In a Memorandum Order issued on the heels of an opinion denying summary judgment on a claim of obviousness, Judge Davis determined that experts who did not meet the parties’ stipulated definition of one having ordinary skill in the art could not testify as to issues of noninfringement, invalidity, and the substance and disclosure of the prior art. Morpho Detection, Inc. v. Smiths Detection Inc., No. 2:11-CV-498, 2012 U.S. Dist. LEXIS 170561 (E.D. Va. Nov. 30, 2012). The plaintiff failed to demonstrate, however, that the defendants’ expert was unqualified to testify as to the existence of non-infringing substitutes.
In a straightforward application 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 on noninfringement, invalidity, and the substance and disclosure of the prior art was necessarily inadmissible under Federal Rule of Evidence 702. Judge Davis rejected the defendants’ argument that recent Federal Circuit cases demonstrate that a technical expert need not meet the definition of one having ordinary skill in the art, given that the plaintiff pointed out that opinion testimony offered in one of those cases “did not relate to invalidity or non-infringement, and did not include opinions on 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 *4–5.
The defendants’ expert could testify “generally as an expert in the science of adsorption and adsorption processes, including air drying,” however, as the plaintiff had not shown that the expert’s knowledge of dryer technology at a particular time was “not grounded in fact or is otherwise unreliable such that the entirety of such testimony should be excluded.” Id. at *7. While not made express in the court’s order, this holding is consistent with the Sundance court’s common-sense clarification that it is perfectly appropriate for non-technical experts to testify as to non-technical issues in patent trials so long as they are qualified.
The district court’s ruling offers a practical lesson: ensure your technical expert qualifies as a person having ordinary skill in the relevant art—especially when you have agreed on the definition.