March 23, 2018

“Ordinary Creativity” is no Different Than “Common Sense” and Requires Explanation

By Bryan K. Wheelock, Principal

In DSS Technology Management, Inc. v. Apple Inc., [2016-2523, 2016-2524] (March 23, 2018), the Federal Circuit reversed the decision of the PTAB, finding claims 1–4 and 9–10 of U.S. Patent No. 6,128,290 obvious, because the Board failed to provide a sufficient explanation for its conclusions.

The patent is directed to a wireless communication network for a single host device and multiple peripheral devices.  The sole issue on the appeal was whether it was obvious to modify the single asserted reference.  The Federal Circuit noted that common sense and common knowledge have their proper place in the obviousness inquiry, if it is explained with sufficient reasoning.

There are at least three caveats to the application of “common sense,” however. First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.  Second, common sense is invoked to fill in a missing limitation only when “the limitation in question was unusually simple and the technology particularly straightforward.  Third, reference to “common sense” — whether to supply a motivation to combine or a missing limitation — cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.

The Federal Circuit found that the Board’s invocation of “ordinary creativity” was no different from “common sense,” and requires a “searching” inquiry.  The Federal Circuit noted that the full extent of the Board’s analysis was contained in a single paragraph.  In finding the claimed invention obvious, the Board made no citation to the record, and instead referred to the “ordinary creativity” of the skilled artisan.

The Federal Circuit said that to the extent the Board’s obviousness findings were based on expert testimony from Dr. Hu — which is questionable, because the Board never cited her testimony directly — the “conclusory statements and unspecific expert testimony” were insufficient to support the Board’s findings.

The Federal Circuit said that without “a reasoned explanation that avoids conclusory generalizations,” the Board’s reasoning was not sufficient.