Common sense alone not enough in patent law, US court finds

Judges can’t rely on common sense alone when analyzing the validity of a patent, an appeals court ruled last week in a loss for Apple Inc. and Alphabet Inc.’s Google.

A U.S. Patent and Trademark Office review board was wrong to use only “common knowledge and common sense” — without more to back it up — to invalidate a patent closely held Arendi S.A.R.L. had asserted against the tech companies, the U.S. Court of Appeals for the Federal Circuit ruled Aug. 10.

That rationale “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support,” the Federal Circuit ruled, reversing the invalidity decision.

Patent law is notoriously complicated, where judges have to parse through wording and obscure research papers to figure out what a skilled artisan would know that a member of the general public would not.

Dictionaries limited

In another case, in 2005, the Federal Circuit limited the use of dictionaries to determine what words mean in patents, since inventors can make up their own definitions.

The Arendi patent relates to a way that a computer program would display a document while also searching for external information. For instance, it would identify a name in a document and see if there is an address associated with that name and insert it into the document.

Arendi has claimed a number of companies, including Apple, Google and Samsung Electronics Co., used the technology without permission. The tech companies asked the patent office to review the validity of the patent, and won before the agency.

The appeals court in July upheld the board’s decision to invalidate a second Arendi patent. Other challenges are pending before the Patent Trial and Appeal Board.

The civil suits, filed in federal court in Wilmington, Delaware, are on hold while all of the patent office petitions are considered.

The case is Arendi S.A.R.L. v Apple Inc., 15-2073, U.S. Court of Appeals for the Federal Circuit (Washington)