Not The Mentalist

Submitted by patentadmin on Tue, 10/26/2010 - 11:56

Some weeks ago, we wrote about the qualifications to testify as an expert witness (see The Case of the Inexpert Expert). An expert needs “knowledge, skill, experience, training or education.” However, unless the proffered expert is also an acknowledged psychic, there are some subjects on which even the most technically proficient individual may not testify. (Bone Care International LLC et al. v. Pentech Pharmaceuticals, Inc. et al.)

Bone Care sued Pentech, alleging infringement of patents directed to “a method of lowering levels of parathyroid hormone (PTH) in patients with hyperparathyroidism secondary to end-stage renal failure by administering an effective amount of the drug doxercalciferol, a vitamin D₂ analog” (we have no idea what this means but include it to provide “background” and “color”). The defendants responded that the subject patents were invalid in view of certain prior art and, further, were unenforceable because during prosecution, the patentee had knowingly withheld certain prior art from the Patent Office with the “intent to deceive” – the omnipresent “inequitable conduct” defense.

Undaunted, Bone Care offered the testimony of their technical expert who opined that the patentee had not intended to deceive the Patent Office and had conceived the inventions before the date of the prior art cited by the defendants. The defendants “moved” (lawyerspeak for “filed a motion”) to exclude this testimony as improper.

Motion granted. The expert’s “education, training and experience … do not qualify him with the expertise to plumb the inventor’s and attorneys’ minds and discern whether they ‘lacked candor’ or had actual intent to deceive during prosecution of the [patent].” Similarly, while the expert would be allowed to testify as to “the evolution of the … patent applications’ description of the invention … he may not, however, speculate in light of this evolution as to when the idea … actually was first conceived.”

THE LESSON TO BE LEARNED: Unless your expert is Simon Baker, he won’t be allowed to testify as to what was in the minds of others.

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