EXPERTS IN PATENT CASES NEED EXPERTISE

Sundance, Inc. v. Demonte Fabricating Ltd., [2008-1068, -1115] (December 24, 2008) [MOORE, Dyk, Prost] The Federal Circuit reversed JMOL of validity of U.S. Patent No. 5,026,109.
DISCUSSION: On appeal Sundance complained about the denial of its motion in limine to exclude expert testimony of a patent lawyer who was not an expert in the art. The Federal Circuit agreed, holding that unless a patent lawyer is also a qualified technical expert, his or her testimony on the issues of validity and infringement is improper and thus inadmissible. QUOTE: “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 Federal Circuit said that with regard to invalidity a witness not qualified in the pertinent art may not testify as an expert as to anticipation, or any of the underlying questions, such as the nature of the claimed invention, what a prior art references discloses, or whether the asserted claims read on the prior art reference. Nor may a witness not qualified in the pertinent art testify as an expert on obviousness, or any of the underlying technical questions, such as the nature of the claimed invention, the scope and content of prior art, the differences between the claimed invention and the prior art, or the motivation of one of ordinary skill in the art to combine these references to achieve the claimed invention.
Regarding the grant of JMOL, the Federal Circuited noted that the consequence of its holding that the testimony of the patent attorney should have been excluded is that there was no expert testimony supporting a holding of obviousness. However, the Federal Circuit concluded that no such testimony was required because there are no underlying factual issues in dispute as to obviousness. The Court noted that the technology was simple (although not enough to make defendant’s witness, who held a Bachelor of Science Degree with high honors in Mechanical Engineering from Michigan Technological University, an expert) and neither party claimed that expert testimony is required to support such a holding.