The Energy Of Unusual Ability: PTAB Denies Rehearing Request Primarily based On The Outlined POSA Missing Ability To Give a boost to Obviousness Arguments – Patent

In Kinaxis Inc. v. Blue Yonder Workforce, Inc.,¹
the Board denied Petitioner Kinaxis’ rehearing request to
overturn the Board’s choice to disclaim establishment since the
related individual of bizarre ability within the artwork (“POSA”), as
explained by way of the Petitioner, didn’t possess the needful degree of
ability to make the alleged changes underpinning
Petitioner’s obviousness arguments.

Board’s Establishment Choice

Petitioner to start with challenged U.S. Patent No. 7,050,874, which
used to be directed towards a computing device that mechanically selects
which provider to supply product elements from in accordance with evaluating
knowledge in expenses of subject material (BOMs) with in the past saved
provider knowledge, reminiscent of pricing and stock. Petitioner
offered an uncontested definition for the related POSA as
somebody having “formal collegiate schooling in an educational
space emphasizing operations or delivery chain control, and at
least 5 years of revel in.” Significantly, this definition did
no longer require a particular level or recite any laptop science
coaching or coding talent, however simply incorporated an emphasis on
operations and provide chain control. Petitioner’s
obviousness arguments alleged {that a} POSA would had been motivated
to switch the principle reference, Szekely, with positive instrument
functionalities disclosed in secondary references, such because the
talent of a device to obtain and analyze multi-part BOMs or
be in contact with further exterior methods. The Board denied
establishment, as a result of, in accordance with the “low degree of ability for a
POSA that Petitioner explained,” a POSA lacked the
“laptop science wisdom or laptop programming
talent” had to make such instrument changes.

Petitioner’s Rehearing Request

Petitioner asked rehearing, first arguing {that a}
“supply-chain centered” POSA would have “a
“purposeful [or working] wisdom of instrument” and
enough “working out of instrument design” to mix
the references, as alleged within the petition. It additionally argued {that a}
POSA does no longer wish to possess needful programming wisdom
as a result of such instrument changes might be performed by way of the ones
below the POSA’s steerage, and no longer the essentially the POSA
themselves.

In rejecting Petitioner’s first argument, the Board
defined that, whilst the Petitioner-defined POSA can have
publicity to provide chain instrument, they wouldn’t possess
the purposeful “laptop science wisdom or laptop
programming talent” had to make Petitioner’s alleged
changes. No longer handiest did Petitioner’s authentic POSA
definition give a boost to this discovering given it did not recite the
required wisdom or talent, however the Szekely reference itself
said that “customers [of the system disclosed in Szekely] are
no longer conversant in programming ideas.” Moreover, the
Board used to be no longer satisfied by way of Petitioner’s reliance on its professional
declaration as a result of such “testimony [was] inconsistent with
the low degree of ability required by way of Petitioner’s personal
definition.”

With recognize to Petitioner’s 2d argument, whilst the
Board agreed {that a} POSA needn’t possess all the talents
important to enforce a amendment of the prior artwork and may just
direct a programmer to make the specified changes, this
argument used to be by no means complex within the petition and, thus, waived at
rehearing. The Petitioner had handiest argued within the petition {that a}
POSA had the talents to enforce the proposed changes and
combos.

Take Away

This choice highlights the significance of aligning the
definition of a POSA with the state-of-the-art. Events should
account for the alleged degree of ability attributed to the POSA when
making statements describing a POSA’s working out of the
prior artwork or their motivation to mix references (or lack
thereof). Instances will also be gained or misplaced by way of a poorly explained POSA.

Footnotes

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

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