Should There Be PHOSITA Juries In Patent Trials?
from the isn't-that-what-the-law-should-require? dept
One of the complaints we've had about the patent system and current patent law is that the law clearly says that patents should only be granted on things that are new and non-obvious to a person having ordinary skill in the art (the so-called PHOSITA). In the past, we've questioned why the USPTO doesn't actually make use of skilled practitioners in determining obviousness of patents. Some patent system supporters claim that doing so is somehow unfair -- but it's exactly what the patent system calls for. It seems odd that a patent examiner should be asked to judge what a person skilled in the art thinks of a patent without ever asking a person skilled in the art. However, Dan Wallach, over at Freedom To Tinker, takes this idea a step further to ask why no one talks about requiring juries in patent trials to be made up of PHOSITAs. While he admits the idea is probably impractical, it does seem like a reasonable question. Juries are notoriously inclined to side with patent holders, often because they don't know enough about the technology to know whether or not the patent is valid. While I agree with Wallach that this is probably impractical, it does make you wonder if there are better solutions that actually get those skilled in the art to weigh in during patent trials, rather than actively keeping them out.Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.
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Filed Under: juries, patents, skilled in the art
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landsberg
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What makes you think that those skilled in the art are actively kept out...and of what? The courtroom? The years-long pretrial process?
The experts are certainly skilled in the art, and are, in general, persons of extraordinary skill in the art. I assume that either side could find a person of ordinary skill and call them as a witness, for example, although I've never seen it happen.
Both sides often retain technically skilled consultants, who teach the attorneys about the technologies in question, craft depositions, test technical theories, and so on.
The special master who creates the Markman report is likely technical, or has technical assistance. Likewise, judges often have technical clerks or consult technical interns.
People of ordinary skill are not even directly excluded from the jury. I have seen patent juries where people of ordinary skill in the art were empaneled. It's not like "hey, anybody who knows anything about biochemistry, raise your hand...back to the selection pool for you!"
There's an orderly selection process for jurors, and jurors are asked to decide the case based on the evidence presented. If the defendant wants to argue that an invention was obvious to a person of ordinary skill in the art at the time, they have to provide evidence for that. Years of preparation are generally involved in deciding what evidence can and will be presented, and how.
The rules of evidence are there for a reason, and it's very hard to know when a jury member's own skills or knowledge helps or hinders getting a fair trial. It is not, for example, a jury's job to decide whether a patent is invalid or not (directly). It is a jury's job to decide whether the defendant has presented adequate evidence to invalidate the patent. Likewise, it is the jury's job explicitly to ignore their common knowledge that "system bus" has nothing to do with "the Internet" and to pay attention to the Markman report, which may say that's exactly what it means.
Likewise, let's say there's some information that got left out of a case, that might be more-or-less common knowledge to a person of ordinary skill in the art. Sometimes that happens for a good reason. Sometimes it was excluded because of a pretrial motion the. Or maybe both sides just missed it. In the latter case, it's not a juror's job to fill in what the lawyers didn't do. If one side loses because they didn't present a complete case, that's how the system works. That's how it's supposed to work.
As one commenter on the article's thread pointed out, you also have to consider the perspective of a person of ordinary skill in the art at the time of the invention. Think about whatever field it is you're in - would it be easy for you to just forget everything you know or would have known in the last 10, 15, maybe even 20 years?
The law is just as technical as most things that are patented, although it's far more tolerant of ambiguity, imprecision, and temporary mistakes. Just because the law seems weird doesn't mean there's not good reasons for it to be that way.
The law doesn't get it right every time. However, it builds in multiple levels of corrective processes. You can appeal to the Federal Circuit on infringement, or validity, or damages. You can appeal to the Federal Circuit en banc if that doesn't work. You can appeal to the Supreme Court if that doesn't work. Patent cases also get a completely separate bite of the apple, because while you're arguing over a patent's validity in court, you can also have the patent reexamined by the patent office, where there are yet more tiers of appeals. The law works pretty hard to get the decisions right initially, and very, very hard to get them right eventually.
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Revert to the best knowledge you know
If I recall correctly the words always used were "Hmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmm".
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Tricks
It's the lawyers not the law.
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jury selection = opposite
/thus phosita is great but won't happen.
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Experts, Juries and Post-Grant Review
As for examiners, there are extremely good examiners, and there are some not-so-good examiners. As with all things, a spectrum. However, one of the positive patent reforms was to provide for post grant reviews and a simplified process where prior art could be submitted to invalidate issued patents, along with a simplified pre-grant process. Most of the people I know support these processes.
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The Examiner is supposed to be the PHOSITA
It shouldn't be that surprising: the examiner is supposed to be the person having ordinary skill in the art.
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Other issues
The jury should not be presented with evidence that the patent was first applied for by a struggling single parent who went to church every Sunday and the defendant is an evil multinational corporation that kills puppies.
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Prior art
The problem is, of course, that the legal definition of "obvious" and "prior art" is different from the definition that Homo Sapiens use.
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yea, expert witness
It'd be a failure of lawyers not to find an expert witness to advise the jury properly on the subject and complete incompetence on the lawyers part not to summarize these things properly.
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another patent bs from mikey
and where do you get those PHOSITA juries ?
from the engineering stuff of tech crocodiles like Mshit or IBM ?
Thanks, but no thanks
Those serial infringers already hire so-caleld "experts" to testify whatever they are paid for
Just leave judges and juries alone, Pleeeeeeze !!!
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PHOSITA on juries
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Jury Bias
The real tilt comes from the apparent ethos of each type of case. In infringement actions, the plaintiff presents a shiny framed patent that by law is presumed valid by the smart folks at the United States Patent and Trademark Office - shouldn't you trust them? In the declaratory judgment action, the plaintiff is trying to stop a big, evil company from hurting its business and costing its workers their jobs - you do care about workers' jobs, right?
PHOSITA juries are likely to swap these biases out for another set of equally undesirable biases (software patents are per se terrible, pharmaceutical companies need patents to survive, this patent looks obvious to me, etc.) - juries are going to be less than perfect no matter what. Fortunately, only a small percentage of patent litigation ever ends up in front of a jury, so it's a bit of a tempest in a teapot.
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Re: Jury Bias
Interesting! I didn't know that, but that's very useful information. Makes sense, too... though, again sorta raises questions about the usefulness in general of a jury trial.
Thanks!
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We have people on trial for their lives and the jury system is fine but for patents, we need experts?
You guys really need to get a real world perspective on what is important and what isn't.
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Re:
You really need to get a real world perspective on what is actually practiced.
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Re: Re:
We may have expert witnesses in each case, but we certainly do not have expert jurors in each case. It will be a rare day when you will find a forensics expert on the jury for a murder trial.
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Re: Re: Re:
Yes, that is true. While it would be nice to have experts on the jury, that is unrealistic. I also suspect that experts on the jury might also tend to bring their biases with them, and may well have made their decision before all the facts are presented.
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Re:
We have people on trial for their lives and the jury system is fine but for patents, we need experts?
You guys really need to get a real world perspective on what is important and what isn't.
Reading comprehension time: I said the idea was impractical, but raised interesting questions. And you freak out about how impractical it is.
Yeah, great. Have another point?
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Unpatentable
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