Federal Circuit Rejects Patent Attorney Expert Testimony; Finds Patent Obvious

Sundance v. Demonte Fabricating (Fed. Cir. 2008)

Sundance sued Demonte for infringing its patent on a retractable truck tarp. A jury found the patent infringed but obvious. In a post-verdict judgment, the Judge vacated the jury’s obviousness determination – finding the patent not invalid.

Patent Attorney Expert Testimony: On appeal, the Federal Circuit found that the Michigan district court erred by allowing a patent attorney – Dan Bliss – to testify as an expert witness on the issues of infringement and validity on behalf of Demonte. At least some of his testimony focused on issues “exclusively determined from the perspective of ordinary skill in the art” even though he was not qualified as an expert in the art of tarp-making.

“Mr. Bliss is not “qualified as an expert by knowledge, skill, experience, training, or education” in the pertinent art; we therefore fail to see how he could “assist the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702.

….

Admitting testimony from a person such as Mr. Bliss, with no skill in the pertinent art, serves only to cause mischief and confuse the factfinder. Unless a patent lawyer is also a qualified technical expert, his testimony on these kinds of technical issues is improper and thus inadmissible.”

….

We hold that it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art. Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702. Indeed, 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. We understand that patent lawyers are often qualified to testify as technical experts, but such a qualification must derive from a lawyer’s technical qualifications in the pertinent art.

With Mr. Bliss’s testimony excluded, the Federal Circuit was left with no expert testimony supporting the jury’s obviousness holding. However, following the Supreme Court’s lead in KSR v. Teleflex, the Federal Circuit still felt competent to determine the obviousness on its own. Explaining the appellate court’s competence, the opinion noted that the “technology is simple.”

Holding: Reversed – Claim 1 is invalid as obvious.

Note:

  • Way back when: Peggy Focarino was the primary examiner of the patent at issue. Patent No. 5,026,109.

91 thoughts on “Federal Circuit Rejects Patent Attorney Expert Testimony; Finds Patent Obvious

  1. 91

    Mr Singer I don’t understand your outrage. This expression “prior lovin”. Does it have some particular resonance for you? I had naively supposed that relationships (nudge nudge, wink wink) between judges and advocates appearing before them in court build up over long years of practice. The expressions “If you don’t mess with me, I won’t mess with you” or “mutual respect” come to mind. There. I haven’t used the particular expression “prior lovin” but am I inferring anything other than that? Must I now submit to having my fanny fried too? Or does “prior lovin” have some nasty connotations where you are? Like “white wine” perhaps? Heaven forfend, that Shakespeare’s observation “Methinks the lady doth protest too much” has any relevance here.

  2. 90

    “Andrew: “A patent lawyer testifying as an expert on issues of noninfringement or invalidity is essentially conducting a closing argument from the witness stand. We litigators are supposed to have this sort of expertise. If we don’t, then putting a patent lawyer on the stand is unlikely to save the day.”

    Worth repeating. Dumbaxx move by the attorneys here. But evidently Bliss and the judge seemed to get along really, really well. Maybe there was some prior lovin’ between the two that the attorneys here hoped to exploit.

    Posted by: Malcolm Mooney | Jan 04, 2009 at 01:21 PM ”
    ——————————-

    In an earlier post I said I never flame anyone online. And I never have, until now.

    Malcom Mooney (if that’s your real name), you are such an ignorant, flaming arsehole that I’d personally handle Dan’s libel case if you were in the States. His credentials and reputation are impeccable, as are those of Judge Cohn.

    Since you are obviously uninformed about US law, let me give you some background. Judge Cohn is on senior status, meaning that he no longer carries a full active docket but does take on selective cases. Judge Cohn has substantial experience in hearing patent and other IP cases.

    (Indeed, in the early days of Rule 11 he sanctioned my firm and me for overzealous representation in a copyright case. I believe that subsequent development of case law regarding Rule 11 has shown his ruling to be incorrect, but I never doubted that his position was sincere and based in reason, not bias. I mention this to demonstrate that I have retained the utmost respect for him as a judge and a person, respect that he fully deserves, despite his having ruled against us.)

    Judge Cohn gained his experience in an era when the testimony of patent attorneys on mixed engineering and legal questions was not merely common, it was likely the norm, certainly in the ED of Michigan (which was once a “hot” district). The degree to which that common practice has changed is not due to a change in the Fed R Evid but in repeated reinterpretation of the Rules by the Supreme Court.

    I’ll forego commentary on the Court’s, er, creative jurisprudence. Let’s just say that some of it borders on the irrational and if the judge thinks s/he and the jury will be aided by mixed testimony, it’s the height of Monday morning quarterbacking to second guess the judge’s decision.

    The reputation of Dan Bliss is equally solid and needs not be defended here; I won’t go into the long list of his credentials. But MM, I’ll let the “rush chairman” know that I’d be happy to go back to Michigan to fry your fanny in the witness chair.

    Our host may enjoy protection under the web’s safe harbor laws, but you don’t. He really ought to bar you from posting just the same, because he’s morally and ethically a contributor to your libel.

    As for the CAFC’s decision itself, that, too, borders on the irrational. There’s no question that Dan is a more knowledgeable about engineering than J. Moore and that there is no rational basis to substitute her evaluation of the John Deere factors for his.

  3. 89

    The issue with Mr. Bliss is really a sideshow in this ruling and does not materially affect the finding of obviousness.

    What really is the problem is poor claim drafting (as usual). The limitation “without removing any other cover section” is a poor choice because it is a negative limitation, and apparently there was insufficient support in the specification for what “removing” was intended to cover. The claim drafter simply did not think through how broadly the plain and ordinary meanings of the claim terms would be construed.

  4. 88

    Dear Mr. Dhuey

    Re: “Thanks, Mr. Slonecker. I’ll be celebrating or drowning my sorrows Friday evening. The court won’t issue its denials list on Friday, but it will probably issue a grants order in the early afternoon, Eastern time. If we aren’t included in that, we’re toast.”
    Posted by: Andrew Dhuey | Jan 05, 2009 at 09:57 PM

    link to supremecourtus.gov

    I know Just how you feel.
    I hope your sorrows are behind you by now and you come back fighting.
    What I really hope there is a miracle on Monday and your Cert. is granted.
    Your cause, certainly, is Just.

    * * * * *

    Dear Tyrone Slothrop,

    Re: your edifying comment up-tread on Wednesday at 7:50AM.

    I believe the whole concept of PHOSITA in relation to expert testimony in for a big business litigant is at best akin to hearsay evidence from a source (an “expert”) paid to advance a particular spin to persuade the Judge and/or Jury independent reality and fact, and without any concern for fairness or justice.

    Typical big business in its operations and in its IP objectives is driven be greed without concern for We the People, not even their shareholders – they take as much as they can in mind-boggling bonuses and other perks, sock away as much as they can, and if there is anything leftover, the shareholders may get a ROI.

    In my two major patent litigations which went the distance and then some, the basis on which I chose my experts was there integrity and how their credibility would play in front of the Judge and Jury. In one case the Judge took his Oath of Office to heart, and I prevailed. In the other case, the Judge rendered a politically correct contorted result oriented decision which was upheld because of politically correct pressures created for the most part by Cisco and the other 100+ cartel members in the Coalition for Patent Fairness. C’est la vie.

    Judges who do not take their Oath to heart can mince words in file histories and ignore the sound principles laid down in Phillips v. AWH to find imaginary disclaimers of claim scope at their whim. Judges can also tank almost any patent they may want to for whatever reason after KSR. After eBay, there is little reason for big businesses to take any license until after prohibitively-expensive litigation for most self-employed independent inventors.

    Re your observation at 11:05AM:
    “AGREED, OBVIOUSNESS IS A CONCEPT WHOSE IMPORTANCE (FOR PATENTS…) IS RIVALED ONLY BY ITS SLIPPERINESS. In my view, TSM (like PSA in Europe) is a valuable tool for establishing that something IS obvious, but passing the TSM/PSA test does not itself mean that something is definitely non-obvious, which is where the expert witnesses usually come in.” (emp. added)

    I am again reminded of Professor’s Crouch’s more “timely” than ever report some time ago:
    link to patentlyo.com
    Patent Rights Circa 1895
    E. Bement & Sons v. La Dow, 66 Fed. 185 (Cir. Ct. N.Y. 1895)
    [N]o property is so uncertain as “patent rights”; no property more speculative in character or held by a more precarious tenure. An applicant who goes into the patent office with claims expanded to correspond with his unbounded faith in the invention, may emerge therefrom with a shriveled parchment which protects only that which any ingenious infringer can evade. Even this may be taken from him by the courts. Indeed, it is only after a patentee has passed successfully the ordeal of judicial interpretation that he can speak with any real certainty as to the scope and character of his invention.

    * * * * *

    What our American IP system needs is strong patents, professional PTO management and expert educated fair-minded Examiners. And Judges who earn their position because of their integrity and willingness to abide by the Constitution, lawful statutes and precedent.

    STARE DECISIS should be the rule for patents in Court, i.e., “to stand by that which is decided” by the PTO. The principle that patents issued by the PTO, unless new 102 prior art is found, should be honored by the Courts.

  5. 87

    Breadcrumbs

    I would truly like to be enlightened on this. Your position certainly has support from some others upthread, but equally there are a number of contrary views expressed. I’m unconvinced by any of the comments on “your side”; e.g.

    “Nevertheless, in this case the two positions hardly seem consistent with each other, when the result is that the judgment of one non-technical person is excluded, only to be substituted with the judgment of another group of non-technical people.”

    Uh, but the “excluded” person has been put forward by one of the parties as an expert to support their position while the other “group”, well, they are actually the JUDGES.

    You’re right, I don’t see the issue.

    Your original comment, I think, was “If not expert enough, then the court is not expert enough. If no expert needed, then Mr. Bliss’ testimony should stand.” I just don’t think that holds water, on two counts:
    (a) “not expert enough” in this context means Mr B’s opinions about obviousness are unsupported by any pertinent expertise in the art and should be disregarded. There is no logical connection between this and whether the court is qualified to decide on obviousness given the available facts. Mr Bliss was not an appropriate expert witness, so his testimony should be ignored.
    (b) The fact that the Judges decided that expert evidence was not actually required to decide the issue does not magically make Mr B’s testimony relevant.

    I may be no rocket scientist myself, but I like to think that I can articulate a point…

  6. 86

    Given that x hundred patents issue, for every one that is litigated, I’m all in favour of a PTO test for obviousness that performs a coarse filter and court proceedings that refine that filter. One satisfying aspect of EPO-PSA is that, the more you refine it with x-examined expert testimony, the better its filtering power gets, so one can use undiluted PSA from soup (the PTO) to the nuts of the Supreme Court.

    Bread, you have the drop on me because I’m not a common law litigator, but I had thought it would be reasonable of the court to say of proffered evidence that it doesn’t survive some sort of relevance/admissibility test, so we’re not going to look at it. But I freely admit I might be poor-sighted, and anyway would defer to US colleagues to help me with such questions. I’m here to learn (and occasionally to provoke, I must admit).

  7. 84

    Tyrone,

    If you don’t see the paradox, then you don’t see the issue. Others do see both. I cannot then, make my comments understandable to you.

    MaxDrei,
    How about the criterion of avoiding the perception of inequity? Perhaps, like Tyrone, you do not see an issue with a judge kicking out someone’s testimony because that person fails to meet an “expert level” criteria, and then turning around and dismissing that criteria and making his own ruling with no more “expert level” than the dismissed testimony.

    I am NOT saying that the judge was wrong in either decision – I am merely offering a suggestion as to why some DO find that an issue exists. My “better” approach simply eliminates the appearance of impropriety. The “better’ comes from the added clarity that, although may not be needed by keen minds such as Tyrone and yours (no sarcasm intended), is appearently needed because we are blogging on the subject.

  8. 83

    Breadcrumbs

    Further re “you are not expert enough”/”no expert required”:

    “This isn’t rocket science, we don’t need no steenking rocket scientist. Mr Bliss, you’re no rocket scientist, what do you think?”

  9. 82

    JAOI

    Agreed, obviousness is a concept whose importance (for patents…) is rivalled only by its slipperiness. In my view, TSM (like PSA in Europe) is a valuable tool for establishing that something IS obvious, but passing the TSM/PSA test does not itself mean that something is definitely non-obvious, which is where the expert witnesses usually come in.

  10. 81

    Oops, my pet pseudonym popped up – sorry.
    My white rabbit is for lighter subjects.

  11. 80

    Dear Tyrone Slothrop et al.,

    Thank you for your tutoring. I believe “obviousness” is the most fundamental and difficult patent question, like measuring a cloud. Unfortunately, my schedule prevents me from thinking your teachings through and commenting today – I expect to have further thoughts regarding my hypothetical tomorrow. The question of “obviousness” has always perplexed me. I’ve been a devotee of the TSM approach because it is evidence-based.

  12. 79

    JAOI

    Regarding your hypothetical, if you presented one hundred people, all of whom could fairly be said to be representative of the PHOSITA in a particular art, with the same nugget of information that was new to all of them, and five out of the hundred came up with the same “invention” as a result, then I think that makes a fairly strong case that the invention was non-obvious. The time-frame might be relevant though – suppose fifty of them came to the same conclusion after six months that five had reached after five weeks…

    For 103 purposes, the PHOSITA would be a kind of average of the hundred, not any one individual out of the hundred – that way lies madness!

  13. 78

    Breadcrumbs

    I really don’t see the paradox that you do re “you are not expert enough”/”no expert required”. The two just aren’t related. As far as Mr Bliss is concerned, they are simply saying that he had no relevant expertise such that his opinions on the issue should be lent any weight. That is not connected to the view taken that the issues did not require expert evidence to be decided.

  14. 77

    Bread, “better” by what criterion? If the court is pursuing the public policy objective of signalling its determination to fight the flab, drive the expense of patent litigation down to the irreducible minimum consistent with fairness and justice, and to “encourage the others”, then the decision, as taken, is “better” than your proposal, no?

  15. 76

    “In the absence of any relevant expert evidence, it falls to the court to decide obviousness on the basis of the facts before them, which is what they did.”

    Ah, Tyrone, if that were the only issue, we’d be fine. However, the court stated the NO expert was required for the facts before them. Ruling some testimony out for lack of expert standing alone is also perfectly fine. The rub is that the “you are not expert enough” ruling follows with the “no expert required” nonsense. In your view the issues were simple and clear enough. That also, alone, may be true. Again, it’s the combination that’s tough to swallow. Given that the issues were simple and clear enough that non-expert judges can make a decision without any required subject matter expertise, it would appear on the face of the matter that anyone (including Mr. Bliss) would then be “expert” enough to opine.

    I think the court may have got both decisions correct, but have created a perception of “double-dipping”. Perhaps a better approach (with hindsight) would have been for the court to admonish counsel for portraying Mr. Bliss as an expert in the art, to let stand his testimony (since the actual issue did NOT require expert standing) and to rule as they did on the simple issue.

  16. 75

    …spot on. And why this mythical beast, the PHOSITA? Why, to render the determination of what’s legally “obvious” an “objective” determination, rather than one that is subjective. Anybody got any objections? Come to think of it, anybody got any more ideas, how to make the obviousness determination more reliably “objective” (any European patent attorney readers out there, you know already. so stay away from your keyboards please).

  17. 74

    JAOI

    An inventor can be more or less skilled than the relevant, abstract PHOSITA. The requirement that a patentable invention must embody an advance in the relevant art that would not have been obvious to the relevant PHOSITA is entirely independent from the identity of the actual inventor.

    The PHOSITA is a legal abstraction. Expert evidence in relation to obviousness should be about:
    (a) The nature of the PHOSITA in relation to a particular patent, including the common general knowledge (CGK) to be ascribed to the PHOSITA.
    (b) The manner in which the PHOSITA would think about the issues underlying the claimed invention.
    (c) How the prior art of record would be interpreted by the PHOSITA, to the extent that its content extends beyond the relevant CGK.

    In light of such evidence, it is for the court to decide whether the claimed invention is obvious.

    The expert has to be expert in the relevant field in order to make any meaningful contribution regarding these issues.

    In this case, the court held (rightly, in my opinion) that Mr Bliss was not in a position to make a meaningful contribution, therefore his evidence was to be disregarded.

    In the absence of any relevant expert evidence, it falls to the court to decide obviousness on the basis of the facts before them, which is what they did. If there had been any relevant expert evidence, they would have given it due weight in deciding the question. If they had felt unable to decide fairly in the absence of relevant expert evidence (because the technology was too complex), then presumably they would have taken other action, but in this case they took the view (again, rightly, in my opinion) that the issues were simple and clear enough for them to make a decision.

  18. 73

    Dear M. Slonecker,

    Pages (pdf) 32 to 60 are missing but 61 is complete down to and including Mr. Dhuey’s two page letter.

  19. 72

    Mr. Dhuey,

    Thank you for the link. Unfortunately, the PDF document is defective in that the latter half of its pages are corrupted. I tried a PDF repair, but it failed to cure the problem.

    I did read the first half of the document. It was amusing that counsel for one university promoted the position that the waiver of SI would emasculate the ability of universities to move their research results into the commercial sector.

    Having dealt with governmental agencies for many, many years, principally the DOD, DOC, DOS, DOE and NASA, and likewise being intimately familiar with Bayh-Dole and its implementation regarding “funding agreements” (i.e., contracts, grants, cooperative agreements, CRADAS and OTs, this may very well be a situation where meaningful change is best facilitated by going into a “stealth mode” and working for change via federal rulemaking.

    A couple of things that quickly come to mind are:

    Redefine the terms “federal purpose” and “government purpose”.

    Amend language for the license retained by the government to reflect the above redefinition of “purpose”.

    I saw a host of other possibilities, but listing each of them would make this comment intolerably long.

    Why the above as one possibility? The universities slavishly depend upon federal funding agreements to pay for a major portion of their research. I fully expect that changes such as the couple noted above would place them in a financial vise that could easily be eliminated by rethinking their reliance on SI.

    I do not foreclose the possibility of “stealth” legislation. I have used it whenever necessary and it worked splendidly. My situations, however, involved a federal agency that saw nothing wrong with competing directly with the private sector in domestic and international commercial markets.

    Experience has taught me that the law can be changed, but sometimes the approach needs to be how one goes about eating an elephant…namely, one small bite at a time.

    Again, hope you receive good news.

  20. 71

    Congress tried three times to pass the Intellectual Property Protection Resortation Act. I did what I could to help: link to bulk.resource.org

    Roughly speaking, it was some academics, administrators and me on one side, and the states on the other. Not a fair fight, if you ask me — especially when you add the University of California lobbyists into the mix.

  21. 70

    Mr. Dhuey,

    If you prevail I will be pleased to provide the champagne. If not, I will provide some high octane moonshine to numb the pain.

    No matter the outcome, I do have to congratulate you and your colleagues for addressing a difficult issue in such a professional manner.

    One way or another this glaring discrepancy in the law needs to be addressed, if not by the courts then by Congress.

  22. 69

    Thanks, Mr. Slonecker. I’ll be celebrating or drowning my sorrows Friday evening. The court won’t issue its denials list on Friday, but it will probably issue a grants order in the early afternoon, Eastern time. If we aren’t included in that, we’re toast.

  23. 68

    “I made my ‘grammar’ comment tongue-in-cheek based upon the following thread at ‘The Volokh Conspiracy’: link to volokh.com

    My original comment was in fun as well. Given my error in my original posting, I thought the 3:04 posting in the Volokh thread was interesting…

  24. 67

    Mr. Dhuey,

    While this is completely off topic, I believe it bears mentioning that the Supreme Court will likely consider your cert petition this week and announce its decision next Monday.

    I do hope that its decision is to your liking.

  25. 66

    I may not be an expert on tarps either, but IMHO I AM an expert on patent searching. I started out as a searcher before qualifying as an agent and doing prosecution, and spent 20 years either wholly or partly doing searching, although I no longer search.

    The IPC is much broader than the US classification system, so that even of it might be based on supposedly better principles, which I doubt, it tends to return too many references to look at.

    The EPO do not in fact use the IPC, but instead use their own EPC, which is similar to the IPC but has an extra layer beyond the subgroups of the IPC, reducing the quantity of references down to manageable numbers.

    Classifications of a patent (as opposed to a trademark, which is a horse of a different colour) generally lack legal significance, although they are used by US examiners to defend restrictions. They are really just a tool used to find art, and I would be quite upset if the courts did give any deference to them.

  26. 65

    Mr. Weary Lex,

    I made my “grammar” comment tongue-in-cheek based upon the following thread at “The Volokh Conspiracy”:

    link to volokh.com

    One commenter provided a quote attributed to Thomas Jefferson that seems quite apt.

  27. 64

    M. Slonecker said, at Jan 05, 2009 at 11:02 AM:
    “I have a rather simplistic view. If a classification system is promulgated under lawful authority, and if one of the purposes of the classification system is to assist in the identification of relevant prior art, then why is it not given deference, or even noted, by the courts?”

    You raise an interesting point. As an example of how this might work, look to how courts interpret the legal significance of filing errors and “slight” mis-identifications of entities/parties in the case of UCC Art. 9 filings. IIRC, the standard is defined in terms of what a search of the filing system should have found if there had been no error. Maybe a similar rule should apply here.

  28. 63

    Actually, according to 35 USC 103, it is the skill level of ONE of the 95 PHOSITA that is determinative of the obviousness question.

    Now let’s say the skill levels of those 95 PHOSITAs fell along a Bell curve, which would be statistically sound logic.

    Questions arise, e.g., from which portion of the Bell curve does 35 USC 103 mean to take its APHOSITA (singular) from?

    35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
    (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made. (emp. added)

  29. 62

    It is the skill level of the 95 PHOSITAs that is determinative of the obviousness question.

  30. 61

    Leo,

    My problem assumes the latter, i.e., (c) five separate sole inventors.

    Re: “If the latter, and if the 5 are PHOSITAs, then you might have an obvious invention. Or you might not. How’s that for a definitive answer?”

    I believe, therefore, that given five separate sole inventors, and 95 PHOSITAs (all of whom continued their research projects after the conference), notwithstanding KSR, and notwithstanding five inventors making the same invention in five weeks (which is my “nagging” point), we have one rightful patent prize winner, the first to invent inventor.

    My rational being that, if 95 research PHOSITAs did not invent the cure even with the drunk guy’s new research tool (whether or not his new tool is an invention is besides the question at hand), and five inventors separately did invent the cure, the fact that five inventors invented the same cure cannot be the basis of an obviousness rejection.

    PS: Not that it is key to what’s been nagging me, but as you cleared up perfectly, it is besides the point that the five inventors are PHOSITAs.
    “The INVENTOR’S skill is irrelevant to the question of obviousness. A particular inventor might be a PHOSITA, more skilled than a PHOSITA, or less skilled than a PHOSITA. It simply doesn’t matter.” (emp. added)

  31. 60

    “In sum, may one conclude that:
    (i) there are 5 separate inventors, and
    (ii) there are 95 PHOSITAs?”

    Assuming that there’s an invention in there somewhere, you might have (a) one inventor, from which five others derived their work (e.g., adding only a technician’s value to the inventive solution), (b) five inventive teams, with the original drunk guy a part of all five, or (c) five separate sole inventors. If the latter, and if the 5 are PHOSITAs, then you might have an obvious invention. Or you might not. How’s that for a definitive answer?

  32. 59

    Hi Leo,

    Yes, I agree with both aspects your comment – of course you are right.

    However, something is still nagging me about Inventor v. PHOSITA, although I’m not sure where all this goes.
    What matters, of course, is the skill of the PHOSITA.

    If a PHOSITA combines, say a pool cover invention and a truck tarp invention, and that combination is new and useful, then he is an inventor, at least in my book.

    If a PHOSITA does not combine, or many PHOSITAs do not combine, say, a pool cover invention and a truck tarp invention, then he/they is/are not (an) inventor(s) – he/they has/have “ordinary skill.”

    Of course, there can be many inventors of a given invention, e.g., if the need and or potential for a particular inventive solution is significant enough. The first to invent, of course, wins the patent prize.

    Say, for example, 1000 pharmaceutical researchers (PHOSITAs) spent 10 man-years each in 10 separate research projects each costing $100 million searching for a cure for particular disease.

    Let’s say 100 of these researchers attend a medical conference at which there is a hospitality suite with a abundance of huge shrimp and single malt Scotch.

    After partying for a while, one inebriated researcher (he started partying early) has a flash of genius and he spurts out his gem-of-an-idea which all 99 (sober) researchers hear, and it is an idea that, after the conference, provides (only) 5 of these 99 researchers (not the flash-of-genius guy ’cause he forgot his idea) with a new tact – a new research tool – to tackle the problem, and all five work diligently and (separately) come up with the same inventive cure some time later in five successive weeks, and all five document their innovation and timely file their patent applications in five successive weeks.

    In sum, may one conclude that:
    (i) there are 5 separate inventors, and
    (ii) there are 95 PHOSITAs?

  33. 58

    “The inventor’s skill is irrelevant to the question of obviousness. A particular inventor might be a PHOSITA, more skilled than a PHOSITA, or less skilled than a PHOSITA. It simply doesn’t matter. But you’ve been told this before…”

    I thought that was one of the factors they looked into … but then, I haven’t read over that stuff in quite some time. Not that I care, Poshita is whom I want him to be :)

  34. 57

    FWIW, Senior Judge Avern Cohn (a man, BTW) has many years of experience overseeing patent trials at ED Mich.

  35. 56

    “Is an inventor a person of ‘ordinary skill’ in his/her art?, or is an inventor a person of ‘extra-ordinary skill’ in his/her art? . . .
    Who would dare attempt to credibly deny the extreme significance of these questions?”

    I would. The inventor’s skill is irrelevant to the question of obviousness. A particular inventor might be a PHOSITA, more skilled than a PHOSITA, or less skilled than a PHOSITA. It simply doesn’t matter. But you’ve been told this before…

  36. 55

    Is an inventor a person of “ordinary skill” in his/her art?, or

    is an inventor a person of “extra-ordinary skill” in his/her art?

    Can anyone help here?, Bueller?, Bueller?, Merriam?, weary lexicographer?, or is everybody stumped!

    Who would dare attempt to credibly deny the extreme significance of these questions?

    What does all this bullmanure about 35 USC 103 and KSR mean if a keen understanding of the answers to these questions isn’t part and parcel of any such dialogue?

  37. 54

    Mr. weary lexicographer:

    No reason to be embarrassed. Even I have phucked-up.

    If anybody asks, tell him that I said it was OK.

  38. 53

    “The next time someone complains about your doing so, tell them that the weary lexicographer said it was OK.”

    That should be “tell him that the weary lexicographer said it was OK,” not “tell them.” I’m so embarrassed…

  39. 52

    Main Entry: 2 ordinary
    Function: adjective
    Etymology: Middle English ordinarie, from Latin ordinarius, from ordin-, ordo order
    Date: 15th century
    1 : of a kind to be expected in the normal order of events : ROUTINE, USUAL
    2 : having or constituting immediate or original jurisdiction; also : belonging to such jurisdiction
    3 a : of common quality, rank, or ability b : deficient in quality : POOR, INFERIOR
    synonym see COMMON
    – or·di·nar·i·ly /”or-d&-‘ner-&-lE/ adverb
    – or·di·nar·i·ness /’or-d&-“ner-E-n&s/ noun

  40. 51

    Stuart, it might be instructive to look at how the English courts relate expert testimony to obviousness. The expert is there to educate the court, about what the PHOSITA was thinking, back at the relevant date. For the English court, finding as a fact (disputed by the parties) what was or was not obvious at date X is more or less impossible without the benefit of the education provided by the expert. Now, in England, each expert gets x-examined by the other side and it’s this x-exam that helps the judge towards the facts. By contrast, in Germany, the court appoints its own expert. Where does it get one from? It’s getting harder every year, to find one that both 1) knows the facts and 2) is impartial, and not connected to one “player” or another. The world can learn a lot, from the way England conducts patent litigation, under the European Patent Convention, competitively with Germany.

  41. 50

    “And (starting with a conjunction is, of course, a clear ‘no-no’ under the rules of proper grammar…but the heck with proper grammar)…”

    Mr. Slonecker, when properly done, beginning a sentence with a conjunction can make your writing much clearer and more effective. And, of course, this is the ultimate goal, isn’t it?

    The next time someone complains about your doing so, tell them that the weary lexicographer said it was OK. If that doesn’t convince him or her, tell them that Bryan Garner also says so. (A Dictionary of Modern Legal Usage, 2nd Edition.)

  42. 49

    Main Entry: in•vent
    Pronunciation: in-‘vent
    Function: transitive verb
    Etymology: Middle English, from Latin inventus, past participle of invenire to come upon, find, from in- + venire to come — more at COME
    Date: 15th century
    1 archaic : FIND, DISCOVER
    2 : to devise by thinking : FABRICATE
    3 : to produce (as something useful) for the first time through the use of the imagination or of ingenious thinking and experiment
    – in•ven•tor /-‘ven-t&r/ noun
    – in•ven•tress /-‘ven-tr&s/ noun

  43. 48

    Dear Stuart,

    Excellent point!, thank you.

    QUESTION – I think this is a critical, $64K question, and it has keep me wondering for some time:

    Is an inventor a person of “ordinary skill” in his/her art?, or
    is an inventor a person of “extra-ordinary skill” in his/her art?

    Be careful; I believe this is not a simple question.
    Also see:
    link to patentlyo.com

  44. 47

    Has anyone noted that 103 requires NOT permit expert testimony but, instead, requires testimony by a person who had ordinary skill in the relevant art when the invention was made?

    It’s time the USCT got the question. That is, a case where one side presents PHOSITA testimony and the other provides “expert’ testimony and the CAFC upholds the use of the latter. Even the most challenged SCTUS judges should be able to read the plain language of 103.

  45. 46

    Mr. Dhuey, I fully agree that the court may have come to the correct legal conclusion, i.e. the conclusion that is consistent with precedent: attorneys shouldn’t be testifying as technical experts; and since under the CAFC’s jurisprudence, obviousness is a question of law based on the underlying facts, then given those underlying facts, the CAFC itself is in a position to decide the question of obviousness. Nevertheless, in this case the two positions hardly seem consistent with each other, when the result is that the judgment of one non-technical person is excluded, only to be substituted with the judgment of another group of non-technical people.

  46. 45

    MaxDrei on Jan 05, 2009 at 02:16 AM

    Before making my observation, I did look at both the US and International classes associated with the patent, the primary reference and the secondary reference. Unfortunately, I believe the identical situation would have arisen even using the IPC, and this in my view is the “rub”. In either case I believe the secondary reference would have escaped “under the radar” during the prosecution phase of the patent. And (starting with a conjunction is, of course, a clear “no-no” under the rules of proper grammar…but the heck with proper grammar) this is precisely the problem with classification systems. It is far too easy for a patentee to conduct comprehensive searches (both before filing an application and before initiating litigation) and still miss a potential “smoking gun”.

    Some who read my comments may ask “What is the big deal?. Classification systems are never perfect.” I have a rather simplistic view. If a classification system is promulgated under lawful authority, and if one of the purposes of the classification system is to assist in the identification of relevant prior art, then why is it not given deference, or even noted, by the courts? After all, time and time again agency interpretation and implementation of enabling legislation are given deferrence in judicial proceedings. Remarkably, not once have I read any district court, Circuit Court of Appeal, CCPA, CAFC, or Supreme Court decision that even mentions this point. I do not, of course, dismiss the possibility that I may have missed such a mention, even though I have read over 30 years worth of USPQ advance sheets.

    It is in this context that I ask why even bother if the import of a classification system will receive virtually no consideration by the courts in attempting to determine what is relevant art and what is not. After all, does not 35 USC 103(a) provide “…the art to which said subject matter pertains.”?

    If courts are predisposed to ignore the classification system adopted by the supposed “experts” and substitute their judgement about what is and what is not relevant, then why even have a classification system in the first place? It seems almost as if a PHOSITA is being defined in this particular case in reference to anything in the PTO “library” having to do with mechanical devices, no matter what class(es) may be involved.

  47. 44

    Mr. Mooney writes this away up thread:

    “How pitiful that none of the commenters whining about this decision upthread attempt to provide even a hint of a rebuttal to Judge Moore’s concise and articulate summary of the reasons that the patent is (painfully, unquestionably) obvious in view of the prior art (pages 14-20, and particlarly the first paragraph on page 17).”

    With all due respect, Mr Mooney is away off base again.

    On Page 3 of Judge Moore’s decision, she noted Senior Judge Avern Cohn’s decision in the Eastern District of Michigan:
    “In particular, the district court concluded that Hall was ‘prior art outside of the truck environment which used segmented tarps,’ ‘a segmented pool cover,” and “a segmented non truck cover.’ Id. at *3-4.
    In its ruling, the court also noted that Mr. Bliss “did not cite any references in either [Hall or Cramaro] to support his conclusion” that a person of ordinary skill in the art would have a motivation to combine the references. Id. at *5. Nor did the court find any ‘suggestion in the art to combine’ Cramaro—which the court characterized as a truck cover—with Hall—which the court characterized as a non truck cover.”

    This is Judge Moore’s take on page 17 of her decision :
    “In combination with each other, the cover system of Cramaro performs exactly the function that it performs independent of Hall, and the removable cover sections of Hall perform exactly the function that they perform independent of Cramaro. The elements of the cover system of Cramaro perform several functions, including protection of the cargo, containment of the cargo, and retraction of the cover. None of these functions changes upon the simple act of replacing the one-piece cover of Cramaro with the segmented cover of Hall. The segmented cover of Hall performs the function of allowing individual replacement of the cover sections. This function does not change upon incorporation into the Cramaro cover system. The combination simply mechanizes Hall’s segmented cover or segments Cramaro’s mechanized cover.”

    With Judge Moore’s strained overarching “reasoning,” she could tank the Titanic if she wanted. For whatever reason, this decision is “result-oriented” to tank the patent.

    There was no Just reason to reverse Judge Avern Cohn’s well-considered decision – after all, she held the trial and her reasoning is perfectly sound.

  48. 43

    anonymous said in part:
    “It’s generally a bad idea to have lawyers testify as experts on the ultimate issues in dispute. As Mr. Dhuey says in the second comment on this thread, it’s essentially having a witness make a closing argument.”

    On that point I totally agree. I still think it’s crazy, even surreal, to pretend that obviousness is a question of law. Not that this case is necessarily a good vehicle for challenging that issue, especially when the Supremes have pretty well foreclosed it just 2 years ago.

  49. 42

    Good Morning Mr. Dhuey,

    Re: “Why single out Judge Moore? Didn’t Judges Dyk and Prost have a role in this one?”

    Because I’ve not seen Judges Dyk and Prost in action nor have I studied their decisions.
    And I have seen Judge Moore in action and studied decisions in which she participated.

    Moreover, Judge Moore, as you must know, is not a pro-patent Judge, e.g., her position on Continuations demonstrates her lack of appreciation or understanding for the art of patent practitioners and their inventor clients’ interests.

  50. 41

    The opinion is clearly right, and most of the good stuff is in the footnotes. It’s generally a bad idea to have lawyers testify as experts on the ultimate issues in dispute. As Mr. Dhuey says in the second comment on this thread, it’s essentially having a witness make a closing argument.

    I have no idea where all of this patent prosecutor resentment is coming from.

  51. 40

    “I shudder to think that we might not even get someone better than Jon Dudas, or that in a show of bipartisanship Obama might retain Dudas, which would be the nightmare scenario.”

    Choose mode:

    Easy mode – a few terms of J. Dudas.
    Nightmare mode – J. Dudas stays in for a few more.
    Hell mode – ???

    Yes I know max, ur systems so cool, everybody’s doin it’, so should we.

  52. 39

    “KSR aside, if the classification system is unreliable in identifying relevant art, then why even bother having it in the first place?”

    Better than nothing?

    Hey Bring It, are you a politician? If not, why are you setting up a false straight choice between the US subject matter classification system and……”nothing”. In fact, the USA could always fall back on that obscure search tool that the EPO uses. Results are indisputably much better than those achieved by the US system. Now, what’s it called? Oh yes, I remember, the International Patent Classification System, usually referred to (everywhere outside the USA) as the IPC.

  53. 38

    “KSR aside, if the classification system is unreliable in identifying relevant art, then why even bother having it in the first place?”

    Better than nothing?

    “The patentee did note certain differences between his invention and the disclosure contained in the secondary reference. Unfortunately for him, that difference was not recited in his Claim 1. Had the system worked by the secondary reference coming to light during prosecution, I believe a claim could have easily been presented that would have passed 103 muster.”

    If we lived in Utopia a claim could have easily been presented that would have passed 103 muster…

    Unless of course another reference showed that difference and was combinable as well.

  54. 37

    “Had the system worked by the secondary reference coming to light during prosecution, I believe a claim could have easily been presented that would have passed 103 muster.”

    Indeed. The attorneys here tried to read limitations into the claim as part of their non-obviousness arguments but the CAFC was not confused. Try to imagine this panel finding that ridiculous insect screen claim non-obvious.

  55. 36

    Personally, I am a bit surprised the Court chose to wax poetic concerning an “expert” when it is all too clear from the opinion that whatever the “expert” had to say was deemed irrelevant to the ultimate issue at hand…obviousness.

    As for the deciding issue, I am troubled a bit because I lack a copy of the district court proceedings. Part of my trouble stems from the fact that the primary reference was considered during prosecution and the secondary reference was not. Why was this the case? Perhaps my question is answered by examining the face of the patent and the primary reference. Both are denominated as falling within the same “class”. In contrast, the secondary reference, despite its mention of “trucks” (I will ignore if the mere mention is even relevant), falls within a separate and distinct “class”.

    I can only speculate what would have happened during prosecution if the applicant and the examiner had not been led down the “primrose path” as a consequence of how the secondary reference was classified. I rather doubt that at the time the original application was filed even the most comprehensive Pre-X search would have turned up the reference. At the time the application was prosecuted I presume this would have also been the case with even a rigorous search by the examiner.

    KSR aside, if the classification system is unreliable in identifying relevant art, then why even bother having it in the first place?

    One final observation, if I may. The patentee did note certain differences between his invention and the disclosure contained in the secondary reference. Unfortunately for him, that difference was not recited in his Claim 1. Had the system worked by the secondary reference coming to light during prosecution, I believe a claim could have easily been presented that would have passed 103 muster. Of course, hindsight is always 20-20.

  56. 35

    (I know that this is off-topic)

    Will Obama PTO Director Be Good Choice?

    link to ipwatchdog.com

    I like the last sentence — “The fact that Obama might be listening to Rai and/or Lemley with respect to who to appoint as the next Director of the USPTO is scary indeed.”

  57. 33

    Mr. Feigelson, perhaps there’s a little irony in the situation, but no inconsistency. The court needed to apply FRE 702 and Daubert on the question of whether the patent attorney’s purported expert testimony was admissible. The judges were not suggesting that they could have taken the stand as experts under this standard, either. They merely held that given the undisputed facts, the claim was obvious as a matter of law.

    Perhaps one might take issue with whether the undisputed facts really did compel a finding of obviousness. Regardless, there is nothing unsound with the idea that a purported expert’s testimony must be excluded under FRE 702, and also that the undisputed facts show that the claim runs afoul of 103.

  58. 32

    Here’s a hypothetical for the peanut gallery:

    Patentee sues D for infringing its claim to “A round ball with a blue star printed on the surface.” The specification says the ball is fun to play with.

    At trial, D presents as evidence of invalidity a reference published five years before the priority date of the patent that describes a round ball with a blue star printed on the surface. The reference also shows a picture of what appears to be a smiling child playing with a round ball with a blue star printed on the surface.

    D puts an attorney on the stand who alleges to be a “technical expert” and testifies that the reference anticipates the claim. Patentee puts a non-attorney on the stand who also alleges to be a “technical expert” in the field of child psychology who testifies that the reference is non-enabling because the child in the picture is not happy, but grimacing in pain. The patentee also states in their brief that the “ball” referred to in the publication is actually a flat disc and not a sphere.

    The district court judge chucks out the jury verdict of invalidity and finds for the patentee.

    On appeal, the CAFC finds that defendant’s expert testimony should have been excluded. In spite of the fact that there is no witness testimony rebutting the patentee’s expert, the CAFC also declares the patent invalid as anticipated.

    After a summary of the decision is posted on various blogs, certain commenters are shocked — SHOCKED!!! — that the CAFC would dare to “substitute its judgment” for the patentee’s expert testimony.

    Ultimately, one commenter feels obliged to draft a hypothetical to address the issues. This achieves nothing because everyone’s mind is already made up.

  59. 31

    pds “they are questioning the disconnect between the Federal Circuit’s dismissal of the testimony of a patent attorney’s testimony as to the obviousness/non-obviousness of the claimed invention and the Federal Circuit’s belief that they are able to make the conclusion of obviousness.”

    There is no disconnect, as explained in the decision itself and in my comments above. You are dealing with a clear procedural violation in one hand (allowing an attorney ALLEGED to be a “technical expert” on a subject to testify on those subjects when he is not, in fact, an expert) versus taking the evidence before you and drawing basic conclusions that even you, pds, appear to have no disagreement with.

  60. 30

    step back “The person who testifies as to PHOSITA does not have to be a genius (of the flash or other kind). He or she merely needs to be able to truthfully testify, “Look, I worked in the long haul truck business back then and this is how we ordinary workers thought about the tarps …”.”

    Or you can say, “In addition to the statements in the prior art, even the patentee ADMITS in the specification of the patent at issue that PHOSITA considered swimming pool covers and truck cargo covers to be analogous art. The motivation to combine is inherent in the disclosures.”

    Still waiting for someone to explain to me how it was possible for the district court judge to blow this one.

  61. 29

    breadcrumbs “the critique still stands. It is incongruent to say that no expertise is needed and to dismiss someone’s testimony because of the lack of expertise.”

    Bliss wasn’t “someone”. He was alleged to be *expert* but he was not an expert. That is why his testimony was properly excluded. Why is that so hard to understand?

    Demonte’s attorneys were evidently confused as to how to present their case. They made a poor choice. But nobody here was confused as deeply as the district court judge. Reference A teaches a tarp for covering trucks and other things, but the tarp isn’t segmented. Reference B teaches a segmented tarp for covering swimming pools and trucks. In spite of the fact that the patentee’s **own patent** teaches that its segmented cover invention could be used for swimming pools, the court states that Reference B is “non-analogous” and there would be no motivation to combine. WTF?!?!?!?

    “I do believe that you are correct in that this smelled horribly of obviousness. But that’s not quite the topic of discussion , now is it”

    All hail Der Topicfuhrer. In fact, there is very little to discuss about the other topic, once you understand the facts of the case and the law regarding testifying experts. I think Andrew Dhuey stated it perfectly way upthread in one of the first commments:

    “A patent lawyer testifying as an expert on issues of noninfringement or invalidity is essentially conducting a closing argument from the witness stand. We litigators are supposed to have this sort of expertise. If we don’t, then putting a patent lawyer on the stand is unlikely to save the day.”

    Take it to the bank.

    I don’t know what happened here. Seems to me that Sundance kicked a lot of dust into this judge’s face and the judge bought it, hook, line, and sinker. Perhaps an illuminated rod would have helped.

  62. 28

    Breadcrumbs,

    I see that since our earlier discussions over at Patent Hawk’s site, you have advanced in your understanding of what is troubling about the Sundance decision (i.e. about Judge Moore appointing herself as being qualified to opine on what was obvious).

    But that is still missing the point. One does not need to be an “expert” in the art. Instead one has to establish a basis of personal knowledge regarding the questions of (1) Who was the person of ordinary skill in the art *at the relevant time* and (2) How did that person of the past think? PHOSITA does not exist. He or she is a fictitious construct since he or she exists only in the past and is not privy to the patent application’s content.

    The person who testifies as to PHOSITA does not have to be a genius (of the flash or other kind). He or she merely needs to be able to truthfully testify, “Look, I worked in the long haul truck business back then and this is how we ordinary workers thought about the tarps …”.

  63. 27

    “I’m still waiting to hear one credible fact that would support a finding of non-obviousness here.”

    Back to sucking face with Sandy Strawman again?

    As far as I can tell, people aren’t questioning the Federal Circuit’s ultimate conclusion of obviousness. Instead, they are questioning the disconnect between the Federal Circuit’s dismissal of the testimony of a patent attorney’s testimony as to the obviousness/non-obviousness of the claimed invention and the Federal Circuit’s belief that they are able to make the conclusion of obviousness.

    MM — why don’t you stick to the point being discussed instead of trying to address a point that nobody (yet) has questioned?

  64. 26

    breadcrumbs,

    I think the incongruence is a reflection on the (perhaps a bit bizarre) law regarding question of fact vs. question of law with respect to obviousness and what expert testimony is admissible…and practice of what juries are deciding.

    A qualified expert witness can testify to the underlying facts in her/his area of expertise. That witness can also testify to inferences from those facts, which means that the expert can testify whether s/he thinks the claimed invention is obvious to a person of ordinary skill in the expert’s art (the ultimate legal conclusion). This testimony can be used by the fact finder (jury) to determine the underlying facts.

    But the court, not the experts, are supposed to make the ultimate legal conclusions. In other words: it is the court’s job to decide obviousness, given the underlying facts.

    A better question is “why does obviousness get sent to the jury when it is a question of law?” or quasi-conversely, “why isn’t obviousness a question of fact?”

    The cynic in me says “so that the appellate courts can review obviousness de novo.”

    If obviousness was a question of fact, a jury of non-experts would decide obviousness all the time. Which they do anyway, but without de novo review.

    Now eat a little bit of this mushroom and you’ll feel tall again.

  65. 25

    Malcolm,

    I recognize that your desire to discuss the obviousness of the case overrides the actual point under discussion. However, calling this “pitiful” is a little over the top. Not everyone sees the world as you do and there are indeed other nuances of the law worthy of discussion. Please bear with the pitiful whining commentators as they discuss other features of our system and do your own whining in silence.

    BTW, I do believe that you are correct in that this smelled horribly of obviousness. But that’s not quite the topic of discussion , now is it?

  66. 24

    I hope Bliss didn’t get paid too much. Here’s a pointer kids: If you get work as an expert, make sure that when you define the level of skill in the art, you don’t set the bar over your own head. Duh.

    The obviousness determination is further fallout from the Supreme Court’s foolishness going back well before KSR to Anderson’s-Black Rock, Sakraida, A&P, etc.

  67. 23

    edstirling and Anon E. Mouse do have points.

    I recognize that it is easier to critique a judge than to be a judge.

    However, the critique still stands. It is incongruent to say that no expertise is needed and to dismiss someone’s testimony because of the lack of expertise.

    Mouse,

    When I read the case I was NOT upset that Mr. Bliss’ testimony was rejected. The Court laid out what seemed to be a valid argument that Mr. Bliss was not an expert in the field. They raised what I considered a valid point about the effect of an “expert” who is testifying on something that he is NOT an expert upon. However, I do not have access to the other evidence in the record, so I can only guess what (or how) the Federal Circuit should have ruled. You are correct that “remand for more fact-finding regarding the underlying facts of non/obviousness.” would have been an appropriate response, lacking actually making the request (for expert factual testimony) from both sides during the hearing…

    I am NOT saying that the CAFC’s holding–that it is an abuse of discretion to allow a witness to testify on obviousness unless the witness is qualified in the pertinent art–is incorrect. I am merely pointing out that the Court seems to want it both ways – Mr. Bliss’ testimony cannot count because he is not an expert and no expert required, so the court (also NOT an expert) can pontificate.

  68. 22

    anon “It is another slam on patent attorneys.”

    LOL. Not at all. Only one person got “slammed” and that person deserved it. Hint: it wasn’t Mr. Bliss.

  69. 21

    I’m still waiting to hear one credible fact that would support a finding of non-obviousness here.

    As far as I can tell, Demonte did not bother to file a patent on their retractable truck tarp. How shocking that must seem to some people.

  70. 20

    With all due respect though, wouldn’t the engineers have much more intimate knowledge of the technical issues? the people actually designing, manufacturing, and testing the product are the experts in the field. the attorneys must know enough to communicate the technology, but they’re still just looking over the shoulders of the real technical experts. Without actual experience in MAKING a tarp, their “expert” testimony would be misleading when determining what is obvious. what’s obvious when you’re watching a tarp being made, may in fact be nonobvious when you’re the one making it and vice versa.

  71. 19

    How pitiful that none of the commenters whining about this decision upthread attempt to provide even a hint of a rebuttal to Judge Moore’s concise and articulate summary of the reasons that the patent is (painfully, unquestionably) obvious in view of the prior art (pages 14-20, and particlarly the first paragraph on page 17).

    The CAFC was correct to end the dispute here by irreversible decapitation. Also, there is no internal contradiction in the decision, as hinted at by Dennis and others.

    Bliss’s testimony was excluded because he was not “qualified as an expert by knowledge, skill, experience, training, or education” in the field but he was presented to the court in Demonte’s opening brief as a “technical expert” (not a “legal expert”) and ultimately testified as to issues derived from the knowledge of one of ordinary skill in the art. If Bliss had merely testified regarding some aspect of PTO procedure, nobody would have blinked.

    But this is key: the CAFC’s holding that such non-expert testimony must be excluded does NOT mean that testimony from an expert with such expertise is required to reach a conclusion of obviousness. This is because Rule 702 not only prohibits unqualified experts from presenting *false* or “junk” testimony during trial, but also serves to prevent advocacy from the witness stand, period.

    The inevitable question is: where does one find evidence of what one skilled in the art would believe if not from an expert (be it a bogus expert or a real one)? And the answer is that the evidence can be found just where the CAFC found it here: in the irrebuttable prior art references and the patent at issue.

    Yes, friends, this decision is another victory of post-KSR common sense over bogus, overwrought “non-analogous art” arguments. Here is the language again and let’s try to remember it the next time somebody claims that real world “files” and “labels” are not legally analogous to computer “files” and “labels” :

    “[I]n many cases a person of ordinary skill will be able to fit the teachings of
    multiple patents together like pieces of a puzzle.” KSR, 127 S. Ct. at 1742. Such a
    combination is more likely to be obvious where it “‘simply arranges old elements with
    each performing the same function it had been known to perform’ and yields no more
    than one would expect from such an arrangement.” Id. at 1740 (quoting Sakraida v. AG
    Pro, Inc., 425 U.S. 273, 282 (1976)).

  72. 18

    After working with the same corporations products for 7 years and counting… leading brain storming meetings, performing repeated searches, drafting/prosecuting 50+ patents, preparing product strategy and competitor product/technology landscape analysis, etc…

    I can tell you the corporation looks to me as an expert in this field, far more than they do their own technical staff.

    If a similar basis of expertise in the art was laid out in court testimony… there is no reason not to expect a lowly patent attorney to be certified by a court as an expert in a specific technology area.

  73. 17

    fiegelson you missed the point. the court didn’t find that bliss was not an expert in patent law, they found that he was not an expert in TARPS. and being a patent attorney for a tarp company wouldn’t make him an expert either. having a technical degree does not give him expertise in tarps unless his degree says “MASTER OF TARP SCIENCE”. mr. bliss is not a tarp maker, he is a lawyer and the court was correct to call his testimony mischief.

  74. 16

    “please see the thread at the Patent Hawk blog:”

    I went over there last week. Sadly, that place has jumped the shark. Basically a training and/or play ground for our lamest CAFC and PTO-hating trolls.

  75. 15

    Andrew: “A patent lawyer testifying as an expert on issues of noninfringement or invalidity is essentially conducting a closing argument from the witness stand. We litigators are supposed to have this sort of expertise. If we don’t, then putting a patent lawyer on the stand is unlikely to save the day.”

    Worth repeating. Dumbaxx move by the attorneys here. But evidently Bliss and the judge seemed to get along really, really well. Maybe there was some prior lovin’ between the two that the attorneys here hoped to exploit.

  76. 14

    An interesting comment:
    link to patentlyo.com
    Does simple equal obvious?
    What bearing does the perception of an invention being Complex or Simple have? Of course, everything that is simple is not obvious and vice versa. No one suggested simple and obvious were the same, but neither this subject nor any similar notion, which you’d think would of course be an integral part of any serious discussion of obviousness, ever entered the KSR Raccoon-Hearing transcript:
    link to supremecourtus.gov

    An interesting thread:
    link to patentlyo.com

    See the last page of this thread near the bottom:
    link to patentlyo.com

    * * * * *

    Dear Dennis,

    It use to be that a commenter could provide a link to prior specific comment, not only a link to a prior particular thread.

    However, that valuable feature seems to have been lost with the tedious troublesome and time consuming “Next” “Next” “Next” dummying down torture imposed upon serious Patently-O faithfuls.

    What gives?

  77. 13

    Dear breadcrumbs,

    “NIB, dicta or not, the point is that the court said both that Mr. Bliss was not expert enough to comment on the art and that no expert was needed. It is difficult to square these statements with each other. IF not expert enough, then the court is not expert enough. If no expert needed, then Mr. Bliss’ testimony should stand.”

    Right on!

    And I’ll add that the Honorable Judge Moore, who penned this shamefully shallow decision, not only lacks sufficient appreciation of invention to sit on the CAFC bench, but she also lacks fortitude to stick to her guns! I will give her kudos for being the prettiest on the bench, and she has a courteous bedside manner while sitting on the bench.

    Question:
    SINCE WHEN ARE SIMPLE INVENTIONS NOT PATENTABLE?
    Answer:
    SINCE NEVER.

    In fact, “Flash of Genius” use to be the rule! See: link to en.wikipedia.org

    35 U.S.C. 103 changed “Flash of Genius” being the rule,” but it also ratified “Flash of Genius” inventions as patentable subject matter:
    35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. (a)
    … Patentability shall not be negatived by the manner in which the invention was made.

    Furthermore, it appears this critical point completely escapes the Honorable Judge Moore, others sitting on her bench and many would-be IP professionals:

    IT IS AXIOMATIC TO SAY: If the problem-to-be-solved is non-obvious, but its solution is obvious, then that obvious solution is patentable!

  78. 12

    breadcrumbs,

    Supposing Mr. Bliss was not expert enough to testify on the art and the ultimate question of obviousness(i.e., not a PHOSITA on tarp-estry)…given the other evidence in the record, what should the Federal Circuit have ruled?

    With that assumption, the only answer I see consistent with your apparent position is “remand for more fact-finding regarding the underlying facts of non/obviousness.”

    Are you saying that would’ve been the correct outcome?

    Or are you saying that the CAFC’s holding–that it is an abuse of discretion to allow a witness to testify on obviousness unless the witness is qualified in the pertinent art–is incorrect?

    My personal opinion is that they wanted Bliss on the stand to submit “attorney argument” as factual evidence to the jury. They even admitted that he wasn’t a tarp-expert, but asked that his tarp-expertness be a subject of cross. I’m not too comfortable with that being allowable.

  79. 11

    I wonder if there is not a little bit of alma mater protection going on with some of these decisions. I mean most patent attorneys are not from law schools that lend themselves to sit on a Federal Bench. However, we are the most prevalent is what is arguable one of the highest paid and most intellectually rewarding endeavors of the 20th and 21st Century.

  80. 10

    It is another slam on patent attorneys. I think that the judges on the Federal Circuit who are devoid to technical expertise are intimidated by the whole lot of us. At every turn it appears they find us committing wholesale fraud upon the USPTO and now we are rendered incompetent to comment upon art in which we have practiced for years.

  81. 9

    This case is a good illustration of just how inconsistent and illogical U.S. law of obviousness has become. Agree wholeheartedly with Dan Feigelson and breadcrumbs.

    To me it makes no sense to pretend that obviousness is a question of law. It’s as ridiculous as imagining that neglegence is a question of law. Apparently the Supremes regard juries with thinly veiled contempt, the Seventh Amendment notwithstanding. Pretty clearly the blind assertion that obviousness is a question of law has been propounded simply to facilitate summary judgment in cases that should go to a jury. I think the bigger issue here is that elites in this country generally think that ordinary people are too stoopit to make important decisions, yet find it useful to pretend the exact opposite in their public propaganda pronouncements.

  82. 8

    Dan,

    please see the thread at the Patent Hawk blog:
    link to patenthawk.com

    NIB, dicta or not, the point is that the court said both that Mr. Bliss was not expert enough to comment on the art and that no expert was needed. It is difficult to square these statements with each other. IF not expert enough, then the court is not expert enough. If no expert needed, then Mr. Bliss’ testimony should stand.

  83. 7

    The CAFC’s entire discussion on the admissibility of the patent attorney’s expert testimony is dicta — that testimony was not necessary to support the conclusion that the claimed invention was obvious.

  84. 6

    No Mr Feigelson, not the only one. It should go without saying that:

    1. The court at first instance needs to be specialised in patent law

    2. Invariably decisive for obviousness is evidence, of what was the common general knowledge (called “cgk” in English patent actions) of the relevant PHOSITA.

    3. That evidence should come from the cross-examination of the witnesses fielded by the two sides, conducted before the eyes of the (expert) patents judge.

    4. Neither the judge nor the patent attorney is qualified to announce, prior to such cross-examination, what the relevant cgk is.

  85. 4

    Am I the only one who finds it ironic that the court in effect says that a patent attorney, who has a technical degree, isn’t qualified to act as an expert in the pertinent art for purposes of determining infringement or invalidity, but the members of the court themselves, most of whom do not have technical degrees, are so qualified?

  86. 2

    A patent lawyer testifying as an expert on issues of noninfringement or invalidity is essentially conducting a closing argument from the witness stand. We litigators are supposed to have this sort of expertise. If we don’t, then putting a patent lawyer on the stand is unlikely to save the day.

  87. 1

    Ridiculous case. It is apparent why she allowed it, but the whole “can be removed” limitation renders the whole wherein clause moot for purposes of distinguishing from the prior art.

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