Federal Circuit Uses KSR’s “Common Sense” Test to Affirm Invalidity

Yesterday, the Federal Circuit issued an opinion in Perfect Web Technologies, Inc. v. InfoUSA, Inc. affirming that claim 1 of U.S. Patent No. 6,631,400 is invalid as obvious.

The ‘400 patent relates to sending bulk marketing e-mails to targeted customers.  Claim 1 reads as follows:

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.

The patent owner conceded that steps (A)-(C) were in the prior art, so the only issue on appeal was regarding step (D).  The defendant conceded that step (D) was not in the prior art.  The claim basically covers a method of sending out bulk e-mails.  Step (D) refers to the situation that if fewer messages are sent than were originally planned, repeat steps (A)-(C).  The district court had construed step (D) to mean simply “try, try again.”

On appeal, the patent owner argued that there was no evidence in the record that step (D) was known in the art; the district court had simply used its own hindsight judgment to determine obviousness.  The Federal Circuit relied on the Supreme Court’s KSR decision that referred to using what is known to one of ordinary skill in the art and also to “common sense” to determine whether a patent claim is obvious.

We therefore hold that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.

[O]n summary judgment, to invoke “common sense” or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.

The Federal Circuit characterized the claim as a simple repitition of a known procedure until success is achieved.  It’s hard to imagine anything more obvious.

The court also noted that the claim is invalid as “obvious to try,” another KSR mantra.  When there are only a finite number of identified, predictable solutions to attempt, it is obvious to try the known choices.  In this case, the problem was not sending as many messages as desired.  The only potential solutions were to oversend messages, resend to addresses that had failed delivery, or identify new addresses to which to send messages.  With these being the only choices, step (D) of claim 1 was “obvious to try.”


The district court had also held the patent claims invalid as directed to unpatentable subject matter under § 101, a holding that the Federal Circuit did not address.  For those of us that believe in a broad range of patentable subject matter, a strong application of the other patentability requirements, such as enablement, anticipation, and obviousness, is essential.  It seems that KSR and decisions like Perfect Web should lead us in that direction.  Let’s hope the Supreme Court doesn’t also squeeze patentability from the other end.

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2 Responses to “Federal Circuit Uses KSR’s “Common Sense” Test to Affirm Invalidity”

  1. Jim Finder Says:

    Whoever you are, this was a useful and interesting post as always. I wish there was more discussion on this blog.

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