Sundance, Inc. v. DeMonte Fabricating Ltd.
89 U.S.P.Q. 2d (BNA) 1535, 550 F.3d 1356, 78 Fed. R. Serv. 320 (2008)
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Rule of Law:
Under Federal Rule of Evidence 702, it is an abuse of discretion for a district court to permit a witness to testify as an expert on the issues of patent infringement or invalidity unless that witness is qualified as an expert in the pertinent art of the invention.
Facts:
- Sundance, Inc. owned the '109 patent for a retractable covering system for truck trailers.
- The key feature of the '109 patent was that it was comprised of multiple flexible cover sections, allowing one section to be removed and replaced independently of the others.
- A prior art patent, Cramaro, disclosed a retractable tarpaulin cover system for trucks made from a single, non-segmented piece of material.
- Another prior art patent, Hall, disclosed a covering system made of multiple, independently removable flexible sections.
- The Hall patent explicitly stated in its specification that its segmented cover system could be used as a truck cover.
- De-Monte Fabricating Ltd. manufactured and sold a retractable, segmented truck cover system.
Procedural Posture:
- Sundance, Inc. sued De-Monte Fabricating Ltd. in the U.S. District Court for the Eastern District of Michigan, alleging infringement of its '109 patent.
- De-Monte designated Daniel Bliss, a patent attorney lacking technical expertise in truck covers, to serve as an expert witness on invalidity.
- Sundance filed a motion in limine to exclude Mr. Bliss's testimony, which the district court denied.
- A jury returned a verdict finding that De-Monte had infringed the patent but that claim 1 of the patent was invalid as obvious.
- Sundance moved for Judgment as a Matter of Law (JMOL) that its patent was not invalid.
- The district court granted Sundance's JMOL motion, overturning the jury's invalidity finding and holding the patent was not obvious.
- De-Monte appealed the district court's grant of JMOL on validity to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Is it an abuse of discretion for a district court to permit a witness, qualified only as a patent law expert without technical expertise in the pertinent art, to testify on the ultimate issues of patent invalidity and noninfringement?
Opinions:
Majority - Moore, J.
Yes, it is an abuse of discretion for a district court to permit a witness to testify as an expert on patent infringement or invalidity if the witness is not qualified as an expert in the pertinent art. Federal Rule of Evidence 702 requires an expert witness to have specialized knowledge that will assist the trier of fact. Critical patent law questions, such as the scope of prior art, motivation to combine references, and obviousness, are determined from the perspective of a 'person of ordinary skill in the art.' A witness who lacks technical expertise in that specific art cannot provide reliable testimony on these technical issues. Permitting a patent lawyer without technical qualifications to opine on validity or infringement amounts to 'advocacy from the witness stand' and usurps the roles of the judge and jury. Even without the inadmissible expert testimony, the court found the '109 patent invalid for obviousness as a matter of law because the prior art patents (Cramaro and Hall) disclosed all elements of the claimed invention, and the motivation to combine them would have been apparent to a person of ordinary skill in the art, as Hall explicitly suggested its use for truck covers.
Analysis:
This decision reinforces the gatekeeping function of trial courts under Rule 702 and Daubert, specifically within patent litigation. It clarifies that a 'patent law expert' is distinct from a 'technical expert' and that testimony on technical issues like infringement and validity requires expertise in the relevant technology, not just in patent law. This holding prevents litigants from using patent attorneys as witnesses to argue legal conclusions to a jury under the guise of expert opinion. Consequently, parties in patent cases must secure expert witnesses who possess genuine technical qualifications and experience in the specific field of the invention at issue.
