“Lay witness” not qualified as an expert cannot testify as to conclusion of obviousness

HVLPO2, LLC v. Oxygen Frog, LLC, Scott D. Fleischman
Docket No. 2019-1649
NEWMAN, MOORE, CHEN
February 5, 2020

Brief Summary: DC’s limiting jury instructions regarding obviousness because “lay witness” was not qualified as an expert.

Summary: HVO appealed DC denial of its motion for judgment as a matter of law (JMOL) that US 8,876,941 and 9,372,488 relating to managing an oxygen generating system (e.g., “for torch glass artists”) should have been found obvious by the jury or, alternatively, “for a new trial based on the admission of lay opinion testimony on the issue of obviousness.” The DC granted partial summary judgment finding Oxygen infringed the claims, but after trail the jury found the asserted claims invalid for obviousness in view of a combination of two references (“Cornette” and the “Low tide video”). The Low tide video was posted online by Mr. Piebes who “provided deposition testimony as a fact witness” but “was not qualified as an expert witness”, and was played before the jury. The DC instructed the jury that Mr. Piebes deposition testimony that he thought “modifying the Conette system” would have been obvious were “observations” that “can 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 FC panel found that Mr. Piebes testimony caused “substantial prejudice” against HVO and the DC’s “limiting instruction was insufficient to cure” it, and that the DC “abused its discretion by denying the motion for a new trial.” The FC panel explained that “it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art” (Sundance, FC 2008; Fed. R. Civ. Pr. 26(a)(2)), and Mr. Piebes was not (“Mr. Piebes’ testimony, which is directed to the conclusion of obviousness and its underlying technical questions, is the province of qualified experts, not lay witnesses.”) The FC panel therefore concluded that a new trial was required, reversing and remanding the DC decision.