Asserted claims for a patent for “managing bulk e-mail distribution to groups of targeted consumers” were found to be obvious on summary judgment and the Federal Circuit affirmed (and did not address an alternative holding that the claims were directed to unpatentable subject matter under section 101.) The claims involved sending e-mail messages in bunches and continuing to send new batches out until a certain number of messages were successfully received. The parties agreed that the first three steps of the four step method were known, so the issue was whether the fourth step—repeating the first three until a quota was met—would have been obvious.
An initial issue, which the court discussed at some length, was what kind of evidence was required for “common sense.” Relying on KSR, it found that the common sense available need not be shown in a reference or through expert testimony: “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.” (p. 9.) However, for 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.” (p. 10.)
Applying this standard to the case at hand, the court found that the district court adequately explained its reasoning in concluding that common sense would have rendered the claims obvious. It found that the “last step, and the claim as a whole, simply recites repetition of a known procedure until success is achieved.” (p. 10.) Further, because of the nature of the claims, “[n]o expert opinion is required to appreciate the potential value to persons of such skill in this art of repeating [the first three] steps.” (p. 10.)
The patentee’s argument that the patent met a long-felt need were rejected, in part because it “provided no evidence to explain how long this need was felt, or when the problem first arose.” (p. 15.)
The court also found that the claimed solution would have been obvious to try because the evidence showed that there were “at most a few potential solutions for this problem at the time” of the invention. (p. 12.)