Coinventor Not Qualified to Testify as an Expert on Infringement
June 07, 2005
Last Month at the Federal Circuit - July 2005
Judges: Schall (author), Lourie, and Prost
In Air Turbine Tech., Inc. v. Atlas Copco AB, No. 04-1387 (Fed. Cir. June 7, 2005), the Federal Circuit affirmed the final judgment of the district court that was adverse to Air Turbine Technology, Inc. (“ATT”) on all of its claims.
ATT is a manufacturer of power tools. ATT filed suit against Atlas Copco AB (“Atlas”), a large powertool distributor based in Sweden, asserting various claims, including: (i) false advertising under the Lanham Act, (ii) breach of contract, (iii) and patent infringement. On ATT’s claim of false advertisingunder the Lanham Act, the district court found in favor of Atlas on SJ. The district court concluded that, with the exception of one affidavit, there was no evidence that suggested that Atlas’s false advertising caused consumers to stop buying ATT’s product. Additionally, the district court concluded that the one affidavit that did suggest a causal link was based on inadmissible hearsay.
On appeal, ATT argued that it was deprived of its due process rights because the causation theory relied upon by the district court in granting SJ was raised sua sponte by the district court. Consequently, ATT argued that it was denied an opportunity to produce evidence addressing the causation and hearsay issues.
The Federal Circuit affirmed the grant of SJ on ATT’s false advertising claim, concluding that ATT was on notice of the causation and hearsay issues because Atlas had raised it in its motion for SJ, and the district court judge and ATT also had a substantial discussion on the causation issue at the SJ hearing.
The Federal Circuit also agreed with the district court that ATT had failed to produce sufficient evidence of a causal link between the false advertising and the alleged injuries, as required by the Lanham Act. The Federal Circuit further concluded that the cumulative evidence submitted by ATT was insufficient to permit an inference of causation to be drawn.
ATT also asserted a breach of contract claim against Atlas’s worldwide distribution subsidiary, Atlas Copco Tools AB (“ACTAB”). Under an agreement between ACTAB and ATT, ACTAB had agreed not to exploit ATT’s technology covered by ATT’s patents. ATT argued that ACTAB breached this agreement by falsely advertising its product as having the same benefits as ATT’s patented technology. The Federal Circuit affirmed the district court’s grant of SJ in favor of ACTAB. The Court concluded that ATT was required to assert that ACTAB “exploited—i.e., put into practical use—technology covered by a particular ATT patent,” rather than simply advertising a similar product using descriptions similar to the descriptions used by ATT.
ATT also argued that the district court should have granted it a new trial on its patent-infringement claim because of three prejudicial evidentiary rulings. First, ATT argued that the district court had erred in preventing its expert witness on infringement from testifying as to infringement of the claimed “braking means.” The district court had excluded this testimony because ATT failed to disclose the content of the expert’s opinion as to the “braking means” in an expert report. ATT argued that it was justified in not supplementing the expert report because the court’s claim construction—namely, its conclusion that “braking means” was a means-plus-function limitation—was not finalized until just before trial.
The Federal Circuit concluded that the district court did not abuse its discretion in excluding the expert’s testimony, noting that the district court had construed “braking means” as a means-plus-function limitation about one month before trial, and the issue of whether “braking means” was a means-plusfunction limitation was in play even earlier. The Federal Circuit thus concluded that ATT had sufficient time that it should have at least attempted to supplement the expert report.
Second, ATT argued that the district court had erred in excluding the testimony of a coinventor of the asserted patent, who sought to testify that the accused device contained the corresponding structure of the “braking means” limitation. The district court excluded this testimony on the grounds that the coinventor was not an expert and his testimony consequently violated Fed. R. Evid. 701 as testimony of a lay witness on a matter requiring special scientific knowledge.
The Federal Circuit concluded that the district court did not abuse its discretion in excluding this testimony because the fact that the coinventor may have particularized knowledge and experience as a coinventor of the claimed invention does not necessarily mean he also has a particularized knowledge and experience in the structure and workings of the accused device.
Third, ATT argued that the district court had erred in denying its expedited motion to require Atlas to produce Swedish-employee witnesses by video teleconference for trial. The Federal Circuit disagreed, concluding that, even assuming the district court had power to issue such an order, the motion involved a matter expressly reserved to the sound discretion of the trial court under Fed. R. Civ. P. 43(a).
The Federal Circuit thus affirmed in full the final judgment of the district court.