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August 03, 2015


Not sure if I just misfollowed your comments, but bumping up the skill level to find obviousness is exactly the wrong way to apply the PHOSITA standard.

The higher you go up that level of capability, the more will be "obvious" and that is reason enough NOT to conflate the levels and what is "obvious" at the different levels.

This appears to be nothing other than the outlawed "Flash of Genius."

Maybe I am just not following what you were trying to say...

Dear Skeptical,

Thank you for pointing out that my explanation related to the PHOSITA was less than clear. Basically, the PTAB had concluded that a PHOSITA would have found the claimed invention obvious, and the fact that they did not make an explicit finding regarding the level of skill was not necessarily reversible error. The Federal Circuit then pointed out that Columbia’s argument was basically doomed, because if the PTAB had used Illumina’s expert’s definition instead of Columbia’s expert’s definition, then Columbia’s argument that the level of skill should have been found to be higher would only make the invention more obvious, not less. However, reading between the lines, I think Columbia’s main argument was that Illumina’s expert should be discounted because he was not a PHOSITA (because of the lack of Chemistry experience). But, because the Federal Circuit deferred to the Board, this argument was a non-starter. I hope that clears it up (but I remain . . . )


I laughed at your closing Andrew.

The quantum of error that is "reversible" or not is an interesting one.

And as here, shifting the proper establishment of one of the factors of PHOSITA working against the arguments one side is making may be seen as saying that the error was self-induced.

But I do not think a court should make its judgment on an error-induced PHOSITA - no matter which side introduces that error. It is the function of the court in applying PHOSITA to get that set-up right, and I do not think the quantum of reversible error should be judged against the error-prone argument, poorly made.

Even if the Federal Circuit defers to the Board, the "shortcuts" of not explicating the proper foundations of applying the law are problematic. Shall we revisit eBay for a quick lesson?

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