This article by
Bob Ambrogi, of
IMS Expert Services, reports on how the ambiguous, objective nature of the legal definition
of a "Person of Ordinary Skill in the Art" re patent interpretation was the basis for megacorp
SAP losing an infringement lawsuit on appeal.
It illustrates the importance of having competent, non-egotistical legal representation for what
might otherwise be considered an open-and-shut case. In this instance, the "little guy" prevailed
due to having the best legal team.
IMS ExpertServices periodically sends me
e-mails that highlight recent key court cases that can significantly affect the effectiveness
of expert testimony, both for the plaintiff and for the defendant. I have no official affiliation
with them other than to gratefully accept an invitation to repost articles I consider beneficial
to RF Cafe visitors.
Lack of Expert Leads to Reversal of Patent Case
Robert Ambrogi on March 07, 2014
In a complex patent infringement case involving a system for monitoring supply-chain components,
one party's failure to call an expert witness required reversal of a summary judgment ruling that
the patent was invalid, the Federal Circuit Court of Appeals has ruled.
Because the party challenging the so-called "means-plus-function" patent introduced no expert
testimony to support its position, the lower court lacked sufficient evidence to rule on the patent's
validity, the appellate panel held.
Robert J. Ambrogi is a Massachusetts lawyer who represents clients at the intersection
of law, media and technology. A news media veteran, he is the only person ever to hold the
top editorial positions at the two leading national U.S. legal newspapers, the National Law
Journal and Lawyers Weekly USA. He is also internationally known for his writing
and blogging about the Internet and technology.
At issue in the case was a supply-chain patent owned by
Elcommerce.com, Inc. It brought a lawsuit
against SAP AG and SAP America, Inc., for infringement of the patent. SAP filed a counterclaim
alleging that the patent was invalid and unenforceable.
Before trial, the lower court judge held a Markman hearing to consider the claims of the patent.
The judge concluded that the claims were invalid because of indefiniteness. He entered summary
judgment that the patent was invalid and that SAP had therefore not infringed it.
Understanding the 'Person of Ordinary Skill' in the Art
The type of patent at issue in this case involved what are known as means-plus-function claims.
Claims of this type are governed by 35 U.S.C. § 112, which states in part: "An element in a claim
for a combination may be expressed as a means or step for performing a specified function without
the recital of structure, material, or acts in support thereof, and such claim shall be construed
to cover the corresponding structure, material, or acts described in the specification and equivalents
In previous cases construing this statutory language, the Federal Circuit has held that a means-plus-function
claim should be considered indefinite "if a person of ordinary skill in the art would be unable
to recognize the structure in the specification and associate it with the corresponding function
in the claim."
But how does a court decide what that "person of ordinary skill in the art" would recognize?
That was precisely the issue presented by the appeal in this case. At the Markman hearing,
SAP offered no expert testimony or other evidence of what that person of ordinary skill would
understand. Rather, it relied solely on its attorneys' arguments that the language of the patent
lacked the requisite legal elements.
During the hearing, the lower court judge specifically asked SAP why it had presented no evidence
of what a person of ordinary skill would understand. SAP's response was that it was not required
to present such evidence. "We can simply point to the absence of structure [in the patent] and,
if it's not there, it's not there," SAP's attorneys argued.
Expert Testimony Required
The lower court accepted this argument and entered summary judgment in SAP's favor. But the
Federal Circuit ruled that the trial judge could not have properly reached this conclusion without
expert testimony. Without such testimony in a technologically complex case, judges generally do
not have the knowledge needed to construe the claim, the Circuit said.
"The burden was on SAP to prove by clear and convincing evidence that a person of ordinary
skill in the field of the invention would be unable to recognize supporting structure and acts
in the written description and associate it with the corresponding function in the claim," the
court said in an opinion written by Circuit Judge Pauline Newman.
"While 'the person of ordinary skill in the art' is a legal construct, like 'the reasonable
man,' and claim construction is ultimately a matter for the judges, it cannot be assumed that
judges are persons of ordinary skill in all technological arts."
SAP wasn't successful in its argument that no expert testimony or other external evidence is
ever required to show how a person of ordinary skill would understand the patent, the court said.
Rather, there can be no blanket rule, because the adequacy of a particular description must be
determined on a case-by-case basis. But in most cases, the court suggested, the trial judge cannot
be expected to decide the issue without expert evidence.
"We do not of course hold that expert testimony will always be needed for every situation;
but we do hold that there is no Federal Circuit or other prohibition on such expertise. … The
district court persistently asked for evidence and was given none. Without more SAP cannot overcome
the presumption of patent validity."
For this reason, the Federal Circuit concluded that the district court erred in granting summary
judgment. "The burden was on SAP to prove its case, and in the absence of evidence provided by
technical experts who meet the Daubert criteria there is a failure of proof," Judge Newman wrote.
"Attorney argument is not evidence."
Circuit Judge S. Jay Plager joined in Judge Newman's opinion. Circuit Judge Evan J. Wallach
filed a dissent. By holding that SAP was required to provide expert testimony to prove indefiniteness,
he argued, the majority had contradicted its own precedent affirming the exclusion of expert testimony
when there was a total absence of corresponding structure in the claim.
The case is Elcommerce.com
v. SAP AG, Case No. 2011-1369 (Fed. Cir. Feb. 24, 2014).
This article was originally published in
a newsletter distributed by IMS ExpertServices™.
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Posted March 12, 2014