Federal Circuit: You are Not a Person of Ordinary Skill in The Art

MARK TERRY, ESQ.

Patent disputes frequently turn on the perspective of a hypothetical person of ordinary skill in the relevant art. That standard can affect obviousness, claim interpretation, enablement, and the admissibility of expert testimony.

In Extreme Networks v. Enterasys Networks, a dispute involving router technology, the court considered whether an expert possessed the education and practical experience required to qualify in the specific technical field.

The expert had computer-programming education and system-administration experience but lacked direct work designing or developing high-speed switches, bridges, or routers. The court upheld the decision excluding her testimony.

The ruling shows that general experience in a related technology may be insufficient when the disputed patent requires specialized product-design or development knowledge. Courts may examine education, the problems encountered in the field, prior-art solutions, the pace of innovation, and the sophistication of the technology.

Patent litigants should define the relevant level of skill carefully and select experts whose credentials match that definition. A strong résumé in a broad field does not automatically establish ordinary skill in the narrower art addressed by the patent.

The practical lesson is straightforward: expert selection should begin with the patent’s actual technology and the work performed by professionals in that field at the relevant time.