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Patent experts can acquire “ordinary skill” belatedly
In a patent infringement analysis, the interpretation of patent claims requires knowledge of a person of ordinary skill at the time of the invention.
Patent experts can acquire “ordinary skill” belatedly
Anyone involved with patent cases is likely to come across the term “person of ordinary skill in the art” or some derivation. It generally refers to a hypothetical person with knowledge in the field to which a patented invention relates.
But at what point in time must an expert testifying from such a perspective have acquired that knowledge? The U.S. Court of Appeals for the Federal Circuit now has weighed in.
Developing case
Osseo Imaging owns patents related to orthopedic imaging systems. The invention date for the patents was in 1999.
Osseo sued Planmeca USA, alleging that some of imaging systems Planmeca developed infringed its patents. In 2022, a jury found that Planmeca directly infringed most of the patent claims at issue and that none of the claims were obvious, which would have made them invalid. Planmeca appealed, challenging the testimony of Osseo’s expert witness.
Timing isn’t everything
In many patent cases, one or both parties present expert witnesses to testify from the perspective of a “person of ordinary skill in the art.” As the appellate court explained, the expert must have at least “ordinary skill” in the art but nothing more.
Planmeca, however, argued on appeal that the Osseo’s expert became a person of ordinary skill in the relevant art eight to 10 years after the time of the invention. Because he wasn’t properly skilled at the time of the invention, it contended, the verdict can’t be supported by his testimony.
The appeals court disagreed, finding it made “little sense” to add Planmeca’s suggested timing requirement. The court acknowledged that, in an infringement analysis, the interpretation of patent claims requires knowledge of a person of ordinary skill at the time of the invention.
However, it was reluctant to conclude that an expert’s subsequent acquisition of the requisite level of skill alone renders the expert’s infringement testimony unreliable to the degree that it should be barred. An expert, the court said, doesn’t need to have had the skill level before the invention 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.
Looking ahead
The Federal Circuit pointed out that an opposing party can use cross-examination to undermine the credibility of an expert who acquired ordinary skill after the time of the invention. It also noted, though, that such experts could avoid damage to their credibility by explaining to the judge and jury how they gained the perspective of a person of ordinary skill at the time of the invention.
