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Excluded Expert Affidavit Regarding Obviousness Should Be Considered When Case Remanded

March 26, 2001

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Last Month at the Federal Circuit - April 2001

Judges: Schall (author), Rader, and Dyk

In Lencco Racing Co. v. Jolliffe, No. 00-1221 (Fed. Cir. Mar. 26, 2001) (nonprecedential decision) (“Lencco II”), the Federal Circuit vacated the district court’s grant of SJ of invalidity and remanded for further proceedings.

Lencco Racing Co. (“Lencco”) alleged that Jolliffe infringed claims 1-4 and 6-12 of U.S. Patent No. 5,538,120 (“the ‘120 patent”) that covers a clutch mechanism for use in continuous variable transmissions. Jolliffe moved for SJ of invalidity of the claims, arguing that claims 1, 3, 4, 7, and 8 were anticipated by a Berger cam-follower plate (“the Berger plate”) and claims 2, 6, and 9-12 were rendered obvious by the Berger plate in combination with a Tillotson carburetor. In its opposition, Lencco designated an expert witness on validity nine months after the court’s deadline for designating witnesses and submitted an affidavit and a report by the expert. Jolliffe moved to strike the expert witness and exclude his report due to Lencco’s untimeliness. The district court granted SJ of invalidity.

In Lencco I, the Federal Circuit affirmed the district court’s decision to strike the expert’s statements as untimely, and also affirmed that claims 1, 3, 4, 7, and 8 were anticipated and therefore invalid because Lencco had failed to contest the district court’s ruling on this issue. Lencco’s argument on claim 6 was dismissed because Lencco failed to rebut Jolliffe’s evidence on analogous art. However, the Federal Circuit vacated the district court’s decision on obviousness and remanded for further proceedings because the district court had neither construed the term “approximately coplanar” nor considered whether the Berger plate met this limitation.

In its supplemental brief to the district court, Lencco referenced the expert’s affidavit and argued that it would not be obvious to modify the Berger plate so that the location of the roller axes was approximately coplanar with the surface of the plate. The district court construed the term “approximately coplanar” and determined that the Berger plate was not anticipatory. The district court failed to mention the Lencco expert’s affidavit, and decided that the coplanar placement of the axes was obvious in view of Berger based on newly submitted affidavits from Jolliffe’s experts. Lencco appealed the district court’s exclusion of its expert’s affidavit submitted in response to Jolliffe’s initial SJ motion.

The Federal Circuit concluded that the district court should not have excluded the Lencco expert’s affidavit and determined that the expert’s affidavit established a genuine issue of fact about whether a motivation to modify the Berger device existed so as to render claims 2 and 9-12 of the ‘120 patent obvious. In vacating and remanding, the Federal Circuit acknowledged that it had affirmed the district court’s decision to exclude the affidavit in the earlier SJ proceedings, but that Lencco was entitled to present the evidence in its supplemental briefing following the Lencco I decision.