In a recent decision, Osseo Imaging, LLC v. Planmeca USA Inc., the U.S. Court of Appeals for the Federal Circuit clarified the requirements for expert testimony in patent cases, specifically addressing the need for a technical expert to have been a person of ordinary skill in the art (POSITA) at the time of the invention. The court ruled that an expert does not need to have been a POSITA at the time of the invention but must be able to offer testimony from the perspective of a skilled artisan from that period. The case number is 23-1627, and the decision was issued on September 4, 2024, with Judges Dyk, Clevenger, and Stoll presiding.
Background of the Case
Osseo Imaging holds patents for orthopedic imaging systems that utilize X-ray beam techniques to produce tomographic and densitometric models of scanned objects. The patents in question have an alleged invention date of 1999. Osseo sued Planmeca for infringing these patents with its dental imaging systems that create and display 3D models.
During the trial, the jury was instructed on the level of ordinary skill required, defining a POSITA as someone with a bachelor’s degree in electrical or computer engineering and three to five years of experience in a diagnostic imaging environment relevant to the patents. Planmeca challenged Osseo’s technical expert during cross-examination, arguing that the expert lacked the requisite experience in 1999, the alleged invention date. Despite this, the jury found in favor of Osseo, concluding that Planmeca infringed the patents.
Post-Trial Developments
Following the trial, Planmeca sought judgment as a matter of law (JMOL), contending that the expert’s testimony should be excluded because he was not a POSITA at the time of the alleged invention. The district court denied the motion, deeming it legally incorrect, prompting Planmeca to appeal.
Planmeca argued that the district court’s denial was an error, asserting that although Osseo’s expert had acquired the status of a POSITA several years after the invention, he was not qualified to offer testimony from that historical perspective. The Federal Circuit, however, disagreed with Planmeca’s argument. The court reiterated that for an expert to provide testimony in a patent case—whether regarding claim construction, validity, or infringement—they need to possess ordinary skill in the art. The court rejected the requirement that an expert must have had this skill at the time of the invention, emphasizing that it suffices for the expert to be capable of offering insights from the perspective of a POSITA.
The Federal Circuit reasoned that imposing a timing requirement would be illogical, as an expert could acquire the necessary expertise later and still understand the knowledge base of a POSITA at the time of the invention. The court acknowledged that while the expert’s lack of contemporaneous experience could be used to challenge their credibility during cross-examination, it does not disqualify their testimony outright. The expert could mitigate potential credibility issues by explaining how they acquired the relevant perspective.
The Federal Circuit upheld the district court’s decision to deny JMOL, affirming that an expert’s ability to offer testimony from the viewpoint of a POSITA does not necessitate having been a POSITA at the time of the invention. Our DC IP lawyers see his ruling provides clarity on the standards for expert testimony in patent litigation, reinforcing that expertise gained after the invention date can still be relevant and valuable.