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Patent lawyer without expertise in relevant field cannot testify on infringement, invalidity
March 24, 2009
The Federal Circuit recently reversed a district court's post-verdict grant of judgment as a matter of law of nonobviousness, applying the KSR obviousness standard and addressing the requirements for expert testimony for legal conclusions of obviousness. The Federal Circuit clearly set forth that patent attorneys without specific skill and training in the area of the technology involved in the patent-in-suit are not qualified to testify as experts regarding infringement and invalidity. Specifically in this case, the Federal Circuit held it was an abuse of discretion to allow a patent attorney to testify as an expert regarding infringement or invalidity because he lacked experience in the field of the patent, here segmented tarpaulin systems. As a result, his testimony did not meet the standard of admissibility of evidence under Rule 702.This fact notwithstanding, the court still held there was sufficient evidence in the record to conclude the asserted claim was obvious. The court characterized this case as much like KSR, where all elements of the claim were in the prior art and, in combination, their respective functions remained the same, producing no unexpected results.More on Sundance, Inc. v. DeMonte Fabricating Ltd. after the jump.Sundance owns a patent claiming a segmented cover system. Sundance brought suit against DeMonte for infringement. At the district court, a jury held the patent was infringed but invalid as obvious in light of two prior art references, Cramaro and Hall.The jury's verdict was aligned with DeMonte's patent law expert who testified that a person of ordinary skill in the art would have been motivated to combine the two references, rendering the patent obvious. Notably, the decision was rendered prior to the Supreme Court's decision in KSR Int'l Co. v. Teleflex Inc. Sundance filed a motion for judgment as a matter of law of no obviousness, which the court granted, holding "there was not sufficient evidence for the jury to conclude that one skilled in the art would have combined" the references to arrive at "a segmented tarp used for truck covers." After the ruling in KSR, DeMonte moved for reconsideration, but the district court denied the motion, holding it had not mechanically applied the teaching-suggestion-motivation test. DeMonte then appealed.The Federal Circuit reversed. The court first addressed the admission of testimony by DeMonte's patent law expert. Sundance attempted to exclude the expert's testimony by asserting he was unqualified as a patent attorney to comment on ultimate legal conclusions, such as infringement and obviousness, because he did not have expertise in the area of the technology, namely segmented tarpaulin systems. The district court denied Sundance's motion in limine on the issue, and permitted the expert to testify.The Federal Circuit held the district court abused its discretion in allowing the expert testimony at trial, as the expert was not qualified to testify as an expert witness on issues of infringement and invalidity. The court held that according to Rule 702, the expert could not "assist the trier of fact to understand the evidence or to determine a fact in issue." The court clarified that testimony of an expert "with no skill in the pertinent art, serves only to cause mischief and confuse the fact finder." The court stated that unless a patent attorney is also qualified as a technical expert any testimony on technical issues is "improper and thus inadmissible."The Court balanced this requirement, with the recognition that patent analysis often requires the perspective of a "person of ordinary skill in the art," noting that its interpretation of Rule 702 does not require a witness to possess something more than ordinary skill in the art in order to testify as an expert. A witness who has ordinary skill may be qualified as an expert in patent trials. The court clearly stated that matters relating to invalidity (such as anticipation or obviousness) or any underlying technical questions relating to such determinations may not be addressed by a witness who is not qualified in the pertinent art. The Federal Circuit on numerous occasions referenced the court's obligation as a "gate keeper" for unreliable expert testimony, and summarized its holding by stating:
We hold that it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.
The court next considered the district court's grant of judgment as a matter of law that overturned the jury's verdict of obviousness. The entry of judgment as a matter of law requires all evidence to be viewed most favorable to the non-moving party, such that there is no genuine issues of material fact for the jury to find a conclusion in favor of the moving party. As a result of the Federal Circuit's finding that the expert testimony should have been excluded by the district court, there was no expert testimony supporting a finding of obviousness. However, the court held no such testimony was required in this case because there were no underlying factual issues in dispute relating to obviousness. The technology in this case was simple and therefore did not require expert testimony for a jury to reach such a finding. Ultimately, the Federal Circuit held the asserted claim was obvious and therefore invalid under the Supreme Court's decision in KSR. Specifically, the court noted it was undisputed that the Cramaro reference taught all limitations of the claim with the exception of "a cover section [that] can be removed from the cover system independent of the other cover sections." It was also undisputed that Hall disclosed a cover made up of several cover sections. The Federal Circuit held the combination of the two references taught every limitation the asserted claim, rejecting Sundance's argument to the contrary. The district court's basis for granting judgment as a matter of law was that Hall was outside the "truck environment," and was thus nonanalogous art, leading to a lack of any reason to combine with Cramaro. The court noted that both references state their respective cover systems could be used as truck coverings. The court aptly summarized the reason for its determination:
"[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." KSR, 127 S. Ct. at 1742. Such a combination is more likely to be obvious where it "'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement.” Id. at 1740 (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). The truck cover of claim 1 of the '109 patent is the result of precisely such an obvious combination.In combination with each other, the cover system of Cramaro performs exactly the function that it performs independent of Hall, and the removable cover sections of Hall perform exactly the function that they perform independent of Cramaro. The elements of the cover system of Cramaro perform several functions, including protection of the cargo, containment of the cargo, and retraction of the cover. None of these functions changes upon the simple act of replacing the one-piece cover of Cramaro with the segmented cover of Hall. The segmented cover of Hall performs the function of allowing individual replacement of the cover sections. This function does not change upon incorporation into the Cramaro cover system. The combination simply mechanizes Hall’s segmented cover or segments Cramaro’s mechanized cover.
The court also held the prima facie case of obviousness could not be overcome by secondary indicia of nonobviousness. As a result of the court's decision on obviousness, the remaining issues of infringement and prejudgment interest were not addressed.To read the full decision in Sundance, Inc. v. DeMonte Fabricating Ltd., click here.
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