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

United States Court of Appeals, Federal Circuit

August 10, 2016

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

         Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2014-00208.

          ROBERT M. ASHER, Sunstein Kann Murphy & Timbers LLP, Boston, MA, argued for appellant. Also represented by Bruce D. Sunstein.

          Brian 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.

          Before MOORE, LlNN, and O'MALLEY, Circuit Judges.

          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.

         Background

         A. The Patent-at-Issue

         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, 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 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.

         For 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.

         The 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 information;
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 information.

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 ...


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