United States Court of Appeals 

for the Federal Circuit ______________________ 

ARENDI S.A.R.L.,

Appellant

v.

APPLE INC., GOOGLE INC., MOTOROLA 

MOBILITY LLC,

Appellees

______________________ 

2015-2073

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2014-

00208.

______________________ 

Decided: August 10, 2016

______________________ 

ROBERT M. ASHER, Sunstein Kann Murphy & Timbers 

LLP, Boston, MA, argued for appellant. Also represented 

by BRUCE D. SUNSTEIN.

BRIAN ROBERT MATSUI, Morrison & Foerster LLP, 

Washington, DC, argued for all appellees. Appellee Apple 

Inc. also represented by SETH W. LLOYD, JOSEPH R.

PALMORE; DAVID LEE FEHRMAN, MEHRAN ARJOMAND, Los 

Angeles, CA. 
2 ARENDI S.A.R.L. v. APPLE INC. 

MATTHEW A. SMITH, Turner Boyd LLP, Redwood City, 

CA, for appellees Google Inc., Motorola Mobility LLC. 

Also represented by ROBERT J. KENT.

______________________ 

Before MOORE, LINN, and O’MALLEY, Circuit Judges.

O’MALLEY, Circuit Judge. 

On December 2, 2013, Apple Inc., Google, Inc. and 

Motorola Mobility LLC (collectively “Appellees”)) filed a 

petition for inter partes review (“IPR”) of U.S. Patent No. 

7,917,843 (the “’843 patent”), which is owned by appellant 

Arendi S.A.R.L. (“Arendi”). On June 9, 2015, the Patent 

Trial and Appeal Board (“Board”) issued a decision finding claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 

would have been obvious. Because the Board misapplied 

our law on the permissible use of common sense in an 

obviousness analysis, we reverse. 

BACKGROUND

A. The Patent-at-Issue

The ’843 patent is the only patent at issue in this appeal. The ’843 patent was filed in 2008 as a continuation 

of an application that issued as U.S. Patent No. 7,496,854 

(“’854 patent”), which in turn issued from a continuation 

of an application that issued as U.S. Patent No. 6,323,853 

(“’853 patent”), filed in the United States on November 10, 

1998. The ’843 patent shares a common specification with 

the ’854 patent, the subject of the companion appeal No. 

2015-2069, -2070, -2071, which we affirmed under Rule 36

on July 11, 2016, as well as the ’853 patent. 

The ’843 patent is directed to providing beneficial coordination between a first computer program displaying a 

document and a second computer program for searching 

an external information source. The patent allows a user 

to access and conduct a search using the second computer 

program while remaining in the first computer program 
ARENDI S.A.R.L. v. APPLE INC. 3

displaying the document. A computer process analyzes 

first information in the document to determine if it is of a 

type that can be used in another program to find related 

second information. Specifically, the ’843 patent discloses 

mechanisms for analyzing the document to identify the 

presence of name and address information, including by 

analyzing:

(i) paragraph/line separations/formatting, etc.; (ii) 

street, avenue, drive, lane, boulevard, city, state, 

zip code, country designators and abbreviations, 

etc.; (iii) Mr., Mrs., Sir, Madam, Jr., Sr. designators and abbreviations, etc.; (iv) Inc., Ltd., P.C., 

L.L.C, designators and abbreviations, etc.; and (v) 

a database of common male/female names, etc.

’843 patent, col. 4 ll. 33-39. A search by the second computer program using at least part of the first information 

as a search term then looks for second information associated with the first information in the information source. 

Id. at col. 4 ll. 43-57, Fig. 1. Once the second information 

is located, the claimed invention performs an action using 

the second information. 

For example, if a name is detected, a database can be 

searched for the name. Id. at col. 5 l. 65–col. 6 l. 3. If the 

search finds a single related contact with only one address, that address is inserted into the document. Id. If, 

instead, the search finds more than one related contact or 

address, the search results are displayed, and the user 

can select an address for insertion into the document. Id. 

at Fig. 10, col. 7 ll. 33-49. 

The parties agree that claim 1 of the ’843 patent is 

representative of the claims on appeal: 

A computer-implemented method for finding data 

related to the contents of a document using a first 

computer program running on a computer, the 

method comprising:
4 ARENDI S.A.R.L. v. APPLE INC. 

displaying the document electronically using the 

first computer program;

while the document is being displayed, analyzing, 

in a computer process, first information from the 

document to determine if the first information is 

at least one of a plurality of types of information 

that can be searched for in order to find second information related to the first information;

retrieving the first information;

providing an input device, configured by the first 

computer program, that allows a user to enter a 

user command to initiate an operation, the operation comprising (i) performing a search using at 

least part of the first information as a search term 

in order to find the second information, of a specific type or types, associated with the search term in 

an information source external to the document, 

wherein the specific type or types of second information is dependent at least in part on the type or 

types of the first information, and (ii) performing 

an action using at least part of the second information;

in consequence of receipt by the first computer 

program of the user command from the input device, causing a search for the search term in the 

information source, using a second computer program, in order to find second information related 

to the search term; and

if searching finds any second information related 

to the search term, performing the action using at 

least part of the second information, wherein the 

action is of a type depending at least in part on 

the type or types of the first information.

Id. at col. 10 l. 38–col. 11 l. 3 (emphasis on limitation at 

issue added). Because Arendi makes no arguments based 
ARENDI S.A.R.L. v. APPLE INC. 5

on any other claim limitation or claim, the claims on 

appeal stand or fall with claim 1. See In re Kaslow, 707 

F.2d 1366, 1376 (Fed. Cir. 1983). 

B. The Pandit Reference

The sole prior art reference on appeal is U.S. Patent 

No. 5,859,636 to Pandit (“Pandit”). Pandit was filed on 

December 27, 1995, and teaches recognizing different

classes of text in a document and providing suggestions 

based on it. See Pandit Abstract. 

One embodiment of Pandit involves a program that 

recognizes a phone number as a class of text. Pandit, col. 

2 ll. 25-31. Figure 1e and Figure 1f of Pandit illustrate 

the relevant embodiment:

Id. at Fig. 1e, Fig. 1f. The specification explains that, in 

Figure 1e, “a telephone number 16 is accented. The pull 

down menu named Phone #17 is highlighted and preferably identifies [ ] executable operations.” Id. at col. 2 ll. 64-

67. The specification further explains:

As shown in FIG. lf on pulled-down menu 20, possible programs include a writable computer data-
6 ARENDI S.A.R.L. v. APPLE INC. 

base of telephone and telefax numbers, a program 

which instructs a properly equipped computer to 

dial the number accented, a program which generates a template for the preparation of a fax message and which subsequently causes a properly 

equipped computer to transmit the message to the 

accented number, etc. Again, any program related to telephone or telefax numbers can be included in pulled-down menu 20 for direct accessing in 

accordance with the teachings of this disclosure. 

Id. at col. 3 ll. 1-11. In Figure 1f, “Add to address book,” is 

one of several options displayed in pull-down menu 20. 

The key question in this appeal is whether the Board 

erred in finding that it would be “common sense” to a 

person of ordinary skill in the art to search for the telephone number that is detected in a document when the 

“Add to address book” option disclosed in Pandit is selected. 

C. Procedural History 

Arendi sued Appellees and several other technology 

companies alleging infringement of claims of the ’843 

patent and related patents. Appellees responded by filing 

a petition requesting an IPR of claims 1-44 of the ’843 

patent. The Board instituted review of claims 1, 2, 8, 14-

17, 20, 21, 23, 24, 30, 36-39, 42, and 43, and declined to 

institute review of the other challenged claims. 

In its Institution Decision, the Board stated that “Petitioner submits . . . that Pandit discloses adding an 

identified number to an address book.” Joint Appendix 

(“J.A.”) 489. The Board then explained that it found 

unpersuasive the Patent Owner’s argument that a potential search for duplicate phone numbers, with respect to 

the embodiment shown in Figure 1f, would not meet the 

limitation requiring a search “in order to find a second 

information” using a search for “first information.” J.A. 

491-92. Instead, the Board found that it would be “rea-
ARENDI S.A.R.L. v. APPLE INC. 7

sonable to presume, as a matter of common sense” that 

Pandit would search for duplicate phone numbers and 

information associated with such numbers. Id. 

The Board’s Final Written Decision reaffirmed its initial determination, holding claims 1-2, 8, 14-17, 20-21, 23-

24, 30, 36-39, and 42-43 unpatentable for obviousness 

over Pandit. The Board noted that:

Petitioner submits that Pandit discloses each limitation of illustrative claim 1 except for performing a search as specified in step (i) of the claim. 

Petitioner, however, submits further that in order 

to avoid multiple entries of the same address, it 

would have been obvious that the first step in 

adding to an address book is to search the address 

book to determine if an entry already exists with 

the entered information, and displaying any associated information that is located. 

Apple Inc. v. Arendi S.A.R.L., IPR2014-00208, 2015 Pat. 

App. LEXIS 6053, at *9 (PTAB June 9, 2015). 

The Board then stated, just as it did in the Institution 

Decision, that: 

We find it reasonable to presume, as a matter of 

common sense and at the time of the invention, 

that the subroutine in Pandit would search for 

duplicate telephone numbers and, upon locating a 

duplicate entry, both the first information and associated (or second) information, such as the name 

and/or address associated with the telephone 

number, would be displayed to the user.

Id. at *10. Although the Board recognized that “a human 

being entering a contact into a paper address book would 

not be expected to search for duplicate telephone number 

entries,” it, nevertheless, found that “it would have been 

obvious to the ordinary artisan to utilize a computerized 

search for duplicate telephone entries when entering a 
8 ARENDI S.A.R.L. v. APPLE INC. 

telephone number in an electronic address book database 

as taught by Pandit.” Id. at *13. 

The Board further explained that the obviousness inquiry “not only permits, but requires consideration of 

common knowledge and common sense.” Id. at *14 (citing 

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. 

Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006); Perfect 

Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 

(Fed. Cir. 2009)). It rejected Arendi’s argument, relying 

on K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 

1362, 1365 (Fed. Cir. 2014), that “common sense” may 

only be applied when combining references that disclose

all the required limitations. The Board stated that the 

conclusion of obviousness follows from the readily apparent benefit provided by the retrieval and display of preexisting information to a user. The Board found, in any 

event, that in this case, “a claimed structural feature is 

not missing from the applied prior art.” Arendi, 2015 Pat. 

App. LEXIS 6053, at *15. 

Arendi appeals. We have jurisdiction pursuant to 28 

U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s factual findings for substantial 

evidence and its legal conclusions de novo. In re Gartside, 

203 F.3d 1305, 1316 (Fed. Cir. 2000). “Substantial evidence is something less than the weight of the evidence 

but more than a mere scintilla of evidence.” In re Mouttet, 

686 F.3d 1322, 1331 (Fed. Cir. 2012). It is “such relevant 

evidence as a reasonable mind might accept as adequate 

to support a conclusion.” In re Applied Materials, Inc., 

692 F.3d 1289, 1294 (Fed. Cir. 2012) (quoting Consol. 

Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)). 

“Obviousness is a question of law based on underlying 

findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. 

Cir. 2009). A patent is obvious “if the differences between 
ARENDI S.A.R.L. v. APPLE INC. 9

the subject matter sought to be patented and the prior art 

are such that the subject matter as a whole would have 

been obvious at the time the invention was made to a 

person having ordinary skill in the art to which said 

subject matter pertains.” 35 U.S.C. § 103(a) (2012). In 

reaching this conclusion, the court must avoid “hindsight 

bias and must be cautious of arguments reliant upon ex 

post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 

398, 421 (2007). Though less common, in appropriate 

circumstances, a patent can be obvious in light of a single

prior art reference if it would have been obvious to modify

that reference to arrive at the patented invention. See, 

e.g., Takeda Chem. Indus., Ltd. v. Alphapharm Pty, Ltd., 

492 F.3d 1350, 1357 (Fed. Cir. 2007); SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. 

Cir. 2000). 

The single question at issue here is whether the 

Board misused “common sense” to conclude that it would 

have been obvious to supply a missing limitation in the 

Pandit prior art reference to arrive at the claimed invention. It is true that common sense and common 

knowledge have their proper place in the obviousness 

inquiry. We stated in Perfect Web that “[c]ommon sense 

has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” 587 F. 3d 

at 1328. And we stated in Randall that “[i]n KSR, the 

Supreme Court criticized a rigid approach to determining 

obviousness based on the disclosures of individual priorart references, with little recourse to the knowledge, 

creativity, and common sense that an ordinarily skilled 

artisan would have brought to bear when considering 

combinations or modifications.” Randall Mfg. v. Rea, 733 

F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR, 550 U.S. at

415-22); see also DyStar, 464 F.3d at 1367. Hence, we do 

consider common sense, common wisdom, and common 

knowledge in analyzing obviousness. 
10 ARENDI S.A.R.L. v. APPLE INC. 

But there are at least three caveats to note in applying “common sense” in an obviousness analysis. First, 

common sense is typically invoked to provide a known 

motivation to combine, not to supply a missing claim 

limitation. In DyStar, a pre-KSR case, we held a patent 

obvious where “all claim limitations [were] found in a 

number of prior art references,” 464 F.3d at 1360, and a 

person of ordinary skill in the art would have combined 

the references to achieve a “cheaper, faster, and more 

convenient” process. Id. at 1371 (quoting Sandt Tech., 

Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1355 

(Fed. Cir. 2001)). We stated that: “an implicit motivation 

to combine exists not only when a suggestion may be 

gleaned from the prior art as a whole, but when the 

‘improvement’ is technology-independent and the combination of references results in a product or process that is 

more desirable.” DyStar, 464 F.3d at 1368. Similarly, in 

Randall, we invoked common sense to vacate the Board’s 

determination of non-obviousness where “the Board failed 

to consider a wealth of well-documented knowledge that is 

highly material to evaluating the motivation to combine 

references.” Randall, 733 F.3d at 1356. There, the 

Board’s decision to ignore the existence of a “prevalent, 

perhaps even predominant method” of achieving the 

limitation at issue was prejudicial error. Id. at 1363. 

Second, in Perfect Web, the only case Appellees identifies in which common sense was invoked to supply a 

limitation that was admittedly missing from the prior art, 

the limitation in question was unusually simple and the 

technology particularly straightforward. “The patented 

invention involves comparing the number of successfully 

delivered e-mail messages in a delivery against a predetermined desired quantity, and if the delivery does not 

reach the desired quantity, repeating the process of 

selecting and e-mailing a group of customers until the 

desired number of delivered messages has been achieved.” 

Perfect Web, 587 F.3d at 1326. There, the missing claim 
ARENDI S.A.R.L. v. APPLE INC. 11

limitation—step D of steps A-D—was nothing more than 

an instruction to repeat steps A, B, and C until a particular quantity of email was sent in accordance with the 

claim. By contrast, the missing search at issue here

“plays a major role in the subject matter claimed” and 

“affects much more than step (i).” Appellant’s Br. 24. 

That is—if the search in step (i) is missing, then “the 

claims would be almost void of content” because the 

premise of the patent is to use information in a first 

program to find related information in a second program. 

Id. at 25. Thus, the facts in Perfect Web are distinguishable from the case at bar and ought to be treated as the 

exception, rather than the rule. 

Third, our cases repeatedly warn that references to 

“common sense”—whether to supply a motivation to 

combine or a missing limitation—cannot be used as a 

wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation 

missing from the prior art references specified. Indeed, 

we stated that although there is no problem with using 

common sense “without any specific hint or suggestion in 

a particular reference,” the Board’s “utter failure to 

explain the ‘common knowledge and common sense’ on 

which it relied” is problematic. DyStar, 464 F.3d at 1366 

(explaining our reasoning in In re Lee, 277 F.3d 1338, 

1341, 1344 (Fed. Cir. 2002)). See also In re Zurko, 258 

F.3d 1379, 1383, 1385 (Fed. Cir. 2001) (reversing Board 

where it adopted examiner’s unsupported assertion that 

claim limitation missing from cited references was “basic 

knowledge” and it “would have been nothing more than 

good common sense” to combine the references).

For example, in In re Lee, the Board adopted the examiner’s statements during prosecution that combining 

two prior art references to achieve the claimed invention—a method of automatically displaying the functions 

of a video display device and demonstrating how to select 

and adjust the functions—would have been obvious to a 
12 ARENDI S.A.R.L. v. APPLE INC. 

person of ordinary skill. The examiner had stated that 

the combination would have been obvious “since the 

demonstration mode is just a programmable feature 

which can be used in many different devices for providing 

automatic introduction by adding the proper programming software,” and that “another motivation would be 

that the automatic demonstration mode is user friendly 

and it functions as a tutorial.” In re Lee, 277 F.3d 1338, 

1341 (Fed. Cir. 2002). We vacated the Board’s decision, 

holding that “[c]onclusory statements such as those here 

provided do not fulfill the agency’s obligation” to explain 

all material facts relating to a motivation to combine. Id.

at 1344. 

In Hear-Wear, a more recent case and one that involves a missing limitation, we stated that “the Board was 

correct to require record evidence to support an assertion 

that the structural features of claims 3 and 9 of the ’512 

patent were known prior art elements. The patentability 

of claims 3 and 9 with the limitation ‘a plurality of prongs 

that provide a detachable mechanical and electrical 

connection’ presents more than a peripheral issue.” HearWear, 751 F.3d at 1365 (emphasis added). We distinguished KSR, finding that “the present case does not 

present a question” regarding “combining or modifying 

references” but “[i]nstead, it is about whether the Board 

declined to accept a conclusory assertion from a third 

party about general knowledge in the art without evidence on the record, particularly where it is an important 

structural limitation that is not evidently and indisputably within the common knowledge of those skilled in the 

art.” Id. at 1365-66 (emphasis added and deleted). Based 

on this prior precedent, we conclude that while “common 

sense” can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported 

by evidence and a reasoned explanation. In cases in 

which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, moreover, 
ARENDI S.A.R.L. v. APPLE INC. 13

our search for a reasoned basis for resort to common sense 

must be searching. And, this is particularly true where 

the missing limitation goes to the heart of an invention. 

Keeping these principles in mind, we now examine

whether there was substantial evidence supporting the 

Board’s finding that common sense would lead one to 

search for the telephone number in Pandit. Arendi argues 

there was no evidence, much less substantial evidence, to 

support the Board’s presumption that, as a matter of 

common sense, the subroutine in Pandit for “Add to 

address book” would start by searching for duplicate 

telephone numbers before adding the number to an entry 

for a contact in the book. Arendi is correct that Pandit 

itself is not about a search and does not mention or imply 

that a search of any kind is involved with the “Add to 

address book” function that is the subject of the parties’ 

dispute. Rather, Pandit is about text-dependent word 

recognition. Moreover, as the Board stated and Appellees 

do not directly attempt to rebut on appeal, “Petitioner 

submits that Pandit discloses each limitation of illustrative claim 1 except for performing a search as specified in 

step (i) of the claim.” Arendi, 2015 Pat. App. LEXIS 6053, 

at *9. Thus, we are facing a scenario in which the prior 

art reference is missing a particular limitation.

As in Hear-Wear, and unlike Perfect Web, the disputed 

search of step (i) is central to representative claim 1: 

(i) performing a search using at least part of the 

first information as a search term in order to find 

the second information, of a specific type or types, 

associated with the search term in an information 

source external to the document, wherein the specific type or types of second information is dependent at least in part on the type or types of the 

first information,

See Claim 1 of the ’843 patent. As discussed above, both 

parties describe the patented technology as directed to 
14 ARENDI S.A.R.L. v. APPLE INC. 

searching for information related to text in a document 

and performing an action using the information found by 

the search. See Appellant’s Br. 2 (“In accordance with the 

’843 patent . . . a user can access and conduct a search in 

an external information source while remaining in the 

first computer program displaying the document.”); Appellee’s Br. 3 (“The claimed method requires an operation 

involving searching for information related to text in a

document and performing an action using the information 

found by the search.”). 

In the words of Hear-Wear, this is not a case about 

“peripheral” limitations or about the Board substituting 

documentary evidence of a motivation to combine with its 

expertise about common motivations in that field of 

technology. 751 F.3d at 1365. Instead, it is about whether the Board accepted “a conclusory assertion from a third 

party about general knowledge in the art without evidence 

on the record, particularly where it is an important [ ]

limitation that is not evidently and indisputably within 

the common knowledge of those skilled in the art.” Id. at 

1365-66 (emphases added). Thus, we must approach the 

question of “common sense” in this case with the fact that 

the search is an important limitation in mind. 

The parties talk past each other in their briefing. Arendi focuses on the lack of evidence that it would be 

common sense to search a database specifically for a 

telephone number in order to prevent duplicates before 

adding the number to the database. Arendi argues there 

was no evidence, much less substantial evidence, to 

support the Board’s presumption that, as a matter of 

common sense, the subroutine in Pandit for “Add to 

address book” would begin by searching for duplicate 

telephone numbers before adding the number to an entry 

for a contact in the book. Arendi asserts that, as a 

threshold matter, there is no explicit mention or suggestion of performing a search with a telephone number in 

Pandit. 
ARENDI S.A.R.L. v. APPLE INC. 15

Second, the only documentary support the Board recited was the declaration of Dr. Menasce, Appellees’ 

expert. Arendi, 2015 Pat. App. LEXIS 6053, at *9. But 

Dr. Menasce did not testify about searching an address 

book with a telephone number; he stated only that it 

would have been obvious for a POSA to determine if “an 

entry already exists with this information” before adding 

to an address book “in order to avoid multiple entries of 

the same address,” a goal which a search for a phone 

number would not necessarily accomplish. Menasce Decl. 

¶ 99. Cf. Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 

1186, 1195-96 (Fed. Cir. 2014) (noting that “[a] party 

must . . . meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the 

prior art in an obviousness analysis”). If anything, Arendi 

continues, the evidence of record shows that a rational, 

common sense method of accomplishing the goal articulated by Dr. Menasce would be to search for the name of 

the person with whom the telephone number is associated. 

Finally, Arendi says that the testimony of its own expert, Dr. Levy, further supports this understanding of 

how the “Add to address book” option would work. Dr. 

Levy testified that, since address book entries are organized by and require a name, the most straightforward 

way to implement Pandit’s function would be to display a 

template into which the user would be able to enter the 

name and the telephone number to be added thereto. 

Levy Decl. ¶ 21-22. 

By contrast, Appellees focus on proving the more general proposition that a search for data in a database was 

known in the art. According to Appellees, “data is data,” 

and if searching a database for data was in the prior art, 

then searching that database for a telephone number is 

merely common sense. See Appellee’s Br. 24. Appellees

argue that searching a database for certain data was 

clearly within the prior art. The Board cited Arendi’s 
16 ARENDI S.A.R.L. v. APPLE INC. 

own expert’s testimony that “some database programs 

conduct a search for duplicates by default.” Arendi, 2015 

Pat. App. LEXIS 6053, at *16 (citing Levy Decl. ¶ 25). 

Similarly, Appellees contend that the Board relied on Dr. 

Menasce’s testimony that “[i]t would also have been 

obvious . . . that the first step in adding to an address 

book is searching the address book to determine if any 

entry already exists with this information.” Id. at *9-10

(citing Menasce Decl. ¶ 99). Dr. Menasce also testified 

that “Database operations such as searching for data/information in the database . . . are very well known in 

the art.” Menasce Decl. ¶ 37. 

Aside from the expert testimony verifying that searching for data in a database was well-known in the art, 

Appellees argue that Pandit itself discloses that the 

claimed searching was known in the art. Specifically, 

Pandit teaches that methods for “searching of large 

volumes of text, such as encyclopedias or legal case books, 

using key words or search terms” were well known in the 

art. Pandit, col. 1 ll. 11-13.1 Appellees maintain, there-

 

1 Appellees also point to a passage in Pandit stating 

that, “[w]here the invention is capable of recognizing 

nouns or verbs, pull-down menus can, for example, identify executable programs which provide the meaning of the 

highlighted word, appropriate synonyms and the singular 

or plural version of the noun or conjugation of the verb.” 

Pandit, col. 3 ll. 11-15. The Board excluded Appellees’ 

argument regarding the noun/verb search mentioned in 

Pandit as undeveloped in its Institution Decision. The 

Institution Decision explicitly stated that, “Petitioner does 

not seem to allege that the disclosed dictionary search 

relates to the first and second types of information dependency in the claim.” J.A. 489. Neither Appellees’ 

Petition for IPR nor their expert, Dr. Menasce, addressed 

the noun/verb search in Pandit. J.A. 134; J.A. 203-208. 
ARENDI S.A.R.L. v. APPLE INC. 17

fore, that the Board properly found that “the mere retrieval and display of useful pre-existing information to a 

user, using known methods” would have provided a 

“benefit that readily would have been apparent to one of 

skill in the art.” Arendi, 2015 Pat. App. LEXIS 6053, at 

*15. 

We agree with Appellees that this broader notion of 

searching for data in a database is supported by substantial evidence, including Appellees’ citations to the testimony of Dr. Menasce and Dr. Levy, as well as Pandit

itself. But Appellees have failed to show why it is proper 

to extrapolate from this general background knowledge of 

searches in a database to add a search for a telephone 

number to the Pandit reference. Specifically, Appellees 

have failed to show why it would be common sense for the 

“Add to address book” function to operate by first 

“search[ing] for entries with the same telephone number.” 

Appellee’s Br. 24. 

Rather than clearly explaining with concrete examples what benefit searching for entries with the same 

number would achieve, Appellees keep returning to their

general mantra that Arendi’s argument against searching 

for a number would apply equally to a search based on a 

name. Id. Yet the burden is Appellees’ to provide more 

than a mere scintilla of evidence of the utility of a search 

for a telephone number before adding the number to an 

address book, where such a search is not “evidently and 

indisputably within the common knowledge of those 

skilled in the art.” Hear-Wear, 751 F.3d at 1365-66. 

 

Because Appellees may not now make an argument 

regarding that search for the first time and the noun/verb 

search was not a ground of rejection alleged or relied upon 

by the Board, we do not address it on appeal. 
18 ARENDI S.A.R.L. v. APPLE INC. 

Appellees point to Dr. Menasce’s articulation of the 

goal of preventing duplicate entries, but Dr. Menasce 

never refers to duplicate telephone numbers and instead 

refers to duplicate addresses or “entries,” which are 

generally understood to refer to names. Even if we accept 

Dr. Menasce’s articulation of the goal of a search for 

information in a database as preventing the entry of 

duplicate addresses or names, searching for a telephone 

number would not be sufficient to achieve that goal. A 

search for a telephone number would simply result in the 

display of any pre-existing entries that already contain 

the telephone number the user intended to add to the 

address book. If the number is found in the address book,

the user could choose not to enter the number; in that 

sense, the search would prevent duplicate entries. But so 

would searching the address book by name—and the 

Board suggested that paper address books would be 

searched by name and that a person would know the 

name associated with the number to be added. Arendi,

2015 Pat. App. LEXIS 6053, at *11, at *13 (“The address 

database must include information associated with the 

telephone number” as “[a] telephone number stored in a 

database by itself is of little use”). 

Importantly, unlike a search for the contact name, a 

search for only a phone number would not reveal that a 

contact name to which the phone number needs to be 

added already exists in the database, but lacks the number. In other words, a search for a phone number would 

not reveal that entering the number and the name would 

create a duplicate name entry where the number is brand 

new, but the contact name already exists in the database. 

For example, if John Smith had two phone numbers and 

“John Smith” was already in the database with one phone 

number, searching the database for the second, new 

number to be added to “John Smith” would not reveal that 

“John Smith” is already in the database. Searching for a 

phone number would, in fact, generate duplicate entries. 
ARENDI S.A.R.L. v. APPLE INC. 19

Only a search for “John Smith” could be relied upon to 

determine whether “John Smith” is in the database. Yet 

the Board overlooked this common sense distinction, 

stating instead, with no elaboration, that “[s]earching a 

database for a telephone number in Pandit’s system, and 

displaying results, would be no different in substance 

from searching a database for a name, and displaying 

results, in the disclosed example in the ’843 patent.” Id. 

at *11. This kind of conclusory statement is insufficient 

to justify a conclusion about “common sense.” See In re 

Zurko, 258 F.3d at 1385 (“This assessment of basic 

knowledge and common sense was not based on any 

evidence in the record and, therefore, lacks substantial 

evidence support.”). 

The “use of common sense does not require a ‘specific 

hint or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.” Perfect Web, 587 F.3d at 1329 (quoting DyStar, 464 

F.3d at 1366); see also Plantronics, Inc. v. Aliph, Inc., 724 

F.3d 1343, 1354 (Fed. Cir. 2013) (“the mere recitation of 

the words ‘common sense’ without any support adds 

nothing to the obviousness equation.”); Ball Aerosol & 

Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 

984, 993 (Fed. Cir. 2009) (“the analysis that ‘should be 

made explicit’ refers not to the teachings in the prior art 

of a motivation to combine, but to the court’s analysis.”). 

But conclusory statements and unspecific expert testimony regarding searches in general are precisely what the 

Board relied upon in drawing its conclusion that it would 

have been “common sense” to search a database for a 

telephone number to be added. In so doing, the Board 

ignored Arendi’s arguments regarding the differences 

between searching for duplicate entries with a telephone 

number versus with a name or address. And these errors 

were particularly problematic considering the fact that a 

key limitation of the ’843 patent was missing from the 

prior art reference in dispute. 
20 ARENDI S.A.R.L. v. APPLE INC. 

We find, moreover, that this is not a case where a 

more reasoned explanation than that provided by the 

Board can be gleaned from the record. We conclude, in 

fact, that the application of common sense to the evidence 

of record would lead to a conclusion that the petitioner 

failed to meet its burden of establishing unpatentability of 

the ’843 patent on obviousness grounds. 

CONCLUSION

Because the Board’s presumption that adding a 

search for phone numbers to Pandit would be “common 

sense” was conclusory and unsupported by substantial 

evidence, the missing limitation is not a “peripheral” one, 

and there is nothing in the record to support the Board’s 

conclusion that supplying the missing limitation would be 

obvious to one of skill in the art, we reverse the Board’s

finding of unpatentability. 

REVERSED

COSTS

No costs.