Arendi S.A.R.L. v. Apple Inc.
| Decision Date | 10 August 2016 |
| Docket Number | 2015–2073 |
| Parties | Arendi S.A.R.L., Appellant v. Apple Inc., Google Inc., Motorola Mobility LLC, Appellees |
| Court | U.S. Court of Appeals — Federal Circuit |
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.
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.
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 finding 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.
The '843 patent is the only patent at issue in this appeal. 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 coordination 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 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. designators 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 computer program using at least part of the first information as a search term then looks for second information associated 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 address, 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:
Id. at col. 10 l. 38–col. 11 l. 3 (). Because Arendi makes no arguments based 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).
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:
To he held al lhr School of Library an University of Alberta. Edmonton. Alb
ABBREVIATED CONFERENCE PR THURSDAY, 6/8/1995.
File Help Date EMail Phone
Fr: 1995 CAIS Conference
Re: CAIS '95 Conference Rcgistratio
CA1S/ACSI 95
Annual Conference of
the Canadian Assiciation for Informa
CONNECI't'DNtSS: INFORMATIO
To be held at the School of Library an University of Alberta, Edmonton, Alb
ABBREVIATED CONFERENCE PR THURSDAY, 6/8/1995.
Id. at Fig. 1e, Fig. 1f. The specification explains that, in Figure 1e, Id. at col. 2 ll. 64-67. The specification further explains:
As shown in FIG. lf on pulled-down menu 20, possible programs include a writable computer database of telephone and telefax numbers, a program which instructs a properly equipped computer to dial the number accented, a program which generates a template for the preparation of a fax message and which subsequently causes a properly equipped computer to transmit the message to the accented number, etc. Again, any program related to telephone or telefax numbers can be included 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 telephone number that is detected in a document when the “Add to address book” option disclosed in Pandit is selected.
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 “Petitioner 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 potential 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 “reasonable 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 initial 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 limitation of illustrative claim 1 except for performing 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 associated information that is located.
To continue reading
Request your trial
-
Gain Capital Holdings, Inc. v. Oanda Corp.
... ... reference to arrive at the patented invention." ... Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 ... (Fed. Cir. 2016) ... ...
-
In re Hodges
...Board's anticipation findings during reexamination based in part on our review of the prior art figures); cf. Arendi S.A.R.L. v. Apple Inc. , 832 F.3d 1355, 1366 (Fed. Cir. 2016) (reversing the Board's obviousness determination and noting that "this is not a case where a more reasoned expla......
-
Broadsoft, Inc. v. Callwave Commc'ns, LLC
...counters that Plaintiff's obviousness argument improperly rests on hindsight. (D.I. 359 at 20 (citing Arendi S.A.R.L. v. Apple Inc. , 832 F.3d 1355, 1361 (Fed. Cir. 2016) )). Defendant disputes whether prior art BroadWorks stored a plurality of user phone numbers for use in outgoing calls p......
-
Nobel Biocare Servs. AG v. Instradent USA, Inc.
...too small. The Board did not err in rejecting Nobel's arguments based on this "unspecific expert testimony." Arendi S.A.R.L. v. Apple Inc. , 832 F.3d 1355, 1366 (Fed. Cir. 2016), cert. denied sub nom. Google Inc. v. ArendiS.A.R.L. , ––– U.S. ––––, 137 S.Ct. 1329, 197 L.Ed.2d 517 (2017) ; se......
-
The Creative POSITA
...in the ordinarily skilled artisan), the district court overreached in its determination of obviousness.'); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016). Thus, although a POSITA is creative, there still 'must be some articulated reasoning with some rational underpinning to s......
-
The Creative POSITA
...in the ordinarily skilled artisan), the district court overreached in its determination of obviousness.'); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016). Thus, although a POSITA is creative, there still 'must be some articulated reasoning with some rational underpinning to s......
-
PRECEDENTIAL: Institution Denied Based On Insufficiently Supported Expert Declaration
...(2007) (stating that a "factfinder . . . must be cautious of arguments reliant upon ex post reasoning"); Arendi S.A.R.L. v. Apply, Inc., 832 F.3d 1355, 1361-62 (Fed. Cir. 2016) (holding that reliance on common sense in an obviousness analysis is "typically invoked to provide a known motivat......
-
Issue 40: PTAB Trial Tracker
...in question [is] unusually simple and the technology particularly straightforward.'" Id. at 16 (quoting Arendi S.A.R.L. v. Apply, Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016)) (alteration in Takeaway: The PTAB is unlikely to find expert declarations without supporting evidence and/or technica......
-
All Patents Are Not Created Equal: Sovereign Immunity
...34. Id. at 1361. 35. Id. 36. In re Schweickert, 676 F. App’x 988 (Fed. Cir. 2017) (nonprecedential). 37. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366–67 (Fed. Cir. 2016) (“Because the Board’s presumption that adding a search for phone numbers to Pandit would be ‘common sense’ was conc......
-
To Create and Own a Nontraditional Trademark, Just Follow Tradition
...34. Id. at 1361. 35. Id. 36. In re Schweickert, 676 F. App’x 988 (Fed. Cir. 2017) (nonprecedential). 37. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366–67 (Fed. Cir. 2016) (“Because the Board’s presumption that adding a search for phone numbers to Pandit would be ‘common sense’ was conc......
-
Ten Years after KSR, Motivation to Combine Moves Back into the Spotlight
...34. Id. at 1361. 35. Id. 36. In re Schweickert, 676 F. App’x 988 (Fed. Cir. 2017) (nonprecedential). 37. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366–67 (Fed. Cir. 2016) (“Because the Board’s presumption that adding a search for phone numbers to Pandit would be ‘common sense’ was conc......
-
The 'Essence' of an Invention Is as Important as the Claims
...Bar Association. The “Essence” of an Invention Continued from page 45 56 U.S. 62, 129–30, 135 (1854). 18. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016) (“heart”); Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005) (“essence”); I......