TAKEAWAY: In both an examiner rejection and inter partes review, common sense may provide a motivation to combine references in an obviousness determination, but cannot supply a missing substantive claim limitation and must be supported by reasoned analysis and evidentiary support.

In Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (2016), the Federal Circuit overturned the Patent Trial and Appeal Board’s (“the Board”) determination in an inter partes review proceeding that a patent was obvious over a single prior art reference, with “common sense” providing a missing claim limitation. The Federal Circuit recognized that common sense, common wisdom, and common knowledge are considerations in an obviousness determination under KSR. The Court provided three directives regarding “common sense” in an obviousness analysis: (1) common sense can provide a known motivation to combine (cheaper, faster, more convenient, etc.); (2) common sense can supply a missing claim limitation only if the limitation is “unusually simple;” and (3) common sense cannot be a substitute for reasoned analysis and evidentiary support, even when providing motivation to combine references. The Court concluded that the cited reference did not disclose an important claim limitation, and that the Board’s obviousness determination was not supported by analysis or evidence. As such, the Court determined that the reference did not render the patent obvious.

The decision in Arendi serves as a reminder that, whether before a patent examiner or the Board, “common sense” cannot unduly expand the disclosure of a prior art reference or be relied upon as a substitute for reasoned analysis and evidentiary support.