Disney Tale Offers Patent Litigation Lessons

April 04, 2013, 03:19 PM

Disney Enterprises filed a lawsuit pursuant to 35 U.S.C. 145 in the Alexandria division of the Eastern District of Virginia, challenging the United States Patent and Trademark Offices (USPTOs) rejection of Disneys patent application. Disney Enters., Inc. v. Kappos, 2013 U.S. Dist. LEXIS 17977 (Brinkema) (E.D. Va. Feb. 11, 2013). Disneys patent application was primarily rejected because of obviousness in view of admitted prior art. When Disney attempted to offer a supplemental expert opinion to support its arguments, the USPTO filed a motion in limine and argued that the expert opinion should be precluded since it was untimely produced. Disney argued that the supplemental expert report was proper under Federal Rule of Civil Procedure 26(e) and was merely offered in response to the USPTO experts opinion.Id. at *11. The district court rejected Disneys argument and explained that [c]ourts distinguish true supplementation (e.g., correcting inadvertent errors or omissions) from gamesmanship, and have therefore repeatedly rejected attempts to avert summary judgment by supplementing an expert report with a new and improved expert report. Id. at *14 (internal citations omitted). The United States Supreme Court has made clear that applicants bringing civil actions challenging a USPTOs patent application decision are free to introduce new evidence to support their arguments; however, the admission of such evidence will be subject to the rules applicable in all civil proceedings (namely, the Federal Rules of Evidence and Federal Rules of Civil Procedure). Kappos v. Hyatt, 132 S. Ct. 1690, 1699-1700 (2012). Therefore, the Alexandria district court concluded that Disney would not be permitted to offer its experts supplemental opinion at trial since the report was not produced in accordance with the discovery scheduled to which it had agreed. Id. at *17-18. Disney filed a motion in limine of its own and attempted to convince the district court that the USPTOs expert was not skilled in the art. Disney argued that in order to be skilled in the art of software development, the expert must have been someone who could develop web-based software and was part of the web software development community at the time of the invention.Id. at *24. The Alexandria district court did not agree with Disney and explained that although an expert must be qualified to testify about what a person with ordinary skill in the art must have understood at the time of the invention, [] the experts knowledge of that may have come later. Id. at *26 (internal citations omitted). Last, Disney filed a second motion in limine and argued the USPTO should be precluded from offering certain exhibits at trial since the articles they sought to offer were published after the time of invention. The district court again rejected Disneys argument and explained that the state of art around the time of the invention is relevant to the obviousness analysis and publications published after the date of invention have long been allowed as evidence of the state of art existing on the filing date of the application. Id. at *32-33 (emphasis added) (internal citations omitted). Thus, this Disney tale is loaded with patent litigation lessons. First, even in lawsuits challenging the USPTOs patent application decision, new evidence will only be admitted if it complies with the Federal Rules of Civil Procedure and with any discovery deadlines the court imposes the Eastern District of Virginia will not tolerate gamesmanship and unwarranted attempts to avoid deadlines. Second, when choosing or challenging an expert, parties should remember that an experts skill in the art does not need to have been in existence at the time of the invention. Instead, parties need only demonstrate that potential experts are currently qualified to testify as to what a person with ordinary skill in the art may have understood at the time of the invention. —Lauren Tallent Rogers