The Power of Ordinary Skill: PTAB Denies Rehearing Request Based on the Defined POSA Lacking Skill to Support Obviousness Arguments

In Kinaxis Inc. v. Blue Yonder Group, Inc.,[1] the Board denied Petitioner Kinaxis’ rehearing request to overturn the Board’s decision to deny institution because the relevant person of ordinary skill in the art (“POSA”), as defined by the Petitioner, did not possess the requisite level of skill to make the alleged modifications underpinning Petitioner’s obviousness arguments.

Board’s Institution Decision

Petitioner initially challenged U.S. Patent No. 7,050,874, which was directed toward a computing system that automatically selects which supplier to source product components from based on comparing information in bills of material (BOMs) with previously stored supplier information, such as pricing and inventory. Petitioner presented an uncontested definition for the relevant POSA as someone having “formal collegiate education in an academic area emphasizing operations or supply chain management, and at least five years of experience.” Notably, this definition did not require a specific degree or recite any computer science training or coding ability, but merely included an emphasis on operations and supply chain management. Petitioner’s obviousness arguments alleged that a POSA would have been motivated to modify the primary reference, Szekely, with certain software functionalities disclosed in secondary references, such as the ability of a system to receive and analyze multi-part BOMs or communicate with additional external systems. The Board denied institution, because, based on the “low level of skill for a POSA that Petitioner defined,” a POSA lacked the “computer science knowledge or computer programming ability” needed to make such software modifications.

Petitioner’s Rehearing Request

Petitioner requested rehearing, first arguing that a “supply-chain focused” POSA would have “a “functional [or working] knowledge of software” and sufficient “understanding of software design” to combine the references, as alleged in the petition. It also argued that a POSA does not need to possess requisite programming knowledge because such software modifications could be carried out by those under the POSA’s guidance, and not the necessarily the POSA themselves.

In rejecting Petitioner’s first argument, the Board explained that, while the Petitioner-defined POSA may have exposure to supply chain software, they would not possess the functional “computer science knowledge or computer programming ability” needed to make Petitioner’s alleged modifications. Not only did Petitioner’s original POSA definition support this finding given it failed to recite the required knowledge or ability, but the Szekely reference itself stated that “users [of the system disclosed in Szekely] are not familiar with programming concepts.” Additionally, the Board was not convinced by Petitioner’s reliance on its expert declaration because such “testimony [was] inconsistent with the low level of skill required by Petitioner’s own definition.”

With respect to Petitioner’s second argument, while the Board agreed that a POSA need not possess all of the skills necessary to implement a modification of the prior art and could direct a programmer to make the desired modifications, this argument was never advanced in the petition and, thus, waived at rehearing. The Petitioner had only argued in the petition that a POSA had the skills to implement the proposed modifications and combinations.

Take Away

This decision highlights the importance of aligning the definition of a POSA with the state of the art. Parties must account for the alleged level of skill attributed to the POSA when making statements describing a POSA’s understanding of the prior art or their motivation to combine references (or lack thereof). Cases can be won or lost by a poorly defined POSA.

Endnotes

[1] IPR2021-01205, Pap. 18 (P.T.A.B Sept. 21, 2022)