Only an Expert Can Testify about What Would Be Obvious to a Non-Expert

In HVLPO2, LLC, v. Oxygen Frog, LLC, [2019-1649] (February 5, 2020), the Federal Circuit reversed and remanded the district court’s determination that U.S. Patent Nos. 8,876,941 and 9,372,488 directed to methods and devices for controlling an oxygen-generating system, would have been obvious, because the district court abused its discretion by admitting lay witness testimony regarding obviousness.

At trial, Oxygen Frog argued that the claims were obvious in view of a combination of two prior art references. The author of one of the references, Piebes, was not qualified as an expert witness, but did provide deposition testimony as a fact witness. HVO objected to Mr. Piebes’ testimony regarding obviousness as improper expert opinion testimony. The district court overruled the objection, and instead gave the jury a limiting instruction prior to playing Mr. Piebes’ deposition testimony.

The Federal Circuit found that under the circumstances here, the district court’s limiting instruction was insufficient to cure the substantial prejudice caused by Piebes’ testimony, and thus the district court abused its discretion by denying a motion for a new trial.

The Federal Circuit said that the admission of Piebes’ testimony opining that it would be “obvious” to modify a prior art system in a particular way that would match the claimed invention was improper. It noted that Federal Rule of Evidence 702 provides:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or other spe-cialized knowledge will help the trier of fact to un-derstand the evidence or to determine a fact in issue; . . .

The Federal Circuit said that this precisely described testimony which would pertain to an obviousness invalidity challenge in a patent trial. The Federal Circuit said that Issues of infringement and validity are analyzed in great part from the perspective of a person of ordinary skill in the art, such that a witness who is not ‘qualified as an expert by knowledge, skill, experience, training, or education’ in the pertinent art cannot assist the trier of fact to understand the evidence or to deter-mine a fact in issue. Thus, the Federal Circuit said. “it is an abuse of discretion to permit a witness to testify as an expert on the issues of non-infringement or invalidity unless that witness is qualified as an expert in the pertinent art.

The Federal Circuit said that the prohibition of unqualified witness testimony extends to the ultimate conclusions of infringement and validity as well as to the underlying technical questions. A witness not qualified in the pertinent art may not 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 the 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.

Because the district court abused its discretion by admitting lay witness testimony regarding obviousness, the Federal Circuit reversed and remanded for a new trial.

Expert Testimony Critical to Determining Meaning of Prior Art to a PHOSITA

In IXI IP, LLC v. Samsung Electronics Co.. Ltd., [2017-1665] (September 10, 2018), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent No. 7,039,033 were unpatentable.  The ’033 patent is directed to a system that accesses information from a wide area network (WAN), such as the Internet, and local wireless devices in response to short-range radio signals.

The Federal Circuit noted that issues relating to a motivation to combine prior art references and a reasonable expectation of success are both questions of fact, reviewed for substantial evidence.  Substantial evidence is “such relevant evidence as a
reasonable mind might accept as adequate to support a conclusion.”

The single issue on appeal is whether a PHOSITA would read the prior art as implicitly
describing an implementation in which the JINI LUS, which identifies services provided on the network, is located on the gateway device, i.e., the cellphone.  Samsung acknowledged that the reference does not expressly state that the JINI LUS is located on a mobile phone, but nonetheless, contended, and the Board agreed, that a PHOSITA would read the reference to understand that JINI LUS may be located on the cellphone.

After examining the evidence, the Federal Circuit held that the Board’s determination
that a POSITA reading the reference would understand that the cellphone is the master of the ad-hoc network and contains the LUS is reasonable and was supported by substantial evidence.  The determination of how a PHOSITA would understand the references was based on the weighing expert testimony from both parties, with Samsung’s expert being credited by the Board.

Liar, Damn Liars, and Experts

In Rembrandt Vision Technologies, L.P. v. Johnson & Johnson Vision Care, Inc., [2015-1079] (April 7, 2016), the Federal Circuit reversed and remanded the district court’s denial of a new trial under Rule 60(b)(3).

The Federal Circuit noted that the case returned it following “an unusual set of circumstances.”  At trial the testimony of Rembrandt’s expert, Dr. Beebe was stricken because his testimony changed so dramatically on cross examination.  J&J’s expert, Dr. Bielawski piled on during his testimony, stating several times, and in several ways, that  Dr. Beebe’s testimony should not be trusted.

After trial, Rembrandt received information suggesting that Dr. Bielawski testified falsely at trial, which Johnson & Johnson does not dispute.  Specifically, Dr. Bielawski repeatedly testified that he personally conducted the testing. on JJVC’s accused lenses when, in fact, the testing was conducted by Dr. Bielawski’s graduate students and various lab supervisors.  Moreover, it appears that Dr. Bielawski overstated his qualifications and experience with these testing methodologies.  In addition it appeared that Dr. Bielawski withheld some of the data from the tests.

To prevail on a motion under Rule 60(b)(3) in the Eleventh Circuit, the Federal Circuit said a movant must establish that: (1) the adverse party engaged in fraud or other misconduct; and (2) this conduct prevented the moving party from fully and fairly presenting its case.  The Federal Circuit said that proof that the result of the case would have been different but for the fraud or misconduct is not required; instead, Rule 60(b)(3) “is aimed at judgments which were unfairly obtained, not at those which are factually incorrect.”

The Federal Circuit concluded that the district court clearly erred in finding that Rembrandt had a full and fair opportunity to present its infringement case.