Expert Testimony Excluded as Unqualified in the Field of “Retroactive Mind Reading of Patent Examiners”

The court granted plaintiff's motion to exclude the testimony of defendant's patent expert regarding possible patent examiner responses as unqualified. "[Defendant's expert] provides opinions about two possible patent examiner responses. First, he opines about what an examiner 'could' have done if informed of [a prior art] Abstract. Second, he opines that 'under PTO procedure, by a preponderance of the evidence, the surgeries would have been considered not experimental.'. . . Both opinions raise the issue of whether an expert can testify as to the thought processes of an examiner who was provided with different information. [The expert's] resumé fails to establish his education, training, or experience in the field of retroactive mind reading of the thoughts of patent examiners. . . . [He] also lacks the experience to opine about the technology-at-issue. His CV indicates education and experience in computer and electrical engineering, but not surgery or medical devices, which are the subjects of the patents-at-issue."

Barry v. Medtronic, Inc., 1-14-cv-00104 (TXED July 19, 2016, Order) (Clark, J.)