The Software IP Report
When Is Hindsight Impermissible in an Obviousness Rejection?
By Mark St. Amour
Categories: 35 U.S.C. §§ 102, 103, The Software IP Report
According to the PTAB, impermissible hindsight can be found in an obviousness analysis that modifies a reference without providing a rationale for such modification independent of the patent sought to be invalidated. In Apple Inc. v. Voip-pal.com, LLC., IPR 2016-01201, Paper 54 (Nov. 20, 2017), the PTAB refused to invalidate patent claims as being obvious, under 35 U.S.C. § 103, based on a proposed modification that relied on the claims as a destination to guide a PHOSITA (person having ordinary skill in the art) to the modification, i.e., the proposed modification depended on impermissible hindsight reasoning.
At issue was US Patent 8,542,815, owned by Viop-pal.com. Representative claim 1 includes the following features:
in response to initiation of a call by a calling subscriber, receiving a caller identifier and a callee identifier;
locating a caller dialing profile comprising a username associated with the caller and a plurality of calling attributes associated with the caller;
determining a match when at least one of said calling attributes matches at least a portion of said callee identifier;
classifying the call as a public network call when said match meets public network classification criteria and
classifying the call as a private network call when said match meets private network classification criteria;
when the call is classified as a private network call, producing a private network routing message for receipt by a call controller, said private network routing message identifying an address, on the private network, associated with the callee;
when the call is classified as a public network call, producing a public network routing message for receipt by the call controller, said public network routing message identifying a gateway to the public network.
Petitioner Apple argued that the claim was invalid as being obvious in light of U.S. Patent No. 7,486,684. The ‘684 patent discloses a system for managing calls that were communicated over the internet (VOIP) and over a public switched telephone network (PSTN). To support such argument, Apple contended that the system of the ‘684 reference could be programmed to reformat a dialed phone number “as necessary” to include additional caller attributes, e.g., national and area codes. However, Apple failed to provide meaningful discussion as to how or why a PHOSITA would deem it necessary to reprogram the system of the ‘684 patent. The PTAB zeroed in on this inadequate support, and pointed out Apple’s position was not based on what the PHOSITA would have gleaned from the teachings of the ‘684 reference, but instead used the claims of the ‘815 patent as a guide, a textbook case of impermissible hindsight reasoning.
Ultimately, the PTAB found that Apple’s argument that it would have been obvious to modify the ‘684 “as necessary” to arrive at the claims of the ‘815 patent was insufficient, and declined to invalidate the ‘815 patent on obviousness grounds.
Lessons for Practice
When arguing that it would be obvious to modify a reference to render a patent invalid, it is beneficial to provide articulated rationale based on why a PHOSITA would perform such modification. Such argument should include grounds that are independent of the patent to be invalidated. For example, showing a design need or market pressure to solve a problem with a finite number of identified, predictable solutions, could be provide a motivation to modify references without impermissible hindsight bias. On the other hand, this decision provides a reminder to those fighting obviousness rejections – the other party, or the patent examiner, as the case may be, cannot use the very claims at issue as a guide.