Common Sense Can Be Used in Determining Obviousness
Western Union v. Moneygram (decided 12/7/10)By: William R. McClellan
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What This Means to You
- Inventions relying solely on application of computer and internet technology to replace older electronics may be unpatentable.
- “Common sense” may be used in determining obviousness of an invention over prior art.
- To rely on commercial success in establishing non-obviousness of an invention, establish a nexus between the commercial success and patented invention.
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Overview
In Western Union Company v. Moneygram Payment Systems, Inc., decided December 7, 2010, the US Court of Appeals for the Federal Circuit (Federal Circuit) confirmed the Supreme Court’s reasoning in KSR, stating that the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.
The court noted that the claimed money transfer method represents no more than the predictable use of prior art elements according to their established functions. As to secondary considerations, the Federal Circuit concluded that Western Union had not shown a nexus between the commercial success of the product and the claimed invention, and added that weak secondary considerations generally do not overcome a strong prima facie case of obviousness.
Case Background
The technology in this case relates to money transfer services where a customer may identify a recipient and tender an amount to be delivered to the recipient. The patents relate to formless money transfer using an electronic system.
At the district court level, Western Union argued the prior art lacked three critical elements: (1) a code for use by the sender, (2) an electronic transaction device, and (3) the use of the internet. The jury found infringement of four Western Union patents and further found those patents not invalid.
Decision Analysis
The Federal Circuit reversed the district court finding that Western Union’s asserted claims would have been obvious. The court observed that electronic transaction devices were commonplace at the time of the invention.
The Federal Circuit further noted that, based on KSR, “we have subsequently held that applying computer and Internet technology to replace older electronics has been commonplace in recent years”.
The court agreed with Moneygram that the idea of identifying transactions by codes is well-known to anyone who has ever purchased or reserved an item and received a confirmation number, stating that it would have been “common sense” for a person of ordinary skill in the art to use a code generated at the staging phase. The court concluded the claimed combination represented no more than the predictable use of prior art elements according to their established functions and the asserted patent claims would have been obvious as a matter of law.
Regarding secondary considerations of non-obviousness, the court stated that the patentee must establish a nexus between the evidence of commercial success and the patented invention. Western Union failed to establish any relation between commercial success of the money transfer system and the patentable features of the claimed invention.
Finally, the Federal Circuit noted that weak secondary considerations generally do not overcome a strong prima facie case of obviousness.
Takeaways
Inventions relying upon the application of computer and/or internet technology to replace older electronics may be found unpatentable as representing no more than the predictable use of prior art elements according to their established functions.
“Common sense” may be applied in determining the obviousness of a claimed invention over prior art.
To rely on secondary considerations of non-obviousness, it is important to show that the commercial success results directly from the patented invention.
