Last week, in Osseo Imaging, LLC v. Planmeca USA Inc., No. 2023-1627 (Fed. Cir. Sept. 4, 2024), the Federal Circuit held that “[a]n expert need not have acquired the skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art.”  Instead, “an expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill in the art knew at the time of the invention.”  Up until this decision, it was not uncommon for parties to argue that an expert must have qualified as a person of ordinary skill in the art (“POSITA”) at the time of invention.  The Federal Circuit’s decision should preclude such arguments going forward and broaden the pool of potential experts for parties to consider.

In the district court, a jury found that Planmeca infringed Osseo’s three asserted patents directed to a dental and orthopedic image modeling system. The jury further found that certain claims of the asserted patents were not invalid for obviousness.  After the verdict, Planmeca argued in its renewed motion for judgment as a matter of law (“JMOL”), that the district court erred by allowing Osseo’s expert witness, Dr. Kia, to testify concerning infringement and non-obviousness.  Planmeca argued that, because Dr. Kia acquired his expertise 10 years after the time of invention, the court was required to disregard his testimony.  The district court disagreed, holding that Planmeca was not entitled to JMOL because substantial evidence supported the jury’s verdict. Planmeca appealed the district court’s decision.

The Federal Circuit affirmed, reasoning that “[it] agree[d] with the district court that the proposed timing requirement is not a basis for excluding Dr. Kia’s expert testimony as a matter of law.”  The court explained as follows:

“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”  Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022).  All that is required “to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case” is that “an expert must at a minimum possess ordinary skill in the art.”  Id. at 1377.  Our precedent is clear—nothing more is required.

The Court further explained that its Kyocera decision did not impose a timing requirement for being qualified as a POSITA.  According to the court, the issue in Kyocera “was simply whether an expert who did not qualify as a person of ordinary skill in the art—at any time—could present reliable testimony as a technical expert,” and the court in Kyocera “said no.”  Since it was undisputed that Dr. Kia was a POSITA, the fact that he obtained that requisite knowledge after the time of invention was not a basis to disregard his testimony.

Despite the court’s relatively firm rejection of any timing requirement, the court went on to explain that the timing of when an expert obtains his or her knowledge is still relevant to the expert’s credibility at trial:

In practice, the fact that the expert was not a person of ordinary skill at the time of the invention may well be used during cross examination to undermine the credibility of the expert. Relatedly, an expert who later acquires the requisite knowledge could avoid such potential damage to her credibility by explaining to the judge and jury how she gained the perspective of a person of ordinary skill at the time of the invention.

The court’s decision has a few practical implications.  First, litigants will likely stop arguing to exclude an expert simply because he or she obtained the requisite level of knowledge after the time of invention.

Second, the court’s decision increases the number of prospective experts because it is now clear an expert will not be excluded simply because he or she obtained the requisite knowledge after the time of invention.  Parties interviewing prospective experts should be mindful that the timing is subject to cross-examination, and they should head-off such cross-examination by having the expert address the topic during direct examination.  Finally, the court’s comments about cross-examination could create factual issues concerning an expert’s credibility, which could preclude a court from granting motions for summary judgment that are supported by expert testimony.  When employing an expert that obtained the requisite knowledge after the date of invention, parties should scrutinize their summary judgment evidence to minimize the chances of the expert’s credibility creating a factual issue that precludes summary judgment.