CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Google LLC, et al., No 19-1177, (Fed. Cir. Jan. 31, 2020).

The claims of the ‘806 patent are directed towards “download[ing] the next file [of a media presentation] concurrently with playback of the previous file.” Philips argued that the Board erred in instituting an IPR “because 35 U.S.C. § 311(b) expressly limits inter partes reviews to ‘prior art consisting of patents or printed publications,’ and because…§ 311(b) prohibits use of general knowledge to supply a missing claim limitation in an inter partes review.”

The court found that the Board did not err “in relying on ‘general knowledge’” to institute an IPR because “[a]lthough the prior art that can be considered in inter parte reviews is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” The court noted that “[r]egardless of the tribunal, the inquiry into whether any ‘differences’ between the invention and the prior art would have rendered the invention obvious to a skilled artisan necessarily depends on such artisan’s knowledge.”

Philips further argued that relying on general knowledge violates the Federal Circuit ruling in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016). The court distinguishes Arendi from the present case because “[i]n Arendi, the Board relied on nothing more than ‘conclusory statements and unspecific expert testimony’ in finding that it would have been ‘common sense…to supply a limitation that was admittedly missing from the prior art.’” In this case, “the Board relied on expert evidence, which was corroborated by [prior art], in concluding that [the missing claim limitation] was not only in the prior art, but also within the general knowledge of a skilled artisan.” Therefore, the court affirmed the Board’s decision.

Lessons for Practice

This case illustrates that asserting a missing claim limitation is within the general knowledge of a skilled artisan can be a proper basis to support institution of an inter partes review. However, this case also cautions that mere conclusory statements of common sense and unspecific expert testimony are insufficient to supply a missing claim limitation based on general knowledge of the skilled artisan. Instead, a general knowledge assertion should be supported with expert testimony that is corroborated by prior art.