Should A PHOSITA Be Defined By The Specification Or By The Claims?

Introduction

An inventor cannot obtain a patent for an invention that is obvious to a “person having ordinary skill in the art” (“PHOSITA”) but courts continue to struggle with the question of whether the relevant person should be identified in light of the invention disclosed in the specification or the invention claimed. In a recent IPR decision, the PTAB adopted the former approach. Axonics Modulation Technologies, Inc. v. Medtronic, Inc., IPR2020-00715, (PTAB Sep. 13, 2021). This article considers the PTAB's analysis and suggests that the claims should be the proper measure for determining who is a PHOSITA.

The Medtronic IPR

After Drs. Schmidt and Tanagho observed that stimulation of the sacral nerves could alleviate various pelvic floor disorders, they obtained U.S. Patent No. 8,036,756, relating “to an implantable medical electrical lead […] for stimulation of a bundle of sacral nerve fibers.”¹