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December 27, 2008

Not Blissed

Sundance sued DeMonte for infringing 5,026,109, claiming a retractable tarp. "Demonte's patent law expert, Daniel Bliss, opined that one of ordinary skill in the art would be motivated to combine" two prior art references to render '109 obvious. The jury bought it, but not the judge, who figured the prior art didn't cover it, even considering testimony from Bliss. On appeal, the CAFC was less than blissed with Bliss.

Sundance v. DeMonte (CAFC 2008-1068)

Federal Rule of Evidence 702 provides that:

[i]f scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts.

Under Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579, 597 (1993), and Rule 702, courts are charged with a "gatekeeping role," the objective of which is to ensure that expert testimony admitted into evidence is both reliable and relevant. See also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999) (holding that Rule 702 applies not only to "scientific" testimony, but to all expert testimony). Patent cases, like all other cases, are governed by Rule 702. There is, of course, no basis for carving out a special rule as to experts in patent cases.

We note that "[a]dmission of expert testimony is within the discretion of the trial court." Acoustical Design, Inc. v. Control Elecs. Co., 932 F.2d 939, 942 (Fed. Cir. 1991) (citing Salem v. U.S. Lines Co., 370 U.S. 31, 35 (1962)). We review the admission of expert testimony for an abuse of discretion. Id. (citing Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)); see also Kumho Tire Co., 526 U.S. at 152 ("[A] court of appeals is to apply an abuse-of-discretion standard when it reviews a trial court's decision to admit or exclude expert testimony.").

DeMonte had Bliss opine "USPTO practices and procedures (eight pages explaining prosecution and reexamination); claim construction (four pages interpreting the claim construction ruling); noninfringement (seven pages concluding that the claims of the '109 patent are not infringed); invalidity, including anticipation and obviousness (thirteen pages concluding that the claims of the '109 patent are invalid); and inequitable conduct (six pages concluding that the '109 patent is unenforceable due to inequitable conduct)." Sundance objected, arguing that Bliss "lacks appropriate technical background in the field of the invention." Exactly, the CAFC chimed, in finding abuse of discretion by the district court for allowing technical testimony from Bliss.

Admitting testimony from a person such as Mr. Bliss, with no skill in the pertinent art, serves only to cause mischief and confuse the factfinder. Unless a patent lawyer is also a qualified technical expert, his testimony on these kinds of technical issues is improper and thus inadmissible. Because Mr. Bliss was never offered as a technical expert, and in fact was not qualified as a technical expert, it was an abuse of discretion for the district court to permit him to testify as an expert on the issues of noninfringement or invalidity.

We hold that it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art. Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702. Indeed, where an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expert in that art. We understand that patent lawyers are often qualified to testify as technical experts, but such a qualification must derive from a lawyer's technical qualifications in the pertinent art.

We do not, of course, suggest that being a person of ordinary skill in the art automatically entitles a witness to testify as an expert on these or other matters. On the other hand, our opinion should not be read as suggesting that Rule 702 requires a witness to possess something more than ordinary skill in the art to testify as an expert. A witness possessing merely ordinary skill will often be qualified to present expert testimony both in patent trials and more generally. See Fed. R. Evid. 702; see also United States v. Wilson, 484 F.3d 267, 275-77 (4th Cir. 2007) (district court did not abuse discretion under Rule 702 by permitting police officer to testify as to the meaning of coded drug language); United States v. Marler, 614 F.2d 47, 49-50 (5th Cir. 1980) (district court did not err by permitting deputy fire marshal to offer expert testimony on cause of fire). Admission of expert testimony remains subject to the Rules of Evidence and is committed to the discretion of the district court. Fed. R. Evid. 702; Acoustical Design, 932 F.2d at 942.

With regard to invalidity, for example, a witness not qualified in the pertinent art may not testify as an expert as to anticipation, or any of the underlying questions, such as the nature of the claimed invention, what a prior art references discloses, or whether the asserted claims read on the prior art reference. See Acoustical Design, 932 F.2d at 942 (sustaining trial court's preclusion of patent expert from testifying about the drafting of claims to avoid prior art and that the claims in suit read on the prior art, as it would not have been of any benefit to the jury).

Nor may a witness not qualified in the pertinent art testify as an expert on obviousness, or any of the underlying technical questions, such as the nature of the claimed invention, the scope and content of prior art, the differences between the claimed invention and the prior art, or the motivation of one of ordinary skill in the art to combine these references to achieve the claimed invention. See Medtronic, 799 F.2d at 741; In re Deters, 515 F.2d 1152, 1155 (CCPA 1975) (rejecting patent expert testimony on nonobviousness where patent expert was not a person ordinarily skilled in the art and thus his opinion was "not evidence entitled to any weight in resolving the issue").

Mr. Bliss lacks the necessary expertise to be of assistance to the court or the jury on the technical aspects of this case. The court, in its role as gatekeeper, must exclude expert testimony that is not reliable and not specialized, and which invades the province of the jury to find facts and that of the court to make ultimate legal conclusions. Allowing a patent law expert without any technical expertise to testify on the issues of infringement and validity amounts to nothing more than advocacy from the witness stand.

The CAFC then readily found '109 Obzillaed, Bliss notwithstanding.

"[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." KSR, 127 S. Ct. at 1742. Such a combination is more likely to be obvious where it "'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement." Id. at 1740 (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). The truck cover of claim 1 of the '109 patent is the result of precisely such an obvious combination.

Reversed.

Posted by Patent Hawk at December 27, 2008 12:46 AM | Case Law

Comments

Nice pick-up from the Funk Koo Kung Foo thread.

step back,
Is part of your issue discernable here?
Perhaps in that the court says: "The truck cover of claim 1 of the '109 patent is the result of precisely such an obvious combination." without itself having the pre-requiste "expert" standing after kicking out the Bliss testimony to the reverse for not having that same "expert" standing. Goose and Gander come to mind...

Posted by: breadcrumbs at December 27, 2008 7:35 AM

Patent Hawk,

Thank you for including a link to the patent. Quite often I am too lazy to locate the actual patent & read through it, especially because I have more than enough other patents to read through and analyze at work.

Breadcrumbs,

Continuing with my confession of laziness, I have not done the deep dive data fetch and gotten the prior art references to see how they stack up in regard to the ultimate conclusion of obviousness. Maybe at the end of the day I would agree with the Sundance appeals court ruling as to the ultimate question of obviousness.

But it is the "procedure" that has me ticked off. The district court weighed different pieces of competing evidence (including apparently, secondary considerations) and came to a 'balancing of "facts" conclusion' that the evidence in favor of nonobviousness outweighed the evidence in favor of obviousness ... so much so that it justified a JMOL that overturned the jury decision. The Sundance "appeals" court stepped into the shoes of the district court and rendered a decision based on their different weighing of facts, not a decision based on error in "law". In other words, they did not stick to being an "appeals" court. What makes them more expert in understanding how the ordinary artisan would have thought at the time of the invention?

Posted by: step back at December 27, 2008 8:44 AM

p.s. (too bad there is no edit function)

What I meant to say is ... The district court weighed different pieces of competing evidence (including apparently, secondary considerations) and came to a 'balancing of "facts" conclusion' that the evidence in favor of nonobviousness outweighed the evidence in favor of obviousness ... so much so that it justified a JMOL that overturned the jury decision.

Posted by: step back at December 27, 2008 8:47 AM

step back,

I hear your concern.

"What makes them more expert in understanding how the ordinary artisan would have thought at the time of the invention?" - better than this, as "expert" is not even required. The CAFC kicked out one opinion because it wasn't from an "expert", and then turned around and said no expert needed, our opinion will do. I would think that everyone (including the judiciary) would have to play by the same rules.

Goose and Gander come to mind...

Posted by: breadcrumbs at December 27, 2008 5:57 PM

You guys found the note.

Kid wonder Judge Moore talks out of both sides of her mouth, then the CAFC panel displays capricious arrogance by overruling the district court judge, all the while admitting that the judge was within his discretion.

Read Federal Rule of Evidence 702 carefully. It basically says a person is an “expert” if they make sense and rely on the facts - “expert by knowledge, skill, experience, training, or education.”

Judge Moore here dances a judicial hoochie koo like a crazed monkey around whether "a person of ordinary skill in the art" may testify as a Rule 702 "expert."

"We do not, of course, suggest that being a person of ordinary skill in the art automatically entitles a witness to testify as an expert on these or other matters. On the other hand, our opinion should not be read as suggesting that Rule 702 requires a witness to possess something more than ordinary skill in the art to testify as an expert. A witness possessing merely ordinary skill will often be qualified to present expert testimony both in patent trials and more generally."

Next, "Admission of expert testimony.. is committed to the discretion of the district court." By which it concludes that the district court abused its discretion by following Rule 702. "An abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art."

The capper, of course, is that the panel completely agrees with the booted "inexpert" Bliss.

Another case law keeper from the CAFC.

Posted by: Patent Hawk at December 28, 2008 12:05 AM

I don't have access to a printer at the moment, but here are the links to the two prior art references:
1. Cramaro
2. Hall

Posted by: step back at December 28, 2008 3:25 AM

What was Judge Moore trying to accomplish? As a former law school professor, she is especially conscious of her opinions as precedent.

What I find odd is that Judge Moore reversed on obviousness. I think of her as anti-patent. Has the CAFC collectively decided to chip away at KSR?

Posted by: Steve Sereboff at December 29, 2008 8:29 AM

An interesting thing about this case is the fact that the court looks to the application itself, and particularly the Background section, to find motivation --

"The '109 patent explains that 'it would be desirable to have a retractable cover system wherein only the damaged portion could easily be removed and replaced without replacing or disassembling the entire cover system.' '109 patent col. 2 ll. 12-17."

I find this to be very unfortunate. If they have to look to the inventors' own contribution to find motivation to combine and/or modify references, then what you have is prima facie improper hindsight analysis.

Posted by: Defector at December 29, 2008 12:58 PM

Defector,

Yeah, I was puzzled by that one too. It's not clear what the court intended. I think they imply that Hall provides the suggestion for repairability of individual sections. However it is not clear that Hall's sections can be independently removed and this is where it appears the appeals court did most of its dancing around. Again, I have not read the references (linked above)in detail and, if someone has time, maybe they can shed more light on the "independent" removability issue.

I think Moore et al correctly ruled that Bliss was not qualified to opine on what was obvious to the ordinary artisan at the relevant time. But if Bliss does not have the qualifications, what gives the appeals court the right to step in in his shoes and make the final call? How are they better qualified than the district judge who heard all the testimony and ruled that secondary considerations outweigh the prima facie case for obviousness?

Posted by: step back at December 29, 2008 3:39 PM

In some ways this opinion is a gift. Moore didn't have to discuss the propriety of the expert at all -- she could have gone straight for the jugular with the obviousness argument. I'm glad she put another nail in teh coffin of this patent lawyer as technical expert nonsense. That part of her opinion ain't too bad.

But she might have tried a different tack regarding the expert. She held that no expert was required because the technology was so simple. IMO, the judge screwed up not just by letting the suit testify on technical matters but by allowing any expert to testify at all. Where no expert is required, none should be allowed. (I'm just pulling this out of my ear -- is there any case law that says this?)

I'll put my next couple of points in a separate comment in order to get Hawk's comment numbers up and so I don't appear overly verbose.

Posted by: Babbel Boy at December 31, 2008 11:56 AM

Yada, yada, yada continued . . .

One issue that is causing problems post-KSR is whether the combined references in a 103 rejection must teach all of the elements, steps, limitations of the rejected claim -- or can elements, steps, limitations be pulled out of thin air as "obvious" by courts or examiners. MPEP 2141 used to explicitly require the art to disclose all elements, steps and limitations but the requirement was quietly edited out after KSR.

Here Moore goes to a lot of trouble to show how all of the elements of Claim 1 are met by the combined PA references, thereby implying an all elements requirement even though she does not state that such a requirement exists. This is a little helpful.

Another post-KSR issue that continues to bug me is the way courts ignore "HOW". Here's Moore:

"We conclude that a cover designer of ordinary skill, at the time of the invention, would have found it obvious to incorporate the removable cover sections of Hall into the cover system of Cramaro."

OK, great. But would he have known or seen HOW to carry out the incorporation? The HOW is almost always ignored by these opinions and yet the HOW is often as not where the innovation is found.

For instance, it is blatantly obvious to combine an Atlas rocket, a 747, and a heat-shield so we can all fly to the moon on the weekends. But the obviousness of what elements should be combined (or why - motivation) does not render obvious HOW a workable combination of these known elements can be effectuated. If I solve the HOW, I still lose under opinions like Moore's (and KSR?) because Atlas rockets, 747's and heat-shields are all well known and they are performing known functions.

My beef with opinions like Moore's is that they imply that obviousness of HOW to combine elements can be inferred from obviousness to combine. If the claim does not claim the HOW, or if it does and the HOW is also obvious, then that should be made clear in the opinion.

Anyway, I'm going skiing.

Posted by: Babble Boy at December 31, 2008 11:57 AM

An important question:

Can a Court of Appeals for the Federal Circuit panel of judges overrule an opinion of the predecessor Court of Customs and Patent Appeals?

Posted by: Lawnie Taylor at May 6, 2010 9:52 AM