In Rambus v. Hynix, 5:05CV334 (N.D. Cal. Dec. 29, 2008), at docket entry #2997, Judge Whyte largely rejected proffered expert testimony on the "secondary considerations" that indicate nonobviousness. A showing of these indicia of nonobviousness has grown in importance since the Supreme Court lowered the pedal against obvious combination patents, in KSR v. Teleflex. Using a Daubert analysis, mainly focused on whether the expert reliably made logical connections between historical facts and 'net' opinions, Judge Whyte gives a studied view of how a patentee might or might not present admissible expert opinion on each indicia of nonobviousness.
The ruling is a must-read for patent litigators, particularly those faced with an initial disclosure requirement to specify whether commercial success or other secondary considerations will be an issue. in the old days, these points got minimal coverage in experts' reports. Going forward, patent cases will either add a nonobviousness expert, or that issue will be expanded in the report of the liability and damages experts. The rub is to avoid topical conflicts between your experts, because an effective cross-examiner may elicit contradictions between their opinions, e.g., the tech guy and lost-profits guy see the past differently. One wonders if Judge Whyte's opinion sets too high a standard for admitting nonobviousness opinions, when the actual challenge was that this expert may have been underqualified and not have connected-the-dots between the facts and his conclusions.
In the end, the ruling allows proffer of the historical facts, but limits this expert's opinions and inferences. That provokes the possiblity of putting in all the facts about "secondary considerations," having the tech and commercial facts simply authenticated by the other experts, then just arguing for the legal conclusion of nonobviousness. Endeavoring instead to have a third expert on nonobviousness, knowledgeable both in the technology and its commercial marketing, and experienced in the state of the art, the needs, and the failures occuring perhaps 20 years ago, will be as hard as finding a vascular surgeon with a specialialty in conditions of adolescent's left wrists.
I have taken real pleasure in being the guest blawger here for the past weeks. All of the comments and readership are appreciated. Wish me luck as I begin teaching IP Transactions at the College of Law at the University of Kentucky. My regular blawg posts at http://leethomason[dot]com will resume in time. Thanks