District Court Holds 'It Is An Abuse Of Discretion To Permit A Witness To Testify As An Expert On The Issue Of Non-Infringement Or Invalidity Unless That Witness Is Qualified As An Expert In The Pertinent Art'

In Degelman Industries Ltd. v. Pro-Tech Welding and Fabrication, Inc., et al., plaintiff Degelman sued the defendants for patent infringement of various utility and design patents related to moving blades used in heavy equipment such as bulldozers and snowplows. 06-CV-6346T (W.D.N.Y.). The parties filed a litany of motions for summary judgment, motions to strike and motions to preclude expert testimony and reports. Most interestingly, and the subject covered herein, was the latter motion by Degelman to preclude the testimony and expert reports of defendants' experts, Nicholas P. Godici and Alan P. Douglas, both experienced patent examiners at the United States Patent and Trademark Office.

Defendants had proffered Godici and Douglas as experts not only on patent office practice but also as experts on patent validity and inequitable conduct. Degelman moved to preclude their testimony on all topics, but as to the issue of inequitable conduct, moved to preclude because neither was an attorney and thus neither could speak to the legal issues of inequitable conduct. And as to invalidity, Degelman moved to preclude their testimony because neither was an expert in the particular technical subject matter of the patents.

The district court agreed with Degelman's two arguments stating:

I find, however, that because the proposed experts lack experience in the field of the relevant art, they may not testify on the issue of validity. While Godici and Douglas clearly have a wealth of experience as patent examiners, as stated by Federal Circuit Court of Appeals, "it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art." Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir., 2008). In the instant case, the record reveals that neither Godici or Douglas have 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 Godici nor Douglas have expertise on the issue of what constitutes inequitable conduct for purposes of rendering an issued...