In a slow week, the Federal Circuit nevertheless gave patent litigators everywhere a non-precedential opinion to nibble on about the definition of the ever-present person having ordinary skill in the art.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions:  2

Non-precedential opinions:  1

Rule 36: 0

Longest pending case from argument:  Habas Sinai ve Tibbi Gazlar v. US, No. 20-1506 (110 days)

Shortest pending case from argument (non-Rule 36):  McCoy v. HEAL Systems, LLC, No. 20-1484 (83 days)

Case of the week:  McCoy v. HEAL Systems, LLC, No. 20-1484 (April 1, 2021)

Panel:  Judges Dyk, Reyna, and Taranto, with Judge Reyna writing the opinion

You should read this case if:  you have a case involving disputes over the definition of a person having ordinary skill in the art.

In this week’s featured case, the Federal Circuit provided guidance about the definition of a person having ordinary skill in the art (“POSA”). The Court held that a POSA may have access to and rely on experts “if in the relevant art the POSA routinely would rely on such expert assistance.”

The patentee appealed a PTAB final written decision finding the challenged claims unpatentable as obvious and anticipated.  In so finding, the Board accepted the patent challenger’s expert testimony that a POSA in the relevant art would have relied on expert assistance to evaluate or implement certain aspects of the invention.  The patentee argued that the Board erred by defining the POSA to encompass access to other experts and “improperly keyed its [obviousness] analysis to the skill of expert rather than ordinary skill, which allows for hindsight bias.” 

The Federal Circuit rejected the patentee’s argument and affirmed the PTAB’s final written decision.  The Court noted that the POSA definition is fact-dependent and “must be tailored to practice in the art” in each case.  In certain fields, it may be common for a POSA to rely on one type of expert, whereas “[r]eliance on another type of expert, if not routine in the art, might not be appropriate.”  In the instant case, the record included expert testimony that POSAs in the field would have been “trained and encouraged” to consult with technical experts in the field.  Furthermore, “[the patentee’s] expert admitted that even he frequently consults with field engineers and agreed that this did not make them experts.”  Given the record evidence, the Court concluded that the Board “did not improperly determine the challenged claims’ patentability from an expert’s perspective rather than the POSA’s perspective” merely by defining a POSA to encompass reliance on other experts. 

The patentee also contended that the Board’s obviousness determination improperly relied on the patent specification to determine what was known in the art at the time of the invention and to understand the workings of prior art systems.  The Court roundly rejected this argument and reiterated its long-held precedent that “[a] statement in a patent that something is in the prior art is binding on the applicant and patentee for determination of anticipation and obviousness.”  The Court commented that, “[b]y characterizing certain parts as conventional in the specification, the patentee effectively admits that such things would be known to a POSA.”