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Olson v. Nieman's5/28/1998
dmitted the evidence, and Nieman was able to use it to bolster its defense that Olson's idea was not novel.
The district court did not abuse its discretion when it denied Nieman's request to extend the expert disclosure deadline.
A. Expert testimony: patentability. At trial, Alan Harms testified as an expert on behalf of Olson. Nieman contends there was insufficient evidence to support Harms' opinion about the patentability of Olson's device.
Nieman raises two complaints regarding Harms' testimony: (1) Olson did not make a patent claim upon which to base Harms' opinion of patentability, and (2) Harms' testimony did not establish that Olson's idea was nonobvious as the patent laws require. Harms' testimony, Nieman strenuously argues, was prejudicial because Olson's damages expert relied on patent royalties in calculating Olson's alleged damages.
Iowa Rule of Evidence 702 governs admissibility of expert testimony:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education may testify thereto in the form of an opinion or otherwise.
(Emphasis added.)
As the italicized language indicates, a threshold requirement for the admissibility of expert testimony is that the testimony must aid the trier of fact to resolve a disputed issue. Williams v. Hedican, 561 N.W.2d 817, 822-23 (Iowa 1997). If such testimony is to aid the trier of fact, it must be reliable. Id. at 823. If the testimony is not reliable, it certainly cannot aid the trier of fact. Id. The amount of foundation necessary to establish reliability depends on the complexity of the evidence and the likely impact of the evidence on the trier of fact. Id. In applying these requirements, we follow a liberal rule of admissibility. Id. at 822.
There is no claim that Harms was not qualified under Rule 702 to render an opinion on the facts underlying patentability. We are not surprised because Harms is a patent attorney who has years of experience prosecuting patents through the United States Patent and Trademark Office.
We therefore restrict our Discussion to whether Harms' testimony assisted the jury in evaluating prior art patents and their impact upon the patentability of Olson's device. We do so within the parameters of Nieman's objections to Harms' testimony.
1. Olson's failure to make a patent claim. Nieman points out that a patent claim is analogous to the legal description of a deed: The claim sets out the scope of the invention. The patent law requires that the patent application include "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 (1994). Without a proper description of the device, the Patent Office cannot determine whether the device is new, useful, and nonobvious-the requirements for patentability. Id. §§ 101, 103.
Based on the cited patent laws, Nieman insists that the patentability of a purported invention and the damages resulting from the destruction of the invention's potential patent rights can only be determined with respect to a claimed invention. Thus, Nieman contends, Olson was required to at least submit a proposed claim. Without such a claim, Nieman concludes, the jury (1) could not make a fair determination of whether Olson's device was new, useful, and nonobvious, and (2) was left to guess as to whether the device was patentable.
We think Olson is correct in distinguishing this case from a patent infringemen
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