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AVOIDING CONFUSION OF PHOSITA
By: Gordon K. Hill and A. John (Jack) Pate
A major confusion persists in applying patent law, exhibited by judges, attorneys, and scholars alike. This confusion is based on the conflation of a totally hypothetical, legal construct with an actual human being.
Section 103 (35 U.S.C. §103) identifies the hypothetical “person having ordinary skill in the art” as the standard by which obviousness is to be determined. It is important to properly identify this statutory standard and a first step in identifying the PHOSITA includes not conflating the PHOSITA with actual humans. For example, the PHOSITA is not “any person skilled in the art” from the enablement standard in §112. Also, the PHOSITA is not the inventor.
I. Who Is the PHOSITA?
35 U.S.C. §103:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Referring to this statute, the Federal Circuit has stated the following with respect to a person having ordinary skill in the art:
The issue of obviousness is determined entirely with reference to a hypothetical “person having ordinary skill in the art.” It is only that hypothetical person who is presumed to be aware of all the pertinent prior art. The actual inventor’s skill is irrelevant to the inquiry, and this is for a very important reason. The statutory emphasis is on a person of ordinary skill. Inventors, as a class, according to the concepts underlying the Constitution and the statutes that have created the patent system, possess something – call it what you will – which sets them apart from the workers of ordinary skill, and one should not go about determining obviousness under §103 by inquiring into what patentees (i.e., inventors) would have known or would likely have done, faced with the revelations of references. A person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which. See the last sentence of §103, supra.
Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 227 USPQ 293, 297-98 (Fed. Cir. 1985) (emphasis in original); see also, Environment Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 218 USPQ 865, 868-69 (Fed. Cir. 1983) (noting the statutory requirement that obviousness be evaluated with respect to a person having 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 at hand”).
The Federal Circuit has provided insight into the origin of the person having ordinary skill in the art.
It should be clear that that hypothetical person is not the inventor, but an imaginary being possessing “ordinary skill in the art” created by Congress to provide a standard of patentability, a descendant of the “ordinary mechanic acquainted with the business” of Hotchkiss v. Greenwood.
Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 223 USPQ 603, 614 (Fed. Cir. 1984) (emphasis in original) (citing Hotchkiss v. Greenwood, 52 US 248, 265 and 267 (1851)).
Identifying a proper “person having ordinary skill in the art” should include consideration of the appropriate factors and knowledge attributed to a PHOSITA, but it should also include care and diligence to refrain from attributing prohibited knowledge and skill to a PHOSITA.
II. Who Is NOT the PHOSITA?
The PHOSITA should not be confused or conflated with other “people” associated with the law, especially patent law. The PHOSITA from §103 is not the same as “any person skilled in the art” from §112. Also, the PHOSITA is not the inventor.
A. The PHOSITA Is Not “Any Person Skilled In The Art”
Patents and the Federal Circuit, an oft-cited treatise for patent law, illustrates how easy it can be to confuse the PHOSITA from §103 and “any person skilled in the art” from §112.
The 8th Edition of Patents and the Federal Circuit states the following:
Section 112 requires that the patent specification enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation in order to extract meaningful disclosure of the invention and, by this disclosure, advance the technical arts.
See, Patents and the Federal Circuit, 8th Edition, p. 243. The case cited as support for this statement states:
Section 112 requires that the patent specification enable “those skilled in the art to make and use the full scope of the claimed invention without ‘undue experimentation’” in order to extract meaningful disclosure of the invention and, by this disclosure, advance the technical arts.
See, Invitrogen Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 1070 (Fed. Cir. 2005).
However, the 10th Edition of Patents and the Federal Circuit includes a significant change:
Section 112 requires that the patent specification enable a PHOSITA to make and use the full scope of the claimed invention without undue experimentation in order to extract meaningful disclosure of the invention and, by this disclosure, advance the technical arts.
See, Patents and the Federal Circuit, 10th Edition, p. 276. The Tenth and Eleventh editions of Patents and the Federal Circuit cite as support the Invitrogen case quoted above. In the Twelfth and Thirteenth editions of Patents and the Federal Circuit, Promega Corp. v. Life Technologies Corp., 773 F.3d 1338 (Fed. Cir. 2014) is also cited as support for this statement. While the Promega case discusses enablement, it does not reference the PHOSITA within the context of enablement. Thus, the applicable case law does not support the idea that §112 requires enablement of a PHOSITA. Moreover, it is improper to attribute to the PHOSITA the knowledge and skill required to determine enablement.
As another example, the Thirteenth Edition of Patents and the Federal Circuit states that “[a] patent speaks to a PHOSITA, not to the general public.” See, Patents and the Federal Circuit, 13th Edition, p. 313. The treatise cites W.L. Gore & Assoc. v. Garlock Inc., 721 F.2d 1540, 220 USPQ 303, 315 (Fed. Cir. 1983) as support for this statement.
However, the Federal Circuit did not approve of this characterization regarding a patent’s intended audience.
The district court found that the patents did not disclose sufficient information to enable a person of ordinary skill in the art to make and use the invention, as required by §112…
The findings rest on a misinterpretation of §112, its function and purpose… Patents, however, are written to enable those skilled in the art to practice the invention, not the public.
Id., 220 USPQ at 315.
Thus, the Federal Circuit echoes the language of §112 when describing who a patent is written for and its purpose.
The test for enablement in §112 is separate and distinct from the test for obviousness in §103. The “person skilled in the art” in §112 and the “person having ordinary skill in the art” in §103 are separate and distinct entities.
The person skilled in the art in §112 is supposed to be enabled by the patent’s specification to make and use the invention without undue experimentation. The disclosure of the invention in the specification has to be understandable to its reading public, a real, actual person skilled in the art.
In stark contrast, the PHOSITA from §103 is an imaginary person, a strictly hypothetical, legal construct. The PHOSITA is the hypothetical construct by which we define the full public knowledge contained in the prior art. Also, the PHOSITA may be described as having ordinary skill, but is not allowed to innovate, only follow conventional wisdom. However, there is a limit to the knowledge attributable to the PHOSITA.
Unlike the person skilled in the art from §112, the PHOSITA cannot be credited with knowledge of the invention being evaluated for obviousness, nor with knowledge on or after the filing date of the subject patent application. “It is difficult but necessary that the decisionmaker forget what he or she has been taught at trial about the claimed invention and cast the mind back to the time the invention was made.” See, W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983) and MPEP 2141.01 III.
This is an important limitation with respect to using the PHOSITA to determine obviousness. It also explains why the PHOSITA is not useful in determining enablement.
B. The PHOSITA Is Not the Inventor
The Supreme Court provides a great explanation of how important it is not to conflate or confuse the PHOSITA and the patentee, or inventor. In KSR, the Supreme Court states:
If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill…
The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person of ordinary skill in the art.
See, KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 1740, 1742 (2007).
As noted previously, the Federal Circuit has also made it clear that the PHOSITA is not the inventor. See, Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 223 USPQ 603, 614 (Fed. Cir. 1984). The knowledge and innovative skill of the inventor is not properly attributable to a PHOSITA.
The PHOSITA is the statutorily mandated standard by which obviousness is to be determined. It is important to properly identify the PHOSITA and then consistently apply that standard during an obviousness determination. It is also important that the PHOSITA be used exclusively for its statutorily appointed role in evaluating obviousness, not for other purposes such as determining enablement.
GORDON K. HILL
Mr. Hill’s practice includes both litigation and prosecution of intellectual property. His experiences from both litigation and prosecution improve his ability to meet client business objectives, prepare opinions related to patentability, and draft and negotiate licenses. Mr. Hill received a B.S. in Chemistry from Weber State University in 1992, and Juris Doctor degree from Chapman University School of Law in 2001.
A. JOHN (Jack) PATE
Dr. Pate’s practice includes drafting and prosecuting patents directed to a wide range of manufacturing, software, and medical technologies, intellectual property licensing, and dispute resolution, including litigation, arbitration and other alternative dispute resolution (ADR). Dr. Pate received a Ph.D. in Engineering from Utah State University in 1978 and a Juris Doctor degree from Brigham Young University in 1992.