Addressing the sufficiency of expert testimony to support a jury’s finding of obviousness, the U.S. Court of Appeals for the Federal Circuit reversed the district court’s denial of judgment as a matter of law (JMOL), finding that the testimony “did not even come close” because it failed to analyze motivation to combine, involved the wrong time period and failed to consider secondary considerations.  InTouch Techs., Inc. v. VGo Communications, Inc., Case No. 13-1201 (Fed. Cir., May 9, 2014) (O’Malley, J.)

InTouch sued VGo for infringing several patents directed to systems that let physicians and family members visit patients via a robot operated from a remote computer.  As the robot moves about the hospital, the remote user is present on the robot’s video display.  At the conclusion of the submission of evidence at trial, the jury returned a verdict of noninfringement on all asserted claims, and of invalidity based on obviousness for two claims.  The district court denied InTouch’s subsequent motions for JMOL and new trial.  InTouch appealed.

The Federal Circuit reversed the denial of JMOL on obviousness.  VGo relied exclusively on the testimony of its expert, Dr. Yanco, to support the jury’s finding of obviousness.  The Federal Circuit found that her testimony was “plagued with numerous problems,” including her failure to identify sufficient reasons or motivations to combine the asserted prior references, focus on the relevant time frame or consider any objective evidence of nonobviousness.

Describing a “reason for combining disparate prior art references [as] a critical component of an obviousness analysis,” the Federal Circuit homed in on the Supreme Court’s ruling in KSR, stating that “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”

The Federal Circuit discounted Dr. Yanco’s testimony as vague and conclusory, and her analysis as an application of a jumbled legal standard.  The court found that her opinion that “a person of ordinary skill in the art could combine these references” fell short of the requirement to show such person of skill “would have been motivated to do so.”

The Federal Circuit also found that Dr. Yanco failed to analyze motivation to combine prior art references from the perspective of a skilled artisan at the time of the invention, which here was 2001.  Dr. Yanco instead focused on what a skilled artisan could accomplish in 2011.

The Federal Circuit also held that “[b]y failing to account for objective evidence of nonobviousness, Dr. Yanco’s analysis was incomplete.”  Consideration of such evidence helps guard against improper hindsight analysis, but Dr. Yanco had not even heard of the concept.

The Federal Circuit found that Dr. Yanco was not the only one to apply the wrong legal standard.  In denying JMOL, the district court relied in part on the jury’s “application of common sense to the evidence” to find the patented inventions obvious.  The Federal Circuit found that “[a] court may only rely upon the common sense of one of ordinary skill in the art, not that of the jury in assessing a claim of obviousness.”