Patent Experts Need Not Have Possessed Ordinary Skill in the Art at the Time of Invention

In Osseo Imaging, LLC v. Planmeca USA Inc., No. 23-1627 (Fed. Cir. Sept. 4, 2024), the Federal Circuit affirmed the district court’s denial of Planmeca’s motion for judgment of invalidity and noninfringement as a matter of law.

Osseo sued Planmeca for infringement of three patents relating to X-ray technology used to create 3D models. At trial, the jury found that Planmeca’s ProMax 3D imaging system directly infringed all but one of the asserted claims, and that none of them were invalid for obviousness. Planmeca moved for judgment as a matter of law, arguing that the testimony of Osseo’s expert could not constitute substantial evidence to support either the jury’s verdicts of infringement or validity because he did not possess ordinary skill in the art until nearly 10 years after the time of the invention. The district court denied the motion, noting that Planmeca provided no legal support for idea that an expert had to possess the requisite skill at the time the invention was made.

The Federal Circuit affirmed the district court’s decision to not exclude testimony of Osseo’s expert. Under the Court’s precedent, the sole qualification to provide expert testimony is possession of ordinary skill at the time of testimony, not at the time of the invention. The Court stated that lack of ordinary skill at the time of the invention may be the subject of cross examination to undermine the expert’s credibility, but it does not disqualify the expert from testifying. The Court also rejected Planmeca’s other assertions that the expert testimony and other evidence did not provide substantial evidence supporting the jury’s verdict of infringement.