Expert Witness in Patent Case: Person of Ordinary Skill in Art (POSA) – a Pitfall

Excerpted from SEAK’s Course:  How to Excel as an Expert Witness in Patent Cases:  Special Techniques

It doesn’t say inflatable, but it says this other word…I can’t think of a synonym for inflatable, but another word for inflatable and that means…a person who’s skilled in the art, again, POSA, would know that that was inflatable, and so it’s disclosing that, and it’s disclosing that it’s orange even though it doesn’t say orange, and it’s disclosing that it’s round even though it doesn’t say round. And so that’s where you would come in. We would say the literal words aren’t there, but can you explain to me, in a way that I understand, given that I have a history in philosophy background and that the jurors are all…are most likely going to have backgrounds that are not technical as well, can you explain to me why this reference teaches round, inflatable, and orange, and so that’s where you come in. It’s kind of reading that reference from the…again, from the prism of a person who is skilled in the art, and, importantly, one thing you should recognize is that you’re all probably not persons of skill in the art. Most of you are going to be persons of extraordinary skill in the art, and so that’s actually something that you should recognize that you’ll want to, if you need to, kind of view this from, if you’re a professor, from your student’s perspective, at that time. And that might not really change too much, but it is a trap to avoid in…when you’re writing your expert report or getting deposed, because if you come in and say, “Yeah, I’ve…to me, this would have been obvious,” and they get…the opposing counsel gets you to say, “Oh, so you’re viewing it from your perspective, someone with 35 plus years of experience or what have you,” and you say, “Yes”, and the parties have agreed that the person who is skilled in the art is someone with three years of experience, you’ve kind of…you’ve caused a problem because what would have been obvious to someone of extraordinary skill might not have been obvious to a person of ordinary skill, so this is always going to be through the prism of who’s a person of ordinary skill. And you as the expert are typically going to be asked in your expert report to opine on what you think is the…a level of skill in the art. And, again, you get two sides of the equation. Someone on the defense side is going to want this person of skill in the art to be…to be very educated so that it’s much easier to make those obvious combinations we’ll talk about, so the more educated our person of skill in the art is, the easier these combinations will be for them to do, whereas the patent owner wants the person of skill in the art to be someone, you know, doesn’t know anything essentially, and so that way, their inventor looks that much more brilliant for having come up with this idea. So you can kind of see, you can, in a sense, when you get called up by an attorney, and they say, “I’m representing plaintiff or defendant”, whichever side they’re on, you can kind of already see half your expert report. Okay, we’re on this side of it, so now I know, this is kind of like the basic ideas, kind of the…the inertia’s going to be going towards these types of arguments.