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Cry, Cry Again?

Other than Perfect Web Technologies, no one is going to cry over the invalidation of patent no. 6,631,400.  The ‘400 Patent claims:

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.

In other words, spamming as many people as possible, and when the number of successful deliveries isn’t sufficient, do it some more.  The CAFC made relatively quick work on this patent (Perfect Web Technologies v. INFOUSA, Inc.), but some examination of the rationale is important to appreciate the (relatively low) precedential value of this opinion.

First, Perfect Web conceded on appeal that steps (A)-(C) were already in the prior art. So, to re-write the claim in “Jepson” format, just stick “characterized by” or  “the improvement comprising” in front of the words “repeating steps (A)-(C).”  That’s right, Perfect Web spent perfectly good money appealing a point of novelty that, as the district and circuit courts both explained, amounted to “try, try again.”

Apparently, Perfect Web hasn’t read the newspapers.   After all, in the pre-KSR era, where the supposed “rigid rule” roamed the earth, Perfect Web might have had a decent argument, since INFOUSA conceded that “novel” step (D) was not shown in the prior art.  Without an explicit reference on the record, Perfect Web dug in its heels and maintained that their expert’s conclusory assertion that the step was not obvious should have prevented summary judgment.

Alas, the “rigid rule” perished in the Chicxulub-like impact that was KSR.  Today, the dominant species in the obviousness world is the “common sense” aggregator.  Nevertheless, even “common sense” must be rooted in evidence.

We therefore hold that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.

* * *

… to invoke “common sense” or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.

Here, the “‘common sense’ reasoning appears in the record, namely the facts that step (D) merely involves repeating earlier steps, and that a marketer could repeat those steps, if desired.”  In other words, Perfect Web plainly admitted that steps (A)-(C) were known in the prior art.  “Thus, this last step, and the claim as a whole, simply recites repetition of a known procedure until success is achieved.”

As far as finding evidentiary support in the record, the court noted Perfect Web’s own expert:

Moreover, the district court correctly observed that in a deposition, [Perfect Web’s expert witness] agreed that if an initial delivery of e-mail fell short of a desired number, the only options were to stop or to find more e-mail addresses.

In other words, after the completion of the steps already known to be in the prior art, there were only two alternatives available.  However, you need to add something not already in the prior art in order to be awarded a patent.  Since one of the two options (do nothing) fails to do add anything new, there’s really only one alternative from a patent perspective.  According to Perfect Web’s own witness, that alternative is the only option for the marketer, and therefore would have been within the grasp of one of ordinary skill.

Worth noting, the CAFC opinion does not touch patentability of claims such as dependent claim 3, which adds:

if said calculated quantity does not exceed said prescribed minimum quantity of successfully received e-mails, selecting among said group of target recipients a new subset of target recipients and repeating said steps (A)-(C) using said new subset of target recipients in said transmitting step until said calculated quantity exceeds said prescribed minimum quantity.



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