Patent Experts: No Ordinary Skill in the Art at the Time of Invention? No Problem!

The hypothetical person with ordinary skill in the art will have a certain amount of requisite experience in the subject matter of the patent at the time of the invention of the patent. For issues of claim construction, infringement, and validity, a technical expert in a patent case must be able to offer testimony from the vantage point of someone with ordinary skill in the art of the patent. The Federal Circuit has required that the expert must-at a minimum-possess ordinary skill in the particular art of the patent-in-suit. For the expert to opine from the vantage point of a skilled artisan, does the expert need to have acquired the minimum experience at the time of the invention of the patent? The Federal Circuit has now answered that question: Experts need not have the requisite experience at the time of the invention and may later acquire the requisite experience.

In a precedential decision in Osseo Imaging, LLC v. Planmeca USA Inc.,No. 2023-1627 (Fed. Cir. Sept. 4, 2024),[1] the Federal Circuit addressed the qualifications necessary to provide expert testimony from the perspective of one of ordinary skill in the art. In the case, one of ordinary skill in the art for the patent-in-suit required three to five years of diagnostic imaging experience in 1999, the date of invention of the patent-in-suit. The defendant argued that the expert did not acquire such experience until nearly 10 years after the time of the invention and, as a result, the expert was not a skilled artisan at the time of the invention. The defendant based its argument on the language from the Federal Circuit's decision in Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm'n, 22 F.4th 1369, 1377 (Fed. Cir. 2022), where the court held that the expert must be qualified to offer an opinion on issues "from the vantage point of an ordinarily skilled artisan in a patent case."

The Federal Circuit rejected that argument, finding that Kyocera provided no support for the proposed timing requirement. "The issue presented in Kyocera was simply whether an expert who did not qualify as a person of ordinary skill in the art-at any time-could present reliable testimony as a technical expert. The court in Kyocera said no." Osseo Imaging, at 6. The Federal Circuit was also "reluctant to conclude that an expert's subsequent acquisition of the requisite level of skill per se renders an expert's infringement testimony unreliable such that it should be excluded." Id. at 7. The court explained that "an expert can acquire the necessary skill level after and develop an understanding of what a person of ordinary skill knew at the time of the invention." Id.

The court also pointed out that a party is free to use the fact that an expert was not a person of ordinary skill at the time of invention on cross-examination to undermine the witness's credibility. And the court explained that "an expert who later acquires the requisite knowledge could avoid such potential damage to her reliability by explaining to the judge and jury how she gained the perspective of a person of ordinary skill at the time of the invention." Id.

The Federal Circuit's decision in Osseo Imaging broadens the pool of potential technical experts in patent cases, as an expert does not need to have the requisite ordinary skill in the art at the time of the invention but can later acquire that experience. Though, as the Federal Circuit notes, the expert may still be cross-examined on the lack of requisite experience at the time of the invention.

[1] Available at https://cafc.uscourts.gov/opinions-orders/23-1627.OPINION.9-4-2024_2378780.pdf.