When Ordinary Involves an Expert

The Federal Circuit recently had to deal with a question concerning an “expert” in the determination of the person of ordinary skill in the art.  McCoy v. HEAL Systems, LLC, Appeal No. 2020-1484 (April 1, 2021).

The case concerned an inter partes review (IPR) of US Patent No. 9,790,779 (McCoy) which claims a method and apparatus for use of a gas separator in the operation of an oil and gas well.  HEAL sought to invalidates the claims of the ‘779 patent in grounds of anticipation and obviousness.  During the IPR, HEAL proposed, by way of expert testimony, a definition of the person having ordinary skill in the art (POSA).  HEAL’s expert asserted that the POSA “would have had at least a Bachelor of Science degree in mechanical, petroleum, or chemical engineering, or a related degree, and at least 3-4 years of experience with downhole completion technologies related to deliquification or artificial lift and gas separation.”  But, additionally, HEAL’s expert asserted that the POSA would have access to an expert.  In its Final Written Decision, the Board adopted HEAL’s proposed definition of POSA and further determined, over McCoy’s objection that the POSA would have access to an expert in this particular field.

On appeal, McCoy argued the Board was in error when it held that the POSA would have access to an expert, “McCoy contends that the Board improperly keyed its analysis to the skill of experts rather than ordinary skill, which allows for hindsight bias and improperly adds the insight of experts.”  The Federal Circuit initially stated that determination of the level of ordinary skill in the art was a factual issue that is reviewed on the basis of substantial evidence.

The Court held that they were not convinced that the Board actually included “expert skill” in its determination of the definition of POSA, “the Board merely agreed that, in this particular field, a POSA would indeed have access to an expert.”  But, for their analysis, the Court assumed that the Board did include “access to an expert” in its determination of the POSA definition.

Holding that the Board’s definition of the POSA was not improper, the Court noted that whether a POSA would have access to an expert depends on the relevant art and whether such access would be common or routine.

A POSA could, for example, appropriately rely on a seismologist to conduct a seismological test if in the relevant art the POSA routinely would rely on such expert assistance. Reliance on another type of expert, if not routine in the art, might not be appropriate. In each case, the definition of POSA must be tailored to practice in the art. Here, it appears common for POSAs to rely on experts to some extent. (opinion at page 6)

This case thus illustrates the need, in an obviousness case, to not only proffer a proper definition of the POSA in the relevant art, but also to consider the tools/sources to which the POSA would have access, including possible opinions of experts.


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