'Ordinary' Skill In The Art After KSR

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1 Portfolio Media, Inc. 648 Broadway, Suite 200 New York, NY Phone: Fax: 'Ordinary' Skill In The Art After KSR Law360, New York (March 12, 2009) -- In patent litigation, the theoretical person of ordinary skill in the art ( POSITA ) arises in a variety of different contexts such as claim construction and obviousness determinations. The POSITA is also critically important to analysis of enablement issues, i.e., whether a patent s specification (its description of the invention) enables a POSITA to make and use the invention without undue experimentation. In an enablement determination, courts look to numerous factors to determine whether a POSITA could make and use the claimed invention based on the disclosure in the specification. Those factors the so-called Wands factors include: 1) the quantity of experimentation necessary; 2) the amount of direction or guidance presented; 3) the presence or absence of working examples; 4) the nature of the invention; 5) the state of the prior art; 6) the relative skill of those in the art; 7) the predictability or unpredictability of the art; and 8) the breadth of the claims. In re Wands, 858 F.2d 731 (Fed. Cir. 1988). Historically, when applying these enablement factors, the POSITA could only go so far in filling in the technical gaps left by the specification as compared to the full scope of the patent claims.

2 Indeed, the courts were careful not to attribute too much creativity or imagination to the hypothetical POSITA. See, e.g., Vardon Golf Co. v. Supreme Golf Sales, 1992 U.S. Dist. LEXIS 7515, *22 (N.D. Ill. May 29, 1992). The Federal Circuit had even gone so far as to call the POSITA someone who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate... Std. Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Thus, when applied to the enablement analysis, the POSITA had traditionally been viewed as a relatively un-creative person. In the Supreme Court s decision in KSR v. Teleflex, the court appeared to signal a reversal of its view that the POSITA lacks creativity. 127 S.Ct (2007). In holding that the Federal Circuit s application of the traditional teaching, suggestion or motivation test ( TSM ) was inconsistent with the expansive and flexible approach to determining obviousness, the court noted that one of the primary problems with the TSM test was its rigid view of the POSITA. Id. at 1731, Indeed, the court stated that a critical flaw with the TSM test is the assumption that the POSITA lacks the creative ability to combine the teachings of the prior art: The second error of the Court of Appeals lay in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem... Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle... A person of ordinary skill is also a person of ordinary creativity, not an automaton. 127 S.Ct. 1727, 1742 (2007). Because the court went out of its way to discuss the creativity of the POSITA, many believed this signaled a new era of POSITA analyses under various legal theories, including obviousness and enablement. Some postulated that doctrines relying on the non-creative standard of the POSITA, such as the enablement requirement of 35 U.S.C. 112 para. [1], would wither under the scrutiny of a highly creative POSITA who could fill in the both the creative and technical gaps between the disclosure and the full scope of the claimed invention. See, e.g., 6 Nw. J. Tech. & Intell. Prop. 278, 286 (2008). In particular, with respect to enablement, one prevailing thought after KSR was that district courts, and subsequently, the Federal Circuit, would find it easy to determine that a creative POSITA could use the specification to enable a much broader set of

3 claims. If that was the case, then it was theorized that invalidity findings of nonenablement would plummet. However, as described below, rather than usher in a new era of POSITA analyses, the theoretical POSITA has retained approximately the same amount of creativity. Whether the POSITA will actually become any more or less creative remains to be seen. It can only be said that recent Federal Circuit decisions make clear that enablement is still alive and well and that the POSITA s creativity will still not fill in all of the creative and technical gaps. In post-ksr cases such as Liebel-Flarsheim v. Medrad, 481 F.3d 1371 (Fed. Cir. 2007) and Auto. Techs. Int l Inc. v. BMW of N. Am. Inc., 501 F.3d 1274 (Fed. Cir. 2007), the Federal Circuit had an opportunity to consider whether the patent specifications enabled the POSITA to practice the full scope of the invention. One would think that if the POSITA was truly more creative in a post-ksr world, the court would have more easily found that the specification satisfied the enablement requirement. However, in both cases, the court held that the specification failed to enable full scope of the claimed invention. Of course, the underlying holdings of these decisions was that the POSITA, regardless of the technology at issue, could not make and use the full scope of the claimed invention without undue experimentation. These cases highlight that the POSITA is still a person of ordinary creativity. In Liebel- Flarsheim, for instance, the court addressed the enablemnent issue in light of patent claims directed to a fluid injector with a syringe capable of withstanding high pressures for delivering a contrast agent to a patient. After having determined that the full scope of the claimed invention includes injectors with and without a pressure jacket, the court held that specification failed to enable injectors without a pressure jacket. 481 F.3d at Similarly, in Auto. Tech., the technology at issue concerned a side-impact vehicle crash sensing device. The court first determined that the claims at issue covered both a mechanical sensor and an electrical sensor. 501 F.3d at The patent s specification contained a detailed disclosure of a mechanical side-impact sensor, but only a single paragraph concerning the electrical side impact sensor. Id. at Like the court in Liebel-Flarsheim, the court held that the specification failed to meet the enablement requirement with respect to the electrical crash sensor. Implicit in both of these rulings is that a POSITA would not be able to make and use an electrical crash sensor without undue experimentation.

4 Similar decisions have been reached in other recent cases such as Sitrick v. DreamWorks LLC, in which the court again found that claims directed to a system for transforming both movies and video games were not enabled where the specification concerned only video games: Even if the claims are enabled with respect to video games... the claims are not enabled if the patents do not also enable for movies. 516 F.3d 993, 1000 (Fed. Cir. 2008). Some district courts also followed the Federal Circuit s recent trend. In Int l Automated Sys. Inc. v. Digital Persona Inc., the court ruled that the specification failed to enable the multiple embodiments covered by claims directed to digital fingerprint imaging technology using both a non-enhancement and enhancement system. 565 F.Supp.2d 1276, 1304 (D. Utah 2008). The court held that while the specification enables an enhancement system... for the 474 Patent to be valid, it must also enable a non-enhancement fingerprint identification system. Id. at Each of these decisions demonstrates that the court s view of the POSITA has not changed in light of KSR. In each of the recent enablement cases, the court was faced with the decision of whether the relevant POSITA was creative enough to fill in the gaps between the disclosure and the claimed invention. However, in each case, the court found that POSITA was not sufficiently creative or technologically inclined to fill that gap. The court s analysis in Auto. Techs. is particularly instructive because the patent specification at issue in that case included a brief description of an electrical crash sensor, yet the court found that the POSITA would still not be able to make and use an electrical sensor because the disclosure was relatively sparse. Moreover, as these cases show, the application of the POSITA s creativity (or, arguably, the lack thereof) has been consistently across a variety of technologies including medical products and electronic media. What does this mean for enablement analyses down the road? With respect to patent litigation, as the court in Liebel-Flarsheim stated, beware of what one asks for, applies with particular force here. 481 F.3d at If patent owners take a position that their patents cover very broad claims, the patentees will then have to demonstrate that such broad claims are fully enabled, a challenge that the patentees in at least Liebel-Flarsheim, Auto. Techs. and Sitrick could not meet.

5 Thus, patent owners must balance a broad claim construction that may encompass more infringing products with the requirements that the there must be reasonable enablement of the scope of the [claimed] range. Id. Such a balancing act is made difficult by the fact that the Supreme Court s seemingly relaxed view of a creative POSITA has not been applied to the enablement requirement. To the extent there was any indication that findings of non-enablement would fade into the past, that notion has been dispelled by the post-ksr cases discussed above. At the end of the day, the person of ordinary skill in the art remains just that ordinary. --By Daniel J. Schwartz and Alexander Rozenblat, Jenner & Block LLP Daniel Schwartz is a partner with Jenner & Block in the firm's Chicago office. Alexander Rozenblat is an associate with the firm in the Chicago office. The opinions expressed are those of the authors and do not necessarily reflect the views of Portfolio Media, publisher of Law360.