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Patent lawyer without expertise in relevant field cannot testify on infringement, invalidity

By McKee, Voorhees & Sease, P.L.C.

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.

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Full post as published by FileWrapper on March 24, 2009 (boomark / email).