Invalidity Expert Excluded Where Expert Failed to Conduct a Proper Written Description Analysis

by Jeffer Mangels Butler & Mitchell LLP

Plaintiff Trading Technologies International, Inc. ("TT") moved to strike the invalidity expert report of the defendant, CQG. TT made two arguments its motion: "(1) that Dr. Mellor failed to conduct a proper written description analysis because, according to TT, he incorrectly focuses on features that are not recited in the claims and concludes that there is no written description to support the unclaimed features; and (2) that Dr. Mellor failed to consider the perspective of one of ordinary skill in the art in his written description analysis."

CQG responded that TT mischaracterized Dr. Mellor's opinions and that Dr. Mellor correctly applied the written description test to determine whether a person of ordinary skill in the art would understand whether the inventors were in possession of TT's asserted Static Limitation. CQG further asserted that TT misrepresented Dr. Mellor's explanation of a person of ordinary skill in the art and offered no explanation why the district court should adopt TT's definition.

The district court then addressed the definition of a person having ordinary skill in the art, noting that "the parties' definition of a person having ordinary skill in the art is identical, with the exception that TT does not specify what type of bachelors' degree is required. The definition CQG provided to Dr. Mellor required: (1) a bachelor's degree in computer science, computer engineering, or electrical engineering, or equivalent experience, and (2) two years of experience designing and/or developing user interfaces, including experience designing and/or developing graphical user interfaces for electronic trading based on input from a person with knowledge of the needs of an electronic trader. In his report, Dr. Mellor recites this definition and then provides an overview of his background, qualifications, and experience. Dr. Mellor opines that he has a 'greater level of skill than the person of ordinary skill in the art.'"

Here, however, the district court found that the expert failed to apply the proper standard because he did not meet the definition of one of ordinary skill in the art. "Dr. Mellor goes on to say that he has only a general understanding of trading and electronic trading and that he has no experience designing and/or developing graphical user interfaces for electronic trading based on input from a person with knowledge of the needs of an electronic trader. (Dkt. 649-2 at ¶45). By his own statements, Dr. Mellor, CGQ's own expert, failed to apply CGQ's definition of a person having ordinary skill in the art to his analysis."

Turning to the written description test, TT argued that Dr. Mellor focused on elements or features that were not disclosed by the written description and misapplied the written description test. "[T]he patentee need only describe the invention as claimed, and need not describe an unclaimed method of making the claimed product." Amgen Inc. v. Hoechst Marion Roussel, 314 F.3d 1313, 1333 (Fed. Cir. 2003). Energy Transp. Group, Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1350 (Fed. Cir. 2012)(stating that the written description must support the full scope of the claims as construed).

The district court then concluded that the expert's analysis was flawed as he looked at whether the written description support the assertions against potential infringers. "It appears that Dr. Mellor did not only analyze whether the inventor was in possession of the invention as claimed, but also considered whether the inventor was in possession of the invention as asserted against others. In other words, Dr. Mellor examined whether the written description supports TT's supposed interpretation of the static limitation, including features of the software that are not claimed. While this issue may be more relevant to the credibility of Dr. Mellor's opinions rather than admissibility, considering that he lacked the requisite experience to opine as one of ordinary skill in the art as defined by CQG, this Court will exclude his report."

Trading Technologies International, Inc. v. CQG et. al, Case No. 05 C 4811 (N.D. Ill. May 16, 2014)


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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