Setting the Level of Skill May be Critical in Niche Arts
The obviousness of a claimed invention is assessed from the perspective of a hypothetical person of ordinary skill in the art (POSITA). For this reason, the degree of skill present in a given art is often contested by parties to a patent litigation. Often times, patent challengers assert a higher level of skill, which favors an obviousness determination. Conversely, patentees advance a lesser level of skill, militating in favor of patent validity. Yet, outside of highly specialized fields, such disputes are of rare consequence in the predictable arts.
The USPTO's Patent Trial & Appeal Board (PTAB) rarely pronounces a precise level of skill, instead relying on In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by references of record). Given this, patent challengers in the predictable art rarely give much thought to advancing a precise level of skill in their post-grant challenges.
As made clear last week by the Court of Appeals for the Federal Circuit (CAFC), setting the level of skill could be especially important for art subject to a non-analogous art attack.
In Scientific Plastic Products, Inc. v. Biotage AB (CAFC 2014), the CAFC considered a non-analagous art argument of the patentee. The disputed aspect of the claimed invention related to the threaded connections of a polymer cap of a Low Pressure Liquid Chromoatology (LPLC) cartridge. The patentee argued that the art identified for teaching this critical feature related to "soda pop" and that one of ordinary skill in the LPLC art would not look to soda pop related technology to solve the problem of LPLC cartridge leakage.
In a divided panel, the majority (Newman, Wallach) explain that:
The analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill.
Here, the [primary] and [secondary] references address the problem of providing a fluid tight seal at elevated pressures, between a container and a re-sealable cap. This is sufficiently close to the problem addressed by the claimed invention; substantial evidence supports the Board’s finding that [the primary] and [the secondary references] are available as prior art.
The dissent, authored by Judge Moore, emphasized the ongoing dispute over the level of skill, and the absence of a finding by the Board in this regard.
The Board found the claims obvious without resolving the level of skill in the art. . . . It is axiomatic that this is a “basic factual inquir[y]” required of any obviousness determination. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In most cases, there is no dispute over the level of the skilled artisan. But in this case, the parties contested this factual issue throughout the proceedings, and inexplicably the Board never resolved it. . . . . The parties still dispute this issue on appeal. CompareAppellant’s Br. 21 (“A chemist analyzing organic compounds would not look to soda-pop bottles to solve problems with flash chromatography cartridges.”) (emphasis added), with Appellee’s Br. 28–29 (“SPP mischaracterizes the relevant person of ordinary skill to whom knowledge of analogous art would be attributable . . . . [T]he relevant person of ordinary skill in the art . . . would include a designer . . . skilled in mechanical engineering.”)
The takeaway from this case is that for mechanical arts subject to non-analogous art attack, or even covered business method petitions, which often times combine differing areas applications with technology, the asserted definition of a POSITA may prove critical to the ultimate success of the petition.