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IP Alert: Federal Circuit Nails Unqualified Expert

January 26, 2022

On January 21, in Kyocera Senco Industrial Tools Inc. v. ITC, the Federal Circuit found that the patent owner’s expert witness on infringement was unqualified under the definition of the level of ordinary skill in the art adopted at the International Trade Commission (ITC), and held therefore that the administrative law judge (ALJ) improperly admitted the expert’s testimony.

Kyocera filed a complaint with the ITC alleging that Koki, formerly the power division of Hitachi, infringed several patents relating to linear fastener driving tools, including power nailers. In support of its infringement case, Kyocera offered the testimony of a purported expert, Dr. Pratt, on issues of claim construction, invalidity, literal infringement, and infringement under the doctrine of equivalents. Dr. Pratt had advanced degrees in engineering and laudable experience in design and manufacture of fastening driving tools, but notably no experience in designing power nailers.

During claim construction, the ALJ adopted a definition of a skilled artisan proposed by Koki that specifically required, among other things, experience in power nailer design. Kyocera apparently did not contest this definition, and according to the Federal Circuit, seemingly adopted it, even though Dr. Pratt lacked this specific experience. The ALJ found Dr. Pratt unqualified to provide opinions about the doctrine of equivalents, since he did not meet the agreed-upon level of ordinary skill in the art. Surprisingly, the ALJ permitted Dr. Pratt’s testimony regarding literal infringement. The end result was a finding that Koki had directly infringed several asserted claims. Koki appealed, claiming error by the ALJ in permitting Dr. Pratt’s testimony on literal infringement. Kyocera also appealed, claiming error by the ALJ in excluding the opinions on infringement under the doctrine of equivalents, when Dr. Pratt was otherwise well-qualified.

On appeal, the Federal Circuit found that the ALJ abused his discretion in permitting Dr. Pratt’s testimony on literal infringement. The Federal Circuit left no doubt that before an expert may offer testimony from the perspective of an ordinarily skilled artisan—for claim construction, validity, or any part of infringement—the expert must at least have ordinary skill in the art; otherwise, the expert’s opinions are neither relevant nor reliable. The Federal Circuit emphasized this requirement does not prevent an expert from having more than the level of ordinary skill. Instead, the requirement is one of basic qualification: to offer an opinion from the vantage of an ordinarily skilled artisan, the expert must possess at least that level of skill. In addition to excluding Kyocera’s expert testimony, the court also addressed three two claim construction issues and held that two were wrongly decided at the ITC. Ultimately, the court remanded the case to the ITC.

This opinion highlights the need to carefully examine potential definitions of the level of ordinary skill in the art at an early stage of the case. Because you will not know at that stage what definition the tribunal will ultimately adopt, any expert that you are considering should be able to meet a variety of skill levels. Similarly, this case counsels closely examining your opponent’s experts to assess whether any challenge to their opinions can validly be lodged as unqualified in light of the properly defined level of skill. And of course, when deciding whether to contest the opposing party’s proposed definition of the ordinarily skilled artisan, it is important to consider whether your retained experts qualify under the proposed definition.

For more information on this topic, please contact Fitch Even partner Nikki Little, author of this alert.

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