Patent Law

Not Blissed

By Gary Odom and Jordan Kuhn

Sundance sued DeMonte for infringing 5,026,109, claiming a retractable tarp. "Demonte's patent law expert, Daniel Bliss, opined that one of ordinary skill in the art would be motivated to combine" two prior art references to render '109 obvious. The jury bought it, but not the judge, who figured the prior art didn't cover it, even considering testimony from Bliss. On appeal, the CAFC was less than blissed with Bliss.

Sundance v. DeMonte (CAFC 2008-1068)

Federal Rule of Evidence 702 provides that:

[i]f scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts.

Under Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579, 597 (1993), and Rule 702, courts are charged with a "gatekeeping role," the objective of which is to ensure that expert testimony admitted into evidence is both reliable and relevant. See also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999) (holding that Rule 702 applies not only to "scientific" testimony, but to all expert testimony). Patent cases, like all other cases, are governed by Rule 702. There is, of course, no basis for carving out a special rule as to experts in patent cases.

We note that "[a]dmission of expert testimony is within the discretion of the trial court." Acoustical Design, Inc. v. Control Elecs. Co., 932 F.2d 939, 942 (Fed. Cir. 1991) (citing Salem v. U.S. Lines Co., 370 U.S. 31, 35 (1962)). We review the admission of expert testimony for an abuse of discretion. Id. (citing Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)); see also Kumho Tire Co., 526 U.S. at 152 ("[A] court of appeals is to apply an abuse-of-discretion standard when it reviews a trial court's decision to admit or exclude expert testimony.").

DeMonte had Bliss opine "USPTO practices and procedures (eight pages explaining prosecution and reexamination); claim construction (four pages interpreting the claim construction ruling); noninfringement (seven pages concluding that the claims of the '109 patent are not infringed); invalidity, including anticipation and obviousness (thirteen pages concluding that the claims of the '109 patent are invalid); and inequitable conduct (six pages concluding that the '109 patent is unenforceable due to inequitable conduct)." Sundance objected, arguing that Bliss "lacks appropriate technical background in the field of the invention." Exactly, the CAFC chimed, in finding abuse of discretion by the district court for allowing technical testimony from Bliss.

Admitting testimony from a person such as Mr. Bliss, with no skill in the pertinent art, serves only to cause mischief and confuse the factfinder. Unless a patent lawyer is also a qualified technical expert, his testimony on these kinds of technical issues is improper and thus inadmissible. Because Mr. Bliss was never offered as a technical expert, and in fact was not qualified as a technical expert, it was an abuse of discretion for the district court to permit him to testify as an expert on the issues of noninfringement or invalidity.

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. Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702. Indeed, where an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expert in that art. We understand that patent lawyers are often qualified to testify as technical experts, but such a qualification must derive from a lawyer's technical qualifications in the pertinent art.

We do not, of course, suggest that being a person of ordinary skill in the art automatically entitles a witness to testify as an expert on these or other matters. On the other hand, our opinion should not be read as suggesting that Rule 702 requires a witness to possess something more than ordinary skill in the art to testify as an expert. A witness possessing merely ordinary skill will often be qualified to present expert testimony both in patent trials and more generally. See Fed. R. Evid. 702; see also United States v. Wilson, 484 F.3d 267, 275-77 (4th Cir. 2007) (district court did not abuse discretion under Rule 702 by permitting police officer to testify as to the meaning of coded drug language); United States v. Marler, 614 F.2d 47, 49-50 (5th Cir. 1980) (district court did not err by permitting deputy fire marshal to offer expert testimony on cause of fire). Admission of expert testimony remains subject to the Rules of Evidence and is committed to the discretion of the district court. Fed. R. Evid. 702; Acoustical Design, 932 F.2d at 942.

With regard to invalidity, for example, 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. See Acoustical Design, 932 F.2d at 942 (sustaining trial court's preclusion of patent expert from testifying about the drafting of claims to avoid prior art and that the claims in suit read on the prior art, as it would not have been of any benefit to the jury).

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. See Medtronic, 799 F.2d at 741; In re Deters, 515 F.2d 1152, 1155 (CCPA 1975) (rejecting patent expert testimony on nonobviousness where patent expert was not a person ordinarily skilled in the art and thus his opinion was "not evidence entitled to any weight in resolving the issue").

Mr. Bliss lacks the necessary expertise to be of assistance to the court or the jury on the technical aspects of this case. The court, in its role as gatekeeper, must exclude expert testimony that is not reliable and not specialized, and which invades the province of the jury to find facts and that of the court to make ultimate legal conclusions. Allowing a patent law expert without any technical expertise to testify on the issues of infringement and validity amounts to nothing more than advocacy from the witness stand.

The CAFC then readily found '109 Obzillaed, Bliss notwithstanding.

"[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.

Reversed.

Full post as published by The Patent Prospector on December 27, 2008 (boomark / email).