Tuesday, January 3, 2012

Lack of Experience in Relevant Art Disqualifies Invalidity Experts

The court granted in part plaintiff's motion to preclude the testimony and reports of defendants' PTO experts. "[B]ecause the proposed experts lack experience in the field of the relevant art, they may not testify on the issue of validity. . . . [N]either [expert has] experience in the art of material moving blades or snow moving apparatus, the subjects of the patents in suit, and therefore, it is clear that neither can be considered experts qualified to render an opinion on whether or not prior art renders any of the asserted patents invalid. Similarly, neither [expert has] expertise on the issue of what constitutes inequitable conduct for purposes of rendering an issued patent invalid. Although both proposed experts have considerable experience regarding practice before the PTO, neither. . . are attorneys, and neither have specialized experience or knowledge with respect to the legal standards that govern inequitable conduct analysis under federal law in federal court."

Degelman Industries Ltd. v. Pro-Tech Welding and Fabrication, Inc., et. al., 6-06-cv-06346 (NYWD December 23, 2011, Order) (Telesca, J.)

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