Board Erred By Relying On Ordinary Creativity To Supply Missing Limitation For Complex Technology In Obviousness Findings

DSS Technology Management, Inc. v. Apple Inc., No. 2016-2523, 2016-2524 (Fed. Cir. Mar. 23, 2018)

In DSS v. Apple, the Federal Circuit reversed a final written decision by the Patent Trial and Appeal Board in an inter partes review in which the Board found challenged claims to be obvious over the prior art, and the ordinary creativity of a skilled artisan. The Board’s consideration of ordinary creativity was not supported by reasoned analysis, and the complex technology at issue was not the sort of patented technology for which ordinary creativity could be used to supply a limitation not present in the prior art.

DSS’s patent claimed a system of devices including a server and peripheral units. The devices communicate wirelessly in short, scheduled bursts. This allows the wireless units to power down their wireless receiver and transmitter between communications bursts, conserving power. Both parties conceded that the prior art taught all the claimed limitations except that the server powers down between communication bursts. Apple argued that since the art taught to power down the peripheral units, it would have been obvious to have the server do the same. The Board agreed with Apple and found the claims obvious. DSS appealed to the Federal Circuit.

The Federal Circuit reversed, finding the challenged claims to be non-obvious. Ordinary creativity, as with common sense, may be relied upon by the Board to find challenged claims to be obvious subject to three conditions. First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation. Second, common sense should only be invoked to fill a missing claim limitation when the limitation is unusually simple and the technology particularly straightforward. Third, common sense cannot be used to supply a missing limitation without reasoned analysis and evidentiary support. In this case, the technology at issue was too complex for ordinary creativity to supply a missing limitation, and the Court’s single paragraph of discussion failed to provide the reasoned analysis justifying its use. Moreover, unlike prior cases where the missing limitation was considered ancillary to the invention, the Federal Circuit noted that the missing limitation plays a major role in the subject matter claimed.