The POSA: who is and isn’t a POSA

A POSA?

For today’s article we’ll take up an issue of interest to those involved in patent cases and arbitrations.   

Meet the POSA

A “Person of Ordinary Skill in the Art” is mentioned so often in patent cases that he or she has an acronym:  a POSA.  This is because, in patent law, many of the most important issues are typically viewed from the perspective of a POSA, including claim construction, validity, and infringement.  This means, in most cases, parties offer expert testimony from a POSA to prove their case or disprove their opponent’s case.  In fact, in a case involving infringement under the doctrine of equivalents, expert testimony of a POSA is always required.  See  AquaTex Industries, Inc. v. Techniche Solutions, 479 F.3d 1320, 1329 (Fed. Cir. 2007).

But who?

But who exactly is a POSA?  We know, of course, that qualifications will vary depending on the case and technology.  And we can wonder whether a person can be too expert or too skilled to be considered a “Person of Ordinary Skill.”  A recent case from the Federal Circuit – which hears appeals from all federal U.S. patent cases – provides some answers.  But not all the answers we would like.

The Kyocera Case

The case is Kyocera Senco Industrial Tools, Inc. v. International Trade Commission, Nos. 2020-1046, 2020-2050 (Fed. Cir. January 21, 2022).  Kyocera filed a complaint with the International Trade Commission claiming that Koki Holdings America LTD was importing infringing gas spring nailer products into the United States.  The case went to an Administrative Law Judge for the ITC, who construed patent claim terms and held a hearing.  We’ll skip the history of appeals and remands and get to the POSA issue.

Educated and skilled, but not a POSA

During claim construction, the ALJ adopted Koki’s definition of a POSA as someone having “a Master’s Degree in mechanical engineering with at least two years of experience in power nailer design.”  Kyocera offered Dr. Pratt as its expert witness.  Dr. Pratt had advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools.  But he had no experience in power nailer design. 

So, the ALJ excluded his testimony about the doctrine of equivalents.  With no expert testimony to prove Kyocera’s claim of infringement under the doctrine of equivalents, it lost its claim under that doctrine. 

But the ALJ did allow Dr. Pratt to testify on literal infringement.  Kyocera argued on appeal that his testimony should have been admitted on the doctrine of equivalents.  Koki argued he shouldn’t have been permitted to testify about anything.  The ITC, which also has a role in the appeal from one of its ALJ’s orders, said the ALJ got it right.

The Federal Circuit requires a POSA

The Federal Circuit agreed with Koki.  Dr. Pratt wasn’t a POSA at all because he lacked the two years of experience in power nailer design, as the ALJ had found a POSA would have.  The court made no distinction among the various theories.  It said, “to offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable. The opinions would not be based on any specialized knowledge, training, or experience that would be helpful to the fact-finder.” 

Too much skill?

The court also addressed whether a proposed POSA can be too skilled to testify.  Apparently, he or she can’t. The court explained that it would be improper to require an expert witness to possess ordinary skill in the art and nothing more. If that were the case, it noted, a person of exceptional skill in the art would be disqualified from testifying as an expert because he or she is not normal enough.  The important thing is that the POSA have at least the minimum ordinary skill required.

Who is a POSA in the next case?

So, we know the expert must have at least ordinary skill in the art to be allowed to testify.  But how can we define the ordinary skill in the art for a particular patent or set of patents?  The Kyocera case doesn’t give us much help with that.  There the ALJ had accepted  Koki’s definition of a POSA and – importantly – Kyocera did not object to that definition.  Dr. Pratt did have an advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools.  But given the definition requiring two years of experience in power nailer design, that wasn’t enough.

Be careful with the definition

Kyocera cautions us that a party must be careful in defining what experience or education a POSA must have, but doesn’t tell us how to define a POSA in a later case.  The real lesson seems to be not to accept a definition of a POSA in a case when that definition doesn’t fit your expert.