## Facts

- Sundance owned U.S. Patent No. 5,026,109 covering a retractable segmented cover system using multiple flexible cover sections supported by bows and driven by a drive assembly, with sections removable independently.
- Sundance asserted only independent claim 1 against DeMonte’s retractable tarpaulin cover products.
- DeMonte defended on noninfringement and invalidity for obviousness, relying primarily on prior art including Cramaro (a retractable truck tarpaulin cover system) and Hall (a segmented cover arrangement with independently removable sections).
- DeMonte presented Charles Bliss, a patent attorney, as its principal “expert” witness on noninfringement and obviousness; he lacked education or experience in the technical field of retractable segmented cover systems.
- Sundance moved to exclude Bliss’s expert testimony for lack of technical qualifications in the pertinent art; the district court denied the motion and allowed him to testify.
- The jury found claim 1 infringed but invalid as obvious under 35 U.S.C. § 103.
- Post-trial, the district court granted Sundance JMOL that claim 1 was not obvious (overturning the invalidity verdict), denied DeMonte JMOL of noninfringement, and denied prejudgment interest on certain pre-suit sales.
- DeMonte appealed the JMOL of nonobviousness and the denial of JMOL of noninfringement; Sundance cross-appealed the prejudgment-interest ruling.

## Issues

1. Whether it was an abuse of discretion under Federal Rule of Evidence 702 to permit a patent attorney without technical expertise in the pertinent art to testify as an expert on infringement, validity, and the viewpoint of a person of ordinary skill in the art.
2. Whether, excluding the improperly admitted expert opinions, substantial evidence supported the jury’s obviousness verdict such that the district court erred in granting JMOL of nonobviousness.

## Decision

- The Federal Circuit held the district court abused its discretion by allowing Bliss to testify as an expert on infringement and validity without qualification in the pertinent art.
- The court assessed obviousness without crediting Bliss’s improper technical opinions and concluded substantial evidence still supported the jury’s finding that claim 1 was obvious over the prior art.
- The Federal Circuit reversed the district court’s JMOL of nonobviousness and reinstated the jury’s invalidity verdict.
- Because invalidity resolved the dispute, the court did not reach the noninfringement JMOL or prejudgment-interest issues.

## Legal Principles

- Under Rule 702, a witness may not testify as an expert on patent infringement or invalidity issues requiring technical knowledge unless the witness is qualified as an expert in the pertinent art.
- Patent-law experience alone does not qualify a witness to opine on how the invention and prior art work technically or on what a person of ordinary skill in the art would understand, be motivated to do, or find obvious.
- JMOL may not be granted where a reasonable jury could reach its verdict on the record; the court must not reweigh evidence or substitute its view for the jury’s.
- Obviousness under § 103 is a legal conclusion based on factual predicates (Graham factors), and post-KSR the analysis permits flexible, common-sense reasons to combine known elements; secondary considerations do not automatically defeat an otherwise supported obviousness finding.

## Conclusion

The Federal Circuit ruled that a patent attorney lacking technical qualifications could not serve as an expert on technical validity and infringement questions, and it reversed the district court’s JMOL of nonobviousness because substantial evidence supported the jury’s obviousness verdict even without the improper expert testimony.


Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008)