Sometimes It's Not What You Say...

admin — Tue, 03 Feb 2009 15:56:00 GMT

. . . 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

On the Rocks

admin — Tue, 13 May 2008 18:04:00 GMT

We'll give it to you neat. LiteCubes, LLC v. Northern Light Products, Inc. holds that section 271 of the patent statute does not contain that requirement for the federal courts' subject matter jurisdiction. Rather, section 271 states a necessary element of a claim for patent infringement. According to the Federal Circuit's top shelf opinion, a complaint which sufficiently pleads a cause of action under the patent statute establishes federal subject matter jurisdiction regardless of the success or failure of the patent holder in establishing that claim. In other words, establishing subject matter jurisdiction and establishing an infringing act are separate endeavors that patent litigants should not mix.

LiteCubes involved patented technology for glowing artificial ice-cubes. After the jury returned a verdict of infringement, GlowProducts (the d.b.a. of defendant Northern Lights) argued that the district court lacked subject matter jurisdiction under section 271 because its sale of the allegedly infringing product had occurred "f.o.b." (free on board shipment) in Canada. GlowProducts based its challenge on the theory that its sales occurred in Canada due to the f.o.b. shipment. The district court found that the evidence regarding GlowProducts' sales was sufficient to invoke the court's subject matter jurisdiction and entered judgment in the patent holder's favor.

On appeal, the Federal Circuit served up an affirmance, but re-blended the underlying grounds to reflect its views that the limitation of section 271 are not truly jurisdictional but rather elements of the claim to be established. According to the Court, subject matter jurisdiction does not fail simply because the plaintiff might ultimately be unable to succeed on the merits. In its own version of Happy Hour, it allowed GlowProducts to challenge the jury's infringement verdict even though it had not raised it on appeal. The court used its discretion to consider the technically waived issue because it considered the circumstances surrounding the subject matter jurisdiction question to be unusual. Still, it rejected GlowProducts arguments. The court reviewed the place of contracting and performance to determine place of sale. It found that GlowProducts customers were in the United States when they contracted to buy the product and that the product was shipped directly to them in that location. Substantial evidence, the court said, to support the jury's conclusion that GlowProducts sales activities met the occurrence requirements of section 271.

While there was no dispute over claim construction, GlowProducts challenged the infringement verdict. The patent contained a claim which required the use of a filler material that could retain cold when cooled or heat when heated. LiteCubes' expert testified that the filler the product contained performed as required. GlowProducts' expert, while not disputing the scientific accuracy of that testimony, simply disagreed. Based on such conflicting evidence, the court said that jury was entitled to make a choice and credit the testimony of LiteCubes' expert in order to reach the factual determination that it did.

Make the lessons learned here a double.

First, patent litigants who hang their hopes entirely on a duel of experts need to realize they're already in a position of weakness because the jury can legitimately pick either side. Your expert must do more than just offer conclusory disagreements. Such opinions are not particularly persuasive and squander credibility. Experts must both retain credibility and give the jury something substantive with which to work.

Second, businesses that export goods into the United States should scotch the notion that they can rely on the vagaries of the shipment method used to escape liability for patent infringement in the United States. LiteCubes makes clear that the patent statute's extra-territorial reach includes foreign entities that sell infringing goods within the United States-a lesson that surely left the defendant here shaken, not stirred.

APaTS : Experts

Sometimes It's Not What You Say...

On the Rocks