Takeaway: The Federal Rules of Evidence do not require that an expert be qualified as a person of ordinary skill in the art or that the expert’s qualifications match the field of the patent at issue for the expert’s testimony to be admissible.
In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claim 18 of the ’970 patent is unpatentable. The ’970 patent relates to “a system and method for location tracking of mobile platforms.”
The Board began with claim construction, stating that terms are given their plan and ordinary meaning as understood by a person of ordinary skill in the art in light of the specification. No claims were construed in the Decision on Institution, and Patent Owner presented explicit constructions for two terms in its Patent Owner Response. Patent Owner argued that the term “map database” should be construed as “a collection of map data that is organized so that it can easily be accessed, searched, managed, and updated,” relying upon its expert testimony and dictionary definitions.
Patent Owner also argued that “map engine for manipulating said map database” should be construed as “a program or module for accessing, searching, managing, and updating the map database.” The Board analyzed the disclosure of the ’970 patent as well as that of the provisional application from which the ’970 patent claimed priority, and found Patent Owner’s proposal inconsistent with the specification and claim language. Thus, the Board construed the term to mean “an element or component for accessing the map database or obtaining or extracting map data from the map database.”
The Board then turned to the asserted ground of unpatentability, anticipation of claim 18 based on Elliot. Patent Owner’s arguments concerning the patentability of the claim focused on the limitation “each one of said mobile platform location systems being associated with a map database and map engine for manipulating said map database,” and relied upon its proposed claim constructions. The Board was not persuaded, finding Patent Owner’s arguments to be conclusory and not commensurate in scope with the claim limitations in question. Thus, the Board was persuaded that Petitioner established by a preponderance of the evidence that claim 18 is unpatentable.
The Board then dismissed Petitioner’s Motion to Exclude Evidence because the Board did not rely upon the evidence subject to the motion. Patent Owner moved to exclude Petitioner’s expert declaration in its entirety because the expert was allegedly “not qualified as a person of ordinary skill in the art.” In particular, Patent Owner argued that the expert’s education did not meet the qualifications set forth by the parties’ experts, and the expert’s work experience did not constitute relevant work experience. The Board explained the requirements of Federal Rule of Evidence 702, and noted that Patent Owner did not cite any “binding authority sufficient to support its argument that in order for expert testimony to be admissible, the expert must be a person of ordinary skill in the art.” The Board agreed with Petitioner that the Rules of Evidence do not require that “an expert’s qualifications perfectly match the field of the patent at issue.” The Board was also persuaded that the expert’s “experience is adequate to establish his technical expertise.”
Patent Owner also asserted that Petitioner’s expert testimony should be excluded for being conclusory or otherwise unreliable. The Board found such arguments as going to the weight of the testimony rather than its admissibility. Therefore, the Board denied Patent Owner’s Motion to Exclude.
Finally, the Board addressed Patent Owner’s observations regarding the cross-examination of Petitioner’s expert. The Board indicated that it had accorded the expert testimony “the appropriate weight” and that Patent Owner’s observations did not change the Board’s findings or conclusions.
Wavemarket Inc. d/b/a Location Labs v. LocatioNet Systems Ltd., IPR2014-00199
Paper 56: Final Written Decision
Dated: May 7, 2015
Patent: 6,771,970 B1
Before: Kristen L. Droesch, Glenn J. Perry, and Sheridan K. Snedden
Written by: Droesch
Related Proceedings: (1) CallWave Communications, LLC v. AT&T Mobility, LLC, No. 1:12-cv-01701-RGA (D. Del.); (2) CallWave Communications, LLC v. Sprint Nextel Corp, No. 1:12-cv-01702-RGA (D. Del.); (3) CallWave Communications, LLC v. T-Mobile USA Inc., No.1: 12-cv-01703-RGA (D. Del.); (4) CallWave Communications, LLC v. Verizon Communications Inc., No. 1:12-cv-01704 (D. Del.); and (5) CallWave Communications, LLC v. AT&T Mobility LLC, No. 1:12-cv-01788 (D. Del.)