PTAB Judges Will Have to Use More Than Just “Common Sense” When Analyzing the Validity of a Patent During Patent Litigation, Says Federal Circuit


The U.S. Court of the Appeals for the Federal Circuit recently made it clear that judges cannot rely on common sense alone when analyzing the validity of a patent during patent litigation. The Court ruled that the Patent Trial and Appeal Board (“PTAB”) was wrong in invalidating a patent Arendi S.A.R.L. had asserted against Apple and Google on the basis of “common knowledge and common sense” alone. The Court held that for the PTAB to invalidate a patent, there would have to be something more to back up the ruling, and they could not rely solely on “common sense.” The Federal Circuit further stated that the rationale “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” The Federal Circuit’s ruling does not bar the PTAB from invalidating patents based on common sense, but instead, the Federal Circuit held that the agency went too far in adding a process to prior technology, thus voiding Arendi’s patent. The patent in question involves the way a computer app displays a document while searching for outside information. Back in 2015, the PTAB invalidated more than 70 of Arendi’s claims, saying the claims asserted against Google and Apple were obvious in light of the prior art. The board found that when viewed in light of two pieces of prior art, known as Goodhand and Padwick, the prior art either taught alone or combined to form all of the inventive parts of the 79 claims at issue in the Arendi patent.

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