Should There Be PHOSITA Juries In Patent Trials?

from the isn't-that-what-the-law-should-require? dept

Tue, Apr 21st 2009 12:31am — Mike Masnick

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.

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Filed Under: juries, patents, skilled in the art

25 Comments

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Axel Flörke, 21 Apr 2009 @ 1:41am

landsberg
well, difficult stuff ... keep the good content up!
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Anonymous Coward, 21 Apr 2009 @ 2:41am

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.

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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Anonymous Coward, 21 Apr 2009 @ 3:18am

Revert to the best knowledge you know
In the past, when they couldn't derive the source or motive of a 3 page statement, an old boss always used few words.

If I recall correctly the words always used were "Hmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmmm".
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Osno, 21 Apr 2009 @ 4:26am

Don't you have expert witnesses in your trials? You can easily have the expertise there.
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bob, 21 Apr 2009 @ 4:55am

Tricks
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.

It's the lawyers not the law.
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Matt, 21 Apr 2009 @ 5:07am

jury selection = opposite
Most juries are selected for being stupid as that means you are easily convinced of other views. They don't want smart people as smart people tend to have their own viewpoints.

/thus phosita is great but won't happen.
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Anonymous Coward, 21 Apr 2009 @ 5:22am

Experts, Juries and Post-Grant Review
As noted by several others, one of the key features of patent trials is presentations by expert witnesses, who arguably are not persons of ordinary skill in the art but have extraordinary skill in the art. So, the technology is certainly available.

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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Willton, 21 Apr 2009 @ 5:55am

The Examiner is supposed to be the PHOSITA
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.

It shouldn't be that surprising: the examiner is supposed to be the person having ordinary skill in the art.
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Anonymous Coward, 21 Apr 2009 @ 6:11am

Other issues
Patent trials should have strict rules that limit testimony and evidence to the technical facts of the case.

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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mike42 (profile), 21 Apr 2009 @ 6:25am

Prior art
I think that a panel used at the time of patent review would not only be able to accurately deny "obvious" patents, but would also easily identify "prior art" that many of the bogus patents derive from.
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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Anonymous Coward, 21 Apr 2009 @ 6:40am

yea, expert witness
Juries are supposed to be made of the common population. Expert witnesses are witnesses that advise the jury on subjects they don't understand.

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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angry dude, 21 Apr 2009 @ 6:53am

another patent bs from mikey
wonderful suggestion
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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spaceman spiff, 21 Apr 2009 @ 7:21am

PHOSITA on juries
Actually, I think Wallach's idea has merit, thought it would be much more practical if only a few people on the jury, such as the foreperson, actually were such. It would at least add some balance to the process.
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Blake Reid, 21 Apr 2009 @ 7:47am

Jury Bias
Mike, the data doesn't precisely back up your assertion about jury bias. Juries are more likely to favor whoever files suit first - the patentee in an infringement action, the alleged infringer in a declaratory judgment action. Now, in practice, there are more infringement actions than DJs, so juries on the whole appear to be biased toward patentees. But, I think the insinuation that this is a result of jury stupidity about technology is not necessarily correct; millions of dollars are spent condensing the technology to understandable sound bites. The trial is likely to be long and boring, which may lose some jurors, but this would be a problem with PHOSITAs as well.

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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Anonymous Coward, 21 Apr 2009 @ 8:17am

So we need experts on juries for patent trials? Have you lost all perspective?

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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Anonymous Coward, 21 Apr 2009 @ 8:25am

Re:
What are you talking about? Regardless of the type of trial experts are often called forward to testify as to various aspects of the case. Murder trials call forward forensics experts (both for the prosecution and for the defense) to explain what evidence means. Flip your comment around. We have people on trial for the lives and experts to support the system, so why would we think patent trials would be any different.

You really need to get a real world perspective on what is actually practiced.
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Willton, 21 Apr 2009 @ 9:09am

Re: Re:
What are you talking about? Regardless of the type of trial experts are often called forward to testify as to various aspects of the case. Murder trials call forward forensics experts (both for the prosecution and for the defense) to explain what evidence means. Flip your comment around. We have people on trial for the lives and experts to support the system, so why would we think patent trials would be any different.

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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Thomo, 21 Apr 2009 @ 9:14am

Unpatentable
Don't think that Wallach can get a patent on his idea - blue ribbon juries were ruled out long ago.
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Anonymous Coward, 21 Apr 2009 @ 11:11am

Re: Re: Re:
Willton:

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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Mike (profile), 21 Apr 2009 @ 12:40pm

Re:
So we need experts on juries for patent trials? Have you lost all perspective?

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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Mike (profile), 21 Apr 2009 @ 12:41pm

Re: Jury Bias
Mike, the data doesn't precisely back up your assertion about jury bias. Juries are more likely to favor whoever files suit first - the patentee in an infringement action, the alleged infringer in a declaratory judgment action.

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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Bettawrekonize, 3 May 2009 @ 12:40pm

Perhaps we can simply adjust the difficulty required for a patent to hold water. Maybe instead of a majority vote one needs a 2/3 vote or a 3/4 vote by a jury of 12 or whatever in order for a patent to stand. Otherwise, it gets rejected.
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Bettawrekonize, 3 May 2009 @ 4:37pm

Again, the above solution mentioned is evidence of the fact that simple, practical solutions are possible. The main problem here is overcoming the entities (that influence government) that stand to gain from the lack of a solution. Good luck with that.
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Bettawrekonize, 3 May 2009 @ 5:46pm

Think of it this way. If you have a jury of 12 and 7 out of the twelve believe that an idea is novel, that means that 5/12 of those believe that the idea is not new and novel. Well, these juries are supposed to represent the general population. That's amounts to (slightly over) 40 percent of the general population believing that the idea is not new, novel, and innovative. If 40 percent of the population believe that an idea is obvious enough to not deserve a patent then it's probably not deserving of a patent (if 40 percent of the population think that they can come up with the same idea (solution to a problem if they come across that problem) or an equivalent one then it can reasonably be considered an obvious one). Based on this reasoning we can conclude that a higher percentage of the population is required to believe that an idea is innovative enough for a patent for us to reasonably consider it innovative. So we should tweak the numbers accordingly. Perhaps a 2/3 majority or a 3/4 majority upholding the patent should be required.
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Bettawrekonize, 3 May 2009 @ 6:17pm

Someone may incorrectly argue, "yeah, but if 40 percent of the population think an idea isn't innovative enough for a patent, that means that 60 percent do. The majority should rule." but probably less than 40 percent of the general population are experts in the relevant field. It can be reasonably assumed that if 40 percent of the general population (who do not constitute experts in the relevant field) think an idea is obvious then it's probably even more obvious to experts in a particular field and hence not deserving of a patent. Hence a higher majority vote should be required (ie: a 2/3 or a 3/4 majority vote by the jury).
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