Thursday, April 01, 2021

McCoy loses appeal at CAFC, BUT there is an interesting contrast between a "person of ordinary skill" and an expert

The outcome was that Appellant McCoy lost but the discussion about "person having ordinary skill in the art" (a PHOSITA or POSA) is rather interesting.

The Board issued its final written decision on December 30, 2019, concluding that all challenged claims are unpatentable as anticipated and/or obvious. J.A. 1–78. Relying on expert testimony, HEAL proposed a definition of a person having ordinary skill in the art (“POSA”). McCoy objected to the Board’s adoption of HEAL’s proposed definition because HEAL’s expert stated, along with the definition, that a POSA would have had access to an expert. In its decision, the Board adopted HEAL’s proposed definition of a POSA. Specifically, the Board concluded “that an ordinarily skilled artisan at that time of invention ‘would have had at least a Bachelor of Science degree in mechanical, petroleum, or chemical engineering, or a related degree, and at least 3-4 years of experience with downhole completion technologies related to deliquification or artificial lift and gas separation.’” J.A. 42. After considering McCoy’s objection, the Board agreed with HEAL’s expert testimony that access to an expert would not convert a POSA into an expert. The Board also determined that a POSA would indeed have access to experts in this particular field. J.A. 43.

McCoy argues that the Board erred by defining the POSA as having “access to” and the ability to “consult with other experts,” and that such a definition is contrary to statutory law, the law of the Supreme Court, and this court. Appellant’s Br. 23. McCoy contends that the Board improperly keyed its analysis to the skill of experts rather than ordinary skill, which allows for hindsight bias and improperly adds the insight of experts. According to McCoy, the Board’s definition constitutes reversible error that infects the Board’s anticipation and obviousness determinations with respect to all challenged claims.

The POSA is patent law’s hypothetical, legal construct “akin to the ‘reasonable person’ used as a reference in negligence determinations.” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). This theoretical person is the objective vantage point for making obviousness determinations according to the statute, see 35 U.S.C. § 103,1 and Supreme Court and Federal Circuit case law, see Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see Custom Accessories, Inc. v. Jeffrey-Allan Indus., 807 F.2d 955, 962 (Fed. Cir. 1986). The legal definition of “ordinary” skill for a POSA can be contrasted with one of “expert” skill. See Env’t. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983) (emphasizing “the need to adhere to the statute, i.e., to hold that an invention would or would not have been obvious, as a whole, when it was made, to a person of ‘ordinary skill in the art’—not to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art”). By contrast, the role of an expert is to give an impartial opinion on a particular matter that is in dispute and within her expertise. See, e.g., 37 C.F.R. § 42.62; FED. R. EVID. 702. As a threshold matter, we are not convinced that the Board expressly included expert skill in its definition of the POSA. As referenced above, HEAL’s expert defined a POSA, and the Board adopted that definition. HEAL’s expert further opined that a POSA would have had access to an expert, and the Board merely agreed that, in this particular field, a POSA would indeed have had access to an expert. J.A. 43. Nevertheless, for purposes of our analysis, we assume that the Board intentionally included “access to an expert” in its POSA definition.

The problem with this definition is that in the abstract, it may be overly broad. A POSA could, for example, appropriately rely on a seismologist to conduct a seismological test if in the relevant art the POSA routinely would rely on such expert assistance. Reliance on another type of expert, if not routine in the art, might not be appropriate. In each case, the definition of POSA must be tailored to practice in the art. Here, it appears common for POSAs to rely on experts to some extent. Specifically, HEAL’s expert opined that a POSA would have accessed other technical experts in the field because the POSA would have been trained and encouraged to do so. Appellee’s Br. 25–26 (citing J.A. 1440–41). McCoy’s expert admitted that even he frequently consults with field engineers and agreed that this did not make them experts. Id. (citing J.A. 1547–75). We conclude that the Board did not improperly determine the challenged claims’ patentability from an expert’s perspective rather than a POSA’s perspective.

Even if we deem that the Board’s POSA definition was erroneous, we see no indication that it affected the outcome as required to constitute reversible error. See Innovention Toys, 637 F.3d at 1323; Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356 (Fed. Cir. 2018) (“If two inconsistent conclusions may reasonably be drawn from the evidence in record, [the PTAB]’s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence.” (alteration in original) (internal quotation marks omitted)). McCoy does not identify any instance where “expert” knowledge was applied and led to an erroneous conclusion. See, e.g., Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000) (collecting cases where reversal is not warranted if “it was not shown that the failure to make a finding or an incorrect finding on level of skill influenced the ultimate conclusion under section 103 and, hence, constituted reversible error” (quoting Custom Accessories, 807 F.2d at 963)); see also Appellant’s Br. 28. Although the Board agreed that a POSA would have access to an expert, this by itself does not necessarily mean that the Board made patentability determinations based on an expert level of skill in the art. See, e.g., J.A. 43 (the Board finding McCoy’s argument that having access to an expert renders a POSA an expert “wholly unsupported by any citation to objective evidence”). We therefore conclude that any perceived error in the Board’s definition did not result in incorrect unpatentability findings, and we affirm the Board’s decision in that regard


Post a Comment

<< Home