Dionne v. Liotta

Informative decision only: persuasive authority, not binding precedent. When parties define the level of ordinary skill by abstract references to academic degrees and years of laboratory experience, the Board will give those references minimal, if any, weight, because the panel's personal knowledge is irrelevant and what counts is what the record shows. A party should support what a hypothetical person of ordinary skill is presumed to know with standard texts, other publicly available documents, or cross-examinable expert testimony on particular facts and techniques known in the field, preferably citing documents. No prior precedent directly addressed this issue in the text; the Board notes it had made a similar observation in Argyropoulos v. Swarup, 56 USPQ2d 1795, 1807 (Bd. Pat. App. & Int. 2000) (non-precedential). For the party challenging patentability, or any party arguing a skill level, a declarant's bare statement that the artisan has a given degree and years of experience will not carry the issue, so the challenger must tie its skill-level position to documents and concrete experience. For the opposing party, such as the patentee or the party defending enablement, the same rule means it can attack conclusory credentials-based declarations and can rely on the opponent's own experts' admissions about what routine workers could do. The Board relied on Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955 (Fed. Cir. 1986) for the factors bearing on skill level, and on Chief Judge Mayer's concurrence in Fromson v. Antiec Printing Plates, Inc., 132 F.3d 1437 (Fed. Cir. 1997) for the point that the record, not the judges' own knowledge, controls. LEGAL TEST OR STANDARD: The person of ordinary skill is a hypothetical person presumed to know the relevant prior art. In determining skill level the Board may consider "type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field." Every factor may not be present, and one or more may predominate (Custom Accessories). The Board gave minimal, if any, weight to degrees and abstract descriptions of length of service, and considered expert testimony in light of the technical documents and concrete experience the experts cited. TRIGGERING FACTS: Interference over FTC enantiomers in which the parties disputed ordinary skill for enablement purposes. Dionne's experts proposed a Ph.D. in organic chemistry plus two years of experience. Liotta's experts proposed a B.S. plus four or five years of laboratory experience. Dionne offered only conclusory expert statements, and its own experts conceded that enantiomer separation was taught in undergraduate courses and done routinely by students with bachelor's degrees. The rule applies whenever a party defines skill only by degree and years of experience without documentary or concrete factual support. KEY QUOTE: "Abstract references to a period of experience are essentially meaningless." (Paper No. 119, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board refers to its own earlier observation in Argyropoulos v. Swarup, 56 USPQ2d 1795, 1807 (Bd. Pat. App. & Int. 2000) (non-precedential), and follows Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955 (Fed. Cir. 1986). PRACTICE TIP: Do not define ordinary skill by degrees and years of experience alone. Support the skill level with standard texts, publicly available documents, or expert testimony stating the specific facts and techniques known to the average worker in the field, citing documents, and give the expert's underlying basis so the testimony can be cross-examined.