In a recent appeal from an ITC decision, the Federal Circuit clarified the requirement that technical experts in patent cases must qualify as persons having at least ordinary skill in the art. See Kyocera Senco Indus. Tools Inc. v. ITC, No. 20-1046 (Fed. Cir. Jan 21, 2022). In Kyocera, the ALJ found that the level of ordinary skill in the art required a person with a minimum of two years experience designing power nailers. He also "found that Kyocera failed to preserve any challenge to the level of ordinary skill in the art and that [Kyocera's expert] lacked that skill" Id. at 10.
On appeal, the Federal Circuit found it would be error to allow the testimony of Kyocera's expert as to any issue that must be examined thorugh that lens:
"To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable." Id. at 11.
It is common, in patent cases, for the experts to offer overlapping definitions of the level of ordinary skill in the art. And, in many cases, the experts will agree that academic credentials, combined with a sufficient level of experience in a broadly-framed field, is sufficient. However, if the opposition proffers a definition that excludes your expert, it is crucial that your expert present evidence in support of his or her definition. To avoid exposing your expert to an unforseen challenge, it is also important to use fact discovery to make the other side commit to a position before expert disclosures are due.
On appeal, the Federal Circuit found it would be error to allow the testimony of Kyocera's expert as to any issue that must be examined thorugh that lens:
"To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable." Id. at 11.
It is common, in patent cases, for the experts to offer overlapping definitions of the level of ordinary skill in the art. And, in many cases, the experts will agree that academic credentials, combined with a sufficient level of experience in a broadly-framed field, is sufficient. However, if the opposition proffers a definition that excludes your expert, it is crucial that your expert present evidence in support of his or her definition. To avoid exposing your expert to an unforseen challenge, it is also important to use fact discovery to make the other side commit to a position before expert disclosures are due.