The Case of the Inexpert Expert

Submitted by patentadmin on Mon, 09/13/2010 - 06:03

Sometimes there is simply no substitute for a true “expert.” (Byrne v. Wood, Herron & Evans, LLP et al.)

Byrne is the inventor of a stabilizing guide for the string in a string trimmer. Use of the guide permits the trimmer to be used as an edger for curbs and sidewalks. Wood, Herron & Evans, as one might have guessed, is a law firm. Byrne retained this firm to prepare and prosecute a patent application directed to his invention. In this, they were successful. When the patent issued, he retained the firm to sue Black & Decker for infringement. In this, they were not so successful. In a word, they lost.

The reason for the loss is the genesis of our little lesson. The asserted patent claims required that the string stabilizer have a “generally planar surface.” The stabilizer in the accused Black & Decker trimmer was a wire guide. Ultimately – by “ultimately” we mean by the Court of Appeals for the Federal Circuit (C.A.F.C.) – it was held that a wire guide does not have a “generally planar” surface. No infringement.

Understandably disappointed with this outcome, Byrne followed that hoary client’s maxim, "if you can’t beat the defendant, maybe you can beat your attorneys." Pausing only long enough to retain a new set of attorneys, he proceeded to sue his old attorneys for malpractice, alleging that they were negligent in including an unnecessary limitation – “generally planar” – in the patent claims. But for the presence of this limitation, he maintained, he would have prevailed in the infringement suit and recovered a boatload of money from Black & Decker.

This is where Byrne ran into trouble. In order to show that the Wood, Herron firm had been negligent, he had to show that a patent claim without this limitation would have been allowed by the Patent Examiner. Proof of such allowability commonly is established through the testimony of an “expert witness” (legalspeak for “a person paid to testify in your behalf”).

Under the applicable rule of evidence, “a witness may not give expert testimony unless he is qualified ‘by knowledge, skill, experience, training, or education’.” Byrne’s “expert” had a B.S. in mathematics, an M.S. in nuclear engineering and a law degree. He had worked as a patent attorney for nearly 40 years and, as an adjunct professor, had taught courses in patent law at a law school. He had previously testified on patent-related matters in several cases, in both state and federal courts. Sounds good, right?

Well, not good enough! “[A] patent attorney without a technical background in the relevant art (emphasis added) is not qualified to testify about technical matters.” The Court found that the proffered “expert” was not qualified as an expert on these subjects and, therefore, could not opine on the matter at hand.

"No problem," argued Byrne’s new attorneys. Byrne had himself submitted an affidavit as a technical expert. The “expert witness” (the mathematician/nuclear engineer/lawyer) could opine based upon this affidavit. "No good," responded the Court. “The sum of Byrne’s qualifications … are a bachelor of science degree in an unspecified area of study and experience ‘operating a landscaping company’ … Certainly not every person with a college degree and landscaping experience is qualified to give expert testimony regarding the technical aspect of string trimmers … Byrne has failed to show that he is ‘qualified as an expert by knowledge, skill, experience, training or education’ … thus, he may not testify as an expert … without such expert testimony, the claim cannot survive summary judgment.” Byrne goes home empty-handed, possibly to contemplate suing his new attorneys.

THE LESSON TO BE LEARNED: If you need expert testimony, make sure that your “expert” is expert.

Submitted by Anonymous (not verified) on Mon, 09/13/2010 - 19:58


Perhaps you should reinstate your regular reporting on cases in which disgruntled parties sue their attorneys. I find them to be quite entertaining.

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