IP Law Daily Lay testimony on issue of obviousness required reversal of infringement verdict
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Wednesday, February 5, 2020

Lay testimony on issue of obviousness required reversal of infringement verdict

By Peter Reap, J.D., LL.M.

The district court’s limiting instruction was ineffective at curing the admission of the testimony and its denial of a new trial after the jury found the asserted patents obvious was an abuse of discretion.

In a patent infringement trial over two patents, the federal district court in Tallahassee erred by admitting lay witness testimony regarding the obviousness of the two asserted claims, the U.S. Court of Appeals for the Federal Circuit has decided. Further, the court’s limiting instruction to the jury on that testimony failed to cure its error because it was no different than the typical instruction given for expert testimony. Thus, the district court abused its discretion by denying the patent owner’s (HVLPO2’s) motion for a new trial and the case was reversed and remanded for a new trial (HVLPO2, LLC v. Oxygen Frog, LLC, February 5, 2020, Moore, K.).

HVLPO2 asserted its two patents, U.S. Patent Nos. 8,876,941 and 9,372,488, directed to methods and devices for controlling an oxygen-generating system, which is used to sustain and manage airflow for torch glass artists who use surface mix glass torches, against Oxygen Frog, LLC and its CEO, Scott Fleischman (collectively, Oxygen Frog). The district court granted partial summary judgment, finding Oxygen Frog infringed claims 1 and 7 of both the ’941 and ’488 patents. The case then proceeded to a jury trial to assess, among other things, validity of those claims.

At trial, Oxygen Frog argued that the claims were obvious in view of a combination of two prior art references. One of those references was the "Low Tide video," a video that was posted online by Tyler Piebes, a glass blowing artist. Mr. Piebes was not qualified as an expert witness, but did provide deposition testimony as a fact witness, most of which was played at trial before the jury.

HVLPO2 objected to Mr. Piebes’ testimony regarding obviousness as improper expert opinion testimony. The district court overruled the objection, and instead gave the jury a limiting instruction prior to playing Mr. Piebes’ deposition testimony. The district court’s limiting instruction instructed the jury that "a witness such as Mr. Piebes certainly can offer his observations and explain to you how a system works and what he thinks would occur to him from his perspective would or would not be obvious." It further instructed the jury that such testimony is "not the ultimate question" of obviousness and that it was up to the jury to decide obviousness. After trial, the district court denied HVLPO2’s motion for a new trial and it appealed.

The district court held that it was not an error to admit Mr. Piebes’ deposition testimony regarding obviousness because it concluded that Mr. Piebes’ testimony did not substantially prejudice HVLPO2, especially in light of its limiting instruction to the jury. That determination was plainly wrong, according to the Federal Circuit. The district court’s limiting instruction was insufficient to cure the substantial prejudice caused by Mr. Piebes’ testimony. Thus, the district court abused its discretion by denying the motion for a new trial.

Federal Rule of Evidence 702 precisely describes testimony which would pertain to an obviousness invalidity challenge in a patent trial, the court said. It is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art, the court noted.

Moreover, Federal Rule of Civil Procedure 26 requires that experts be disclosed to the opposing party along with a written report which contains all opinions of the expert, the reasons and bases for those opinions, and all facts relied upon in the formation of the opinion. HVLPO2 was not provided with any such disclosure of Mr. Piebes. According to Oxygen Frog, a lay witness should be permitted to testify that modifying one of the prior art references to include additional claimed features would have been obvious. The appellate court was not persuaded because Mr. Piebes’ opinion testimony was directed to the central legal and technical question at trial: whether HVLPO2’s asserted patent claims were invalid for obviousness. Lay witness testimony on such issues does not comply with the Federal Rules of Evidence or Civil Procedure, the appellate court ruled.

Oxygen Frog also argued that, to the extent admitting Mr. Piebes’ testimony was improper, the error was harmless and the district court cured any prejudicial effect by providing a limiting jury instruction. There was no way to know whether Mr. Piebes’ improper testimony provided some or all of the basis for the jury’s decision, according to the Federal Circuit. Not only did the district court’s admission of Mr. Piebes’ improper testimony deprive HVLPO2 of its right to have the question of obviousness decided based on admissible, qualified expert testimony, it prejudiced HVLPO2 by not affording it the appropriate procedures for testing such testimony. Therefore, HVLPO2 was significantly prejudiced by the testimony on the ultimate question of obviousness.

This case is No. 19-1649.

Attorneys: Martin Bruce Sipple (Ausley & McMullen PA) for HVLPO2, LLC Robert Huntsman (Huntsman Law Group, PLLC) for OxygenFrog LLC and Scott D. Fleischman.

Companies: HVLPO2, LLC; OxygenFrog LLC

MainStory: TopStory Patent FedCirNews

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