HVLPO2, LLC v. Oxygen Frog, LLC: Tips on Expert Testimony

 

HVLPO2, LLC v. Oxygen Frog, LLC was decided in February 2020. Although the case was decided a few years back, it may be profitable to review some of the principles of the Federal Rules of Evidence and Federal Rules of Civil Procedure presented in the case.

As background information, it is important to remember that in legal cases there are different tasks assigned to those involved. For example, the judge is often the trier of law and the jury is often the trier of fact. The trier of law is responsible for understanding and applying the law to the outcome of the case, whereas the trier of fact is responsible for understanding and applying the facts to the outcome of the case. In some cases, an issue that affects the ultimate outcome may be mixed, meaning that it is not solely a legal issue or solely a factual issue but includes both law and fact. In these cases, the jury may decide the issue as long as they are instructed properly as to the legal issues. Generally, obviousness in patent law is seen as a mixed issue of law and fact and the judge together with the different parties are tasked with properly instructing the jury according to the Federal Rules of Evidence and Civil Procedure.

In Oxygen Frog, the jury was asked to determine the obviousness and validity of the patent claims for U.S. Patent Nos. 8,876,941 and 9,372,488. These patents are directed to an oxygen-generating system, which is used to sustain and manage airflow for torch glass artists. At the district court level HVO objected to testimony of Tyler Piebes and filed a motion for a new trial. The district court overruled the objection and denied the motion for a new trial. At issue in the objection and motion was whether or not Mr. Piebes could be treated as an expert.

Federal Rule of Evidence 702 requires that a witness be qualified as an expert to help the trier of fact understand the evidence or to determine a fact in issue. Federal Rule of Civil Procedure 26 requires that each party be informed of the evidence that supports its case, including providing a report of expert witnesses who will be relied upon at trial. Qualifying a witness, under Rule 702, as an expert witness is an involved process that includes multiple steps. Significantly, this process never took place in Oxygen Frog relative to Mr. Piebes. Furthermore, prior to the trial, Oxygen Frog never provided the opposing party with a report that included Mr. Piebes listed as an expert.

The failure to qualify Mr. Piebes as an expert or to provide the report with him listed as an expert meant that Mr. Piebes would have to be consigned to that of a lay witness at trial. Being consigned to the status of a lay witness limited the subject matter about which Mr. Piebes could testify (i.e., he could not testify about the ultimate question of obviousness). Despite being a lay witness, the jury heard the following from Mr. Piebes:

Question from J.A. 704: "Did you think that modifying the Cornette system to support two circuits to be obvious?"

Answer: "Yes, I did."

Question from J.A. 708: "So would you consider it obvious if you have a pressure switch with instructions to wire it to turn on and off two circuits?

Answer: "Yes."

Although the jury was instructed by the district court to limit the testimony of Mr. Piebes, this limitation was insufficient. The limitation was insufficient because the instruction should have been to disregard Mr. Piebes' testimony. The instruction to disregard Mr. Piebes' testimony was never given. Therefore, the CAFC held that a new trial should have been granted and reversed and remanded the case for a new trial.

In dicta, the CAFC stated, "...Mr. Piebes' opinion testimony was directed to the central legal and technical question at trial: whether HVO's asserted patent claims were invalid for obviousness. This testimony from Mr. Piebes is thus in the clear purview of experts and lay witness testimony on such issues does not comply with the Federal Rules of Evidence or Civil Procedure." The takeaways from this case are 1) although the process to qualify an expert can be a bit tedious, it is necessary for those witnesses who will be relied upon as experts; and 2) especially when preparing for patent cases, make sure witness reports are thoroughly reviewed to include all expert witnesses and are provided to the opposing party.