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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.

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Prior Articles:
Moderna v. Pfizer
Community Property and Patent Ownership
Decisions by the Court as an Institution; or by the Judge as a Human?
DoggyPhone v Furbo
Anyone been in this position.

Happy to talk through interesting cases -- Dennis Crouch

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