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Are patent law experts becoming obsolete? For years, courts routinely accepted testimony from patent attorneys, law professors, and former Patent and Trademark Office officials on the interpretation of disputed claim terms, the validity of patents, inequitable conduct, and PTO procedures. This testimony may have been necessary years ago, when patent cases were novel. But what about now, when patent cases are common? Today, courts are more likely to bar patent experts’ proposed testimony or to narrow its scope. To these courts — and to more and more litigators — patent law experts are just lawyers in sheep’s clothing: walking, talking legal briefs in the guise of a witness. Still, a patent law expert’s testimony can be some of the most influential evidence at trial. To understand how to craft effective testimony in this area, one must first understand its limits. If they are allowed to testify at all, patent law experts are usually limited to objective explanations of patent prosecution and patent office practices. District of Delaware chief judge Sue Robinson has included these limits in her written guidelines for expert legal testimony in patent cases. Robinson has directed that the expert may “walk” a jury through a typical patent prosecution, “explaining what patent examiners do and such terms and procedures as inter alia, prior art, and interference proceedings.” Robinson does not allow patent law experts (as opposed to technical experts) to testify on substantive issues, such as validity and claim construction. Other courts have followed suit. For example, in Minnesota Mining and Mfg. Co. v. Appleton Papers Inc. (D. Minn. 1998), the court ruled that a former patent examiner was not qualified to testify on claim construction, infringement, or validity because he was not skilled in the patented technology and thus could not opine “from the perspective of a person of ordinary skill in the relevant art.” The court limited his testimony to “an objective explanation of the patent application process, and the sequence of events that led to the patent.” Experts are allowed to translate patent practitioner jargon: specialized terms like “file wrapper,” “IDS,” and “office action.” Of course, much of this glossary work could be accomplished through jury instructions, but it usually sounds better coming from a witness. Patent law experts testifying on behalf of accused infringers sometimes go too far in their “objective” discussion of PTO procedure. Experts might undermine the patent’s presumed validity by speculating on deficiencies in PTO practice. This testimony is improper and should be excluded. Examiners are presumed to do their job correctly, and the examination process is presumed to be regular. American Hoist & Derrick Co. v. Sowa & Sons, Inc. (Fed. Cir. 1984). Experts can also be used to defend against allegations of willful infringement. To rebut the charge, accused infringers sometimes produce a clearance opinion, a document written by a lawyer opining that the client’s product does not infringe another’s patent or that the patent is invalid. The clearance opinion must be objectively competent — would a reasonable client reasonably rely on the opinion? Read Corp. v. Portec, Inc., (Fed. Cir. 1992); Underwater Devices Inc. v. Morrison-Knudsen Co., (Fed. Cir. 1983). Patent law experts can aid this inquiry. The exercise is not much different from a malpractice case, in which expert doctors testify about standard operating procedures to shed light on whether the surgical procedure in question was reasonable or not. But in the patent case, the expert testifies about standards for writing clearance opinions, what such opinions typically contain, and how the clearance opinion at issue compares to the standard practice. Here are some practical suggestions to make better use of patent law experts and to rein in the other side when it wants to make an argument through a so-called expert. MOTIONS IN LIMINE ARE YOUR FRIEND A well-conceived motion in limine can be a border collie against the lawyer in sheep’s clothing. The motion should say that the expert is not qualified to testify on the meaning of the claims or their validity because the expert does not have the technical background. Another argument is that the proposed testimony improperly undermines the presumption of validity. To set up this motion, one must explore the expert’s technical experience at deposition. Has he or she ever worked in the field of the patent? Does he or she have relevant technical training or education in that field? THROW THE BUMS OUT If, on the other hand, you think you want to use a patent law expert, consider instead using a technical expert. He or she can address claim construction, infringement, and validity issues. The technical expert also has the advantage of being able to offer an opinion on how one of ordinary skill would read and understand the patent and prior art. Often, this testimony of someone who actually works in the field will sound more genuine than that of a lawyer without practical experience A technical expert, of course, cannot testify on patent practice and the inner workings of the patent office or translate patent lingo into plain English. This is where jury instructions can be useful. Indeed, Judge Robinson in Delaware specifies in her guidelines that she, not the patent law expert, will instruct the jury on substantive issues of law. REBUT THEIR TESTIMONY WITH EXPERTS Trial counsel are often tempted to use another patent law expert to rebut an expert. But a technical expert can effectively rebut the patent law expert. The testimony is as simple as this hypothetical example: “Well, [the patent expert] might believe that “widget” requires a sprocket, but anyone working in this field would know that a sprocket would cause the widget to malfunction.” FORMER EXAMINERS ARE BETTER THAN PRACTICING LAWYERS A former examiner can give better insights into the mysterious world of the patent and will sound more authoritative about patent practice. Here is an example from an actual infringement trial concerning medical diagnostic devices: The accused infringer’s patent law expert, a practicing patent lawyer, attempted to undermine the patent’s validity by testifying that there were certain deficiencies during prosecution. The expert testified that the prosecution took too many years (it was interrupted by several interferences) and the examiners supposedly could not remember earlier statements in the file or earlier-considered prior art references. An allegedly relevant prior art reference was “buried” and not properly considered because the applicants submitted it along with about 30 other references. And so on. To counter this testimony, the patentee’s trial counsel established on cross-examination that the expert had never examined patents. The expert had no specific evidence of deficiencies in the examination. Finally, the lawyer confronted the expert with a patent the expert himself had prosecuted. That patent took even longer to prosecute than the patent-in-suit and had a more complicated genealogy. The expert had to admit that length or complexity of a prosecution does not invalidate a patent. Next, the trial lawyer called his expert, a former examiner who went into private practice. The witness explained that examiners could easily locate prior art, that they receive extensive training, and that they become expert in their particular technology field. This testimony tended to bolster the patent’s validity. CROSSES ARE KEY One does not have to attack every point made by an adversary’s patent law expert. It is often more effective to impeach the testimony by turning cross-examination into one’s own legal brief. Here is an example from the transcript of an actual trial in which the patentee’s counsel cross-examines the accused infringer’s patent law expert: Q. Patents are meant to be understood by one of ordinary skill in the art, isn’t that correct? A. That is correct. Q. You’re not one of ordinary skill, are you? A. In terms of hands-on experience, no. Q. A United States patent is presumed to be valid, is that correct? A. Certainly. Q. And the examiner is presumed to have done his or her job correctly? A. That is the presumption, certainly. Q. And you never prosecuted a patent directed to [the patented technology], is that right? A. That’s correct. The jury upheld the validity of the patent. Erik Paul Belt is a partner with Bromberg & Sunstein ( www.bromsun.com), an intellectual property firm based in Boston.

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