Federal Circuit Emphasizes Role of Common Sense in Obviousness Analysis

In B/E Aerospace, Inc. v. C&D Zodiac, Inc., published June 26, the US Court of Appeals for the Federal Circuit affirmed a final written decision of the US Patent and Trademark Office’s Patent Trial and Appeal Board, holding that the PTAB’s reliance on common sense when invalidating claims for obviousness was proper because it was accompanied by reasoned analysis and evidentiary support.

B/E Aerospace (B/E) owned two patents, US Patent No. 9,073,641[1] (the ’641 patent) and US Patent No. 9,440,742[2] (the ’742 patent), both directed to space-saving modifications to aircraft walls enclosing lavatories, closets, and galleys. Claim 1 of the ’641 patent, which is representative of the challenged claims, discloses a “first recess” to accommodate the seat back of a passenger seat and a “second recess” to receive the aft-extending seat support. C&D Zodiac, Inc. (Zodiac) challenged B/E’s claims as obvious in a petition requesting inter partes review (IPR).[3]

Zodiac’s petition originally asserted two grounds of unpatentability. The Patent Trial and Appeal Board (PTAB or Board) instituted on both grounds. Zodiac requested a partial adverse judgment during the proceeding, which the Board granted. The only instituted ground left was Zodiac’s assertion that the “Admitted Prior Art”[4] and US Patent No. 3,738,497 to Betts would make it obvious to one skilled in the art to modify an aircraft wall to accommodate multiple aft-extending portions of a passenger seat. The PTAB agreed with Zodiac, and stated that it reached its obviousness conclusion through a “traditional approach” and a “common sense” approach.[5]

First, the Board found that creating a recess in the wall to receive the seat support was an obvious solution to a known problem (maximizing space in an aircraft). The Board relied on the expert testimony of Mr. Anderson, in which he opined that the addition of a second recess “is nothing more than the application of a known technology (i.e., Betts) for its intended purpose with a predictable result (i.e., to position the seat as far back as possible).”[6]

Second, the Board found that Zodiac established a strong case of obviousness based on the Admitted Prior Art and Betts, coupled with common sense and the knowledge of a person of ordinary skill in the art. The Board again relied on Mr. Anderson’s testimony; specifically, that recesses configured to receive seat supports “were known in the art” and that “it would have been a matter of common sense” to incorporate a second recess in the Admitted Prior Art/Betts combination.[7]

At the US Court of Appeals for the Federal Circuit, the parties did not dispute that Betts disclosed the “first recess.” B/E, however, challenged the PTAB’s finding with respect to the “second recess” because neither Betts nor the Admitted Prior Art discusses a claim limitation of a “second recess.” B/E Aerospace further argued that the PTAB erred in its decision because it relied on an “unsupported assertion of common sense to fill a hole in the evidence formed by a missing limitation in the prior art.”[8] The Federal Circuit, however, did not accept this argument and cited multiple cases discussing use of the common sense approach in an obviousness analysis.

One such case the Federal Circuit cited was Arendi S.A.R.L. v. Apple Inc., where the court recognized that courts must “consider common sense, common wisdom, and common knowledge in analyzing obviousness.”[9] Additionally, in KSR v. Teleflex, also cited by the Federal Circuit in this case, the US Supreme Court held that “rules that deny factfinders recourse to common sense” are inconsistent with the case law.[10]

Moreover, the Federal Circuit cited Perfect Web Techs, Inc. v. InfoUSA, Inc. and found B/E’s claimed invention to be simple. In Perfect Web, the court held that when a missing claim limitation simply involves repetition of an existing element, then reasoned invocation of common sense to supply the missing claim limitation is appropriate.^[11] Here, the missing claim limitation (second recess) was merely a repetition of another claim element (first recess) that was clearly disclosed in the prior art. Therefore, the Court determined that B/E’s second recess fits squarely within the standard set by Perfect Web.

B/E’s second basis for appeal was that the PTAB’s consideration of three drawings that were not prior art “patents or printed publications” as required under 35 USC § 311(b) was erroneous. The Federal Circuit, however, dismissed this argument because the PTAB relied on the analysis of expert testimony in combination with the Admitted Prior Art and Betts, not the design drawings, in both of its two “approaches” for finding the challenged claims obvious. For this reason, the court found that there was substantial evidence used to support the Board’s determination of obviousness independent of the design drawings and declined to reach the issue of whether the design drawings were considered in violation of Section 311(b).

Ultimately, the Federal Circuit found no error in the Board’s conclusion that under both approaches the PTAB employed, “it would have been obvious to further modify the Admitted Prior Art/Betts combination to include the claimed ‘second recess’ to receive passenger seat supports.”[12] .

This opinion is another example of the critical role common sense can play in the obviousness inquiry. 

Contacts

If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the author, Dion M. Bregman (Silicon Valley) or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:

Boston 
Joshua M. Dalton

Century City
Andrew V. Devkar

Chicago 
Jason C. White

Houston 
C. Erik Hawes
Rick L. Rambo 

Philadelphia 
Louis W. Beardell, Jr.

San Francisco 
Brent A. Hawkins

Silicon Valley 
Andrew J. Gray IV
Ahren C. Hsu-Hoffman
Michael J. Lyons

Washington, DC 
Jeffrey G. Killian, Ph.D.
Robert Smyth, Ph.D.