Court Finds Patent Law Expert Witness Qualified to Testify

Case: Industrial Engineering & Development, Inc. v. Static Control Components, Inc., No. 8:12-cv-691-T-24-MAP; United States District Court for the Middle District of Florida; Oct. 6, 2014.

Background: Industrial Engineering & Development, Inc. (Plaintiff) filed a Complaint claiming that Static Control Components, Inc. (Defendant) violated a cross-license agreement. Specifically, Plaintiff claims Defendant did not pay royalties as required by the cross-license agreement. These royalties were owed to Plaintiff because Defendant was selling products that used patents that were owned by Plaintiff.

In its defense to Plaintiff’s allegation, Defendant raised two arguments. The first was that Plaintiff’s patents were invalid because they did not comply with the written description requirement. The second argument alleged that Plaintiff’s patents could not be enforced because Plaintiff acted unfairly before the United States Patent and Trademark Office. Defendant asserted that Plaintiff committed fraud by claiming small entity status when Plaintiff knew it should be claiming large entity status. The reason Plaintiff might improperly claim small entity status would be to pay significantly lower fees during a patent application and/or maintenance process. Defendant hired Stephen Johnson as its patent law expert witness to present expert opinions in support of this second argument.

The Expert Witness: Stephen Johnson was presented as an expert on patent and trademark practices and procedures. His qualifications included time as the Deputy Commissioner for Patent Examination Policy, overseeing revisions to the Manual of Patent Examining Procedure and serving as an expert witness on patent policy.

Mr. Johnson submitted a report which explained the patent system, the role of the United States Patent and Trademark Office, general practices and procedures for the patent process, the best mode requirement, and parameters for claiming small entity status.

Plaintiff believes Mr. Johnson should be excluded from testifying because he is not qualified as a patent law expert witness, his opinions are only legal conclusions, his opinions undermine the statutory presumption of patent validity and his opinions about the best mode requirement is not at issue in this case.

Admissibility of Stephen Johnson as an Expert Witness: The Court both agreed in part and disagreed in part with Plaintiff’s arguments. The Court ultimately held that Mr. Johnson could testify as Defendant’s expert witness except on the subject of the best mode requirement.

Plaintiff argued that Mr. Johnson was not qualified to testify as a patent law expert witness because he lacked technical expertise and therefore would not help the jury understand the patents. Generally speaking, a patent law expert witness who testifies as to the infringement or validity of a patent must have technical expertise in the area of the patent at issue. However, the Court recognized that Defendant was using Mr. Johnson for his patent expertise focused on the patent system and process, not the technical aspects of the patent. As a result, Plaintiff’s qualification argument was unsuccessful.

Plaintiff next argued that Mr. Johnson’s opinions were improper legal conclusions. The Court disagreed, noting that his testimony would address background information of the United States Patent and Trademark Office that would assist a jury in deciding this case.

With respect to Plaintiff’s argument that Mr. Johnson’s opinions should be excluded because they would undermine the statutory presumption of patent validity, the Court disagreed, noting that nothing in Mr. Johnson’s anticipated testimony disparaged the United States Patent and Trademark Office or its methodologies and procedures.

Finally, Plaintiff argued that Mr. Johnson’s testimony concerning the best mode requirement should be excluded. The Court agreed, observing that the best mode requirement was not at issue in this case and therefore Mr. Johnson’s testimony on this topic was irrelevant and could be excluded.