Obvious As A Matter Of Common Sense
To be patentable, an invention must meet various legal requirements. One such requirement is that it must not be obvious. The law relating to whether an invention is obvious can sometimes be confusing and difficult to apply -- especially in the wake of the KSR v. Teleflex U.S. Supreme Court case.
The Federal Circuit Court of Appeals delivered a precedential decision yesterday in Perfect Web Techs. v. InfoUSA explaining that an invention can be obvious as a matter of common sense.
Claim 1 of U.S. Patent No. 6,631,400 recited:
1. A method for managing bulk e-mail distribution comprising the steps:
(A) matching a target recipient profile with a group of target recipients;
(B) transmitting a set of bulk e-mails to said target recipients in said matched group;
(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,
(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.
On appeal, the parties agreed that steps (A) through (C) were known in the prior art. According to the Federal Circuit's decision, step (D) would have been common sense for one skilled in the art of "e-mail marketing" and so the claim is invalid as being obvious.
A district court can find by summary judgment that an invention is obvious as a matter of common sense, but "must articulate its reasoning with sufficient clarity for review. "
