Person Having Ordinary Skill In The Art (“PHOSITA”)

  • BASICS: “The POSA is patent law’s hypothetical, legal construct ‘akin to the ‘reasonable person’ used as a reference in negligence determinations.’” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). This theoretical person is the objective vantage point for making obviousness determinations…. The legal definition of ‘ordinary’ skill for a POSA can be contrasted with one of ‘expert” skill.’” McCoy (Fed. Cir. 04/01/21) (non-precedential) (aff’g PTAB obviousness finding despite finding that a person of ordinary skill would have access to an expert, which sometimes is the case, but warning that ordinary skilled artisan is not an expert).
  • Factors In Determining Level Of Ordinary Skill In The Art: include (1) educational level and any specialties of the applicants; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; (6) educational level and any specialties of active workers in the field; (7) nature of any testing described in patent (and skills required of those doing such testing). Daiichi Sankyo (Fed. Cir. 07/11/07) (non-precedential) (rev’g trial court’s finding of no obviousness based on error in identifying the PHOSITA); Best Medical (Fed. Cir. 08/29/22) (aff’g PTAB non-obviousness finding and finding that PHOSITA must have “formal computer programming experience,” and discounting of challenger’s expert who lacked that experience, where alleged invention implemented on a computer and named inventors had that experience. Quoting Daiichi factors with approval, adding “the patent’s purpose can also be informative.”); Cf. Hologic (Fed. Cir. 04/19/19) (non-precedential) (aff’g PTAB definition of PHOSITA and obviousness determination; Board need not consider each Daiichi factor.);  George M. Martin (Fed. Cir. 08/20/10) (invention year later than patent’s reduction to practice date, coupled with other close prior art, was evidence of simultaneous invention showing level of ordinary skill in the art).
  • Skeletal Spec. Can Be Deemed Admission Of Knowledge And Abilities Of Skilled Artisan: Absence of detailed descriptions in the Spec. can be deemed admission about level of skill in the art. Cf. In re Fox, 471 F.2d 1405, 1407 (CCPA 1973) (affirming obviousness of patent application claims over common knowledge; specification in effect admits “that all of the equipment and technical knowledge required to perform the claimed method is admittedly old. The latter admission is to be found in part in express statements in [the Spec.] in part is deducible from the fact that it assumes anyone desiring to carry out the process would know of the equipment and techniques to be used, none being specifically described.”); In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (holding prior art publications enabling, citing In re Fox with approval: “we find that the disclosure of appellant’s system fails to provide the same detailed information concerning the claimed invention. In the absence of such a specific description, we assume that anyone desiring to carry out such computerized warehousing and inventory control systems would know of the equipment and techniques to be used.”) See Anacor Pharm. II (Fed. Cir. 08/27/20) (non-precedential) (aff’g PTAB obviousness; “the inventors evidently did not consider formulating organoborons a great challenge, as the specification does not offer any guidance beyond citation of well-known guides to pharmaceutical formulation”); In re Publicover (Fed. Cir. 05/15/20) (non-precedential) (aff’g PTAB obviousness finding for pending application; disclosure in application “just as sparse” as that in art for feature); Software Rights (Fed. Cir. 09/09/16) (2-1) (non-precedential) (rev’g PTAB non-anticipation finding, in part because Spec. describes step allegedly missing from reference “as ‘simple’ or routine”); In re Hill-Rom (Fed. Cir. 12/02/15) (non-precedential) (PTAB obviousness finding supported by Spec. not describing that “any significant modifications required” to allow combination of elements to work).
  • Although Level Of Skill Can Be Low, Person Should Possess “Ordinary Creativity With Common Sense, Common Wisdom, And Common Knowledge”: Perfect Web (Fed. Cir. 12/02/09); see Elekta (Fed. Cir. 09/21/23) (aff’g PTAB obviousness: “The inquiry into the existence of a motivation to combine assumes that a skilled artisan is a person of ordinary creativity with common sense, common wisdom, and common knowledge.”); see In re Black (Fed. Cir. 07/08/19) (2-1) (non-precedential) (aff’g ex parte obviousness rejection; “a person of ordinary skill in the art attempting to solve a problem is not wholly restricted to the literal confines of the prior art. We may assume that ‘familiar items may have obvious uses’ and that a person of ordinary skill may draw upon her knowledge and creativity to solve the same problem.”)
  • Named Inventors Ordinarily One Of Skill In The Art: noting “the rare case in which an inventor is not” one of ordinary skill in the art, and that such status ordinarily qualifies one to testify as an expert. Byrne (Fed. Cir. 11/18/11) (non-precedential).
  • References Outside Those Asserted As Anticipatory Or Part Of Obviousness Combination Can Evidence State Of The Art: “Art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.” Ariosa (Fed. Cir. 11/16/15) (vacating PTAB IPR decision of non-obviousness). See Genzyme (Fed. Cir. 06/14/16) (aff’g PTAB obviousness determination: “failure to make explicit findings regarding the level of skill in the art does not constitute reversible error when “the prior art itself reflects an appropriate level and a need for testimony is not shown.”)
  • Not Necessarily Error To Fail To Make Findings As To Level Of Skill In The Art: While preferable that fact finder specify level of skill in the art, failure to do so not reversible error “‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’” Rudolph Tech. (Fed. Cir. 12/22/16) (non-precedential) (aff’g in part PTO obviousness determination).
  • May Be Member Of A Team: Panel affirmed district court finding “that a person of ordinary skill would principally have a background in pharmaceutical science or chemistry but ‘would also be a member of a team, which would include an engineer or scientist with one to three years of relevant experience manufacturing and optimizing various types of film products using coating and drying processes.’” Indivior II (Fed. Cir. 07/12/19) (2-1) (aff’g non-obviousness).
  • Expert Witness Must Have At Least Ordinary Skill In The Art: “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable. The opinions would not be based on any specialized knowledge, training, or experience that would be helpful to the factfinder.” Kyocera (Fed. Cir. 01/21/22) (on review of ITC decision, excluding both literal and DOE infringement testimony of expert who did not have the design experience parties accepted as definition of PHOSITA).

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