Thursday, September 23, 2010

May a Patent Law Expert Opine as to the Materiality of Undisclosed Information?

YES -- The court granted, in part, plaintiff's motion to strike defendant's inequitable conduct expert. "[The expert's] actual opinions are on matters within his expertise as a patent examiner and former Commissioner of the USPTO. [The expert] provides testimony as to why [the inventor's] alleged conduct before the USPTO would be important to a reasonable examiner, a key issue in the determination of inequitable conduct. . . . [The expert] will not be permitted to testify about [the inventor's] intent and should limit his testimony on the following issues to that which is necessary to understand his opinions: USPTO policies and procedures, the rules and procedural requirements governing the filing and prosecution of patent applications in the USPTO and the grant of U.S. patents by the USPTO, the duty of candor and good faith and disclosure that those substantively involved in the preparation and prosecution of a patent application owe to the USPTO, and the requirements for establishing equitable conduct."

Phillip M. Adams & Associates, L.L.C. v. Lenovo International, et. al
., 1-05-cv-00064 (UTD September 21, 2010, Memorandum Decision & Order) (Stewart, J.)

NO -- Plaintiffs' motion to strike the report of defendants' inequitable conduct expert was granted "except to the extent that it explains the PTO's practices and procedures." "The law of this district is clear that experts in patent cases may not opine on whether a party engaged in inequitable conduct, discuss whether certain information was material to a pending patent application, or otherwise provide legal conclusions on 'substantive issues of patent law.' Similarly, in this district parties are generally not permitted to explain patent prosecution histories through expert testimony."

Brigham and Women's Hospital Inc. et al v. Teva Pharmaceuticals USA Inc. et al., 1-08-cv-00464 (DED September 21, 2010 Memorandum) (Bartle, J.)

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