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Author Topic: Can an expert opine as to what a PHOSITA would have understood retroactively?  (Read 660 times)

mse12

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I have an interesting question for which I am having trouble finding an answer in the MPEP or case law:

Can an expert opine as a PHOSITA as of the date of invention/filing if the expert did not possess the qualifications that the expert says a PHOSITA needed as of that critical date (but which the expert achieved after the critical date)?

Example: The expert was an undergraduate student in 2000 when an application was filed. By 2010, the expert had his undergraduate engineering degree and 5+ years of field experience. The level of ordinary skill in the art is agreed to be an undergraduate engineering degree plus 5+ years of experience. In 2010, can the expert opine as to what a PHOSITA would have understood at the time of filing the 2000 application (since the expert now has the credentials of a PHOSITA, despite lacking them at the time of invention)?

Another way of asking this might be: is an expert who opines as a PHOSITA required to have been a PHOSITA at the critical date?
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still_learnin

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What  context are you asking about? Infringement lawsuit, PTAB post grant proceeding, or ex parte prosecution? 
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still_learnin

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Wow, I see now that you posted your question under the "Litigation" subforum. So perhaps my question is silly, and you're asking about a district court litigation.

On the other hand, I think some people view PTAB post grant proceedings to be a form of litigation.

So mse12, just so we're clear, can you affirmatively state: lawsuit, post-grant, or prosecution?
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Toot Aps Esroh

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I haven't seen this question come up in litigation or elsewhere.  If in litigation, I'd say spend the money to get the right guy and just avoid the question entirely.

If in prosecution, I wonder if by analogy it might be said that the guy should be allowed to make such a post-hoc determination.  After all, the Office in making an obviousness rejection is supposed to resolve the level of skill in the art at the time of the invention, but does not (so far as I know) require its officials (examiners) to have been graduates at the time of the invention.

Analogy breaks down though because the examiner in resolving the level of skill in the art is not offering an expert opinion.
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eighteighteight

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First, an expert is usually NOT a POSITA (generally, they are above to way above the level of ordinary skill). An expert reviews what was available to a POSITA at the time of the invention, and makes a determination into what would have been obvious to that person. That person is entirely hypothetical.  There is no requirement, that I have ever heard about, that the expert is a POSITA either at the time of litigation (as I said, they are usually not POSITA), or that they were at the time of invention. 

« Last Edit: 04-12-18 at 11:12 am by eighteighteight »
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lazyexaminer

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According to the PTAB it goes to weight and it's not fatal if knowledge acquired later.

https://www.ptabwatch.com/2015/09/ptab-considers-qualifications-to-testify-concerning-the-understanding-of-one-of-ordinary-skill/

That makes sense to me.
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jv1

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As an inventor with experience in this during the prosecution phase:

we got past some examiner rejections via a declaration in which I argued against prior art combinations and the qualities the examiner alleged a POSITA would have had at the time of invention by referencing public documents which proved leading experts failed at similar combinations 5 years after the date of filing.
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