplicate addresses or names, searching for a telephone
number would not be sufficient to achieve that goal. A
search for a telephone number would simply result in the
display of any pre-existing entries that already contain
the telephone number the user intended to add to the
address book. If the number is found in the address book,
the user could choose not to enter the number; in that
sense, the search would prevent duplicate entries. But so
would searching the address book by name—and the
Board suggested that paper address books would be
searched by name and that a person would know the
name associated with the number to be added. Arendi,
2015 Pat. App. LEXIS 6053, at *11, at *13 (“The address
database must include information associated with the
telephone number” as “[a] telephone number stored in a
database by itself is of little use”).
Importantly, unlike a search for the contact name, a
search for only a phone number would not reveal that a
contact name to which the phone number needs to be
added already exists in the database, but lacks the num-
ber. In other words, a search for a phone number would
not reveal that entering the number and the name would
create a duplicate name entry where the number is brand
new, but the contact name already exists in the database.
For example, if John Smith had two phone numbers and
“John Smith” was already in the database with one phone
number, searching the database for the second, new
number to be added to “John Smith” would not reveal that
“John Smith” is already in the database. Searching for a
phone number would, in fact, generate duplicate entries.
ARENDI S.A.R.L. v. APPLE INC. 19
Only a search for “John Smith” could be relied upon to
determine whether “John Smith” is in the database. Yet
the Board overlooked this common sense distinction,
stating instead, with no elaboration, that “[s]earching a
database for a telephone number in Pandit’s system, and
displaying results, would be no different in substance
from searching a database for a name, and displaying
results, in the disclosed example in the ’843 patent.” Id.
at *11. This kind of conclusory statement is insufficient
to justify a conclusion about “common sense.” See In re
Zurko, 258 F.3d at 1385 (“This assessment of basic
knowledge and common sense was not based on any
evidence in the record and, therefore, lacks substantial
evidence support.”).
The “use of common sense does not require a ‘specific
hint or suggestion in a particular reference,’ only a rea-
soned explanation that avoids conclusory generaliza-
tions.” Perfect Web, 587 F.3d at 1329 (quoting DyStar, 464
F.3d at 1366); see also Plantronics, Inc. v. Aliph, Inc., 724
F.3d 1343, 1354 (Fed. Cir. 2013) (“the mere recitation of
the words ‘common sense’ without any support adds
nothing to the obviousness equation.”); Ball Aerosol &
Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (“the 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.”).
But conclusory statements and unspecific expert testimo-
ny regarding searches in general are precisely what the
Board relied upon in drawing its conclusion that it would
have been “common sense” to search a database for a
telephone number to be added. In so doing, the Board
ignored Arendi’s arguments regarding the differences
between searching for duplicate entries with a telephone
number versus with a name or address. And these errors
were particularly problematic considering the fact that a
key limitation of the ’843 patent was missing from the
prior art reference in dispute.
20 ARENDI S.A.R.L. v. APPLE INC.
We find, moreover, that this is not a case where a
more reasoned explanation than that provided by the
Board can be gleaned from the record. We conclude, in
fact, that the application of common sense to the evidence
of record would lead to a conclusion that the petitioner
failed to meet its burden of establishing unpatentability of
the ’843 patent on obviousness grounds.
CONCLUSION
Because the Board’s presumption that adding a
search for phone numbers to Pandit would be “common
sense” was conclusory and unsupported by substantial
evidence, the missing limitation is not a “peripheral” one,
and there is nothing in the record to support the Board’s
conclusion that supplying the missing limitation would be
obvious to one of skill in the art, we reverse the Board’s
finding of unpatentability.
REVERSED
COSTS
No costs.