Federal Circuit Says “Common Sense” has Role in Obviousness Determinations. Who knew?

Perfect Web Technologies, Inc. v. Infousa, Inc., [09-1105] (December 2, 2009)

At issue was the obviousness of claim 1 of U.S. Patent No. 6,631,400, directed to managing bulk email distribution:

1. A method for managing bulk e-mail distribution comprising the steps:
(A) matching a target recipient profile with a group of target recipients;
(B) transmitting a set of bulk e-mails to said target recipients in said matched group;
(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,
(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.

The parties agreed that steps (A) through (C) were in the prior art, and that step (D) was not. The parties further agreed on the scope and content of the prior art and the level of skill in the art. Infousa maintained that repeating the prior art steps until the desired number of emails had been received was a matter of common sense, and obvious. The Federal Circuit noted that in rejecting rigid application of the “teaching, suggestion, or motivation” test for obviousness, the Supreme Court said that common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention. The Federal Circuit added that “Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” The Federal Circuit pointed out in Dystar “we explained that that use of common sense does not require a ‘specific hint or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.” The Federal Circuit held that: “while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”
Turning to the facts of the present case, the Federal Circuit found the predicate evidence on which the district court based its “common sense” reasoning appeared in the record, namely the facts that step (D) merely involves repeating earlier steps, and that a marketer could repeat those steps, if desired. The district court also adequately explained its invocation of common sense. The district court reasoned: “If 100 e-mail deliveries were ordered, and the first transmission delivered only 95, common sense dictates that one should try again. One could do little else.” The Federal Circuit also found that step (D) would have been obvious to try. The experts identified at most a few potential solutions for this problem at the time, including resending failed messages and sending new messages. Of these limited options, “simple logic” suggested that sending messages to new addresses was more likely to produce successful deliveries than re-sending messages to addresses that have already failed.
So, common sense has been part of the obvious determination all along. Maybe we haven’t noticed because the courts and PTO have such a high regard for it, that they use it sparingly.