Patent Obviousness And The Indispensibility Of The Attorney-Expert Witness

In considering whether patent claims are invalid in light of the prior art, trial court's exclusion of alleged infringer's technical expert testimony merely "for the reason that" the expert witness "is not a lawyer is contrary to Federal Rule of Evidence 702 and the benefits of technological assistance in resolution of technological issues," in Outside the Box Innovations, LLC v. Travel Caddy, Inc., __ F.3d __ (Fed. Cir. Sept. 21, 2012) (No. 2009-1171)

In an unusually direct statement for an unusual case, the Federal Circuit recently examined the propriety of a per se bar in determining witness qualifications to opine on prior art and obviousness requires possession of a law degree. It was an error to make work as a lawyer a tipping factor in assessing a proffered witness's expert qualifications. According to the court, legal training and experience would not hurt. "To be sure, many lawyers have technical training, but it is technological experience in the field of the invention that guides the determination of obviousness, not the rhetorical skill or nuanced advocacy of the lawyer." Not only was the exclusion an abuse of the trial court's discretion, but in this case it also turned out to have a "substantial influence" on the case's result. Outside the Box Innovations, __ F.3d at __.

In the case, defendant Travel Caddy lost a patent infringement claim in the district court involving the company's tool carrying bag product. Somewhat mundanely, the trial probed whether the defendant's "version of the Union Rich tool carry case called the Electricians Carryalls (Electricians Bag I) infringes various patent claims" of the plaintiff. The circuit's answer answer to the infringement question touched on a variety of issues that arose in the case, such as whether the patents were unenforceable because of the defendant’s inequitable conduct, whether information withheld was material to the determinations made by the USPTO, and whether the defendant's actions were motivated by an intent to deceive. The Federal Circuit noted that case law required an accuser prove specific intent to deceive through evidence of knowledge and deliberate action, and that no such evidence existed in the record of this case. According, the trial court's conclusion of defendant's inequitable conduct could not stand. This undermined the court's rulings on whether the patents in suit were invalid, which was accordingly vacated and the issues of obviousness of the patents were remanded to the trial court for a new examination.

The determination of obviousness required the court to examine whether the invention as a whole would have been obvious “to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. §103(a). In the case, plaintiff Outside the Box argued that the invention was obvious. It pointed to attorney argument of several prior art references. Defendant Travel Caddy's proposed rebuttal of this contention came in the form of an expert witness who had experience in the technical field. However, the witness did not get the opportunity to testify and the trial judge explained:

Well, I’m going to rule out Mr. Korchmar’s testimony as an expert, and it’s not -- I do believe that he is very knowledgeable about the products in his field, but I do know not see how he would be able to address what claims mean if he’s not a lawyer. It seems to me that is within the province of a lawyer."
Outside the Box Innovations, __ F.3d at __.

The trial judge later explained this finding, noting that because the witness was "not a lawyer, he was not qualified as an expert to testify as to what the prior art teaches and the correct interpretation of patent claims in the prior art." Of course, this did not mean that a legal degree was the sole qualification. But the court was of the view that one could not have sufficient expertise, despite one's "knowledgeab[ility] ... in his field, without ... legal experience and training." Outside the Box Innovations, __ F.3d at __.

In reversing the determination of the trial judge that the plaintiff's witness was not qualified as an expert, the Federal Circuit acknowledged there were cases in which "the absence of expert testimony" was not a problem. This was not the issue at stake in the case. The issue the court faced was not a lack of expertise. All acknowledged the witness's technical skills. As explained by the circuit, "the exclusion of a technical expert for the reason that he is not a lawyer is contrary to Federal Rule of Evidence 702 and the benefits of technological assistance in resolution of technological issues." It was simply that as a matter of expert qualification, an expert opining on the obviousness of a patent, did not necessarily need to have a legal background to appreciate when an invention was obvious. Outside the Box Innovations, __ F.3d at __ (citing Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984) (prior art references and the appellant’s invention were “easily understandable without the need for expert explanatory testimony”)).

The principle to be drawn from the case was not simply that an attorney's testimony concerning obviousness was a prerequisite to an expert opinion on the issue. Rather:

"The exclusion of Mr. Korchmar’s [proffered] expert testimony cannot be reconciled with the Federal Rules and the guidance of precedent. To be sure, many lawyers have technical training, but it is technological experience in the field of the invention that guides the determination of obviousness, not the rhetorical skill or nuanced advocacy of the lawyer. We conclude that the exclusion of Mr. Korchmar’s [expert] testimony because he is not a lawyer was an abuse of discretion, and may have materially affected the district court’s ruling of obviousness.
Outside the Box Innovations, __ F.3d at __.

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Federal Rules of Evidence
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