Background
DSS Technology Management holds U.S. Patent No. 6,128,290, which covers a wireless data communication network for a single host device and multiple peripheral devices—a system designed to provide reliable, low-power wireless communication while avoiding interference with nearby similar systems. Apple petitioned for inter partes review (IPR) at the PTAB, arguing that DSS’s claims were obvious in light of prior art references describing wireless communication systems.
The PTAB agreed with Apple and cancelled DSS’s patent claims, finding the claims obvious. A critical step in the PTAB’s analysis was its reliance on “common sense” and “ordinary creativity” to explain why a person of ordinary skill in the art would have combined the prior art references to arrive at the claimed invention—including why they would have applied a particular power-saving feature claimed in the patent that was not explicitly disclosed in any of the cited prior art references.
DSS appealed, arguing that the PTAB had improperly used “common sense” as a shortcut to supply a missing claim limitation rather than pointing to actual evidence in the prior art.
The Court’s Holding
The Federal Circuit reversed the PTAB’s obviousness ruling. Writing for the majority, Judge O’Malley articulated three key constraints on the PTAB’s use of “common sense” reasoning in obviousness analyses:
First, common sense is most appropriately used to supply a known motivation to combine prior art references, not to provide a missing claim limitation that is absent from all cited references. Second, even if common sense can sometimes supply a missing limitation, it may only do so when the missing limitation is particularly simple and the technology is relatively straightforward—not for complex technical concepts in sophisticated fields. Third, references to common sense cannot wholesale substitute for reasoned analysis supported by evidentiary grounding; bald assertions that a skilled artisan would have applied a missing feature are not sufficient.
In DSS’s case, the challenged claims related to complex wireless communication technology, not a simple or trivially obvious technical feature. The PTAB’s invocation of “common sense” to supply the missing limitation was insufficiently reasoned and lacked evidentiary support. Because Apple did not establish a prima facie case of obviousness, the Federal Circuit reversed rather than remanding.
Key Takeaways
- “Common sense” cannot be used as a blanket substitute for prior art evidence when a claim limitation is missing from all cited references, especially in complex technologies.
- PTAB decisions invoking common sense or ordinary creativity to supply missing claim elements must be supported by detailed reasoning explaining why a skilled artisan would have arrived at the missing feature, not just a conclusory assertion.
- Patent owners challenging IPR decisions have a viable avenue for reversal when the Board relies on unsupported common sense reasoning to fill gaps in the prior art.
- IPR petitioners must identify actual prior art evidence (references, expert testimony) for all claimed limitations rather than relying on abstract reasoning about what would have been obvious.
Why It Matters
The Federal Circuit’s decision in DSS v. Apple pushed back on a growing tendency at the PTAB to use “common sense” as an easy shortcut to invalidate patent claims when the prior art did not squarely teach every limitation. While obviousness analysis has always permitted consideration of what a skilled artisan would have understood, this ruling established important guardrails: the more complex the technology and the more significant the missing limitation, the more actual evidence is required to sustain an obviousness finding.
For patent owners facing IPR challenges, DSS v. Apple offers a template for challenging obviousness rulings that rest on vague appeals to common sense rather than concrete prior art. For IPR petitioners, it is a reminder that each claim limitation must be accounted for in the prior art record—gap-filling by invoking common sense is disfavored and may be overturned on appeal.