Raising the Bar On Non-Obviousness

Much has been written about the decision of the Supreme Court in KSR Int’l. Co. v. Teleflex, Inc. Unfortunately, much of this writing is philosophical blather which only serves to obfuscate the case holding. A recent decision of the C.A.F.C., Perfect Web Technologies, Inc. v. InfoUSA, Inc., however, may provide some much needed clarification.

The patent-in-suit was directed to methods of managing bulk e-mail distribution to groups of targeted consumers. Advertisers wished to guarantee that at least a specified number of group members actually received a given message. For various reasons, some messages were undeliverable. However, due to cost considerations, the advertisers wished to meet their delivery goal while sending as few messages as possible.

Each of the asserted claims comprised four steps. The first three of these steps essentially involved transmitting a set of messages to targeted recipients and calculating the number of such messages which were successfully received. It was, ultimately (lawyerspeak for “because they had no choice”), acknowledged by the patentee that these steps were disclosed by the prior art. If the number of successfully received messages was less than the desired minimum number, the fourth step involved repeatedly transmitting more messages until the desired minimum was met.

Citing KSR, the trial court held that a “… person of ordinary skill is also a person of ordinary creativity …” The court went on, “the final step is merely the logical result of common sense application of the maxim ‘try, try again’.”

Perfect Web argued that “common sense must be rooted in evidence and factual findings.” (Pay close attention here, the following is the point of this blog.) The Court disagreed – repeatedly – holding 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 … [and] common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.” While “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness … 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.”

Applying the foregoing logic, the Court held that “this last step, and the claim as a whole, simply recites repetition of a known procedure until success is achieved.”

THE LESSON TO BE LEARNED: Now that the courts are directed to be logical, the requirement that a patented invention be non-obvious has become more difficult to satisfy.