Battle of the Experts

Althought non-precedential, B-K Lighting, Inc. v. Fresno Valves & Castings, Inc. (Case No. 2008-1537, April 28, 2010, Federal Circuit Court of Appeals) provides a good reminder what constitutes a factual issue for purposes of summary judgment.

In this case, at issue was whether certain claims for a lighting mount were obvious in light of the prior art:

“The question of obviousness was focused on the differences between the combination of these prior art devices and claims 3, 12, 15, 18, 19, 21, and 22 of the '084 patent, and in particular whether the Hydrel 7100 disclosed frictional pivoting. On appeal, B-K Lighting principally asserts that claims 3, 12, 15, 18, 19, 21, and 22 would not have been obvious because the Hydrel device did not disclose frictional pivoting.”

The parties’ experts submitted opposing declarations on summary judgment as to whether the Hydrel device disclosed frictional pivoting. The district court disregarded the patentee’s expert’s opinion and granted summary judgment on nonobviousness.

The Federal Circuit vacated, finding that:

“The district court disregarded Pratt's declaration, calling it "conclusory" and "factually unsupported." Summary Judgment Order, slip. op. at 31-32. It is not clear, however, why the court found Pratt's declaration any more conclusory than Dornfeld's. Both experts based their opinions on the same data sheets for the Hydrel 7100. This conflict in expert declarations regarding whether the Hydrel 7100 disclosed frictional pivoting created a genuine issue of material fact that made summary judgment inappropriate. See, e.g., Metro. Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330, 1338-39 (Fed. Cir. 2008); Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1351-52 (Fed. Cir. 2000); Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1338-39 (Fed. Cir. 2000); Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Because the conflicting testimony of the parties' experts regarding whether the Hydrel 7100 disclosed frictional pivoting created a genuine issue of material fact, we vacate the district court's judgment of invalidity for claims 3, 12, 15, 18, 19, 21, and 22 of the '084 patent.”