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Filling the Hole with Common Sense: When Evidentiary Support is Adequate

The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis.  On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D Zodiac, Inc., Nos. 2019-1935, 2019-1936 (Fed. Cir. Jun. 26, 2020) (“B/E Aerospace”) affirming a Patent Trial and Appeal Board (“PTAB”) final written decision finding patent claims invalid in view of a combination of prior art and common sense.

The decision follows the standard developed by Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) (“Arendi”) and Perfect Web Techs, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009) (“Perfect Web Techs”) that allows common sense to provide missing claim limitations in limited circumstances. As articulated in Arendi, the standard for allowing common sense and general knowledge to provide missing limitations in an obviousness analysis is limited to situations where the technology at issue is “simple” and the finding supported by “reasoned analysis and evidentiary support.” Further, as explained in Perfect Web Techs, relying on common sense is appropriate where the missing claim element involved repetition of an existing element.

The court applied the same standard in B/E Aerospace. In that case, the technology was simple: space-saving walls for aircraft enclosures such as lavatory enclosures, closets, and galleys. The PTAB’s finding was also supported by eight pages of analysis relying on detailed expert testimony. In particular, the expert explained that a person of ordinary skill in the art would recognize the problem, the benefits of the missing claim limitation, and understand that the missing claim limitation was a well-known solution to the problem. Additionally, the B/E Aerospace panel noted that the missing claim element was merely a second repetition of another claim element that was expressly disclosed in the prior art. Taken together, the court affirmed the “strong case of obviousness” based on the PTAB’s acceptance of a combination of prior art and common sense to invalidate the challenged claims.

This decision again demonstrates that parties challenging the validity of a patent based on an obviousness combination that includes common sense must ensure that the record contains substantial evidentiary support because, even where common sense is relied upon, the obviousness determination cannot be unsupported and conclusory. Patent owners, for their part, should use caution in drafting claims involving simple technologies, particularly where recited limitations are well-known in the art or involve simple logic. Such claims may be particularly susceptible to an invalidity challenge similar to B/E Aerospace.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 188



About this Author

Peter J. Cuomo, Mintz Levin, Patent Litigation Lawyer, Expert Discovery Attorney,Patent Litigation IPRs & Other Post-Grant Proceedings Federal Circuit Appeals Hatch-Waxman ,ANDA Litigation Federal District Court
Of Counsel

Peter’s practice involves intellectual property enforcement and defense, and client counseling on issues related to IP rights. Peter's primary focus is in patent litigation where he has experience in every phase from pre-suit investigations through appeal, including, initial evaluation and case initiation, fact and expert discovery, pre-and post-trial motion practice, and trials and appeals. In addition to suits centered on the assertion and defense of infringement claims, Peter has experience with the successful resolution of multiple inventorship disputes and related misappropriation...

Serge Subach, Mintz Levin Law Firm, Boston, Intellectual Property Attorney

Serge’s intellectual property practice focuses on patent litigation. His experience spans broad technical fields including software, consumer electronics, and medical devices.

Before joining Mintz Levin, Serge worked for TomTom, Inc., where he interfaced between product management and engineering departments in coordinating beta testing of both software and hardware products.

During law school, Serge served as President of the Intellectual Property Law Association and as Managing Business Editor of the New England...