The Importance of Stepping Into the Shoes of the Person of Ordinary Skill in the Art (POSITA)
All too often patent examiners and patent practitioners give lip service to the importance of the “person of ordinary skill in the art” (“POSITA”) when discussing issues such as obviousness rejections, the meaning of claim terms in litigation, and many other critical patent law issues. This “person of ordinary skill in the art” is a hypothetical person about which much of patent law revolves. Despite the importance of the POSITA, arguments as to what a POSITA knows or does not know are often conclusory and weak. While it is hard to step into the shoes of this hypothetical individual (since he or she does not exist, among other reasons), it is a critical first step when seeking to overcome rejections during patent prosecution, and when presenting arguments supporting a client’s interests in litigation or before the US Patent Trial and Appeal Board (“PTAB”).
A POSITA “is a hypothetical person who is presumed to have known the relevant art at the time of the invention.” M.P.E.P. 2141(II)(C). In practice, that means a POSITA knows of anything (and everything) that is written in any prior art document. This foundational definition is where the knowledge of a POSITA can begin to be used objectively to demonstrate the POSITA’s scope of knowledge. As this knowledge is assembled through careful review of the prior art, the POSITA begins to emerge as much more than hypothetical, and a patent attorney can craft proper and persuasive arguments revolving around the POSITA.
An example highlighting the importance of a careful and detailed analysis that puts oneself in the shoes of a POSITA is seen in our firm’s victory in CLIM-A-TECH INDUSTRIES, INC., v. William A. Ebert, IPR2017-01863 denying institution of an Inter Partes Review challenging the validity of our client’s patent. In this case, our firm, along with co-counsel, was able to successfully defend the validity of a patent by convincing the PTAB not to institute Inter Partes Review (“IPR”) proceedings to evaluate a validity challenge of our client’s patent.
In this case, the petitioner asserted multiple prior art references allegedly relating to the claims of our client’s patent at issue. Among a number of persuasive arguments advanced by our firm in support of denying the petitioner’s IPR request was a critical argument relating to the POSITA. The critical argument relied on the fact that a first reference (“Marley Plastics”) teaches that a type of structure in the art having abutting beveled strip ends are inoperative. Marley Plastics then proceeds to teach an alternative to the inoperative and undesirable bevel corner prior art. This alternative solution uses a molded corner to connect the squared end edge strips instead of using beveled connections. The claimed invention had both beveled ends and the molded corner. By stepping into the shoes of the POSITA, we were able to argue:
A person having ordinary skill in the art would know of the substantial problems caused by the beveled corner connections of cathode edge protectors, and would not have any reason or motivation to modify the square ends of Marley Plastics with the known inoperable bevel ends of the prior art taught in either Marley Plastics Fig. 2 or Tetrault. (Ex. 2003, ¶104-106). Marley Plastics discourages a POSITA from using beveled end edge strips. Accordingly, it would not have been obvious to a POSITA to combine the Marley Plastics invention with the prior art beveled end edge strips of Marley Plastics Fig. 2 or Tetrault to teach the cathode edge protectors of claims 1, 15, and 17.
This argument was found persuasive by the PTAB and institution of the inter partes review (“IPR”) was denied. It would not have been obvious to combine the references to arrive at the claimed invention. We successfully argued that, when one truly considered what a POSITA must know based on this prior art, putting ourselves into the shoes of the POSITA, it was clear that one would not combine the references at issue to arrive at the claimed invention.
Thus, careful consideration of the knowledge of a POSITA is vital to analyzing a proper obviousness rejection. This applies both when overcoming obviousness rejections during prosecution of a patent application, as well as in litigation and/or post grant proceedings before the US Patent Trial and Appeal Board.
Lambert Shortell & Connaughton has a great deal of experience overcoming obviousness rejections at the USPTO to obtain patents for our clients, as well as at ligation and before the US Patent Trial and Appeal Board to defend our clients’ interests.