Wednesday, February 05, 2020

Appellant HVLPO2 wins reversal of ND Fl in OXYGEN FROG case

The outcome was reversal of the decision of the Northern District of Florida:

HVLPO2, LLC (HVO) sued Oxygen Frog, LLC and its
CEO, Scott Fleischman (collectively, Oxygen Frog) in the
Northern District of Florida for infringement of the claims
of U.S. Patent Nos. 8,876,941 and 9,372,488. A jury concluded that
claims 1 and 7 of both the ’941 and ’488 patents,
the only claims tried, would have been obvious under 35
U.S.C. § 103. After the jury verdict, HVO moved for judgment as a
matter of law that Oxygen Frog had failed to establish obviousness, or in the alternative, for a new trial
based on the admission of lay opinion testimony on the issue of obviousness.
The district court denied HVO’s motion, and HVO appealed. Because the district court abused
its discretion by admitting lay witness testimony regarding
obviousness, we reverse and remand for a new trial

Of note:

The Federal Rules of Evidence and those of Civil Procedure carefully govern expert testimony. Federal Rule of
Civil Procedure 26 requires for example that experts be disclosed to the opposing party along with a written report
which contains all opinions of the expert, the reasons and
bases for those opinions, and all facts relied upon in the
formation of the opinion. Fed. R. Civ. P. 26(a)(2). HVO was
not provided with any such disclosure of Mr. Piebes.
Oxygen Frog argues that it did not have to comply with the
Rules regarding experts because Mr. Piebes was not proffered as an expert. Oxygen Frog argues that Mr. Piebes’
testimony was lay testimony regarding Mr. Piebes’ perception and experience.
According to Oxygen Frog a lay witness should be permitted to testify that modifying one of
the prior art references to include additional claimed features would have been obvious. We do not agree, because
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.

Mr. Piebes’ testimony, which is directed to the conclusion of obviousness and its underlying technical questions,
is the province of qualified experts, not lay witnesses. See,
e.g., J.A. 704 (“Q. Did you think that modifying the Cornette system to support two circuits to be obvious? A. Yes,
I did.”); J.A. 708 (“Q. So would you consider it obvious if you
have a pressure switch with instructions, a two pole pressure switch with instructions to wire it to turn on and off
two circuits? A. Yes.”). Mr. Piebes’ testimony was therefore

Footnote 1 is worth viewing:

Oxygen Frog also argues that any error associated
with the admission of Mr. Piebes’ testimony was harmless
“because the jury did not decide the ultimate issue of obviousness and invalidity . . . [and any] prejudice was cured
by the Court because the Court made its own independent
analysis of obvious[ness].” Appellees’ Br. at 33–34. Although the issue of obviousness is a legal one, it is an issue
that may be properly submitted to, and decided by a jury.
See R.R. Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506,
1515 (Fed. Cir. 1984).
A district court’s decision on a motion for judgment as a matter of law after a jury verdict of
obviousness is not an independent inquiry. It does not convert the jury verdict into a bench trial.


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