• Fred Hadidi

In a surprise move, Federal Circuit says that lay witnesses may not provide expert testimony

Updated: Apr 8


HVLPO2, LLC, Plaintiff-Appellant v. Oxygen Frog, LLC, et al., Defendants-Appellees

2019-1649

February 5, 2020

Rule 702 of the Federal Rules of Evidence says that a witness who is qualified as an expert (by knowledge, skill, experience, training, or education) may provide opinion testimony if that person’s specialized knowledge will help the judge or jury understand the evidence or determine a fact in issue. And if a party wishes to introduce this type of testimony, Rule 26 of the Federal Rules of Civil Procedure (usually) requires that party to provide the other side with a report (including the expert’s opinions and their underlying bases) and an opportunity to depose that expert. The Supreme Court’s 1993 Daubert decision also allows a party to ask the trial judge to exclude testimony from individuals who are not qualified as experts under FRE 702, or whose proposed testimony does not meet certain standards.

This appeal involves patents directed to managing oxygen flow in torches used by artists who work with molten glass. After the District Court granted summary judgment of infringement in favor of the patent owner (HVLPO2), the case went to trial; there, defendant Oxygen Frog argued that the asserted claims were invalid as obvious over a combination of two prior art references. In making its case, the defendant did not use an expert witness; instead, it offered the testimony of a glass blowing artist (Tyler Piebes) who used torches like the ones at issue here, but did not design or build them. When asked whether he believed the asserted claims would have been obvious over the two prior art references, Mr. Piebes responded “Yes, I did.”

HVLPO2 objected to this testimony because Mr. Piebes was not qualified as an expert under FRE 702, and had provided no report as required by FRCP 26. The trial judge overruled this objection, but instructed the jury that “a witness such as Mr. Piebes certainly can offer his observations and explain to you how a system works and what he thinks would occur to him from his perspective would or would not be obvious.” The judge further instructed the jury that the testimony provided by Mr. Piebes is “not the ultimate question” of obviousness, and that it was up to them to decide that issue. The jury later agreed with Mr. Piebes, and found the claims to be invalid as obvious over the two asserted prior art references.

Arguing that Mr. Piebes’s opinion on obviousness had caused them substantial prejudice, HVLPO2 moved for judgment as a matter of law and for a new trial. The District Court rejected these motions, explaining that because of the limiting instruction it had provided to the jury, Mr. Piebes’s testimony could not have substantially prejudiced the patent owner. HVLPO2 then filed this appeal.

Before the Federal Circuit, Oxygen Frog argued that Mr. Piebes simply provided lay testimony regarding his perception and experience, and should be permitted to testify that it would have been obvious to modify one of the prior art references to include features in the asserted claims. And because it had not proffered Mr. Piebes as an expert, Oxygen Frog did not have to comply with the FRE and FRCP rules regarding experts.

The Federal Circuit was not persuaded. The disputed testimony was directed to the trial’s central legal and technical question: whether the asserted claims were invalid as obvious. Because this testimony is “in the clear purview of experts,” lay witness testimony on these issues “does not comply with the Federal Rules of Evidence or Civil Procedure.” The District Court had therefore abused its discretion by allowing Mr. Piebes to testify as he did.

Oxygen Frog also took the position that even if the challenged testimony was improper, the error was harmless because the District Court’s limiting instruction to the jury cured any prejudice that HVLPO2 may have suffered.

The panel again disagreed, explaining that because “expert testimony on ultimate issues carries with it the potential to significantly impact a jury's decision,” the Federal Rules of Evidence and Civil Procedure on experts are designed to “to allow both sides in a case to prepare their cases adequately and to prevent surprise.” By allowing Mr. Piebes to testify on the question of obviousness, the trial judge deprived HVLPO2 of its right to have this question decided based on qualified expert testimony, and prejudiced the patent owner by not allowing it to use the appropriate procedures (such as Daubert motions) to challenge such testimony. The limiting instruction did nothing to cure this prejudice, because it suggested that the jury could have weighed and considered Mr. Piebes’s (unqualified) testimony on what he considered to be obvious. Click here for the PDF.


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