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Court affirms PTAB’s common sense obviousness analysis

December 1, 2020
Year End 2020 IP Newsletter

Common sense can go a long way. And patent litigants shouldn’t be surprised at just how far it can go when a court determines whether a patent is invalid for being obvious.

Dispute takes off

The patents in a recent case related to space-saving technologies for aircraft enclosures, such as lavatory enclosures, closets and galleys. The patents cover a “first recess” (an upper recess to receive the inclined seat back) and a “second recess” (a lower recess for the back seat legs).

After a competitor challenged the patents, the Patent Trial and Appeal Board (PTAB) found they were invalid because “prior art” made them obvious. The patent owner turned to the U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, for relief.

Court buckles in

The appeal focused only on the second recess. The Federal Circuit agreed with the PTAB that the second recess was nothing more than the predictable application of known technology. A person skilled in the relevant art would have applied a variation of the first recess and seen the benefit of doing so, it said. Expert testimony that described the second recess as “the obvious solution to [a] known problem” backed up this finding.

More notably, the court affirmed the PTAB’s conclusion that it would have been a “matter of common sense” to incorporate a second recess. The patent owner objected to the PTAB’s reliance on common sense, arguing that the board had failed to provide a reasoned explanation and evidence to support its position — but the appeals court sided with the PTAB.

As the Federal Circuit pointed out, a U.S. Supreme Court case found that common sense serves a critical role in determining obviousness. The high court rejected rules that deny factfinders recourse to common sense.

As the Supreme Court explained, common sense teaches that familiar items may have obvious uses beyond their primary purposes. In many cases, a person of ordinary skill in the art can fit the teachings of multiple patents together like pieces of a puzzle, leading to an obvious invention.

Final destination

The Federal Circuit cautioned that common sense shouldn’t be used as a wholesale substitute for reasoned analysis and evidentiary support. In this case, the PTAB dedicated more than eight pages of analysis to the second recess and relied on detailed expert testimony. The court therefore concluded that the board’s use of common sense was accompanied by the necessary analysis and support.

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