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District Court Denies Motion to Exclude Expert Testimony on the Ground That the Expert Was Not a Person Having Ordinary Skill in the Art

Defendants sought to exclude the testimony of Plaintiff’s expert Joseph C. McAlexander III in its entirety because he lacked the appropriate technical background. In their motion, Defendants alleged that Mr. McAlexander’s testimony was inadmissible because he did not meet the requirements of one of ordinary skill in the art.

The district court held a Markman hearing on November 7, 2014, to assist in construction of the three patents-in-suit. The Markman orders contained a definition of a person having ordinary skill in that art (“PHOSITA”) that the parties agreed to at the Markman hearing:

“at least 4 years of experience in the field of energy management and control systems, or have a Bachelor’s of Science degree in mechanical or electrical engineering and at least 2 years of experience in the field of electronic and mechanical systems related to energy management and control systems. Additional education might substitute for some of the experience and substantial experience might substitute for some of the educational background.”

After reviewing Daubert and other relevant case law governing the exclusion of experts, the district court found that Defendants’ argument failed in light of both Mr. McAlexander’s qualifications and the relevant Federal Circuit case law. “McAlexander is a Registered Professional Engineer with a bachelor’s degree in electrical engineering and forty-two years of experience in the integrated circuit and electronics industry. McAlexander averred that his skills and experience include control system design and analysis. McAlexander more than meets the requirements set forth for a PHOSITA.”

The district court also concluded that the Defendants conflated a PHOSITA with the requirements for expert testimony. “The Federal Circuit has enumerated specific patent issues that require an expert to have the skillset of a PHOSITA, but in doing so, distinguished those lines of inquiry from others. Id. at 1364 (requiring expert to be “qualified in the pertinent art” to opine on anticipation and obviousness); Aquatex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1329 (Fed. Cir. 2007) (“when the patent holder relies on the doctrine of equivalents, as opposed to literal infringement, the difficulties and complexities of the doctrine require that evidence be presented to the jury or other fact-finder through the particularized testimony of a person of ordinary skill in the art”). An expert need not be an expert on the entire invention, but rather only the technology about which he or she is opining. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010).”

As a result, the district court concluded that it was appropriate to permit the testimony. “McAlexander is not opining on obviousness, anticipation, or the doctrine of equivalents. Defendants’ reliance on Sundance is misplaced, as the expert in that case possessed no relevant technical background, which the Federal Circuit repeatedly referenced. See Sundance, Inc., 550 F.3d at 1361-62. McAlexander is more akin to the expert in SEB, who had specific knowledge as to the testimony the proponent elicited, and the Federal Circuit upheld the admission of that testimony. See SEB S.A., 594 F.3d at 1373.”

Allure Energy, Inc. v. Nest Labs, Inc., Case No. 9-13-CV-102 (E.D. Tex. April 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or