When is something common sense to a POSITA? WHATSAPP v. TRIPLAY

To get a patent on an invention in the United States, an inventor must file a patent application with the United States Patent and Trademark Office. For the patent application to be granted, the invention must meet all of the requirements of Untied States patent law. The United States Patent and Trademark Office with review the patent application and determine whether the invention disclosed in the patent application meets all the requirements for a patent. If the United States Patent and Trademark Office determines that all the requirements are met the inventor will be granted a patent on the invention in the United States. A patent grants the patent owner the exclusive right to make, use, sell or import the invention in the United States.

One of the requirements that an invention must meet to be granted a patent is that the invention cannot be obvious. This may seem like a simple requirement, but the term obvious has a special definition in patent law. 35 U.S.C. 103 of United States patent law outlines the definition of obviousness. 35 U.S.C. 103 states that a patent for a claimed invention may not be obtained … if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

Prior art is public information that was available before the filing date of the patent application. A person of ordinary skill in the art or POSITA is a hypothetical person that is familiar with the technology related to the patent application. The reason that an obviousness inquiry is limited to prior art and the knowledge of a POSITA is to prevent hindsight from being used to determine that an invention is obvious.

When multiple pieces of prior art are used to argue that an invention is obvious, typically there needs to be an explanation of why a POSITA would be motivated to combine the prior art. The motivation to combine prior art is another method to prevent hindsight from being used in an obviousness inquiry. But sometimes something is just so obvious it is common sense. This raises the question when is something common sense to a POSITA?

A case which illustrates when common sense makes an invention obvious is WhatsApp, Inc. v. TriPlay, Inc., 2017-2549, 2017-2551 (C.A.F.C. 2018). TriPlay owned U.S. Patent No. 8,874,677 entitled Messaging System and Method. The patent related to communicating messages between platforms that may have different display capabilities or different communications protocols, for instance messages between a user on a computer and a user on a mobile phone. WhatsApp requested an inter partes review to invalidate the patent as obvious. WhatsApp submitted three patents as prior art and expert testimony that a POSITA would have combined the three pieces of prior art using common sense.

The Patent Trial and Appeal Board reviewed the evidence submitted by WhatsApp and declined to invalidate the patent as obvious. The Patent Trial and Appeal Board stated that the petitioners had not explained with reasoning or supporting evidence why a person of ordinary skill in the art, or a layperson, would consider video to be ‘more powerful’ than text or still photos. Thus, the Patent Trial and Appeal Board concluded that the petitioners and their expert’s comparison of televisions to text and photos is too simplistic and general, and is not directed to the particular technology at issue. WhatsApp appealed the decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit found that the Patent Trial and Appeal Board erred by not considering the fact it would be common sense to combine the prior art. The prior art references disclose all the claims of the patent in question, and common sense is argued only to supply a motivation to combine the prior art. Also, no evidence was introduced to indicate that a POSITA would be hesitant to combine the prior art. Because the prior art disclosed all the claims of the patent, common sense is allowed to be the motivation to combine the prior art, which makes the patent obvious.

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