109 Iowa L. Rev. Online 83 (2024)

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Abstract

This Essay is an invited response to The Ghost in the Patent System: An Empirical Study of Patent Law’s Elusive “Skilled Artisan,” by Professors Laura Pedraza-Fariña and Ryan Whalen. In their piece, Pedraza-Fariña and Ryan Whalen offer an empirical study and use it to argue for a new conception of the Person Having Ordinary Skill in the Art (“PHOSITA”), patent law’s nod to the “reasonable person” construct.

As Professors Pedraza-Fariña and Whalen suggest, the PHOSITA should be understood as a crucial concept in patent law, warranting more scholarly attention. Pedraza-Fariña and Whalen provide that attention. They assert, based on an original empirical analysis, that greater judicial engagement with the PHOSITA concept has not occurred—courts have instead continued to treat the PHOSITA construct superficially, and as a monolith. They offer two bases for this failure: (1) the lack of reconciliation between the empirical PHOSITA construct versus a set of normative aspirations that could be attributed to it; and (2) the failure of the courts to deploy the PHOSITA 
with a coherent set of normative commitments in mind. The antidote, say Pedraza-Fariña and Whalen, is to subdivide the monolithic PHOSITA into a set of doctrine-specific PHOSITAs, each formulated according to a blend of empirical and normative aspects tuned to the particular doctrine at issue. They summarize their prescriptions in a table that maps out the empirical and normative dimensions to these respective doctrine-specific PHOSITAs.

In this Response Essay, we offer two primary observations. First, in its most recent opinion on patent law—released after Pedraza-Fariña and Whalen’s piece was published—the Supreme Court in Amgen v. Sanofi displayed no interest in engaging with the PHOSITA construct and its subtleties. To the contrary, it utterly “ghosted” the ghost of the patent system (if we may), resolving a complex biotechnology enablement case about antibodies by wallowing about in nineteenth century patent opinions dealing with nineteenth century inventions (of course) such as the telegraph, the incandescent light, and starch glue for wood veneer. Instead of taking the opportunity to refine the PHOSITA construct along empirical and normative lines, as Pedraza-Fariña and Whalen advocate, the Court treated the PHOSITA as a vaporous non-entity barely meriting mention. If there ever was a trend toward elucidating the PHOSITA’s technical capacities and using them to drive case outcomes, the Supreme Court’s Amgen decision has brought that trend to a crashing halt—perhaps unwittingly and sub silentio, but a crashing halt nonetheless.

Second, while we align with Pedraza-Fariña and Whalen’s plea for acknowledging that normative aspirations undergird the PHOSITA construct, and we agree that those aspirations may supply a template for explaining and weighing empirical aspects of the construct, we part company with them when it comes to prescriptions. In particular, we are not convinced that dismembering the PHOSITA and reconstituting it as three separate constructs will improve decision making in patent cases. We contend that the enablement and obviousness PHOSITAs are the same construct and ought to stay that way. This is both a descriptive and normative argument, and it underscores that Pedraza-Fariña and Whalen’s proposals are not normatively neutral, even though the authors profess not to be espousing any “specific normative baseline” for critical doctrines such as obviousness.