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Posts Tagged ‘Expert Testimony’

Expert Testimony Has Little Impact on AIA Review

March 26th, 2017 Alexander No comments

Nearly one year has gone by since the new rules permitting patent owners to offer expert testimony in their responses to American Invents Act (AIA) review petitions have passed.  With the prior rules, petitioners were able to present expert testimony in their petition for review, but patent owners were not allowed to do the same.  Following complaints from patent owners, the USPTO passed the new rules permitting patent owners to offer expert testimony alongside their preliminary responses.

However, the new rules appear to have minimal effect on the result of the Patent Trial and Appeal Board determinations about whether to conduct reviews.  The statistics from RPX Corp. demonstrate that the PTAB has conducted reviews of challenged claims at virtually an identical rate in cases regardless of whether patents owners choose to include expert testimony along with their responses.  Regarding cases in which expert testimony was submitted alongside the response, review of the challenged claims occurred approximately 50 percent of the time.  Yet, review of some claims occurred in 13 percent of these cases.  With cases in which the patent owner did not submit expert testimony along with the initial response, review of challenged claims occurred 50 percent of the time, while review of some claims followed in 12 percent of these cases.

Because these rules are fairly new to patent owners, it is likely that they are still attempting to figure out how to use expert testimony to their advantage.  However, attorneys have said that patent owners can find holes in the petitioner’s case and then utilize expert testimony to elucidate the gap.

Considering that the changes are fairly new, we still have yet to see the effect of expert testimony on the overall outcome.

For more information, see Law360.

Categories: Uncategorized


Malpractice Suit in Nike Air Jordan Patent Case

January 22nd, 2015 Alexander No comments

A total of eight attorneys face a $8.1 million legal malpractice suit for allegedly mishandling a patent infringement suit against Nike Inc. over its Air Jordan shoes.

Inventor Lyons claims the expert chosen by the team of lawyers on the case ultimately doomed his suit against Nike and if it weren’t for that poor choice, he would have prevailed in his allegations that Nike infringed his 1996 patent for an “athletic shoe with compression indicators and replaceable spring cassette.”

The thrust of the patent holder’s displeasure with the representation stems from the decision to appoint Dr. Duane Priddy as an expert to testify on the alleged infringement. That testimony ultimately led to a dismissal of the case by U.S. Magistrate Judge Acosta, the complaint said.

“Dr. Priddy is not qualified nor skilled in the art with respect to athletic shoes,” counsel for Lyons said. “The court’s final analysis was that the expert was not qualified … so there wasn’t sufficient expert support for Mr. Lyons.”

Another of Lyon’s experts evaluated the damages of the alleged infringement at $8.1 million, hence the dollar figure in the legal malpractice litigation.

Judge Acosta ruled against Lyons in June 2012, granting Nike’s motion for summary judgment as to noninfringement, but denied the motion as to invalidity.

That ruling was reaffirmed in January 2013 when Judge Acosta denied Lyons’ request for reconsideration of the original ruling.

Categories: Intellectual Property