To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Our precedent is clear—nothing more is required.
In Osseo Imaging, LLC v. Planmeca USA, Inc., the Federal Circuit addressed the qualifications necessary to provide expert testimony from a PHOSITA’s perspective. Here, Planmeca argued that a qualified PHOSITA must have the requisite experience at the time an invention is created. The Federal Circuit, however, affirmed the district court’s ruling noting that an expert does not have to be a PHOSITA “at the time of the invention to offer expert testimony from the vantage point of a skilled artisan.”
The patents at the center of the dispute relate to “orthopedic imaging systems that use X-ray beam techniques to create tomographic and/or densitometric models of a scanned object.” Osseo sued Planmeca, alleging that Planmeca’s ProMax 3D imaging systems infringed the ’301 patent, the ’262 patent, and the ’374 patent. Before the district court submitted issues to the jury, Planmeca moved for JMOL as to invalidity and non-infringement under FRCP 50(a). The jury found Planmeca directly infringed all asserted claims except claim 6 of the ’374 patent and none of the asserted claims were invalid for obviousness.
At trial the jury was told that a PHOSITA would have a bachelor’s degree in electrical or computer engineering, in addition to three to five years working in a diagnostic imaging environment that uses the techniques described in the patents at issue. During the trial, Planmeca attempted to illustrate that Dr. Omid Kia, Osseo’s expert, “did not have the requisite [three to five] years of diagnostic imaging experience in 1999, the patents’ alleged date of invention.” On appeal, Planmeca relied on language from Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369 (Fed. Cir. 2022) and argued that “although Dr. Kia became a person of ordinary skill [eight to ten] years after the time of the invention, he was not so skilled at the time of the invention, and thus the verdict cannot be supported by his testimony.”
The Court wholeheartedly disagreed with Planmeca’s timing argument, noting that it made little sense. The Court opined that Kyocera does not state that an expert must be a PHOSITA “at the time of the invention to offer expert testimony from the vantage point of a skilled artisan.” The Court went on to clarify that an expert “can acquire the necessary skill level later and develop an understanding of what a [PHOSITA] knew at the time of the invention.” The Court acknowledged that “the fact that the expert was not a [PHOSITA] at the time of the invention may well be used during cross examination to undermine the credibility of the expert.” However, the Court opined that a PHOSITA who later acquires the requisite knowledge could maintain her credibility “by explaining to the judge and jury how she gained the perspective of a person of ordinary skill at the time of the invention.”
The Court’s decision provides helpful guidance on the qualifications for an expert opining from the perspective of a PHOSITA. Although this decision occurs in the context of a district court appeal, the same standard should apply in IPRs or other PTAB proceedings in which parties commonly rely on expert testimony.