Patent Infringement Expert Witness Excluded for Lack of Qualifications
In Morpho Detection v. Smiths Detection, The U.S. District Court for the Eastern District of Virginia has ruled that a patent infringement expert witness who admitted that he did not have the experience of one of ordinary skill in the art (the definition agreed upon by the parties) was not qualified on the issue of non-infringement. The court reasoned:
Morpho seeks, under Fed. R. Evid. 702, to exclude the expert testimony of Peter de Boves Harrington, Ph.D. on the issue of non-infringement. In the early stages of claim construction, Morpho agreed to adopt Smiths Detection, Inc.’s (“Smiths”) proposed definition for one having skill in the art of the ‘670 patent. That definition included the following two qualifications:
1. at least a B.S. in mechanical engineering, chemical engineering, physics, or chemistry (or equivalent experience); and
2. at least three years of work experience in designing pneumatics and gas purification systems for analytical instruments.
Morpho argues that:
[u]nder the patent law, an expert is only allowed to opine on infringement if he or she qualifies as one skilled in the art. During his deposition, Dr. Harrington admitted that he is not skilled in the art because he does not have any experience in designing pneumatics and gas purification systems for analytical instruments. Because he does not qualify as one ‘skilled in the art’ under the parties’ agreed-to definition for that term, Dr. Harrington’s testimony regarding non-infringement should be excluded.
ECF No. 94.
Smiths responds by claiming “Morpho’s argument relies on the wrong technical expert qualification standard — an expert need not be ‘a person of ordinary skill in the art’ (by definition, no “expert” is).” ECF No. 125. Smiths goes on to argue that the Federal Circuit’s holding in SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360 (Fed. Cir. 2010) makes clear that Morpho has mischaracterized the holding of Sundance, Inc. v. DeMonte Fabricating, Ltd., 550 F.3d 1356 (Fed. Cir. 2009) on this issue, and that other recent cases “hold that a technical expert need not, in order to testify on issues related to infringement and validity, meet the definition of one of ordinary skill in the art.” ECF No. 125.
Morpho replies that “[a]lthough Dr. Harrington may be qualified to testify within his area of expertise — the science and operation of IMS detection instruments generally — he should not be permitted to offer expert testimony at trial on non-infringement.” ECF No. 146. To allow such testimony would, according to Morpho, expose the jury to unreliable, highly persuasive expert testimony. Morpho further replies that Smiths’ reliance on SEB is inapposite because the opinion testimony offered in that case did not relate to invalidity or non-infringement, and did not include opinions on the disclosure of particular art references, the motivation to combine those prior art references, or any other issue that requires interpretation from the perspective of one having at least ordinary skill in the art.
The Court agrees with Morpho. Dr. Harrington admitted that he does not have the experience of one of ordinary skill in the art, which definition was agreed upon by the parties. Therefore, he is not qualified to testify as an expert witness on the issue of non-infringement. Sundance, 550 F.3d at 1361; Borgwarner, Inc. v. Honeywell Int’l, Inc., 750 F.Supp.2d 596, 601 n. 3, 610-12 (W.D. N.C. 2010) (reviewing standard for admission of expert testimony in Fourth Circuit and excluding expert opinion on same grounds as in Sundance). Morpho concedes that Dr. Harrington is qualified to testify as an expert on the science and operation of IMS detection instruments generally, which falls within his expertise as an expert in ion mobility spectrometry, and the Court agrees. Dr. Harrington may so testify. Accordingly, Morpho’s motion is GRANTED. At 2-4
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