Perfect Web Technologies, Inc. v. InfoUSA, Inc.

Court of Appeals for the Federal Circuit
2009 U.S. App. LEXIS 26245, 587 F.3d 1324, 92 U.S.P.Q. 2d (BNA) 1849 (2009)

ELI5:

Rule of Law:

An invention is obvious, and therefore unpatentable, if it combines known prior art elements with a final step that is a common-sense application or predictable solution, and this recourse to common sense does not require an explicit teaching in a prior art reference so long as the court provides a reasoned explanation.

Facts:

Perfect Web Technologies, Inc. ('Perfect Web') owned U.S. Patent No. 6,631,400 ('400 patent'), which claimed a method for managing bulk e-mail distribution.
The patented method involved three initial steps: (A) matching a target recipient profile with a group of recipients, (B) transmitting e-mails to them, and (C) calculating the number of successfully received e-mails.
These first three steps of the method were already known in the e-mail marketing industry prior to the patent application.
The novel step claimed in the patent was step (D): if the calculated quantity of successfully received e-mails did not meet a prescribed minimum, the process would repeat steps (A) through (C) until the minimum was exceeded.
Prior to the invention, a common industry practice to ensure a minimum number of deliveries was 'oversending,' which involved sending a large excess of e-mails, an inefficient and potentially costly method.

Procedural Posture:

Perfect Web Technologies, Inc. sued InfoUSA, Inc. in the U.S. District Court for the Southern District of Florida, alleging infringement of the '400 patent.
InfoUSA filed a motion for summary judgment of invalidity.
The district court conducted a Markman hearing but did not issue a formal claim construction order.
The district court granted InfoUSA's motion for summary judgment, holding the asserted patent claims invalid for being obvious, anticipated, and directed to unpatentable subject matter.
Perfect Web appealed the district court's summary judgment order to the U.S. Court of Appeals for the Federal Circuit, with Perfect Web as the appellant and InfoUSA as the appellee.

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Issue:

Is a patent claim obvious under 35 U.S.C. § 103 when it combines known prior art elements with a final step that relies on the common-sense principle of repeating the prior steps until a desired outcome is achieved?

Opinions:

Majority - Linn, Circuit Judge

Yes, a patent claim is obvious when its only novel step is the common-sense application of repeating known steps until a desired result is achieved. The court determined that steps (A)-(C) of Perfect Web's patent were admittedly disclosed in the prior art. The only inventive step claimed, step (D), was merely the repetition of the known process until a goal was met. Citing KSR Int'l Co. v. Teleflex Inc., the court reasoned that this step was a common-sense solution, describing it as the application of the maxim 'try, try again.' The court held that recourse to logic, judgment, and common sense is permissible in an obviousness analysis, especially in a simple technological field, and does not require an explicit teaching in a prior art reference, provided the court articulates its reasoning. Furthermore, the court found the method would have been obvious to try, as there was a finite and predictable number of solutions to the problem of under-delivery in an e-mail campaign. Perfect Web's secondary consideration argument regarding a 'long-felt need' failed due to a lack of evidence.

Analysis:

This decision is a significant application of the Supreme Court's flexible approach to obviousness established in KSR v. Teleflex. It solidifies that 'common sense' is a valid and potent tool for invalidating patents, particularly for inventions that involve simple, logical, or predictable combinations of known elements. The ruling empowers district courts to find a patent obvious without explicit prior art teachings for every element, as long as they provide a clear rationale. This precedent makes it more difficult to obtain or enforce patents on business methods or software that automate or iterate on common-sense practices.

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