When Should Your Expert Be Skilled in the Art?

January 11, 2013, 5:20 PM

Seems like a basic question that answers itself: when you want the expert to opine on non-infringement positions, invalidity and scope of the prior art in a patent infringement case, your expert should be skilled in the art. Unfortunately, in patent cases, some parties are forced to find experts that bridge two areas of art. In the process, the person may be very expert in one thing but not technically skilled in the art at issue. That was the case in the recent Eastern District of Virginia case of Morpho Detection, Inc. v. Smiths Detection Inc., No. 2:11-CV-498, 2012 U.S. Dist. LEXIS 170561 (E.D. Va. Nov. 30, 2012).

Morpho involved a U. S. patent that taught a novel, regenerative drying system for an Ion Mobility Spectrometer (IMS) detection unit. Those IMS units analyze swabs of materials that are rubbed on clothing and luggage at airports to detect narcotics or explosive materials. The parties had agreed that one skilled in the art of that patent in suit had to have (1) a B.S. in mechanical engineering, chemical engineering, physics, or chemistry (or equivalent experience); and (2) at least three years of work experience in designing pneumatics and gas purification systems for analytical instruments. Despite agreeing to the definition, the defendant attempted to use different experts to rely on each others expertise in certain areas to cobble together non-infringement and invalidity defenses.

In response to a timely Daubert challenge before trial, Judge Mark S. Davis excluded the defendants experts from testifying on the issues of non-infringement and invalidity. Applying the Federal Circuit case of Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008), Judge Davis reasoned that where defendants experts could not qualify as persons of ordinary skill in the art of the patent at issue, any testimony from them onnon-infringement, invalidity, and the scope and disclosure of the prior art was necessarily inadmissible under Federal Rule of Evidence 702. He rejected the defendants argument that a technical expert need not meet the definition of one having ordinary skill in the art to provide opinion testimony on invalidity or non-infringement, . . . the disclosure of particular art references, the motivation to combine those prior art references, or any other issue that requires interpretation from the perspective of one having at least ordinary skill in the art. 2012 U.S. Dist. LEXIS at *45. While defendants expert could testify generally as an expert in the science of adsorption and adsorption processes, including air drying he could not testify beyond that general science. Id. at *7.

Having part of its expert testimony struck did not bode well for the defendant. In a subsequent jury trial, the jury found that the defendant had infringed the asserted claims, that the claims were valid and enforceable, and that the defendant was liable for approximately $3 million in past infringement damages. Patent litigants in the Eastern District of Virginia would do well to make sure that their experts meet any test for being skilled in the art.

Stephen E. Noona is the head of Kaufman & Canoles Trial Section and Co-chair of its Intellectual Property Law and Franchising Practice Group. He has been counsel in over ninety (90) patent cases in the Eastern District, is Fellow in the American College of Trial Lawyers and has appeared before the judges in all four Divisions of the Eastern District on patent and intellectual property matters.He represented the successful plaintiff, Morpho, in the referenced matter and completed his third patent jury trial of the year. --Stephen E. Noona