Federal Circuit Affirms: Spam Patent is Obvious
By Gary Pong – Edited by Jad Mills
Perfect Web Technologies, Inc. v. InfoUSA, Inc., No. 2009-1105 (Fed. Cir. Dec. 2, 2009).
The Federal Circuit affirmed the Southern District of Florida’s decision granting summary judgment to invalidate plaintiff’s U.S. Patent No. 6,631,400 (“‘400 patent”) due to the obvious nature of the asserted claims under 35 U.S.C. § 103.
The Federal Circuit held that the ‘400 patent failed the KSR test for obviousness. The patent specification sets out a series of steps for delivering a prescribed quantity of e-mails to targeted recipients. In so holding, the court noted that the claim was so simple and obvious that “ordinary skill in the relevant art required only a high school education and limited marketing and computer experience.” Furthermore, such a case would not require expert opinion and may rely on the common sense available to the person of ordinary skill.
Perfect Web Technologies, Inc. (“Perfect Web”) filed for the ‘400 patent on April 13, 2000, at the height of the dot-com bubble. The ’400 patent contained several claims that described methods of managing bulk e-mail distribution to groups of targeted consumers. At issue were the claims dependent on and related to claim 1:
1. A method for managing bulk e-mail distribution comprising the steps:
(A) matching a target recipient profile with a group of target recipients;
(B) transmitting a set of bulk e-mails to said target recipients in said matched group;
(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,
(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.
On appeal, Perfect Web conceded that steps (A)-(C) were covered by prior art. The remaining disagreement focused on whether step (D) was novel and non-obvious to one of ordinary skill in the art of e-mail marketing.
In holding as it did, the court reasoned that the addition of step (D) was the product of “common sense” and a solution that was “obvious to try” by someone of ordinary skill.
While experts were presented on both sides, Circuit Judge Linn wrote that experts were not required to conclude that step (D) clearly fell within the “inferences and creative steps that a person of ordinary skill would employ.” In evaluating the “obvious to try” test, the court noted that the problem “that the patent addresses is sending too few or too many e-mail messages to meet a fixed marketing quota.” In the event that steps (A)-(C) were insufficient, there was little else one could do other than to “try, try again” as described in step (D).
In downplaying the need for expert opinion in clear-cut cases, the court demonstrates the utility of the KSR standard in allowing dismissal of intuitively obvious patent claims.