## Facts

- Perfect Web owned U.S. Patent No. 6,631,400, directed to methods and systems for managing bulk e-mail distribution to targeted recipients using opt-in lists.
- The asserted claims included method claim 1, dependent claims adding selection of a subset and use of an opt-in list, and corresponding computer-readable medium/program claims.
- Claim 1 recited: (A) matching a recipient profile to a group of recipients; (B) sending bulk e-mails; (C) calculating successful deliveries; and (D) if successful deliveries did not exceed a prescribed minimum, repeating (A)–(C) until the minimum was exceeded.
- Perfect Web sued InfoUSA for infringement in the Southern District of Florida.
- InfoUSA moved for summary judgment that the asserted claims were invalid for obviousness under 35 U.S.C. § 103.
- The district court found steps (A)–(C) disclosed in the prior art and held step (D) an application of common sense, granted summary judgment of invalidity, and Perfect Web appealed.

## Issues

1. Whether claim 1’s “repeat until a prescribed minimum of successful deliveries is achieved” step renders the claimed method nonobvious when steps (A)–(C) were known in the prior art.
2. Whether reliance on “common sense” can supply the missing rationale/step for obviousness on summary judgment in this software/business-method context.
3. Whether asserted secondary considerations (e.g., long-felt need) created a triable issue sufficient to defeat summary judgment of obviousness.
4. Whether the computer-readable medium/program claims rise or fall with the obviousness of the underlying method claims.

## Decision

- The Federal Circuit affirmed the district court’s summary judgment that the asserted claims were invalid for obviousness.
- It agreed that steps (A)–(C) were known in the art of bulk e-mail marketing.
- It held that step (D) was the logical, routine response to failing to meet a target number of successful deliveries: sending more e-mails by repeating the known process until the minimum was met.
- It found Perfect Web’s secondary-considerations evidence insufficient to overcome the strong obviousness showing.
- It held the computer-readable medium/program claims invalid for the same reasons because they merely implemented the obvious method.

## Legal Principles

- A claim is obvious under 35 U.S.C. § 103 when the differences from the prior art would have been apparent to a person of ordinary skill, including through ordinary problem-solving.
- In appropriate cases, “common sense” may support an obviousness determination for a missing step or limitation, particularly where the step is a predictable, routine extension of known techniques.
- Control-flow instructions such as “if a target is not met, repeat until it is met” may be treated as obvious when the underlying operations are conventional and the additional logic reflects ordinary optimization.
- Secondary considerations must be supported by evidence tied to the claimed invention and sufficient to rebut a prima facie showing of obviousness; conclusory assertions or weak showings will not defeat summary judgment.
- Claims that simply computerize or store instructions for an obvious method (e.g., program or storage-medium claims) generally stand or fall with the method’s obviousness.

## Conclusion

The Federal Circuit held that once conventional bulk e-mail steps were established in the prior art, instructing repetition of those steps until a minimum delivery threshold is reached was a common-sense, predictable measure, rendering the asserted method and corresponding program claims obvious and invalid.


Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009)