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

Just Not Cricket

admin — Fri, 08 Feb 2008 20:02:00 GMT

Fair play counts in patent litigation as well as in the game of kings. In Innogenetics N.V. v. Abbott Laboratories, accused infringer Abbott played fast and loose with the trial court's procedural rules. It also took a cavalier approach to the substantive underpinnings of arguments advanced on appeal. The result? Both the district court and Federal Circuit cried foul-and Abbott saw exclusion of key evidence and forfeiture of critical claims as a consequence for its unsportsmanlike conduct.

The underlying case involved technology related to diagnostic tools which both detect and classify Hepatitis C virus (HCV) genotypes in a biologic sample, allowing a more tailored patient treatment. The case is noteworthy for the court's treatment of Abbott's rather loose treatment of the rules, which occurred throughout the course of that litigation. As a result, the district court rejected Abbott's proposed limiting claim construction and entered judgment as a matter of law adverse to Abbott on the issues of infringement, obviousness, anticipation and inequitable conduct.

Originally, Abbott advanced a claim construction predicated on an overly-formulistic definition of the word "as," in order to limit the patent's claims to contemporaneous detection of the key genetic material. The Federal Circuit rejected this argument as "dictionary shopping" and took Abbott to task for not marshalling a record based more upon how one of ordinary skill in the art would understand that term.

Next, Abbott tried to rely upon a non-infringement argument that its method of detection was outside the scope of the patent because it was not known to ordinary artisans at the time of the patent filing. Unfortunately for Abbott, it waited until the eve of trial to raise this argument when it tried to insert a new jury instruction into the proposed set of instructions. The Federal Circuit looked to regional circuit law (the Seventh Circuit) to affirm the district court's decision that Abbott had forfeited that issue by not raising it reasonably in advance of trial. (As an aside, the court also found that the substantive argument lacked merit as well.)

Abbott's pre-trial behavior also affected its affirmative defenses. Abbott ignored the district court's schedule for the filing of supplemental expert reports on the issue of obviousness. Innogenetics persuaded the district court to exclude Abbott's late supplemental offering. Even though Abbott knew the district court's order contained errors regarding the scope of exclusion, it ignored the rules that such challenges should be raised prior to the appeal.

On appeal, the Federal Circuit quickly affirmed the district court's decision that Abbott lacked the necessary evidentiary underpinnings for its obviousness defense. Analyzing the original (allowed) expert report, the court found it both conclusory and vague. The court explained that the Supreme Courts' seminal decision in KSR does not relieve a defendant from demonstrating that particular combinations render a patent obvious, even where a problem was well-known and there was motivation to solve it. With regard to the excluded report, Abbott claimed it could have offered non-expert testimony regarding the requisite motivation. The Federal Circuit again affirmed the district court's decision, relying upon Seventh Circuit precedent regarding the trial court's ability to manage its own docket. The Federal Circuit faulted Abbott for not raising the erroneous order earlier and for offering only speculation as to what lay witnesses could have established.

Litigants on both sides should take note. The Federal Circuit showed little tolerance for Abbott's rather lax attitude toward the rules. It looked to regional circuit law to set the rules of conduct for procedural issues and it used that same law in order to approve consequences for their breach. Thus, despite the universality of patent law, an understanding of differences in the various circuits regarding procedure may very well be outcome determinative.

Determinative too-backing up key claims and defenses with an adequate record. Buzz words won't do. The Federal Circuit repeatedly noted that Abbott simply failed to provide details from the record to support its claims. In particular, the court said that, even in light of KSR, accused infringers cannot rely upon unsupported hindsight to explain how or why references would be combined by those of "ordinary skill in the art."

Clearly, the rules count. Innogenetics reminds us that litigants who repeatedly ignore them may find themselves on a very sticky wicket-losing both the strategic advantage and ultimately, perhaps, the entire game.

APaTS : Ordinary Skill

Sometimes It's Not What You Say...

Just Not Cricket