from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2014-00208.
M. ASHER, Sunstein Kann Murphy & Timbers LLP, Boston, MA,
argued for appellant. Also represented by Bruce D. Sunstein.
Robert Matsui, Morrison & Foerster LLP, Washington, DC,
argued for all appellees. Appellee Apple Inc. also
represented by Seth W. Lloyd, Joseph R. Palmore; David Lee
Fehrman, Mehran Arjomand, Los Angeles, CA.
Matthew A. Smith, Turner Boyd LLP, Redwood City, CA, for
appellees Google Inc., Motorola Mobility LLC. Also
represented by ROBERT J. Kent.
MOORE, LlNN, and O'MALLEY, Circuit Judges.
O'MALLEY, Circuit Judge.
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.
'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,
which we affirmed under Rule 36 on July 11, 2016, as well as
the '853 patent.
'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 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 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.
'843 patent, col. 4 ll. 33-39. A search by the second
computer program using at least part of the first information
as a search term then looks for second information associated
with the first information in the information source.
Id. at col. 4 ll. 43-57, Fig. 1. Once the second
information is located, the claimed invention performs an
action using the second information.
example, if a name is detected, a database can be searched
for the name. Id. at col. 5 1. 65-col. 6 1. 3. If
the search finds a single related contact with only one
address, that address is inserted into the document.
Id. If, instead, the search finds more than one
related contact or address, the search results are displayed,
and the user can select an address for insertion into the
document. Id. at Fig. 10, col. 7ll. 33-49.
parties agree that claim 1 of the '843 patent is
representative of the claims on appeal:
A computer-implemented method for finding data related to the
contents of a document using a first computer program running
on a computer, the method comprising: displaying the document
electronically using the first computer program;
while the document is being displayed, analyzing, in a
computer process, first information from the document to
determine if the first information is at least one of a
plurality of types of information that can be searched for in
order to find second information related to the first
retrieving the first information;
providing an input device, configured by the first computer
program, that allows a user to enter a user command to
initiate an operation, the operation comprising (i)
performing a search using at least part of the first
information as a search term in order to find the second
information, of a specific type or types, associated with the
search term in an information source external to the
document, wherein the specific type or types of second
information is dependent at least in part on the type or
types of the first information, and (ii) performing an
action using at least part of the second information;
in consequence of receipt by the first computer program of
the user command from the input device, causing a search for
the search term in the information source, using a second
computer program, in order to find second information related
to the search term; and
if searching finds any second information related to the
search term, performing the action using at least part of the
second information, wherein the action is of a type depending
at least in part on the type or types of the first
Id. at col. 10 1. 38-col. 111. 3 (emphasis on
limitation at issue added). Because Arendi makes no arguments
based on any other claim limitation or claim, the claims on
appeal stand or fall with claim 1. See In re ...