The court granted plaintiffs motion for a new trial on the issue of infringement and validity as to certain asserted patent claims because the jury was not instructed properly concerning unsupported expert testimony. The expert testimony in question "failed to identify any art that rendered [the claims at issue] obvious, to point out where any of the claims’ limitations are disclosed in the prior art, or to show how the prior art references in combination would make the claim obvious to a person of skill in the art at the relevant time." While such testimony complied with Rule 705 of the Federal Rules of Evidence, it did not comply with Koito Manufacturing Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1149 (Fed Cir. 2004). "[The expert] was a qualified expert who testified that [the claims at issue] were obvious (the ultimate issue). True, he did not provide any basis for his opinion, but he was not then required to under Rule 705. What is more . . . [plaintiff] made no objection whatsoever to his opinion testimony on the ultimate issue of obviousness. One naturally would think (and as a teacher of evidence I certainly thought) this would be enough to bear the burden of going forward and to carry [defendant] to the jury [on the issue of obviousness]. Koito and the cases cited therein, however, make clear that, on the issues of anticipation, obviousness, and doctrine of equivalents, the unsupported opinion even of a qualified expert is simply not 'substantial evidence' adequate to support a jury verdict on those issues. . . . It never occurred to me that patent law trumped the Federal Rules of Evidence on the issue of obviousness. Now, recognizing my error, it is clear that the jury’s verdict cannot stand."
Newriver, Inc., v. Newkirk Products, Inc., 1-06-cv-12146 (MAD December 16, 2009, Order) (Young, J.)