Thursday, July 22, 2010

CAFC in Master Lock: obviousness boils down to common sense

In Wyers v. Master Lock, the Court of Appeals for the Federal Circuit made a strong statement about the role of common sense in obviousness determinations in a post-KSR world:

Before the Supreme Court’s decision
in KSR, we required that a patent challenger show that a
person of ordinary skill in the art would have had motiva-
tion to combine the prior art references and would have
had a reasonable expectation of success in doing so. See
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1360 (Fed. Cir. 2007); Noelle v. Lederman, 355 F.3d
1343, 1351-52 (Fed. Cir. 2004). We had also held that
“[t]he reason, suggestion, or motivation to combine may
be found explicitly or implicitly: 1) in the prior art refer-
ences 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); see In re Dembiczak, 175 F.3d 994, 999 (Fed.
Cir. 1999). KSR, however, instructs courts to take a more
“expansive and flexible approach” in determining whether
a patented invention was obvious at the time it was made.

550 U.S. at 415. In particular, the Court emphasized the
role of “common sense”: “[r]igid preventative rules that
deny factfinders recourse to common sense . . . are neither
necessary under our case law nor consistent with it.” Id. at 421.

Before KSR, we had also consistently treated the
question of motivation to combine prior art references as a
question of fact. See, e.g., Alza Corp. v. Mylan Labs., Inc.,
464 F.3d 1286, 1289 (Fed. Cir. 2006); In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). While KSR did not
change this rule, KSR and our later cases establish that
the question of motivation to combine may nonetheless be
addressed on summary judgment or JMOL in appropriate
circumstances. See KSR, 550 U.S. at 427; Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed.
Cir. 2009); Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009);
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1325-
26 (Fed. Cir. 2008); Sundance, Inc. v. DeMonte Fabricat-
ing, Ltd., 550 F.3d 1356, 1366-67 (Fed. Cir. 2008).


KSR and our later cases establish that the legal de-
termination of obviousness may include recourse to logic,
judgment, and common sense, in lieu of expert testimony.
See, e.g., Perfect Web, 587 F.3d at 1329; Ball Aerosal, 555
F.3d at 993. In Perfect Web, the patented technology
involved a method of managing bulk e-mail comprising
essentially the steps of targeting a group of recipients,
sending e-mail to those recipients, calculating the number
of successfully delivered e-mails, and repeating the first
prior art. With respect to the last step, the district court
explained: “If 100 email deliveries were ordered, and the
first transmission delivered only 95, common sense dic-
tates that one should try again. One could do little else.”
Perfect Web, 587 F.3d at 1330. We affirmed the district
court’s obviousness determination and endorsed its
“common sense” reasoning
. Id. We furthermore con-
cluded that no expert opinion was required to support the
obviousness determination, because the technology was
“easily understandable.” Id. at 1329-30 (quoting Cen-
tricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed.
Cir. 2004)); see also Sundance, 550 F.3d at 1365.5
Thus, in appropriate cases, the ultimate inference as
to the existence of a motivation to combine references may
boil down to a question of “common sense,” appropriate
for resolution on summary judgment or JMOL. See
Perfect Web, 587 F.3d at 1330. Other recent cases have
confirmed the appropriateness of this approach.

three steps until reaching the desired quantity. It was
undisputed that the first three steps were disclosed in the


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