An Expert of Ordinary Skill

by Dennis Crouch

Patent cases regularly involve expert testimony about the how a “person having ordinary skill in the art” (PHOSITA) might think.  PHOSITA is the objective ‘reasonable person’ that serves as a reference point for most patent doctrines.  Often, PHOSITA is particularly defined by some educational or experience level related to the particular area of technology.  The intuition here is that someone very little experience is likely to see an incremental invention as patentable; while someone with a very-high level of skill might see the same incremental advance as obvious. See
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . . while a higher level of skill favors the reverse.”).  Although this intuition generally makes sense, most agree that particulars are fairly irrelevant.

One difficulty with patents is that the inventions often bridge two or more major educational areas. A good example of this is Best Medical Int’l., Inc. v. Elekta Inc., — 4th — (Fed. Cir. Aug 26, 2022).  Best’s patents cover a method of optimizing a radiation beam for use in tumor targeting. US 7,015,490.  The invention requires understanding of how radiation treatment works and its impact on tumor growth. In addition, the invention requires a substantial amount of computer programming to implement the particular algorithms.

In the IPR, the patentee introduced testimony from Daniel Chase who has been designing and running radiation plans for decades.   One problem here, although Chase has been doing this work and has expertise in radiation therapy design and optimization, he is not a computer programmer.

The basic rule with experts testifying about PHOSITA appears to be that the experts need to personally be at or above PHOSITA level.

[W]here an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expert in that art.

Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008)

In Best Medical, the PTAB qualified Chase as an expert as to portions of the invention, but then highly discounted his testimony regarding obviousness of the computer programming aspects of the invention. On appeal, the Federal Circuit gave deference to the Board’s factual conclusion that PHOSITA would have computer programming experience and affirmed that conclusion.

= = =

Best Medical also includes a small but important mootness decision.  In the case, the patentee caught itself in the eye of the needle.  In particular, an issue became moot after the PTAB’s decision, but before it filed the notice of appeal.  On appeal here, the Federal Circuit found that the decision stands  cannot be appealed; and no Munsingwear vacatur.

We talked about the IPR above.  In addition, the petitioners had also challenged the same patent via ex parte reexamination.  In the reexam, Best Medical cancelled claim 1, but did so “without prejudice or disclaimer.” Claim 1 had also been challenged in the IPR and Best Medical asked the PTAB to also drop that claim — but the PTAB refused and instead issued its final written decision that Claim 1 was obvious.  Why?: The reexam was still pending and Best Medical had not filed a statutory disclaimer as to claim 1.  The Board explained that “Under SAS we still have to issue a ruling on that claim unless it’s actually disclaimed.”  On appeal, the Federal Circuit found no problem with the Board’s approach: “We cannot say that the Board erred in addressing claim 1’s patentability under these circumstances.”

Ok if the Board had power to hold claim 1 obvious, then the patentee should have a right to appeal that decision. Right?-Wrong.  The catch here is that the Reexam ended before the appeal here and Best Medical did not appeal claim 1. At that point, claim 1 was dead and gone and a moot point.

Why even appeal a claim that you cancelled? The patentee doesn’t want the claim back, but is concerned that the IPR decision regarding claim 1 could create some amount of res judicata that might later inhibit its ability to enforce similar claims.   An examiner in a separate case with a claim similar to claim 1 has apparently already stated that she is “essentially bound by the Board’s reasoning”   On appeal though the Federal Circuit found this reasoning insufficiently concrete to create standing.  In particular, the court apparently doubted the examiner’s reasoning.  “Indeed, we know of no cases that would apply collateral estoppel in these circumstances, nor has BMI cited any.”  The court also concluded that potential collateral consequences are generally insufficient on their own to confer standing to appeal.  Thus, the appeal on claim 1 is dismissed as moot.

To be clear, this still looks like a good outcome for the patentee because of the general approach to issue preclusion that “non-appealable issues and judgments are without preclusive effect.” SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373 (Fed. Cir. 2016).

The Federal Circuit’s decision here is a bit squirrelly for those of you who know about the Munsingwear line of cases.  US v. Munsingwear, Inc.,  340 U.S. 36 (1950), involved charges of violating WWII era price regulations.  The district court had dismissed the case on the merits.  Meanwhile, while the case was on appeal, the President cancelled and annulled the regulation.  This seemingly made the appeal moot–except for the potential collateral consequences.  In its decision, the Supreme Court vacated the judgment below with instructions to dismiss the case.

That procedure clears the path for future relitigation of the issues between the parties and eliminates a judgment, review of which was prevented through happenstance. When that procedure is followed, the rights of all parties are preserved; none is prejudiced by a decision which in the statutory scheme was only preliminary.

Munsingwear.  In Best Medical, the Federal Circuit distinguished Munsingwear based upon timing of the appeal.  The apparent difference: In Munsingwear the case became moot after the notice of appeal had been filed.  In Best Medical the case became moot before the notice of appeal.

We also hold that Munsingwear vacatur is inapplicable here because this appeal did not become moot during the pendency of the appeal. Rather, the “mooting” event— claim 1 being finally canceled—occurred before BMI filed its notice of appeal.

Slip Op.  This final bit appears potentially wrong to me.  The Federal Circuit does not cite any prior cases holding that Munsingwear does not apply to cases that become moot during that short window between a lower court’s final judgment and the filing of a notice of appeal.  But, I have not seek a case on-point yet.

16 thoughts on “An Expert of Ordinary Skill

  1. 9

    “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.”

    “To be sure, the person of ordinary skill in the art is a hypothetical construct [but] to testify as an expert, a witness must be qualified. And to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case, an expert must at a minimum possess ordinary skill in the art.

    Kyocera Senco Industrial Tools Inc. v. ITC, 22 F.4th 1369, 1376-77 (2022) (citations omitted).

  2. 8

    Determining what a PHOSITA knows is a bit like sifting through inconsistent lore in a video game franchise to figure out what is canon about a certain thing and what is mere speculation.
    The undeniable fact is that, for the most part, the first time you will ever get any specifics on skill level determination will come during a post-grant proceeding or litigation. Despite the fact that skill level is supposed to be determined during patent prosecution, it rarely ever is. Examiners just mouth the words but have no real understanding of the PHOSITA because they have never been taught how to explicitly determine the level of ordinary skill nor has the USPTO ever come up with an analytical process for doing so. Skill level determination at the USPTO is a sham.

    1. 8.1

      One is lucky if they EVEN ‘just mouth the words.’

      But here’s a “secret tip”

      Lacking that, the action is incomplete as to all matters, and the Office has handed you a juicy “second bite” free of charge.

      1. 8.1.1

        I’ve gotten many a second bite at the apple. The “second bite” is the Examiner parroting a portion of the MPEP. The best non sequitur I ever received as a second bite came when the Examiner argued that because the Examiner came up with a motivation to combine the references, the Examiner had demonstrated that the references cited each reflected an appropriate level of skill in the art, and since the references reflected an appropriate level of skill in the art, the Examiner had determined the level of skill in the art. Naturally, the Examiner refused to cite any case law or authority to support the theory that coming up with a motivation to combine references proves that the references reflect an appropriate level of skill.

  3. 7

    Although a side point and although I guess it is essentially the law, in reality, it is not quite true that, “A less sophisticated level of skill generally favors a determination of nonobviousness . . . . while a higher level of skill favors the reverse.”
    Only a connoisseur can taste the difference between some wines, and similarly, only one skilled in the art can appreciate the genius of some contributions to the art. Conventional logic is that the references cited in the journal articles (and patents) are supposed to provide some context that may be needed for understanding why the modification is a contribution to the art (and why the contribution is not obvious). The suggestion is that without that context, the modification may be seen as an arbitrary modification rather than a contribution or invention.

  4. 6

    Some overactive commenter here recently opined that PHOSITA was a excusivily legal fiction, and could never be represented by a real person (i.e for instance a specialized jury composed of only PHOSITA), or in this instance, an individual person as expert witness.

    But generally this points yet again to a procedural gap that was only partially closed by Markman

    The claims and the invention are not the same thing, so the invention needs to be construed as a matter of law in a similar fashion as the claims are- which includes technical tutorials for the judge and adversarial briefing beyond the four corners of the complaint/patent document.

    Just what the invention is- and who PHOSITA really is- are foundational issues.

    Maybe this invention is in the radiation arts. Maybe in the programming arts. Maybe in both. Maybe there is no invention.

    Especially with digital inventions, there are probably material aspects to the relationship between the activity being digitized and the technology used to digitize that activity. What is obvious in one domain may not be obvious in the other, and that distinction may be central to actual economic justice.

    1. 6.1

      You really dont like understanding the terrain of patent law, do you marty?

      Going “colloquial” just does not cut it.

  5. 5

    I see that Friday’s opinion was modified this morning. Has anyone figured out where the modification is?

    1. 5.1

      The only change I could find was the punctuation at the end of the quotation from the Comaper case on page 14 was changed from a period to a comma, which does not seem correct to me.

  6. 4

    Yeah, I don’t understand why a software coding expert is needed, since the invention should have nothing to do with what code was used to implement the invention and how optimal that code is with respect to other code languages that could have alternatively been used. So I suppose that I am with Tecumseh’s brother on this one.

  7. 3

    Surprised to see an overlapping IPR and ex parte reexamination proceeding on the same claim here, in view of 35 USC 315(d):
    “(d) Multiple Proceedings- Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.”

  8. 2

    So is the key lesson here that an IPR petitioner or suit defendant should provide two differently skilled witnesses for 103 obviousness to a POSITA for claims including both hardware [and/or medical knowledge] and software, to avoid the testimony of only one witness with only one skill set being partially discredited?

    1. 2.1

      This really should not surprise anyone — “team” invention is just not a new concept.

      Of course, if the article wanted to add a modern twist, it would posit that at least one member of a modern team was an AI (and what implications that necessarily carries for the entire team’s Invention as a Whole).

  9. 1

    “ One problem here, although Chase has been doing this work and has expertise in radiation therapy design and optimization, he is not a computer programmer.”

    Oooh, the claims at issue must recite some highly “technical” programming lingo. Are they limited to a particular programming language, at least?

    1. 1.1

      It’s as if you are impervious to having had your canards debunked countless times, Malcolm.

      It’s all very Sarah of you.

      1. 1.1.1

        “It’s all very Sarah of you.”

        A nice chuckle for a Monday.

        (But please keep that fresh air coming Sarah.)

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