Abstract–“The descriptions in patents are not addressed to the public generally, to lawyers or to judges, but, as [35 U.S.C.] section 112 states, to those skilled in the art to which the invention pertains ***.” [1] This leads to a tenet of patent law, that the meaning of patents and claim terms must be construed by a person of ordinary skill in the relevant art (“POSA”). However, federal district court docket statistics show that for tasks such as claim construction, the “experts” hired by courts to aid the courts themselves may, in fact, not meet the POSA standard In contrast, to perform the very same tasks, the testifying experts hired by the party litigants are now required to be POSAs. This article argues that logic dictates that there should be consistency in the requirement of skills for both court-appointed experts and party-employed experts when they perform the same tasks.


I. Introduction


Do you understand an invention regarding DC to AC power converter circuits used to drive cold cathode fluorescent lamps? [2] Would you understand the patent claims, the long run-on sentences defining the invention? [3] Well, sometimes courts may not either. However, when complex patents surface in litigation, there are many types of experts to help a court construe the words and decide whether patent claims are valid and whether they have been infringed. There are both experts hired by the parties (“party experts”) and experts hired by the courts themselves (“court experts”) whose roles are finely delineated. [4] For example, among party experts, there are trial-preparation experts, consulting technical experts, and Fed. R. Ev (“FRE”) 702 experts whose goals are to champion the particular party that hired them. [5] Among court experts, there are (special) masters, (technical) advisors, and FRE 706 court-appointed experts whose goals are to aid the judge who hired them. A problem is that, with regards to court appointed experts, practitioners continue to be concerned about the confidential nature of their influence on the ultimate decision of the court can obscure a possible lack of neutrality or relevant expertise of the purported expert. [6] The problem is exacerbated in patent cases because an invention may be complex and obscure so that there is often little choice but to use experts to elucidate the technology. [7] Accordingly, it is highly unlikely that courts will stop appointing experts; even the U.S. Supreme Court has occasionally utilized this practice that is allowed by statute and common law. [8] Thus, restraining the frequency of using experts is not a viable solution. But, setting threshold standards on the appointment requirements of the court experts is a reasonable compromise solution towards improving the quality of the influence that the experts do have. Presently, however, there is a lack of standards in the qualification of court experts in patent law. Therefore, this article proposes that courts implement a defined set of standards for court experts, specifically requiring them to be POSAs for matters that require a POSA point of view. This proposed solution is consistent with the traditional tenets of patent law, and it is now within practical reach due to recent case law. Setting qualification standards helps ensure that parties do not needlessly pay for court experts whose influence may be based on an inaccurate knowledge of the technology and which may lead to inaccurate analyses and decisions. Beyond patent law, the same concepts may be extended to other areas of law that also rely heavily on experts, such as products liability or criminal law. [9]


Setting qualification standards is compelling because of the frequent use of experts. Experts are so prevalent in patent litigation that even appellate judges in the U.S. Court of Appeals for the Federal Circuit (“CAFC”) lamented: “Evidentiary conflicts with respect to technology and science arise in a variety of cases; and the conflicting testimony of expert witnesses is ubiquitous.” [10] Given the likelihood of conflicting testimony and of complex inventions, court experts are necessary. But, it is important that their use be consistent with the traditional tenets of patent law, which includes a person-of-ordinary-skill-in-the-art standard (“POSA”) for patent claim construction, invalidity, and infringement determination. This POSA standard should also set restrictions on the qualification of all experts, whether they are party or court experts.


The CAFC recently set standards for someone to qualify as a FRE 702 party expert. In Sundance v. DeMonte, the CAFC held that a patent attorney who did not practice or have formal training in the technology was improperly permitted to testify as a FRE 702 party expert regarding invalidity and infringement. [11] The expert testimony was rejected because the attorney was not deemed a POSA. [12] Thus, Sundance seemingly heightened the standard to be a POSA. The CAFC also decided that party experts must be POSAs if they provide opinions on claim construction and other matters which traditionally have required a POSA point of view. [13] Given Sundance, rationally, it would be incongruous if court experts are not also as least as qualified as party experts. Presently, however, party experts must qualify at least as POSAs, but court experts need not do so, [14] which seems contrary if they are opining about the same issues. The incongruity is all the more a concern considering that court experts may have to distinguish between opposing technical viewpoints and play a decisive role in the outcome of a case. [15]


With this context, this article addresses the qualification standards of court experts. Section II provides an overview of court experts and relevant case law. In Section II-C, court docket statistics illuminate the present practice regarding the experts. Section III discusses the criteria to be a POSA. Section IV describes how Sundance and SEB v. Montgomery Ward [16] require higher standards for FRE 702 experts and also seemingly change the traditional POSA criteria. Section V considers the implications for court experts….



Dolly Wu*