In an attempt to challenge the patentability of an issued claim, petitioners every so often come across a prior art reference that discloses all the recited features of the claim at-hand except for one limitation. Rather than bringing in another reference to teach that one limitation, petitioners sometimes merely refer to the knowledge and creativity possessed by one of ordinary skill in the art to supply the missing limitation.
The Supreme Court notably approved this approach in KSR Int’l Co. v. Teleflex Inc. by holding that in an obviousness analysis, “a court can take account … the inferences and creative steps that a person of ordinary skill in the art would employ.” The Supreme Court further noted that “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” Thus, in making an obviousness determination, one may look outside the explicit disclosure of the cited art to supply a motivation to combine or fill in a missing limitation.
In light of KSR, one may initially assume that simply depending on the creativity and common sense possessed by one of ordinary skill in the art to supply a missing limitation in the cited reference is a sound strategy. The Federal Circuit, however, has cautioned against this sort of reliance on “ordinary creativity” and “common sense” as a gap-filler for a missing limitation. Most recently, in DSS Tech. Mgmt. v. Apple Inc., the Federal Circuit provided further guidance on the limits of invoking “ordinary creativity” in an obviousness analysis.
In DSS, a divided panel of the Federal Circuit reversed a PTAB (or “the Board”) decision nixing claims 1-4 and 9-10 of U.S. Patent No. 6,128,290 (“the ’290 patent”) owned by DSS Technology Management, Inc. (“DSS”). The claims of the ’290 patent are directed to data network systems for effecting coordinated operation between a server microcomputer unit and multiple peripheral devices. The claims require that transmitters in both the microcomputer unit and the peripheral devices be energized at select time intervals by operating in a low duty cycle pulsed mode, which ultimately reduce the power consumed by the batteries in both the microcomputer unit and the peripheral devices.
After being sued by DSS for infringement, Apple Inc. (“Apple”) filed two petitions for inter partes review (“IPR”) challenging the patentability of the ’290 patent by alleging that two sets of claims were obvious over U.S. Patent No. 5,241,542 to Natarajan et al. (“Natarajan”) and U.S. Patent No. 4,887,266 to Neve et al. (“Neve”). During the IPR proceedings, the Board’s obviousness analysis focused primarily on Natarajan.
Natarajan relates to a digital data communication system comprising a base station and one or more mobile stations. Natarajan describes that the mobile stations operate according to a “scheduled access multi-access protocol” that enable the transceivers in the mobile stations to consume power only when actively transmitting or receiving a message to and from the base station.
With respect to claim 1, DSS conceded that all but one limitation was disclosed by the combination of Natarajan and Neve. Specifically, DSS argued that the cited art failed to disclose or suggest the recited feature “said server … transmitters being energized in low duty cycle RF bursts” because only the mobile units, not the base station of Natarajan, operate in “low duty cycle RF bursts.”
In its final written decision, the Board sided with Apple and found that all the challenged claims were obvious over Natarajan, in view of Neve. While the Board acknowledged that Natarajan failed to disclose a base station operating in “low duty cycle RF bursts,” the Board found that it would have been obvious to have the base station of Natarajan operate in an analogous manner. The Board supported its position by asserting that a skilled artisan is a person of ordinary creativity and that there was no persuasive evidence of record demonstrating that it would have been unusually difficult for one of ordinary skill in the art to make such modification to the base station of Natarajan.
On appeal, the sole issue was whether the Board erred in finding that it would have been obvious to modify the base station transmitter in Natarajan to be “energized in low duty cycle RF bursts.” The majority (i.e., O’Malley, J., and Reyna, J.) determined that the Board failed to provide sufficient explanation for its obviousness finding, and therefore, reversed the Board’s decision finding the ’290 patent unpatentable.
In determining that the Board failed to provide sufficient explanation for its obviousness finding, the majority equated the Board’s application of “ordinary creativity” to the reliance on “common sense” as a gap-filler in an obviousness analysis. The majority further explained that while “common sense and common knowledge have their proper place in the obviousness inquiry … there are at least three caveats to note in applying ‘common sense’ in an obviousness analysis.” “First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.” Second, common sense is invoked to fill in a missing limitation only when “the limitation in question was unusually simple and the technology particularly straightforward.” Third, referencing to common sense in an obviousness analysis should not be used as a “wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.”
With this framework in mind, the majority noted that the Board invoked “ordinary creativity” to supply a missing claim limitation, “said server … being energized in low duty cycle RF bursts.” The majority found that the claim limitation at-issue was not unusually simple and that the wireless communication technology at-hand was not particularly straightforward. The majority further found that the Board’s analysis contained in a single paragraph was insufficient. In particular, the majority noted that the Board failed to consider the different transmission requirements imposed by the multi-access protocol of Natarajan on the base station and the mobile units, and that the Board failed to analyze how the proposed modification to the base station of Natarajan would account for the different transmission requirements between the base station and the mobile units. Accordingly, the majority found that the Board “relied on ‘ordinary creativity’ as a wholesale substitute for reasoned analysis and evidentiary support,” thereby failing to provide an adequate explanation for its obviousness conclusion.
In the dissenting opinion, Judge Newman disagreed with the majority by finding that the Board’s explanation was sufficient and suggesting that in the event that the Board’s findings were deemed inadequate, the proper appellate response would be to remand.
Moving forward, petitioners should be mindful in supplying a missing limitation by “common sense” or “ordinary creativity.” Before invoking “common sense” or “ordinary creativity” to supply the missing limitation, petitioners should assess the complexity of the technology at-hand and determine the significance of the missing limitation. If the relevant technology is not straightforward and the missing limitation plays a major role in the claimed subject matter, petitioners should consider relying on the teachings of another reference to supply the missing limitation, either as a combination of references under § 103 or as support for their expert’s statement that adding such as limitation to the prior are would have been obvious to a person of skill in the art.
 550 U.S. 398, 418 (2007).
 Id. at 421.
 DSS Tech. Mgmt. v. Apple Inc., No. 2016-2523, slip op. at p. 11 (Fed. Cir. Mar. 23, 2018) (quoting Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016)).
 Id. at pp. 16-17.