New bar for expert testimony warrants legal analysis when selecting experts

Earlier this year in Kyocera Senco Indus. Tools Inc. v. ITC, the Federal Circuit set a new threshold for an expert to be qualified to testify in a patent dispute: "[t]o offer expert testimony from the perspective of a skilled artisan in a patent case … a witness must at least have ordinary skill in the art."¹ This new threshold has and will continue to be leveraged by litigants, whether in district court, before the Patent Trial and Appeal Board or before the International Trade Commission (ITC), to seek exclusion of opposing expert testimony and it calls for heightened legal analysis as to the relevant level of ordinary skill in the art when selecting a testifying expert.

In the ITC investigation underlying Kyocera, Kyocera and Koki agreed that the level of ordinary skill in the art relevant to a patent directed to fastener driving tools required "at least two years of experience in power nailer design."² Kyocera's expert, Dr. Pratt, had "advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools," but as he admitted, he "lack[ed] experience in power nailer design."³ As a result, the ITC excluded Dr. Pratt's testimony as to infringement under the doctrine of equivalents while nevertheless allowing him to testify as to literal infringement.⁴ Both Kyocera and Koki appealed to the Federal Circuit, with Kyocera challenging the exclusion of Dr. Pratt's testimony as to infringement under the doctrine of equivalents, and Koki challenging the admission of Dr. Pratt's testimony as to literal infringement.⁵

Prior to Kyocera, the Federal Circuit applied Federal Rule of Evidence 702 to assess whether an expert was qualified to testify in a patent dispute, focusing on whether that expert "could assist the trier of fact to understand the evidence or to determine a fact in issue."⁶ "Patent cases," after all, were "governed by Rule 702," and "there [was] … no basis for carving out a special rule as to experts in patent cases."⁷ Notably, the Federal Circuit appeared to then recognize that this standard did not require the expert to possess the level of ordinary skill in the art, only that the expert's experience was "sufficiently related" to the subject matter at issue.⁸ The Federal Circuit in Kyocera did not address whether Dr. Pratt's extensive experience in fastener driving tools was sufficiently related to the fastener driving tools at issue.⁹

The Federal Circuit instead set forth a special rule for patent cases: "[t]o offer expert testimony from the perspective of a skilled artisan in a patent case … a witness must at least have ordinary skill in the art."¹⁰ With the undisputed level of ordinary skill in the art requiring experience in power nailer design and Dr. Pratt admittedly lacking that experience, the Federal Circuit thus upheld the ITC's exclusion of his doctrine-of-equivalents-infringement testimony and reversed the ITC's admission of his literal-infringement testimony as an abuse of discretion.¹¹

While the ITC investigation was subsequently terminated at Kyocera's request, the Federal Circuit's exclusion of Dr. Pratt's literal-infringement testimony likely would have substantially impacted Kyocera's case. After all, the ITC relied heavily on that testimony in finding that Koki's products infringed several of Kyocera's asserted claims.¹² With significantly less evidentiary support on remand, that finding may have no longer been viable. Indeed, the ITC had viewed the pre-appeal exclusion of Dr. Pratt's doctrine-of-equivalents-infringement testimony as fatal to Kyocera's positions based on the same.¹³

Kyocera hints at the harsh consequences of excluding a party's expert testimony in a patent dispute, including leaving that party's positions unsupported by evidence. The case implicates the process of testifying expert selection that normally occurs at the outset of a case, and often without a rigorous assessment beyond considering a potential expert's technical background and testifying experience. After Kyocera, it is no overstatement to suggest that the exercise of selecting a testifying expert in a patent case must now be viewed quite differently.  At a minimum, the selection process must include a threshold assessment of the relevant level of ordinary skill in the art,¹⁴ including critically assessing the level of ordinary skill in the art that might be advanced by any opponent and of whether any potential testifying expert possesses that level of ordinary skill in the art.