TAKEAWAY: Federal Circuit confirms no timing requirement by which expert witnesses must obtain level of ordinary skill in the art for patent infringement cases.
In its opinion in Osseo Imaging, LLC, v. Planmeca USA INC., the Court of Appeals for the Federal Circuit confirmed that there is no timing requirement by which expert witnesses must obtain the level of ordinary skill in the art.
Planmeca appealed from the District of Delaware’s decision denying judgement as a matter of law and upholding a jury’s verdict that Planmeca infringed multiple U.S. Patents of Osseo. Relying on language from Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, Planmeca argued that an expert witness testifying as to patent infringement must have obtained the requisite skill level at the time of the patent’s date of invention. The District Court rejected Planmeca’s argument, finding that Planmeca had provided no support for its argument.
On appeal, the Federal Circuit upheld the District Court’s decision. Citing Kyocera, the Federal Circuit first noted that “[a]ll that is required ‘to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case’ is that ‘an expert must at a minimum possess ordinary skill in the art.’” Finding no support in Kyocera for Planmeca’s argument, the Federal Circuit specifically declined to impose Planmeca’s proposed timing requirement. Instead, it found that “[a]n expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art. Rather, an expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention.”
The Federal Circuit further noted that the fact that an expert witness obtained the level of ordinary skill in the art after the time of the patented invention may be used to undermine the expert’s credibility during cross examination. However, it tempered this strategy by explaining that an expert who acquires ordinary skill after the date of invention may avoid such issues by demonstrating how the witness “gained the perspective of a person of ordinary skill at the time of invention.”
This case confirms that that the level of ordinary skill in the art may be obtained by an expert witness after the date of invention of the subject patent, and serves as a reminder to carefully consider describing the level of skill in the art during drafting of applications that lead to resulting patents.