District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

April 3, 2024

Reading Time : 2 min

A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in understanding the evidence.

The accused infringer in the case proffered an expert with a degree in mechanical engineering, a Juris Doctor, and an LLM in intellectual property law to opine on the materiality of allegedly undisclosed prior art, the validity of the asserted patent, and whether the accused system was “non-infringing prior art.” Although the expert possessed an engineering degree, the accused infringer conceded that the expert was not a person of ordinary skill in the pertinent art (“POSITA”), namely paint inspection lighting technology. The patent owner moved to exclude the expert’s opinions based on a lack of technical expertise in lighting inspection systems.

In opposing the motion, the accused infringer argued that its expert would not be testifying from the perspective of someone skilled in the field, but would provide permissible testimony “from the perspective of a reasonable patent attorney.” Specifically, the expert would aid the factfinders in understanding the prosecution history of the patent, including the applicant’s claim amendments to overcome rejections and the disclosure of certain prior art. The court, however, disagreed with this characterization of the proffered testimony, finding that the expert report contained opinions regarding invalidity, the scope and content of prior art, and differences between the claims and the prior art.

Based on its review of the report, the court found that “practically all of [the expert’s] proposed testimony [was] impermissible.” The court relied primarily on the Federal Circuit’s 2008 Sundance, Inc. v. DeMonte Fabricating Ltd. decision, which held that a witness may not testify as an expert on noninfringement or invalidity if he or she is not qualified as an expert in the art. The district court found that, despite a substantially impressive resume, the proposed expert was not a POSITA in the relevant field and, therefore, was not qualified to opine on invalidity and infringement.

Notably, the district court appears to have used “POSITA” to refer to the level of knowledge necessary to qualify as an expert in the pertinent art, as opposed to whether the expert met the specific, definitional criteria for a POSITA applied in the case. The court’s reliance on Sundance, as opposed the Federal Circuit’s more recent Kyocera Senco Industrial Tools Inc. v. International Trade Commission establishing a bright-line rule based on meeting the POSITA definition, supports this interpretation.

Practice Tip:  For certain issues in a patent case, such as inequitable conduct during prosecution, it may be permissible for a patent attorney to testify as an expert from the perspective of a reasonable patent attorney. However, when proffering a patent attorney as an expert, parties should take care to avoid addressing any technical opinions on which the attorney is not an expert, such as scope of the art or claim interpretation. Crossing this line into technical matters risks exclusion of that testimony, which is particularly true in the wake of Kyocera, where the Federal Circuit has applied a stricter test to exclude patent experts that do not meet the definition of a POSITA.

Tecossl, Inc. v. Avid Labs, LLC, No. 5:19-cv-00043, D.I. 183 (E.D. Ky. Feb. 9, 2024)

Share This Insight

Previous Entries

IP Newsflash

November 5, 2024

The Federal Circuit vacated a district court’s fee award because the district court considered certain information that was not relevant to the question of whether plaintiff’s case was exceptional. Specifically, the Federal Circuit held that only those “red flags” that related to the successful Section 101 defense, which served as the basis for the district court’s grant of summary judgment, could be used to show the case was fatally flawed.   

...

Read More

IP Newsflash

November 1, 2024

The Federal Circuit’s decision in Kyocera Senco Industrial Tools Inc. v. International Trade Commission articulated a bright-line test for patent expert admissibility: to testify from the perspective of a “person of ordinary skill in the art” (POSITA), the expert must at least meet the definition of a POSITA for the patents-in-suit. Absent that level of skill, Kyocera holds that the witness’s testimony is not sufficiently reliable or relevant enough to be relied on by a fact-finder.

...

Read More

IP Newsflash

October 29, 2024

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent owner had not taken inconsistent positions but warned patent owner that it had an ongoing duty to produce any information inconsistent with arguments made during the present IPR, even if that information related to arguments patent owner had dropped at the ITC.

...

Read More

IP Newsflash

October 11, 2024

The Central District of California ruled that the heightened pleading standard of Federal Rule of Civil Procedure 9(b) applies to all three prongs of a false patent marking claim, including the third prong, competitive injury. In doing so, took a clear stand on an issue with a nationwide split among district courts.

...

Read More

IP Newsflash

October 10, 2024

In a patent case containing a variety of federal and state law claims, the District of Massachusetts retained supplemental jurisdiction over the state law claims even after all the federal law claims were dismissed.

...

Read More

IP Newsflash

October 3, 2024

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously declared unpatentable in inter partes review (IPR) proceedings. However, the court clarified that the regulation applies only to new claims or amended claims, not previously issued claims.

...

Read More

IP Newsflash

September 27, 2024

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine on infringement, among other issues. This new bright-line test and the underlying rationale, however, raised several new questions regarding expert admissibility. SeeFederal Circuit: Narrow Definition of Skill in the Art Dooms Expert’s Testimony” and “Grappling With A Bright-Line Patent Expert Admissibility Test.” The Federal Circuit recently addressed one of those questions, namely whether an expert must have acquired the requisite level of skill as of the time of the invention or whether it is sufficient for an expert to acquire that knowledge at a later date.

...

Read More

IP Newsflash

September 23, 2024

The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings. The PTAB cancelled all of patentee’s claims, including those not unpatentable on the merits, after finding that patentee deliberately withheld data relevant to the patentability of the claims at issue. In her review, the Director addressed which regulations are implicated upon a party’s misconduct during AIA proceedings and addressed whether entry of judgment in the trial was an appropriate sanction.

...

Read More

© 2024 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.