Federal Circuit Emphasizes That An Obviousness Analysis Based On Common Sense Must Be Supported By Substantial Evidence And Explained With Sufficient Reasoning

A recent decision by the Federal Circuit suggests that relying on "common sense" in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone. In a decision providing practitioners important guidance for relying on common sense in an obviousness inquiry, the Federal Circuit on August 10, 2016 handed down its decision in Arendi S.A.R.L. v. Apple Inc., No. 2015-2073, 2016 U.S. App. LEXIS 14652 *1 (Fed. Cir. Aug. 10, 2016), vacating the PTAB's decision below. The petitioners had only relied on an expert declaration and testimony as support for their position before the PTAB that common sense rendered a patent obvious. Id. at *19-20. The Federal Circuit rejected the PTAB's holding in favor of petitioners as "conclusory and unsupported by substantial evidence[.]" Id. at *22-23, 26-27.