Since the Federal Circuit decided Centricut, LLC v. The ESAB Group, Inc., 390 F.3d 1361 (Fed. Cir. 2004), the question of when expert testimony is required to establish infringement in patent cases involving complex technology has vexed litigators. Although Centricut did not establish a “per se rule that expert testimony is required to prove infringement when the art is complex,” 390 F.3d at 1370, it advised that expert testimony may be essential to establish infringement in cases where the technology is sufficiently complicated. Id. at 1369. So much for a bright line.
When is technology complex enough to require expert testimony to establish infringement? The recent Federal Circuit decision in Lee v. Mike’s Novelties, Inc., 2013 WL 6097232 (Fed. Cir. Nov. 21, 2013) tackled that question in the context of a fairly novel invention – a metal tobacco pipe designed to resemble a Colt Six Shooter pistol.
Not surprisingly, the pipe is available for sale on Amazon where multiple photos provide prospective purchasers with views from a variety of angles. Even better, another online pipe store offers a video of the pipe being disassembled and reassembled so you can see all of the components.
Now be honest – after viewing the above photos and video, do you fully understand how this thing works? I don’t mean how to smoke it, but rather how, as a matter of physics, all the mechanical parts work together in unison to deliver a good smoke. If you have an engineering degree, perhaps the answer is yes, but what about the average layman serving on a jury? The Federal Circuit ruled that jurors did not require expert testimony to understand the relevant mechanical concepts, and therefore the plaintiff was not obligated under Centricut to introduce expert testimony to establish infringement.
Here’s the drawing that accompanies the decision – it’s a bit technical, but let’s see if we can decipher the mechanics:
As the Court explained, the topmost part of the pipe (labeled 51) is a cylindrical brass turret with multiple magazines that rests on top of the manifold (labeled 20). The turret rotates so the user can smoke tobacco held in any of the magazines through the hollow stem (labeled 16). However, because the turret is made from a metal (brass) that is slightly heavier than that of the manifold (aluminum), the turret remains stationary relative to the manifold even when rotated. That is, the slight weight differential “ensures consistent alignment between the turret and the manifold so that smoke can pass through the stem when the user inhales.” 2013 WL 6097232, at *1.
One of the allegedly infringing pipes used a ball and spring assembly to keep the turret stationary. The defendant argued that this innovation precluded a finding of infringement. Based on the language of the claims in the plaintiff’s patent, the district court disagreed. Affirming, the Federal Circuit held that “infringement could not be avoided by adding another feature [i.e., the ball and spring assembly] that contributes to the turret’s stability if the weight differential [in the infringing device] is nevertheless sufficient to keep the turret stationary [on its own].” 2013 WL 6097232, at *3.
From a technology standpoint, the question thus posed was whether the “turret and manifold in [defendant’s] pipes, standing alone, would be sufficient to keep the turret stationary to the manifold.” 2013 WL 6097232, at *4. Since the difference in weight between the turret and manifold was only 13 grams, this was a subtle inquiry. While the plaintiff did not present an expert to explain the mechanics, jurors were given the opportunity to handle the components of the pipes, and compare their relative weights. The Court held this interaction was adequate to support the jury’s conclusion that the weight differential was sufficient on its own to ensure stability, and therefore that defendant’s pipe infringed plaintiff’s product.
The defendant argued that plaintiff’s failure to present expert testimony at trial was fatal to its infringement claim. Citing Centricut, the Court disagreed on the grounds that the technology in this case “was easily understandable and did not require technical expertise or specialized knowledge” (unlike the technology in Centricut, which involved plasma arc cutting torches). Id. Thus, expert testimony was not required to aid the jury in its deliberations.
Notably, the defendant did not present its own expert that the weight differential in its pipes was not sufficient, standing alone, to ensure stability. It’s easy to understand why. With the lost profits awarded plaintiff only equal to $40,000, hiring an expert was not economical. Clearly this was no Apple v. Samsung.
That said, had defendant introduced an expert negating infringement, would the plaintiff have been required to counter with its own expert, or risk losing the case? In Centricut, the Federal Circuit held that in “a case involving complex technology, where the accused infringer offers expert testimony negating infringement, the patentee cannot satisfy its burden of proof by relying only on testimony from those who are admittedly not expert in the field.” 390 F.3d at 1370 (emphasis added). But as per the highlighted language, that holding appears to apply only where the technology is sufficiently complex to require expert testimony in the first place. But in Lee, the Federal Circuit had held that the technology was “easily understandable.” So it’s not clear whether plaintiff would have had to introduce its own expert in the event defendant had introduced one. The best one can say is that if a defendant introduces an expert negating infringement, and the plaintiff does not call its own, it proceeds at its peril. The economics of the dispute will clearly determine whether this issue arises.
Please share your thoughts. Have you encountered patent cases where it wasn’t clear whether the technology was complex enough to require expert testimony to establish infringement? Even if the technology was easily understood by laypersons, did you introduce expert testimony anyway as a precaution? What factors came into play in your decision-making?