Federal Circuit orders new patent trial after witness error
The US Court of Appeals for the Federal Circuit has ordered a new trial after concluding that a Florida jury was potentially prejudiced in finding a glass torch patent to be invalid.
In the ruling, issued yesterday, February 5, the Federal Circuit said that glass blowing artist Tyler Piebes was not qualified to provide testimony on whether two patents (US numbers 8,876,941 and 9,372,488) owned by HVLPO2 (HVO) were obvious.
The two patents cover an oxygen generating system, which is used to sustain and manage airflow for glass torches.
A jury at the US District Court for the Northern District of Florida found in November 2018 that key claims of the patents would have been obvious to a person of ordinary skill in the art.
But a new trial will now be held after HVO argued that the verdict was tainted by what should have been inadmissible evidence from an unqualified witness.
Oxygen Frog, the defendant accused of infringing the two patents, cited an online video posted by glass blowing artist Piebes (who subsequently testified at trial) as prior art.
While Piebes was not admitted as an expert witness, he did provide evidence as a fact witness, the ruling said.
Piebes was asked whether he thought that “modifying the [system featured in his video] to support two circuits” was obvious, to which he replied “Yes, I did”.
HVO objected on the grounds that Piebes was giving an opinion on whether the patent was obvious or not, and that this prejudiced the jury on that question.
The court overruled the objection, instead issuing a limiting instruction to the jury. The court told jurors that “a witness such as Piebes certainly can offer his observations and explain to you how a system works and what he thinks would occur to him from his perspective would or would not be obvious”.
The jury was also told that such testimony was “not the ultimate question” of obviousness and that it was up to them to decide the matter.
After the jury found in favour of Oxygen Frog on the grounds of obviousness, a court denied HVO’s motion for a new trial as a matter of law.
But the Federal Circuit has now overturned that decision, remarking that the Florida court’s decision not to grant a new trial was “plainly wrong”.
The appeals court applied the law of the US Court of Appeals for the Eleventh Circuit, which requires a new trial where evidentiary errors have “caused substantial prejudice”.
“Although it may be possible for the district court to cure inadmissible testimony by, for example, instructing the jury to disregard it, the limiting instruction in this case was no cure,” the Federal Circuit ruled.
The case has now been remanded back to the Florida court for a new trial.
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