Sometimes It's Not What You Say...

February 03, 2009

. . . It's who says it -- at least when it comes to patent attorneys offering expert testimony in an infringement case.  In Sundance, Inc. v. Demonte Fabricating Ltd., the district court allowed a patent attorney to testify on issues of infringement and validity even though the attorney had no expertise in the technology covered by the patent.  Reversing, the Federal Circuit said the evidentiary requirements regarding expert testimony apply to all experts, even patent attorneys.  The court said that unless a patent lawyer also happens to have separate technical qualifications, any testimony from that attorney on technical issues is improper and thus inadmissible.  Interestingly, the panel then looked to KSR and determined that it could decide the issue of obviousness itself  --  because the technology the patent covered was "simple."

Who says it, indeed.    

The patents in Sundance covered a retractable, segmented cover system for trucks, swimming pools and other structures.  After trial of patent holder Sundance's infringement claims, the jury found the patent infringed, but also found it invalid for obviousness.  The trial judge vacated the jury's determination and held that the patent was not obvious as a matter of law.  Defendant Demonte appealed.

Before reaching the question of obviousness, the Federal Circuit took the opportunity the case presented to review the role of experts in patent cases.  The court emphasized that the Supreme Court's decision in Daubert applies equally to patent cases, just as it does in other kinds of litigation.  Nothing within patent law excuses courts from the "gate keeping" role they have under Federal Rule of Evidence 702 to ensure that expert testimony in such cases is both reliable and relevant.  And patent lawyers, as a class of experts, do not get a pass; they may, in fact, draw greater scrutiny.

Here, the court said, the trial court violated that standard and abused its discretion by allowing the patent attorney to discuss issues regarding "ordinary skill in the art" when the patent attorney had no expertise in tarps or covers.  The Sundance court said that letting persons with no skill in the pertinent art testify as experts "serves only to cause mischief and confuse the factfinder."  Except for those rare instances where a patent lawyer is also a qualified expert in the pertinent art, patent lawyers are only qualified to testify on general patent office practice and procedure.  Even though patent attorneys may have gained technical expertise practicing patent law, that, in and of itself, is insufficient to qualify them as technical experts under Rule 702.

Once the Federal Circuit excluded the testimony of defendant's expert, the jury's obviousness holding lacked any supporting expert testimony.  Nonetheless, following KSR, the Federal Circuit still was competent to determine obviousness on its own, particularly given the relative simplicity of the "technology" involved.

Looks like your mom is right (again).  When it comes to expert testimony in a patent case, how you say it might just prove to be the difference in whether or not what your expert has to say gets heard.  Cross that fellow member of the patent bar off your witness list and find someone with the requisite level of experience in the relevant technical field to testify instead.  Otherwise, as in Sundance, you might just find that the expert testimony you thought would be so compelling has, instead, fallen on deaf ears