Person(s) Skilled in the Art: Should the Now Established Model of Team-Based Inventing Impact the Obviousness Analysis?

By Dennis Crouch

A claimed invention is unpatentable if, at the time the invention was made, the invention as a whole would have been obvious “to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a) (emphasis added). When applying this subsection, courts have generally followed the statutory language and sought to identify knowledge of a hypothetical individual person with ordinary skill in the relevant area of technology.

When the Patent Act became law in 1952, the inventive process may have largely paralleled the language of the statute – namely, the vast majority of patents were each associated with a single respective inventor who took a step beyond the ordinary. In that year (1952), 82% of patents listed only one inventor and a mere 3% listed three or more inventors.

By 2011, the statistics had inverted. Less than one-third (32%) of patents issued so far this year list just a single inventor and 43% identify three or more inventors. During this 60-year time period, the average number of inventors per patent has more than doubled. The ordinary inventor today is a joint inventor who invents as part of a team. There are some areas of technology that seem to have more aggressively embraced the team-inventorship – Patents in several Art Units in TC 1600 (Bio and Organic Chemistry) have less than 10% likelihood of listing only one inventor. Art unit 3677 (Jewelry) has the highest percent of solo-invented patents at 77%.

These changes in practice prompt a reflection on the threshold “person having ordinary skill in the art” and whether the obviousness test should reflect some nuances of teamwork. As compared to a solo worker, teams often have an overall broader depth of knowledge, but are often plagued by communication difficulties. In the obviousness analysis, this shift could be reflected in a broader scope of potential prior art but a more rigorous analysis of whether the ordinary team would make leaps of analysis necessary to combine disparate prior art. The team approach also has a major potential impact on other doctrines such as antedating prior art based on prior invention and diligence.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

124 thoughts on “Person(s) Skilled in the Art: Should the Now Established Model of Team-Based Inventing Impact the Obviousness Analysis?

  1. Ned,

    I think that Hardworking is working the Socratic Method on you.

    An answer of “go away” is not an answer that would satisfy the Socratic Method.

    Will you be providing an answer to the questions presented?

  2. I like your last posting. I could never understand why the German decisions always made a big thing about the leel of skill while the English decisions never mentioned it. But, just recently, it has started to creep in to the English decisions too. Now, the English patent judges keep it as simple as they can. So, when they mention the level of skill, it must be because they cannot otherwise get to their decision.

    But I’m not enough of a legal scholar to understand what is pushing them into it.

  3. Ned,

    Only you would even attempt to portray your incomplete and rambling thoughts as both “Socratic method” and “taking legal principles to their logical conclusion” under the guise of “dealing in fundamentals.”

    What part of your revisionist bent is “socratic” and what part is “taking legal principles to their logical conclusion” ? You have clearly stated that you do not like the LAW as passed in 1952, and yet you somehow come up with all types of Supreme Court rulings and purposes of that 1952 law, including (oddly) the codification of Hotchkiss (at the same time you think that very codification “went off the rails”).

    Most people have an easier time of simply saying when they are wrong. Perhaps you are not even aware that you are rambling incoherently.

  4. Hard-working, if you do not understand the Socratic method, and do not understand why taking the legal principles announced by courts to their logical conclusion however absurd they might be to test their reasoning, you do not understand why it is important to discuss the law in any depth. How can you say you understand the law if it makes no sense when you probe deeper but you are unwilling to go there yourself.

  5. Max, this makes quite a bit of sense because it essentially removes the real person from the equation and substitutes the state of the art as comprising his hypothetical knowledge. That is precisely how every Supreme Court case resolves the issue of inventive step. It is the way we resolve issues of patentability in the patent office. The level of skill has nothing to do with whether the prior art shows or suggests the claimed invention.

    I haven’t done a complete investigation as to the origins of our §103, and whether any case prior to 1952 discussed what was meant by “ordinary” skill in the art. However the cases I do know about never discussed the skilled in the art at all except that when the differences between the claimed invention and the prior art were insubstantial and routine, the Supreme Court stated in conclusion that the invention was within the skill of the ordinary artist and not an invention within the meaning of the statute or constitutional. There is nothing in the Supreme Court cases that first resolved the level of skill in the art in any meaningful way to determine whether there was an inventive step.

    The dicta in the Graham versus John Deere requiring a resolution of the level skill in the art as a necessary step in determining obviousness sits there unexplained. No Supreme Court case has ever turned on the level of skill in the art. We still do not know what they mean, or what the statute requires.

    However, if it is true that §103 was merely an enactment of Hochtkiss versus Greenwood, then we know what it means. It is in fact the hypothetical person who is aware of the state of the art, but who has operates from what that art teaches, and not from any hypothetical additional skill not disclosed by the art except for perhaps, common sense.

    So now we have this thread advanced by Dennis Crouch seeking to resolve the actual level of skill in the art by a team of inventors. We are now counting angels dancing on the head of a pin. There are no angels.

  6. A new light, I hope we can agree on this: the discussion of “skill in the art” is dicta. The level of skill in the art was agreed to by the parties and was not an issue on appeal.

    There is nothing in the majority opinion that stated or implied that it’s holding depended upon a resolution of whether the person of ordinary skill in the art could make the modification of mounting the sensor on the brake pedal. It was assumed that he could in this case, precisely because both the primary field and the secondary field involved mechanical skills in the automobile industry.

    I fail to see how anything in the holding of the Court is inconsistent with the other dicta concerning hypothetical situations where the person of ordinary skill in the art did not have the skill to make the modification.

    Somehow, a new light, I think we are simply failing to communicate.

  7. ANL, the quotes are exact. The first part is the second full paragraph of the opinion. The second the opening paragraph of part III in its entirety.

  8. If evading the actual understanding of law is what you consider “fundamentals”, then yes, Ned, I am not used to dealing in fundamentals. Not nearly as adept with “fundamentals” as you are.

  9. For more than 30 years, the EPO has been using its “could-would” question, founded on the results of its enquiry into “technical effects”. Your quote shows the Supreme Court to be following the same line. I’m curious: did the EPO get the idea from even earlier US caselaw? Which court invented the could/would tool, and when?

  10. Ned this answers your point immediately above, plus another one that is miles above.

    At least in Europe, the skilled addressee is an artificial legal construct. This must be, to retain objectivity.

    The skilled person knows every prior publication, but is devoid of any inventive faculty.

    Anything already made available to the public is prejudicial to novelty. Only if the state of the art suggests how to solve the objective technical problem is the claimed subject matter obvious.

    Since the skilled person is a figment of imagination, there is no difficulty for that person to read every published document under the sun, regardless of the language in which it was writ.

    At the EPO, whether the claim is obvious depends on what objective technical problem (OTP) it solves. This leads, in turn, to the level of skill of the skilled person. It is the one who, in real life, would be tasked with finding a solution to the OTP.

    Contrary to ignorant prejudice, there is no ex post facto analysis involved in the EPO’s TSM approach to obviousness. Recall that the OTP emerges automatically and inevitably (with no opinion involved) from a strict comparison of the wording of two (and ONLY two) documents, both written before the date of the claim.

    Keep it simple, I say.

  11. Ned,

    I have thought about your post above and while I said I would be patient, I have changed my mind.

    Your method of stating the above argument is plainly dishonest. Please see my earlier post at 11:12 AM above where I quote to you the pertinent parts of KSR. You cannot deny the point I make about what constitutes the holding of this case.

    Your quote directly above mistates the words by leaving out “Moreover.” You yourself have already labeled this quote that you wish to have ascendency as dicta.

    It is one thing for you to be obstinate about a view – it is quite another to misrepresent the actual text in order to try to drum up support for your view.

    As I said, it is dishonest. I do not care whether this is a mere blog, I expect you to be honest and not like some of the other posters here. Frankly, I am disappointed in you.

  12. OK, New Light, I will try to be patient here, but…

    KSR

    “The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative — a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

    When we apply the standards we have explained to the instant facts, claim 4 must be found obvious. We agree with and adopt the District Court’s recitation of the relevant prior art and its determination of the level of ordinary skill in the field. As did the District Court, we see little difference between the teachings of Asano and Smith and the adjustable electronic pedal disclosed in claim 4 of the Engelgau patent. A person having ordinary skill in the art could have combined Asano with a pedal position sensor in a fashion encompassed by claim 4, and would have seen the benefits of doing so. ”

    What part of “could have” “can” “unless” do you deny?

  13. And as I corrected you Ned,

    The HOLDING in KSR trumps the dicta you lean on.

    Are you being obstinate for a reason?

  14. A new light, I do not think KSR involved situation where the disparate arts involved different skills, so the Supreme Court did not have before it a case requiring the resolution of the ordinary skill of the art of a team. IIRC, the brake pedal art and the sensor placement art both involved automobiles and both involved mechanical engineering. Am I wrong?

    But if you think you that the Supreme Court did address this issue and it was necessary to the holding of the court, please cite chapter and verse.

  15. At least the PTO understands that an invention can involve more than one art. It still might lack invention within the meaning of the Supreme Court cases if the combination is suggested and the respective parts when combined are performing their known functions in predictable ways. But, in the words of KSR, if one actually has to factor in what would be within the skill of a PHOSITA, the combination may not be within the skill of either PHOSITA.

    The bridge to the future suggested by Dennis is to create a team PHOSITA, or a hypothetical super human, who may not exist in fact, but whom has skills in both disparate arts.

    But, as I said, the team approach seems to strongly run afoul of the KSR admonition that when combining disparate arts, the subject matter remains patentable if the one of ordinary skill in the primary art does not have the skill sufficient to make the combination.

  16. Ned,

    I have shown you that the holding in KSR advocates the team approach.

    If dicta is contrary to holding, I am sure that you know which surives. So the answer to your earlier question is No – the Supreme Court in KSR does not command that the invention of the recent board game case involving lasers to be patentable. The lower court followed the actual command of KSR.

    This may just be a crusade of yours to make people understand that dicta, even – or perhaps especially – that of the Supreme Court is a dangerous thing. You will get no argument from me on that. But in this particular case, the better position is clear, and anyone trying to argue the legal position of dicta will be defeated by the argument – quoting the same case – of the holding.

  17. Hardworking, not used to dealing in fundamentals are we?

    While you might believe I am arguing both sides of this issue, I am not. I think the Supreme Court in Hotchkiss v. Greewood and in virtually every case since has it right. I think the wheels came off with Section 103.

  18. Max, there is only one state of the prior art, but two subject matters:

    1) disk drive read channels; and
    2) high level mathematics, and more particularly mathematics pertaining to signal recovery from noise.

    There will not be a single person of ordinary skill in both as the read channel engineer would not understand high level mathematics, and the mathematician would not understand read channels.

    However, if one simply looks at what the art discloses and and the “team” approach to invention, I as a manager of disk drive development at company X, having read the article suggesting the use of the Viterbi algorithm for detecting signals in noisy environments, whould hire a PhD mathematician and put him to work with my read channel engineers to adapt the algorithm for the purpose.

    There would be no invention in doing this at all from an objective point of view. The combination is suggested and it makes little difference if pre-existing PHOSITAs could not make the combination. A team of PHOSITAs having skill in both of the relevant arts could.

    So, viewing obviousness as a functional analysis such as the combination of each element from their respective arts was performing their respective function in the combination in predictable ways, there is no invention (given the suggestion to combine.)

    But, if one starts bringing whether the combination was within the skill of one of ordinary skill in the art, the answer would be no unless the team approach suggested by Dennis is an acceptable approach.

    But then, we have the dicta in KSR that seems to flatly prohibity the team approach.

  19. Not following you Ned. You posit two versions of the state of the art. In one, I gather, there is a teaching of the Viterbi algorithm, as such. In the other, I gather, there is a teaching of the Viterbi algorithm together with a suggestion to use it for reading a disc. In the one art landscape, you say that the claimed invention is not rendered obvious but, in the other, the state of the art does render the claim obvious.

    I’m not inclined to argue with you on that.

  20. If one could climb into the mind of Ned Heller, what would one see in the battle between the phrases:

    “There is nothing new under the sun” and “Anything under the sun made by the hand of man” ?

    I might even start the fire of innovation by noting that simply “being known” is not enough to “know” to (much less how to) combine.

  21. Max, I’ve been think about this some more. If one removes the PHOSITA from the analysis and simply focuses on the state of the art, what it teaches, and whether it teaches, in one reference or several, the invention, it makes no difference whatsoever if the reference is cryptic to the PHOSITA.

    For example, assume the invention is an improved read channel in a disk drive that employs for the first time the Viterbi algorithm, which is described in a paper only a PhD mathematician can read. But lets assume a third paper that the PHOSITA can read that suggests using Viterbi decoding.

    Based on the above, the combination is obvious as all the elements are in the prior art and the suggestion to combine them known.

    But to the PHOSITA of ordinary skill in the read channel art, the invention could not be made for the simple fact that he could not understand the mathematics of the Viterbi paper.

  22. Stuart, only one PHOSITA in 40years?

    Help me here. Say the invention is a new suspension system for a disk drive head.

    In the industry, there are those who design suspension and those who design how to make the real apparatus. A design engineer would not know how to make the suspension. The manufacturing engineer would not know how to design the suspension. There are super engineers that can do both.

    Who, if anyone, is the one of ordinary skill in the art?

  23. Sword of KSR, but what do you make of the admonition in KSR that if the implementation by the one PHOSITA of the solution from the disparate art is beyond his skill, the invention remains patentable? The Supremes could have said that the PHOSITA should seek out one skilled in that disparate art to help make the combination, but they did not.

  24. Good point.

    Then we have the problem of an invention that combines two unrelated arts, each having their own different PHOSITA. A PHOSITA having the combined skills of both arts does not exist. How do you find any PHOSITA to testify in such a case?

    How do you actually resolve this issue even in the abstract — assuming statutory command that the invention must be found obvious to the person of ordinary skill in the art to which “the” subject matter pertains.

    In the recent board game case involving lasers,the PHOSITA was defined to be a mechanical engineer with optics experience. Do such engineers actually exist? The real invention in that case was made by a team composed of mechanical engineers and PhD, who I assume was the one skilled in optics.

    Circling back to KSR, the Supremes commanded (in dicta commenting upon dicta) that if the PHOSITA in the art did not have the skills to make the combination, the invention was patentable.

    Now, when, as in the board game case, the mechanical engineer would not know how to implement the optics portion of the invention, doesn’t KSR command that the invention be patentable?

  25. analagous no longer strictly means analagous

    Did it ever? What in hxll does “strictly analogous” mean anyway?

  26. And more:

    2164.05(b) Specification Must Be Enabling to Persons Skilled in the Art

    The relative skill of those in the art refers to the skill of those in the art in relation to the subject matter to which the claimed invention pertains at the time the application was filed. Where different arts are involved in the invention, the specification is enabling if it enables persons skilled in each art to carry out the aspect of the invention applicable to their specialty. In re Naquin, 398 F.2d 863, 866, 158 USPQ 317, 319 (CCPA 1968).
    When an invention, in its different aspects, involves distinct arts, the specification is enabling if it enables those skilled in each art, to carry out the aspect proper to their specialty. “If two distinct technologies are relevant to an invention, then the disclosure will be adequate if a person of ordinary skill in each of the two technologies could practice the invention from the disclosures.” Technicon Instruments Corp. v. Alpkem Corp., 664 F. Supp. 1558, 1578, 2 USPQ2d 1729, 1742 (D. Ore. 1986), aff’d in part, vacated in part, rev’d in part, 837 F. 2d 1097 (Fed. Cir. 1987) (unpublished
    opinion), appeal after remand, 866 F. 2d 417, 9 USPQ 2d 1540 (Fed. Cir. 1989). In Ex parte Zechnall, 194 USPQ 461 Bd. App. 1973), the Board stated “appellants’ disclosure must be held sufficient if it would enable a person skilled in the electronic computer art, in cooperation with a person skilled in the fuel injection art, to make and use appellants’ invention.” 194 USPQ at 461.

  27. Regarding the discussion about KSR, analagous no longer strictly means analagous:

    2141.01(a) Analogous and Nonanalogous Art [R-6]

    I.TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR ART

    The examiner must determine what is “analogous prior art” for the purpose of analyzing the obviousness of the subject matter at issue. **>“Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. ” KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1397 (2007). Thus a reference in a field different from that of applicant’s endeavor may be reasonably pertinent if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his or her invention as a whole.<

  28. Babble, on the same page here all the way.

    Regarding 103, I now believe that they were not trying to enact Hotckiss v. Greenwood per se with its functional analysis, but were trying to “improve” on it.

    I find it more than remarkable that very few others here have noted that the Supreme Court itself does not follow the statute, but follows its own functional analysis in deciding cases. It only give lip service to the statute as it must.

    But others, such as the PTO and some judges on the Federal Circuit actually try to follow the statute and dicta in Graham to its letter. When they do, they quickly get tangled in nonsense.

  29. ANL, in other post here, I have shown that the whole of the Courts discussion of skill in the art in Graham was dicta as the actually holding of the court, as it was in Hotchkiss v. Greenwood, had nothing whatsoever to do with deciding what the level of skill was of the PHOSITA. Both those cases deciding the cases by reviewing the prior art, which showed that everything was known, the combinations were known, every element was operating according to its predicted function, with no new or predicted result being obtain.

    This was the analysis of Hotchkiss and this was the analyis of the Court in Graham and this was the analysis that it actually endorsed — it described it as a functional analysis.

    In the end, if everything were known, predictable etc., the the court declared that it was within the skill of the ordinary artisan and not an invention within the meaning of the “constitution” or statutes, take your pick. But the level of skill itself played no real factor in the analysis, making its required resolution elsewhere in the case pure dicta, and in the final analysis, illogical for all the reasons I have previously stated in my previous posts.

    So we get to the dicta concerning whether the specific combination was beyond the skill of the PHOSITA. What does this mean? It comes out of nowhere, but it is required given it prior dicta in Graham about level of skill in the art being resolved.

    Now if we are going to slavishly follow the Graham dicta about level of skill, shouldn’t we also follow the KSR dicta explaining what that dicta meant?

    As always, dicta does not inform all that well as it is drawn on hyptheticals from the minds of the courts which we do not understand all that well. But I would suggest point out that this is the Supreme Court and its dicta is law.

  30. My apologies.

    I thought I was boldly going where no man had ever gone, but I was banging blindly the same bongo.

  31. My apologies.

    I thought I was boldly going where no man had ever gone, but I was blindly banging the same bongo.

  32. A new light, now you folks begin to see why I so detest dicta, Olympian pronouncemeents from courts like the Federal Circuit and the Supreme Court far beyond the facts of the case, and do-gooders who seek to “fix” statutes by changing their words ever so slightly to be “consistent” (I refer to the “fix” of 102(g)) and to any and all that would rip 200 years of law up by its roots and replace it with statutes using terms and concepts that no one knows for sure what they mean.

  33. Ned,

    I may be misunderstanding your argument, but I am confused by your take on KSR (but to your credit, the point that you reference in KSR is itself confusing).

    Specifically, I am not sure about your statement: “ an invention remains patentable regardless of other factors when the combination from a different field would be beyond the skill of a PHOSITA in the primary field.” The holding in KSR did not make the distinction between “primary field” and “other field” for combination inventions – at least in so far as you appear to be using that distinction here.

    I agree with the posts herein that suggest that for multiple field inventions, the legal fiction of PHOSITA is a multi-person fiction. In fact, this view accords with holding of KSR. The Justices had no issue whatsoever with having a single legal fiction capable in multiple art fields, even disparate art fields, if market forces or other factors would lead there (the whole pieces of a jigsaw puzzle mentality) – As long as the benefit of doing so is apparent.

    Directly on point, if you remember, was KSR’s argument of “mounting an available sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art and that the benefit of doing so would be obvious.” This on point argument was fully accepted by the Court, resulting in the Court agreeing: “Its arguments, and the record, demonstrate that the Engelgau patent’s claim 4 is obvious.” KSR clearly used two different art fields in the argument of obviousness for a single legal fiction of PHOSITA.

    I think the critical word to take note of is “in the relevant art.”

    The Court only secondarily stated “Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” I think that you are trying to apply this secondary dicta over the primary reasoning, although I will admit that the Court’s treatment here of “skill” in light of “knowledge” is more than a bit puzzling in the context of obviousness. I do tend to agree with you that the important characteristic for obviousness is “knowledge.” If something is known, then granting a patent removes that known something from the stores of every man, and should not be allowed. Since KSR was indeed decided as it was – with PHOSITA of different “relevant arts” combined to find obvious the combined invention, this dicta of “actual application beyond the person’s skill” is not congruent with the Holding of KSR. In essence then, not only is it dicta, it is nonsensical dicta. Perhaps erasing it is the most prudent path.

  34. Babble Boy,

    So close yet still a miss:

    The issue is almost always what’s relevant art and what’s non-analogous — and there you can have issues of multiple arts being involved to make one invention. In that context the number of persons is relevant since you would. presumably, be aiming the analysis to a different PHOSITA for each distinct art.

    This was captured upthread – May 17, 2011 at 06:24 PM

    My understanding is that the “Person” adapts to that particular skill under consideration, so that, for inventions that involve more than one “art unit,” the “Person” already is a team, an Amalgam of legal fictions.

    link to en.wikipedia.org

    The concept is already reality.

    You will be assimilated.

  35. Seems to me that Dennis mis-stated the issue and led you all on an 85-comment wild goose chase.

    The question is not about problems with 103 reciting “person” in the singular, it’s about reciting “art” in the singular.

    These PHOSITA issues never resolve on the skill level of one or more people — the “person” is an imaginary average, so who cares how many are involved?

    The issue is almost always what’s relevant art and what’s non-analogous — and there you can have issues of multiple arts being involved to make one invention. In that context the number of persons is relevant since you would. presumably, be aiming the analysis to a different PHOSITA for each distinct art. But until some judge rules that there is more than one art at issue, the number of persons is irrelevant.

    The other red-herring 103 issue is “skill.” Skill has next to nothing to do with anything. Knowledge and skill are not the same and they are often not related. Without Bell, Watson was just a gerbil in a cage. That’s why Watson is not on the patent. When technology was at the level of porcelain or wooden door knobs and plow shanks, those with skill were also those with knowledge. Times have changed. Today those with the knowledge required to invent don’t have the skills to tie their shoes, and as one with a PhD in the medical sciences, I am speaking from personal experience. (I wear loafers.) PhD’s, who have the knowledge needed to invent, all have technicians who have the skills required to actually implement the invention, but the technicians are not the inventors. They may be the PHOSITAs but not the inventors.

    This thread is just more ammo for my repeated point that the Patent Act of 1952 was written by a bunch of monkeys snorting baked banana peels. Section 103 is an absolute disaster to anyone who reads it and tries to understand it. A disaster, that is, for everyone but the lawyers who get paid to litigate it and the federal judges who get paid to construe it.

  36. Why are you calling it “Greenwood?” I’ve always heard it referred to as “Hotchkiss.”

  37. Does the level of skill really matter?

    Assume I prove the level of skill is a engineer with a BS, knowing perhaps one foreign language, typically European.

    The infringer introduces a text written in an obscure language that provides the suggestion, missing from English or European prior art, to make the substitution according to the claim.

    I prove the that the engineer would not understand that text, nor look to it for the suggestion, or have any reason to translate it.

    Who wins and why?

  38. I think Dennis seeking ways to overcome that admonition from KSR that an invention remains patentable regardless of other factors when the combination from a different field would be beyond the skill of a PHOSITA in the primary field. Professor Crouch’s answer: simply add to the “team” a PHOSITA from that other field. He uses actually data of multiple inventors to suggest that that is actually happening in reality.

    What Dennis suggestion amounts to is to simply to “erase” this portion of KSR as if it did not exist. Taking this approach, inventions which combine aspects from widely divergent fields would still be with the skill of the “team.”

    Regardless of its logical merit, one might ask how Dennis’s team approach squares with KSR.

  39. See the above post. I think Dennis seeking ways to overcome that admonition from KSR that an invention remains patentable regardless of other factors when the combination from a different field would be beyond the skill of a PHOSITA in the primary field. Professor Crouch’s answer: simply add to the “team” a PHOSITA from that other field. He uses actually data of multiple inventors to suggest that that is actually happening in reality.

    What Dennis suggestion amounts to is to simply to “erase” this portion of KSR as if it did not exist. Taking this approach, inventions which combine aspects from widely divergent fields would still be with the skill of the “team.”

    Regardless of its logical merit, one might ask how Dennis’s team approach squares with KSR.

  40. The question from KSR is whether the combination from a different field would be beyond the skill of a PHOSITA. Professor Crouch’s answer: simply add to the “team” a PHOSITA from that field. He uses actually data of multiple inventors to suggest that that is actually happening in reality.

    What Dennis suggestion amounts to is to simply to “erase” this portion of KSR as if it did not exist.

  41. Thanks Stuart. I have always asserted that if there are any problems with the US patent system, it is for the judges to alleviate them, and not aggravate them. But I did not expect an American to write about it as openly as you write above.

  42. Let me ask a question about the basic premise here.

    The data shows that nowadays patents list multiple inventors. Assuming that the inventorship is correct, it means that each of the inventors contributed to at least one claim. However, the invention claimed in the main independent claim may still have been a product of the “solo inventor” model. Therefore, we may not want to move away from the “solo inventor” model based on the this data.

  43. Malcolm, well just a little bit more than that.  The elements were also combined in the same way so that the only think different was the substition of one known substance for another, when both were known to be useful for the purpose.

     

    The art did in fact teach everything.

  44. Max (at 8.15 am today): You are correct that a District Court Judge as a practical matter ends up listening to dueling experts telling him or a jury what would have been obvious. The experts, as we all know, posture to say that their opinion is what the mythical PHOSITA would have thought.

    Problem–just a minor one–is that 103 doesn’t permit experts guessing what a party not in court would think.

    So again, let’s ditch the PHOSITA myth and explicitly refer obviousness to experts.

    And sure, it would be nifty to have a special Patent Court as Germany has (among others) staffed by scientifically trained judges. But, hey, we don’t and instead let Social Studies majors on the CAFC conduct de novo obviousness reviews often based on their opinions.

    The CAFC doesn’t understand it’s an appellate court. The patent bar and congress doesn’t care if the statute is screwed up.

    It’s just crazy. It’s directly in conflict with the historic rules of evidence in our courts about who can testify about what in trials as established by statute. It’s led to an almost complete de-stabilization of capital investment in R&D: who can rely on this system?

    Ironically,pity our friends in Asia and the Indian sub-continent who have become ascendant as innovators. The capital spent to develop their inventions can’t be protected in the USA.

  45. I’m not interested in petty fights

    It is only petty when the sword cuts you – but feel free to tell me what I need to read and how I need to read it.

    Here’s a better idea: get a clue about what you are saying.

    It will save us from the petty fights a whole lot better.

  46. Hotchkiss v. Greenwood there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor

    Sounds like they thought the invention was an insignificant improvement over the prior art, unworthy of patent protection.

    The court satisfied itself in both cases that the art taught the invention.

    No, the court satisfied itself that all of the elements were known in the prior art, and the act of combining them was something that was not inventive, i.e., not worthy of patent protection, i.e., insignificant, trivial, crxxpy, etc.

  47. I cannot get over the fact that in both Greenwood and Deere the Supreme Court analyzed the prior art, found it to teach the claimed invention, and then simply stated, in conclusion in both cases, that the subject matter was within the skill of the artisan, Greenwood, or was obvious, Deere.

    “To us, the limited claims of the Scoggin patent are clearly evident from the prior art as it stood at the time of the invention.

    We conclude that the claims in issue in the Scoggin patent must fall as not meeting the test of § 103, since the differences between them and the pertinent prior art would have been obvious to a person reasonably skilled in that art.”

    Graham v. John Deere,
    link to supreme.justia.com

    “But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

    “It seemed to be supposed, on the argument, that this mode of fastening the shank to the clay knob produced a new and peculiar effect upon the article, beyond that produced when applied to the metallic knob, inasmuch as the fused metal by which the shank was fastened to the knob prevented the shank
    from acting immediately upon the knob, it being enclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack or be broken, but was made firm and strong, and more durable.

    This is doubtless true. But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of the wood knob, or one of bone or ivory, or of other materials that might be mentioned.

    “Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury, for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.”

    Hotchkiss v. Greenwood link to supreme.justia.com

    The actual holdings of both cases had nothing at all to do with a determination of what the level of skill in the art was or how that bore on the ultimate legal question of validity. The court satisfied itself in both cases that the art taught the invention. The rest is dicta.

    The conclusion that the invention is within the skill of the art or obvious is a conclusion that flows from the evidence that the art actually teaches the invention.

    It there Supreme Court case to the contrary, a case that critically depends upon the level of skill in the art as opposed to the teaching of the art? I think not.

  48. That’s fine.

    I am only interested in furthering my understanding of patent law issues. I’m not interested in petty fights.

    My comment about “reading things in context” was not supposed to be an insult; it was simply to point out that what I said was prompted by D’s post. My latest post about the term “broader scope” explains this further. If you have something constructive to say about what you think D meant by the term “broader scope” in his post, please do respond.

  49. Thank you, Dennis. I don’t mean to self-promote but I wrote an article on skill level determination that was published not too long ago by JPTOS (i.e., “Determination of Level of Ordinary Skill in the Art: A Post-KSR Prosecution Tool,” JPTOS, Volume 92 Number 3, Summer 2010) which I believe you and other patent practitioners might find to be of interest. The determination of skill is supposed to provide objectivity in the obviousness analysis but Examiners rarely perform the analysis, Applicants hardly ever challenge the Examiner on the failure to perform the analysis and the BPAI finds ways to (Ex parte Jud (Jan. 2010), Ex parte Duffy (Feb. 2010)) salvage the Examiner’s failure to explicitly determine the level of skill by claiming that the Examiner implicitly determined the level of skill. The most recent example I can think of where the Federal Circuit addressed skill level determination during prosecution was In re Vaidyanathan (May 2010).

  50. Funny, I thought the context was what I actually quoted you as saying: “(1) It is not obvious for one person to combine references A & B because they are in disparate arts and we would not expect one person to know both arts.

    Are you now saying that you did not say this, did not mean to say this, or some other weasel effect?

    If I had wanted to respond to what D had posted – I would have. Rather, I responded to what you posted.

    You seem to have trouble with this concept of “context” as well.

  51. Can someone explain what D meant by “broader scope” in the following sentence?

    In the obviousness analysis, this shift could be reflected in a broader scope of potential prior art but a more rigorous analysis of whether the ordinary team would make leaps of analysis necessary to combine disparate prior art.

    I understood this to mean broadening the scope to include prior art that would have been deemed non-analogous if we had restricted ourselves to a single person.

  52. Yes, I have heard of KSR. You need to read what I said in the context of D’s post. Here’s the context:

    As compared to a solo worker, teams often have an overall broader depth of knowledge, but are often plagued by communication difficulties. In the obviousness analysis, this shift could be reflected in a broader scope of potential prior art but a more rigorous analysis of whether the ordinary team would make leaps of analysis necessary to combine disparate prior art.

  53. Hardworking,

    Does the level of skill in the art have anything to do with the amount of knowledge of the art the person has? Assume two people having BS Mech. Eng. Do these two people have the same skills in automobile technology without any prior experience in that technology? Why of course, the answer is yes. Now add 3 years in the field to one and 10 years in the field to the other. Are their skill different? Yes they are. How are they different?

    Obviously, the difference is in the amount of knowledge the PHOSITA has.

    But, when we by law also assumes that a PHOSITA has full knowledge of all technology, does it really make any difference whether one engineer has 3 years experience and the other 10. Both are assumed to have all the knowledge that anyone skilled in the art has.

    Now the answer would be entirely different if we excluded full knowledge of all the art from considration, and simply asked two engineers of two different levels of experience to look at a patent and answer whether the claimed invention was obvious. The answer would depend critically on the level of skill, the level of knowledge.

    But if one includes all the knowledge as a baseline, it is irrelevant what the average level of skill in the art is because the answer to the question of whether the prior art teaches the invention devolves into an objective inquiry, not a matter of opinion that varies with the skill of the observer.

  54. Malcolm, if the prior art had that teaching, it taught resizing. All sizes and all sizing are taught. A particular size or sizing must have some unexpected property not taught by the art.

    But, what does any of this have to do with what level of skill a person of ordinary skill in the art has? None. Nada. Nil. The only question on the table is what the art teaches and what the patent discloses and claims. These are all objectively assessible by evidence, not conjecture or opinion.

  55. (1) It is not obvious for one person to combine references A & B because they are in disparate arts and we would not expect one person to know both arts.

    Have you heard of a decision called KSR?

    Nonanalgous art units are fully within the grasp of PHOSITA if “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.

  56. Prof. Crouch makes an excellent point, as to the implications of multiple inventors. Further complicating the analysis is the SCOTUS admonition in KSR to use as the benchmark for obviousness someone with a bachelors degree in engineering in the relevant area. Any thoughts as to how this standard comes into play in the context of multiple inventors?

    Marty Robins
    mrobins@mr-laws.com

  57. “ultimately I expect that members of the patent bar will find that the POSITA has routinely been incorrectly defined as someone with just a couple of years of industry experience after obtaining a Ph.D. (and/or a junior member of a “team”).”

    Actually, it has been held that the level of education and/or work experience does not define the level of skill but rather what one of skill would/should have known.

  58. It is widely accepted that plays attributed to Shakespeare were actually written by a group under the leadership of Sir Francis Bacon. Clearly, no one person could have created such inventiveness whereas it was a piece of cake for a group to to do this.

    Widely accepted? You might want to check your citations on that.

    Looking at this another way, a monkey hitting keys at random on a typewriter keyboard for an infinite amount of time will almost surely type a given text, such as the complete works of William Shakespeare (Infinite monkey theorem).

    Great. But what’s the chance that this happens in say, 4 billion years? I bet it’s pretty small. So how does this help us?

  59. The real and only question is what does the prior art actually teach? Does it teach the combination? Does it not?

    That sounds more like anticipation than obviousness.

    If [the prior art] does not teach the combination, why is it even permissible for anyone to suggest that the combination is obvious. That is pure hindsight.

    I’m assuming by first use of the phrase “the combination,” you mean “all the mean elements in the claim” and by the second use you mean “the combination of all the elements as claimed.”

    It’s only “pure hindsight” to do that if you take an extremely strict view of the prior art, where each element must be taught in the prior art literally as it appears in the claim. KSR nixed that.

    Take the Odom patent. Some folks on the other thread alleged that an element in the claims was missing. But what was really missing was a simple and quite obvious statement from the court: the prior art as of Odom’s filing date included extensive teaching to the effect that any virtual object and/or its subparts could be “resized” or reconfigured using any of a trillion different but equally effective motions of a virtual “hand” capable of “grabbing” and moving a part of the object. When all your “invention” purports to do is set forth in general terms one such way of accomplishing this task, that “invention” is obvious per se UNLESS you can show some earth-shattering unexpected results. In the absence of such a showing, the term “insignificant” is just a kind way of saying “worthless bxllcrxp.” And by worthless, I don’t mean that nobody would pay you to write the code or make it avaialable for downloading. I mean that you don’t get a 20 year monopoly for your lame “idea.”

  60. The question is what is the next card to be dealt. If one knows all the other cards, the answer is obvious. If one knows 5 out the 52 cards, the answer is less obvious.

    The skill level of a PHOSITA is equivalent to how many of the cards already dealt are known. The greater the number, the more obvious the next card.

    However, if the we look at the issue objectively and simply ask what are the cards already dealt? Does that tell us with any reliability what the next card is? That is an objective test. It looks at the state of the art and what it teaches.

  61. No doubt we should reject such opinions of super experts on the ultimate issue. The real and only question is what does the prior art actually teach? Does it teach the combination? Does it not? If it does not teach the combination, why is it even permissible for anyone to suggest that the combination is obvious. That is pure hindsight.

  62. Max, what is important here, what the PHOSITA derives? or what the article actually teaches?

    In court, an expert can explain the article. But can the expert explain with any degree of probity what the PHOSITA would derive from the article? Is that even important?

  63. Hardworking, why do we even bother to discuss the law here if everyone always agrees with everyone else?

    The point of this thread is a thinkpiece on PHOSITA. I offer some thoughts and observations. Your missions, it seems, is to enforce the PC line of thought, resisting any who challenge the orthodoxy.

    Am I right?

  64. I agree.

    In other words, we are arguing that:

    (1) It is not obvious for one person to combine references A & B because they are in disparate arts and we would not expect one person to know both arts.

    (2) It is obvious for a person/corporation/fate to ask an expert on A to collaborate with an expert on B with the specific purpose of combining A with B.

    Doesn’t make sense to me…

    Note that specificity is important. Randomly asking experts in disparate fields to collaborate and come up with something is similar to the “obvious to try” argument.

  65. patents shouldn’t be handed out to just anyone, only the hardworking people

    I wish someone would invent a machine that mails me a message automatically after a new Most Popular Mouthwash for Dogs is determined by poll. Oh, and the machine needs to be able to change the frequency and timing of the message per my inputs.

  66. This is an interesting comment. In other areas of the Patent Act, “a person” has already been interpreted to encompass non-human legal entities such as corporations. For example, the statute requires that “a person” be named as the one requesting reexamination. 35 U.S.C. §§ 100 and 302. However, the requester is often a corporation.

  67. It is widely accepted that plays attributed to Shakespeare were actually written by a group under the leadership of Sir Francis Bacon. Clearly, no one person could have created such inventiveness whereas it was a piece of cake for a group to to do this.

    In the same way, even where an invention as a whole would not have been obvious to a person having ordinary skill in the art, it very likely would have been obvious to a hypothetical collective of people that come together to have an ordinary skill in the art.

    Looking at this another way, a monkey hitting keys at random on a typewriter keyboard for an infinite amount of time will almost surely type a given text, such as the complete works of William Shakespeare (Infinite monkey theorem).

    As you hypothetically add inventors to the hypothetical inventing collective, you will reach a hypothetically point to where the invention as a whole would in fact have been obvious to that group (Infinite inevntor theorem).

    Add that to KSRs removal of a motivation to combine requirement, removal of document evidence existing at the time of evidence, and ability to use info from mostly any art area, and I think we have ourselves a winner of an idea!

  68. There is a bigger white elephant in the room.

    No such real person could ever take the place of PHOSITA because PHOSITA knows every reference and real people are not quite as encompassing in their reach of knowledge. Even experts do not know as much as “those of ordinary skill.”

  69. Some might say that is simply “engineering,” …[and not patentable]

    Do you mean, like the Supreme Court Justices? Or perhaps you mean like Ned Heller and Malcolm Mooney?

    After all, patents shouldn’t be handed out to just anyone, only the hardworking people.

  70. Hodges Judging obviousness as if by a team of disparate experts might give short shrift to the idea to assemble the inventor team. Putting together polymer expert and plant scientist to produce a new composition for growing plants might seem obvious if the examiner/court assumed the POSHITA was both or an combination of these two, but putting them together in the first place would not have been obvious. Seems to inject hindsight to me.

    “A method of assembling a team of experts, comprising …”

  71. the claims must be limited to that invention and not simply cover the known objective.

    Isn’t that what I just asked? Your method of answering is not clear.

  72. Ned,

    That’s an odd way of saying “You are right, I was wrong.”

    You remind me of the kind of folks I knew in law school who could never admit that they were off-kilter on anything. You strike me as wanting to know why Ceaser didn’t cross the Amazon. Off-kilter and pointless.

  73. Until recently, the English Patents Court had a reputation for finding (on the evidence, mind) everything obvious. Yet, they invariably do it with just one reference (considered by the PHOSITA already in possession of the common general knowledge possessed by that person). So Malcolm Mooney’s comment about what expert witnesses should opine: “whether a person of ordinary skill would have been motivated to combine the teaching of two references” is not indispensible to forensic identifications of what was (or was not) obvious.

  74. The point of the “person of ordinary skill” limitation is, one hand, to prevent defendants from putting ten Nobel laureates on the stand each of whom testifies that, in light of the prior art, the invention was obvious; and on the other hand, to prevent plaintiffs from putting twenty car washers on the stand to testify that in a million years he never would have been able to figure out how to position that laser.

    There’s really not much more to it that.

  75. Someone way upthread wrote: Contrary to the plain wording of the statute, courts routinely permit experts to opine whether the patent in suit was obvious.

    Litigants need to be on their toes to keep from experts from presenting legal conclusions. At the same time, I think it is appropriate for an expert to opine as to whether a person of ordinary skill would have found a particular result to be unexpected, or whether a person of ordinary skill would have been motivated to combine the teaching of two references.

    I agree with a few commenters upthread with respect to the “issue” raised by Dennis. It seems silly to me. I’d guess that in 99% of the cases where there are (3 + X) “inventors” listed on a patent, X of those individuals are not inventors.

  76. Ned, I was thinking that what you derive from a cryptic publication depends on how much skill you have, within the high level esoteric field in question. We know the PHOSITA has access to all the documents, but what he derives from them is not yet fixed, is it?

  77. Dear Dennis,

    Regarding:

    “A claimed invention is unpatentable if, at the time the invention was made, the invention as a whole would have been obvious ‘to a person having ordinary skill in the art to which said subject matter pertains.’ 35 U.S.C. § 103(a) (emphasis added). When applying this subsection, courts have generally followed the statutory language and sought to identify knowledge of a hypothetical individual person with ordinary skill in the relevant area of technology.”

    Please recall that SCOTUS recently declared that corporations are persons for the purposes of free speech, such that their ability to pour on the campaign contributions cannot be limited. Who’s to say that such business entities are not “persons” for 103(a) purposes?

    So how about this:

    A claimed invention is unpatentable if, at the time the invention was made, the invention as a whole would have been obvious to a corporation having ordinary skill in the art to which said subject matter pertains.

    ^^^FIXT?^^^

  78. But perhaps they will agree with the party attacking validity, that the patent fails to enable the claimed invention for the reader of ordinary skill?

  79. What does level of the skill in the art actually mean and why is it important?

    One assumes in the obviousness analysis that the PHOSITA has all the art before him. All of it, not just the art he knows. That art either discloses the invention or it does not. It either teaches the combination or it does not. Why is the level of skill of the observer even important to whether the art teaches the combination, or whether it does not?

    The skill level of a PHOSITA is determined by how much of the prior art he actually knows. What difference to the obviousness analyis does it actually make if this hypothectical person knows X or Y about the prior art, if all the art is deemed by law available for his or her reconstruction of the invention?

    The level of skill is simply a shortcut. If one knows all the art, one does not have to research the rest. If one knows little, one has to research the entire topic.

    But if the entire topic is deemed by law to be known to the observer, and not just the art known to the PHOSITA, why is what he actually knows even important?

  80. Consider what the Europeans call “Problem Inventions”. these are the ones where we can show that nobody realised that a “problem” existed, where the act of creativity, the non-obvious step, is perceiving the problem and where, after that, the implementation is banal.

    How about the “problem” that cowhides are damaged by a red-hot brand on the rump.

    At least in Europe, red hot irons have been replaced by brands kept in a vessel of very cold fluid. Freeze branding bleaches the hide but leaves the underlying leather undamaged. How much inventivity went into the details of implementation. Is there a patentable invention. When was the inventive act?

  81. Not exactly, no. But the existence of a transporter in fiction does not make how to make it obvious how to make it.

    Circling back to the game case, the existence of a computer game using lasers did not make it obvious per se how to build a real, three dimensional, mechanical version.

    The existence of a protein does not make the location of its corresponding gene in the genomoe obvious, or does it?

    But if the invention is in the way the game was built or in the location of the gene, the claims must be limited to that invention and not simply cover the known objective.

  82. Interesting. So if I write my descriptions so that a 12-year-old (or a Federal judge) can understand them, my invention is more likely to be non-obvious, because the requisite level of skill is low?

    Hmm… My real life experience suggests that the opposite is true. If there are only a few hundred people in the world that truly understand the math my inventor is throwing around in the description, how many judges (or juries) are confident enough to tell me that the modification my inventor made to a signal processing algorithm is trivial, even if it was?

  83. Genius, thanks. I suspect you are one of the kind of folks I knew in law school who only want to know the black letter law, and did not want to hear any of the debate that occurred when the law was crafted over time, in case after case. You strike me to be more like the students in history class who only wanted to know the date Ceaser crossed the Rubicon, not why.

    In the end, I suspect you might be completely right that the Supremes were entirely faithful to Greenwood in Graham v. John Deere. But are you sure?

  84. Exactly. Anyone can sit around and dream of cold fusion, or Star Trek transporters. And simply dreaming of those results does not add anything to the collective body of knowledge – any more than say, dreaming of the things that could be accomplished if magic were real.

    It seems to me that the stuff of “invention” is discovering the details of how to actually do the things dreamed of, given the known body of science at the time. Some might say that is simply “engineering,” but if it adds to the collective body of knowledge, then why shouldn’t it be patentable?

  85. Suppose you want to establish for the fact-finder what is the ordinary level of skill in, say, tennis playing. Do you ask a tennis player, a top manager of a national Tennis Association, or a professor of sport science? Up to you. You should select whatever witness will carry most weight with the fact-finder, stand up best to cross-examination and provide the most cogent answers. It’s your evidence, so choose the “best” witness you can find.

  86. I would say we try to protect based not so much on the time it takes, nor whether the individual has extensive credentials, but rather the amount and quality of investment required.

    A novice in any field can make a substantial investment that deserves protection. It may not necessarily take a lot of time.

    However, we see software developers are able make minimal investment of both time and equipment, yet obtain broad patents, without even even the most remote reduction to practice. If there is minimal teaching in that disclosure, then there should be minimal protection. Yet, the software industry innovates so fast, and with such occasional high profits, that basically the environment is created for the equivalent of “day traders”. In other words, speculators can be highly rewarded — them or their hired guns that is.

  87. I think that having an actual person of ordinary skill in a field testify as to what PHOSITA would have found obvious would be impractical for at least two reasons: (1) There would be a strong tendency for the actual person of ordinary skill would tend to confuse PHOSITA, a hypothetical person, with himself, just because he happens to have “ordinary skill,” and to inject his own personal biases rather approach the question of obviousness objectively, and, perhaps more importantly, (2) as vast as the differences of opinion among experts can be, despite their being a relatively smaller group of people with a more uniform level of skill and knowledge, the opinions of ordinary practitioners of an art, typically a much larger group with widely varying gaps in skill level and knowledge, would be all over the map. You could survey a large number of actual ordinary practitioners and try to synthesize their responses (or just have them vote on obviousness!?), or you could just talk to one person, an expert having advanced skill and broad knowledge, who probably has a better idea of what PHOSITA’s general level of skill is than any one actual person of ordinary skill.

  88. Maurice, when fixing the level of the POSITA in, say, an optics invention, is it of any relevance that the specification that supports the claim under attack was, in one case, written in such detail that any physics undergraduate could understand it while, in another case, the specification was so esoteric that only an optics professor could grasp its content? In short, does the writer of the specification set the level? Or is it the technical field of the invention that sets the level? You see, I think there might be a link between sufficiency of description and obviousness: if your description is high level, then so is your POSITA and, for her, more stuf is obvious.

  89. From a trial lawyer’s perspective, this is purely an evidentiary matter. Determination of a POSITA is a question of fact. Evidence that scientists in a given field ordinarily work in teams may be relevant to determining the POSITA, but a POSITA is not a “team” of scientists—that would be legally incorrect. As KSR settles into our jurisprudence, there will be more hotly contested battles on the issue of how to define the POSITA in given cases and, ultimately I expect that members of the patent bar will find that the POSITA has routinely been incorrectly defined as someone with just a couple of years of industry experience after obtaining a Ph.D. (and/or a junior member of a “team”). When the issue is contested by submission of evidence, chances are that a POSITA will be a very senior scientist or laboratory head–the scientific equivalent to senior partner in a law firm. Thus, while evidence that scientists work in teams may be admissible, it hardly will be dispositive.

  90. Are you stoned? If it takes a team, its NOT OBVIOUS.

    Definition of OBVIOUS
    1
    archaic : being in the way or in front
    2
    : easily discovered, seen, or understood

  91. but putting them together in the first place would not have been obvious

    I am quite certain that assembling a team of disparate experts together is quite old. At least as old as mankind.

  92. Thanks Stuart. English patent judges are bound by much the same statutory language. But they come from the top tier of specialist patent advocate litigators, having done nothing else for 20 years than live as a hired gun in IPR cases, as often appearing for a generics maker as for an innovative pharma patent owner, for a local or for an alien. With that history, they have no truck with the sort of expert testimony you describe.

    But without a science or engineering degree, and without 20 years of litigating patents already, what else can a District Court judge do, in practice, than listen to the experts?

  93. Thank you, Max. However interesting, the statutory framework in place in the UK ( or any foreign country) cannot override the plain language of 103.

    Obviously (no pun intended) it’s Impossible to find a PHOSITA in most cases. (In 40 years I’ve been able to do that just once. ) Consequently, patent lawyers and the CAFC long ago tacitly agreed to ignore the statute by having dueling experts testify as to obviousness.

    Specifically, their testimony is not limited to educating the Fact-Finder about the state of the art when the invention was made– which is fine– but they are then permitted to opine what a PHOSITA would have thought about that.

    I’ ve been in cases where experts have been permitted to opine what a PHOSITA would have thought at a time when the expert was not born. And probably the most absurd was the Professor in the Morgan case who happily said Morgan’s patent was obvious even when confronted with a technical article he wrote –ante litem– saying he had no clue how the product was
    made.

    As a practical matter, 103 should be changed: ditch the PHOSITA and expressly leave obviousness to experts.

    But even that change won’t accomplish anything as long as AFC judges insist they have the right to substitute their own opinion as to obviousness.

    I read Crouch’s stuff occasionay as well as the comments. It amazes me how these fundamentals are ignored and a very bright bunch of patent lawyers argue whether a ” fastener” in claim 38 includes a screw– and then debate whether the CAFC was correct in deciding that the claim was limited to a #10 nail!

  94. Anyone read Robert Plotkin’s book “The Genie in the Machine” about automated inventing? Before we know it we’ll be asking ourselves if an invention was obvious to some algorithm of ordinary capability.

  95. Can you claim the “object itself” if it was known then?

    Or must you actually claim that which you invented – the method of achieving this known object?

  96. The courts often give that individual the broader thought proces of the team, so I think this argument is more semantics that real.

  97. Ned,

    You must feel torn about the KSR decision then.

    That decision would indicate the opposite of your belief stated here: If the level of skill in the art is a team of highly skilled biotech workers, and if the level of the skill in the art does require a lot of work, then the level of skill in that art is simply higher than the level of skill in more “pedestrian” arts. Things will be more obvious in such areas. Are you saying that this is not true?

    Or are you operating under the mistaken notion that the level of skill in an art (in any art) must be the same for all arts?

    Listening to Malcolm Mooney cry about the “ease” of software is your first mistake. Such crying has absolutely nothing to do with the law or with understanding different skill levels for different arts.

    He is not right. You, agreeing with him, makes you also not right. This notion of “more deserving” is seriously misplaced in so far as it is the art field that determines what an “ordinary craftsman” is. I am typically amazed at what you come up with when you read into what the court “suggests.” You seem to have an uncanny ability to misunderstand the relative nature of various art units and actually apply the law.

    Time and again I read your comments and the coments of others that point out that you seem to dwell in this mythical land where the law as you understand it is the law that you wish were reality. You seem to have a hard time distinguishing between the two.

  98. English patent trials, Stuart, typically last a week of which more than 50% of the court time is taken up with the x-exam of the opposed technical experts. Typically these are eminent. Everybody knows they are not PHOSITA’s.

    But that’s OK, for the role of the expert is to educate the court. The judge needs to know what was the common general knowledge of the notional skilled person, on the relevant date; what was the level of specialist knowledge already in the brain of the one who was reading the prior publications that are the validity attack. It matters, doesn’t it, how much teaching the PHOSITA would have derived from each specialist publication that is brought in evidence?

    In the real world today, how else shall the finder of fact acquire this necessary education?

    There are not many patent trials in England each year. Only the biggest and most valuable get that far, only when both sides think they can win (perhaps because of the “Loser Pays” rule). Of those that get there though, less than half go to appeal and, of those that get there, very few indeed are reversed. I think I know why.

  99. Judging obviousness as if by a team of disparate experts might give short shrift to the idea to assemble the inventor team. Putting together polymer expert and plant scientist to produce a new composition for growing plants might seem obvious if the examiner/court assumed the POSHITA was both or an combination of these two, but putting them together in the first place would not have been obvious. Seems to inject hindsight to me.

  100. Nice little pointless academic discussion. Ignores, as usual, one minor detail: Contrary to the plain wording of the statute, courts routinely permit experts to opine whether the patent in suit was obvious.

    For years, I’ve waited for a trial judge to rule inadmissible testimony of any person who was not a PHOSITA. Indeed, when was the last time any of the dilettantes who blog here had a patent case, found a POSHITA and offered his/her opinion as evidence before a trial judge?

    Of course, even if that were to happen, the non-scientist judges of the CAFC would take it upon themselves to review the outcome de novo and determine obviousness as a “matter of law”. So much for the historic role of an “appellate” court.

    No wonder the patent system has become a bad joke.

  101. Perhaps another way of saying this is that the how to achieve the object was not known at the start of a project even if the object itself was known.

  102. listen, looking glass, I have been listening to Malcolm Mooney quite a bit on this topic. What I conistently get from him is that biotech requires a high skill level and a lot of work to achieve an objective. He contrasts that to some software inventions that he describes as the routine work of semi-skilled teenagers, at best.

    He is right, and his analysis squares with Greenwood. What I gleen from his observations is that the higher the skill level required to achieve a task, and the longer it actually takes, the more deserving of a patent the work is.

    In the gloss given the topic by the courts post Section 103 enactment – which was meant to enact Greenwood — we seemed to have achieved exactly the opposite analysis. Here the courts suggest that the higher the skill level of the art, the less likely it is that an invention will be non obvious.

    But is that really what the Supremes meant in Greenwood?

  103. If you actually read the Greenwood case, the Supreme Court was concerned that the routine work of the ordinary craftsman not be the subject of patents. But the work of an inventor or team over a substantial period of time to achieve a known objective that others could not achieve using routine skill over a short time, is a entirely separate matter. I don’t think the issue here is strictly whether the result is obvious, but whether the work is the routine effort of the ordinary craftsman or the whether it required a substantial effort over a substantial amount of time.

    but compare:

    35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
    (a)…Patentability shall not be negatived by the manner in which the invention was made.

    W

    T

    F

  104. We recently had the case of the board game involving lasers, mirrors mounted on pieces that could be rotated and moved, and a complex set of circumstances of piece placements that caused the laser beam to be reflected in various complex ways. The testimony was that a team of mechanical engineers and a PhD took up to a year to work out how to build the game physically to work. Yet it was declared obvious, IIRC, over a computer game that also used lasers to deflect off of imaginary surfaces.

    It struck me at the time that something was wrong with the result. But, given the team that actually worked on the invention, from mechanical engieers to a PhD physics, just how can there be a single PHOSITA, and just how does a prior computer game make obvious anything in a three dimensional mechanical world?

    When a team has a obvious starting point and a somewhat defined objective, and they, through trial and error, hard work, failed experiments and the like, find a way from the starting point to the finish, are we to reward the effort with a patent or simply declare it obvious because the starting point was known and/or the end result was obvious?

    If you actually read the Greenwood case, the Supreme Court was concerned that the routine work of the ordinary craftsman not be the subject of patents. But the work of an inventor or team over a substantial period of time to achieve a known objective that others could not achieve using routine skill over a short time, is a entirely separate matter. I don’t think the issue here is strictly whether the result is obvious, but whether the work is the routine effort of the ordinary craftsman or the whether it required a substantial effort over a substantial amount of time.

    Of course, discoveries should be patentable as well. But that does not diminish the kind of invention that resulted in the incandescent light bulb.

  105. The A Team was very skilled in their art, namely wearing disguises and pulling MacGyver-like modifications to the van.

  106. I pity the fool who ignores Dennis’ observation about communication difficulties in a team setting, and how that should impact the obviousness analysis.

  107. I’m not sure if I see this as being a big deal. PHOSITA is not really one of ordinary skill since he or she is assumed to know all of the art in the field (and analogous fields). So while a team has a broader knowledge base than one inventor, the hypothetical PHOSITA has the ultimate knowledge base–everything publicly disclosed in that field and analogous field ever.

  108. My understanding is that the “Person” adapts to that particular skill under consideration, so that, for inventions that involve more than one “art unit,” the “Person” already is a team, an Amalgam of legal fictions.

    link to en.wikipedia.org

    The concept is already reality.

  109. I think the conversation is premature as Examiners currently can’t be bothered to actually determine the level of ordinary skill in the art during prosecution. The PTO uses the Chore-Time case for the proposition that determining the level of skill can be done implicitly and an explicit determination isn’t necessary. It’s a misinterpretation of that case and several others the Federal Circuit has decided regarding the determination of skill. So, if there’s only one inventor, the Examiner is supposed to determine the level of skill of only a single PHOSITA but if there are joint inventors, it becomes a determination of skill level of a group of persons of ordinary skill? Does the skill level determination factor in how much each individual contributed to the effort? What if it was just one person who did most of the heavy lifting and a bunch of others took credit for also contributing?
    Don’t get me wrong, I think it’s good to have a discussion on the subject.

  110. Intriguing idea, Dennis. Graham says obviousness analysis is to be based on facts. There’s no warrant for a judge or examiner to avert his/her eyes from one particular class of facts, namely the effects of team-based R&D work.

  111. Europe came to terms, decades ago, with the concept of a team as PHOSITA. It has moved on from that. We are now at the point where the notional obviousness team might not always be the same as the notional enablement team.

    But, again, nice idea for a thread Dennis. Carry on, please.

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