Arendi S.A.R.L. v. Apple Inc.., No. 15-2073 (Fed. Cir. 2016)
Annotate this CaseArendi’s patent is directed to coordination between a first computer program displaying a document and a second program for searching an external information source. It allows a user to access and conduct a search using the second program while remaining in the first program displaying the document and discloses mechanisms for analyzing the document to identify the presence of name and address information by analyzing formatting, certain designators and abbreviations, and a database of common names. A search by the second program using the first information as a search term then looks for second information associated with the first information in the information source. Once the second information is located, the claimed invention performs an action using the second information. On inter partes review, the Patent Trial and Appeal Board found several claims would have been obvious. The Federal Circuit reversed, stating that the Board misapplied precedent on the permissible use of common sense in an obviousness analysis. The Board’s presumption that adding a search for phone numbers would be “common sense” was conclusory and unsupported by substantial evidence; the missing limitation is not “peripheral” and there was nothing to support a conclusion that supplying the missing limitation would be obvious to one of skill in the art.
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