An Expert Witness Need Not Have Been a Posita at the Time of the Invention

Written by: Sophia Zahn & Douglas B. Wentzel

OSSEO IMAGING, LLC v. PLANMECA USA INC.

 Before Dyk, Clevenger, and Stoll.  Appeal from the United States District Court for the District of Delaware.

 Summary: An expert witness can testify from the perspective of a POSITA at the time of the invention even if they did not qualify as a POSITA until later.

 Osseo Imaging, LLC sued Planmeca USA Inc., alleging infringement of three patents.  The district court jury found that Planmeca infringed Osseo’s patents and that certain claims of those patents were not invalid for obviousness.  Planmeca moved for judgment as a matter of law that it did not infringe and the patents were invalid.  In its motion, Planmeca argued that the testimony of Osseo’s technical expert should be disregarded because he had not acquired the requisite amount of experience needed to qualify as a person of ordinary skill in the art (POSITA) by the time of the alleged inventions.  The district court denied the motion, explaining that Planmeca provided no legal support for its argument that experts must attain their expertise prior to the alleged date of invention.  Planmeca appealed.

 The Federal Circuit affirmed.  The Federal Circuit agreed with the district court that there is no timing requirement for when POSITAs acquired their skill in order to testify from the perspective of a POSITA.  As the court explained, obtaining at least the ordinary skill in the art at any time is the sole qualification an expert must meet to testify from the perspective of a POSITA—“nothing more is required.”  The Federal Circuit also found that Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369 (Fed. Cir. 2022) did not support adding the timing requirement proposed by Planmeca.  The court explained that Osseo’s expert undisputedly qualified as a POSITA, and therefore Kyocera was inapplicable because it only addressed whether an expert who never qualified as a POSITA at any time could testify from a POSITA’s perspective.  Rejecting the proposed timing requirement, the Federal Circuit concluded that an expert can acquire the necessary level of skill later and yet develop an understanding of what a POSITA would have known earlier, at the time of the alleged invention.  The court also found that the jury’s verdict on infringement and validity was supported by substantial evidence, and therefore affirmed the district court’s denial of judgement as a matter of law on those issues.

Editor: Sean Murray