Examination of Expert Witness on Obiousness在美国专家证人检查.docVIP

From PLI’s Course Handbook Patent Litigation 2008 #14977 9 the use of experts to prove obviousness Frederick G. Michaud David Schlitz Baker Botts L.L.P. THE USE OF EXPERTS TO PROVE OBVIOUSNESS Fred Michaud and David Schlitz Baker Botts, L.L.P. Introduction For better or for worse, patent infringement trials often boil down to a contest between conflicting testimony by the parties’ respective technical experts, and in particular testimony regarding whether the patent-in-suit is invalid for obviousness over the prior art. Why obviousness? First of all, practically speaking, a patent action that finds itself actually being tried is as likely to hinge on validity as on infringement (for which the patent-holder presumably has at least a convincing theory) . And the validity dispute will more likely than not revolve around questions of obviousness (i.e., invalidity over a combination of prior art references) as opposed to the more relatively straightforward question of anticipation (i.e., invalidity over a single reference). Although not dispositive by any means, both judges and juries when determining whether a patent is invalid for obviousness will inevitably rely heavily on the testimony of technical experts regarding the scope of the prior art and its applicability to the claims. As a result, the ability to effectively utilize technical experts to establish obviousness, and to undermine the other side’s expert on this same issue through cross-examination, is a fundamental skill on which many an infringement outcome will depend. The Law of Obviousness It is important to shape the evidence offered at trial, your opening statement, and your closing argument, based on the instructions the jury will receive at the close of the case. Various model jury instructions such as those found on the AIPLA’s web site can serve as sources for obviousness instructions. Keep in mind, however, that currently available form instructions on obviousness may evolve as the Feder