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Arendi S.A.R.L. v. Apple Inc.

United States Court of Appeals for the Federal Circuit

August 10, 2016, Decided

2015-2073

Opinion

 [*1357]  [***1822]   O'Malley, Circuit Judge.

On December 2, 2013, Apple Inc., Google, Inc. and Motorola Mobility LLC (collectively "Appellees")) filed a petition for inter partes review ("IPR") of U.S. Patent No. 7,917,843 (the "'843 patent"), which is owned by appellant Arendi S.A.R.L. ("Arendi"). On June 9, 2015, the Patent Trial and Appeal Board ("Board") issued a decision finding claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 would have been obvious. Because the Board misapplied our law on the permissible use of common sense in an obviousness analysis, we reverse.

 [***1823]  Background

A. The Patent-at-Issue [**2] 

The '843 patent is the only patent at issue in this appeal. The '843 patent was filed in 2008 as a continuation of an application that issued as U.S. Patent No. 7,496,854 ("'854 patent"), which in turn issued from a continuation of an application that issued as U.S. Patent No. 6,323,853 ("'853 patent"), filed in the United States on November 10, 1998. The '843 patent shares a common specification with the '854 patent, the subject of the companion appeal No. 2015-2069, -2070, -2071, 2016 U.S. App. LEXIS 13208, which we affirmed under Rule 36 on July 11, 2016, as well as the '853 patent.

The '843 patent is directed to providing beneficial coordination between a first computer program displaying a document and a second computer program for searching an external information source. The patent allows a user to access and conduct a search using the second computer program while remaining in the first computer program displaying the document. A computer process analyzes first information in the document to determine if it is of a type that can be used in another program to find related second information. Specifically, the '843 patent discloses  [*1358]  mechanisms for analyzing the document to identify the presence of name and address information, including by analyzing:

(i) paragraph/line separations/formatting, etc.; (ii) street, avenue, drive, lane, boulevard, city, state, zip code, country [**3]  designators and abbreviations, etc.; (iii) Mr., Mrs., Sir, Madam, Jr., Sr. designators and abbreviations, etc.; (iv) Inc., Ltd., P.C., L.L.C, designators and abbreviations, etc.; and (v) a database of common male/female names, etc.

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832 F.3d 1355 *; 2016 U.S. App. LEXIS 14652 **; 119 U.S.P.Q.2D (BNA) 1822 ***

ARENDI S.A.R.L., Appellant v. APPLE INC., GOOGLE INC., MOTOROLA MOBILITY LLC, Appellees

Subsequent History: US Supreme Court certiorari denied by Google Inc. v. Arendi S.A.R.L., 2017 U.S. LEXIS 1873 (U.S., Mar. 20, 2017)

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2014-00208.

Apple Inc. v. Arendi S.a.r.L., 2015 Pat. App. LEXIS 6053 (Bd. Pat. App. & Interferences, June 9, 2015)

Disposition: REVERSED.

CORE TERMS

common sense, searching, database, telephone number, address book, prior art, duplicate, missing, patent, displaying, references, first information, combine, user, computer program, phone number, motivation, performing, skill, search term, invention, common knowledge, substantial evidence, information source, conclusory, discloses, order to find, analyzing

Patent Law, US Patent & Trademark Office Proceedings, Appeals, Jurisdiction & Review, Standards of Review, Substantial Evidence, Nonobviousness, Elements & Tests, Claimed Invention as a Whole, Hindsight, Elements & Tests, Anticipation & Novelty, Description in Prior Patents, Combinations