Sundance, Inc. v. DeMonte Fabricating, Ltd. (Fed. Cir. 2009)

A witness is not qualifi ed to testify as an expert on the issues of infringement and validity unless that witness is qualifi ed as an expert in the pertinent art, according to the Federal Circuit.

Sundance sued DeMonte for infringing U.S. Patent 5,026,109 (the ’109 patent), which is directed to retractable segmented covering systems for “almost any structure or container,” such as truck trailers, swimming pools, porches, and patios. A jury concluded that the asserted claim was infringed but invalid for obviousness under 35 U.S.C. § 103. Following the jury verdict, Sundance moved for judgment as a matter of law that the ’109 patent was not invalid. The district court granted Sundance’s motion and denied DeMonte’s motion asking for reconsideration in light of KSR Int’l v. Teleflex.

At trial, DeMonte presented two prior art references to the jury as a basis for obviousness. DeMonte’s patent law expert opined that one of ordinary skill in the art would be motivated to combine the two prior art references resulting in the asserted claim. The jury determined that the asserted claim of the ’109 patent was obvious in view of the two prior art references.

The Federal Circuit held that the district court abused its discretion by letting the patent law expert testify as an expert witness on the issues of infringement and validity. Despite the absence of any suggestion of relevant technical expertise, the patent law expert offered testimony on several issues that are exclusively determined from the perspective of ordinary skill in the art. The Federal Circuit stated that the patent law expert had no experience whatsoever in the fi eld of tarps or covers and that his experience with engines is not suffi ciently related. Therefore, according to the Federal Circuit, the patent law expert is not qualifi ed as an expert by knowledge, skill, experience, training, or education in the pertinent art and could not assist the jury to understand the evidence or to determine a fact in issue. The Federal Circuit stated that admitting testimony from such an expert, with no skill in the pertinent art, serves only to cause mischief and confuse the jury. Accordingly, the Federal Circuit that held it was an abuse of discretion to permit a witness to testify as an expert on the issues of infringement and validity unless that witness is qualifi ed in the pertinent art.

However, the Federal Circuit stated that the expert testimony was not required because there were no underlying factual issues in dispute as to obviousness. According to the Federal Circuit, the technology is simple and does not require expert testimony in order to fi nd the asserted claim obvious. As such, the Federal Circuit held that the asserted claim was obvious regardless of the admissibility of the patent law expert’s testimony.

Practice Tip:

When obtaining an expert witness to testify as on the issues of infringement and validity make sure that the witness is qualifi ed as an expert in the pertinent art.