Only an Expert Can Offer Opinions on Obviousness

Feb 25, 2020

Reading Time : 3 min

HVLPO2, LLC (HVO) sued Oxygen Frog for infringement of U.S. Patent Nos. 8,876,941 and 9,372,488, directed to methods and devices for controlling an oxygen-generating system used to manage airflow for torch glass artists. The district court granted summary judgement to HVO and the case proceeded to a jury trial on Oxygen Frog’s assertions that the claims were obvious over two prior art references. At trial, Oxygen Frog introduced deposition testimony of a glass blowing artist whose online video was offered as prior art. The witness had not been qualified as an expert witness, and while proffered as a fact witness, he opined that it would have been obvious to modify a prior art system in a way that matched the claimed invention. HVO objected, arguing improper expert testimony. The district court overruled the objection but provided limiting instruction to the jury that “a witness such as [the glass blowing artist] certainly can offer his observations and explain to you how a system works and what he thinks would occur to him from his perspective would or would not be obvious.” The district court further instructed the jury that the testimony did not answer the ultimate question of obviousness. The jury then found the claims to be obvious. The district court subsequently denied HVO’s motion for a new trial that based upon the artist’s testimony.

On appeal, the Federal Circuit reversed and remanded for a new trial, holding that it was improper to admit the lay witness testimony and that the district court’s limiting instruction was insufficient to cure the substantial prejudice caused by the testimony. The opinion cites Federal Rule of Evidence 702 on expert witness testimony, emphasizing that issues of infringement and validity “are analyzed in great part from the perspective of a person of ordinary skill in the art,” and that a witness who is not “‘qualified as an expert by knowledge, skill, experience, training, or education’ in the pertinent art cannot assist the trier of fact to understand the evidence or to determine a fact in issue.” As a consequence, the Federal Circuit said that allowing a non-expert witness to testify on issues of non-infringement or invalidity is an abuse of discretion.

Citing also to Federal Rule of Civil Procedure 26, the Federal Circuit noted that certain protections are in place with expert witnesses that allow both sides in a case to prepare adequately and without surprise. Here, Oxygen Frog provided neither notice to HVO of anticipated expert testimony nor a written expert report. To contrary, Oxygen Frog argued that it was not required to comply with the Rules governing experts since the witness was not proffered as an expert. Further, according to Oxygen Frog, its witness only offered views based on perception and experience. The Federal Circuit rejected these arguments, stressing that the opinion testimony was directed to the central legal and technical question of the dispute.

The Federal Circuit also dismissed Oxygen Frog’s contention that any error associated with the admission of a lay expert’s testimony was harmless, explaining that by permitting improper testimony, the district court deprived HVO of its right to have the obviousness inquiry decided based on an admissible, qualified expert testimony and prejudiced it by not providing the relevant procedures to ensure the reliability and relevance of the testimony.

While the Federal Circuit acknowledged it might be possible for a district court to cure inadmissible testimony by instructing the jury to disregard it, the error in the present case was not cured and the new trial was necessary.

Practice tip: Determining the expected scope of witness testimony during trial requires care and attention early in the case. To ultimately have a witness opine on questions of validity or infringement, they must be qualified as an expert, and all necessary Federal Rules governing expert witnesses must be adhered to. Failure to do so can be case determinative.

HVLPO2, LLC v. Oxygen Frog, LLC, No. 2019-1649 (Fed. Cir. Feb. 5, 2020)

Share This Insight

Previous Entries

IP Newsflash

July 25, 2025

Earlier this year, the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc. (Qualcomm II) raised questions about the extent to which petitioners can rely on applicant admitted prior art (“AAPA”) in inter partes review proceedings.  The Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. largely cabins the Qualcomm II decision to its particular facts and makes clear that AAPA can be used as evidence of background knowledge as part of an obviousness argument.

...

Read More

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

IP Newsflash

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.