Maryland Bar Bulletin
Publications : Bar Bulletin : March 2009

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Intellectual Property Focus:  

Patent attorneys counsel their clients on a daily basis regarding matters of intellectual property law and are often relied upon by their clients to render opinions on the validity or infringement of patents. Nevertheless, in Sundance, Inc., v. DeMonte Fabricating Ltd., the Court of Appeals for the Federal Circuit recently held that patent attorneys are not qualified to testify on issues of validity or patent infringement absent “technical expertise in the pertinent art.”
Factually, Sundance sued DeMonte for infringing its patent for a retractable truck tarp (U.S. Patent No. 5,026,109 (the ‘109 patent)). 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 reach the claimed invention; and, ultimately the jury returned a verdict that the ‘109 patent was obvious in light of the prior art.

For previous IP coverage, read the March 2008 or 2007 Bar Bulletin


On appeal, Sundance objected to the admission of Bliss’s testimony, arguing that he is not qualified as a technical expert, but merely as an expert in patent law. While the Court found that Daniel Bliss was a patent attorney with experience preparing and prosecuting patents in “the vehicle field” and had previously testified as an expert on patent law and patent office procedure in a separate suit also in the vehicle field, the Court found that Bliss had no experience in the field of tarps or other cover systems. The Court noted that Bliss’s expert report even opines that the level of ordinary skill in the art is a person with one or more years of experience in the field of tarps or covers – a level of skill that Bliss lacks. Therefore, citing Fed. R. Evid. 702, the Court found that Bliss is not “qualified as an expert by knowledge, skill, experience, training, or education” in the pertinent art, and that his testimony could not “assist the trier of fact to understand the evidence or to determine a fact in issue.”

The Federal Circuit noted that a patent attorney may be qualified to testify as to patent office practices and procedures; however, Bliss’s lack of technical expertise precluded him from offering an opinion in regards to noninfringement or validity. Bliss did not testify on patent office practice and procedure; instead, his testimony was directed towards issues of noninfringement and validity, including his opinion that the ‘109 patent is obvious in light of the prior art. Offering a detailed technical opinion, Bliss elaborated on how the truck tarp of the ‘109 patent, accused system, and prior art operate.

In excluding Bliss’s testimony, the Court noted that issues of infringement and validity are analyzed from the perspective of “a person of ordinary skill in the art.” The non-obviousness requirement for patentability is set forth in 35 U.S.C. §103(a), which states that “[a] patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” Citing a large body of Federal Circuit case law, the Court stated that patent claims and teachings of prior art references are interpreted from the perspective of one of ordinary skill in the art.

Despite the Court’s discussion of the “ordinary skill in the art” standard, the Court did not conclude that a person having ordinary skill is qualified to testify at trial; rather, the witness must have expert knowledge in the relevant art to testify as to issues of noninfringement and validity. In support of its conclusion, the Court stated that the testimony of a witness lacking relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702 (“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”). Further, the Court stated that testimony relating to technical evidence may be of great utility to the fact-finder and that admitting testimony from a witness lacking technical expertise “causes mischief and confuses the fact-finder.”

Thus, the Court found Bliss’s testimony inadmissible despite the fact that patent attorneys are often relied upon by their clients to render opinions on the validity or infringement of patents. Although patent attorneys often provide such counseling on a daily basis, the Federal Circuit held that patent attorneys are not qualified to testify at trial absent technical expertise in the pertinent art.

Duane Moore is an associate patent attorney at the law firm of Cahn & Samuels, LLP, in Washington, D.C. He represents clients in various areas of intellectual property, including prosecuting patent applications related to medical devices, integrated circuits, electronic storage systems and software applications.

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Publications : Bar Bulletin: March 2009

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