A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan.
The patent at issue related to a tele-presence system that allows a physician at a remote location to view a surgical procedure and to provide instructions and mentoring to personnel at the surgical site via video conference. The tele-presence system includes a cart with an overhead camera mounted on an arm or "boom" that can be extended or rotated. This allows the overhead camera to be placed in different positions, including inside the sterile operation field, in order to provide a desirable view of the patient and operating procedure. Petitioner filed a petition for inter partes review, alleging that the claims would have been obvious in view of several prior art combinations.
In assessing whether to institute IPR, the board considered, as a preliminary matter, whether petitioner's expert had the requisite level of skill to testify from the perspective of a skilled artisan. The board found that the definition of a skilled artisan, which was advanced by petitioner, required "at least two years of research or work experience in designing or engineering teleconferencing systems, such as those used in telemedicine." The board further found that although petitioner's expert had advanced degrees in electrical engineering, he lacked specific experience researching or engineering teleconferencing systems. In reaching this conclusion, the board found the expert's vague reference to "numerous experiences with teleconferencing" and to having performed "design reviews of telemedicine devices" insufficient to establish himself as a skilled artisan. Therefore, the board gave no weight to testimony by petitioner's expert on any issue analyzed through the lens of an ordinarily skilled artisan, including what a skilled artisan would have derived from the prior art technology.
Nevertheless, the board found that even if petitioner's expert had been a skilled artisan, his testimony was a "carbon copy" of the petition, neither of which explained sufficiently a motivation for combining the asserted references to arrive at the claimed tele-presence system. Thus, the board found that petitioner failed to establish why a skilled artisan would have modified a mobile robot disclosed in the prior art to include a camera attached to the robot by an adjustable boom. According to the board, petitioner failed to address patent owner's contention that coupling a camera to the prior art robot would complicate the steering and balance which could cause the mobile robot to tip over or contact objects, such as patients. Because the board found the deficiencies in the petition dispositive, it declined to institute IPR.
Practice Tip: When relying on an expert to provide opinions from the perspective of an ordinarily skilled artisan, including before the PTAB, it is critical to ensure that the selected expert meets, at a minimum, the applicable definition of a skilled artisan, which needs to be backed up by evidence and not conclusory statements.
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