One of the hardest parts of being a patent litigator is that all of your stories are boring. With enough hand gestures and elbows to the rib you can sometimes get a polite chuckle from a colleague, but normals? Fuhgedaboutit.
Because of this, I've always felt a certain kinship with PTO experts. There is a robust body of law in the district about what exactly they can testify to, but my rule of thumb has always been that the more boring the testimony, the more likely it is to be admissible. Judge Williams had an interesting opinion unsealed today dealing with a pair of Daubert motions directed to both parties experts on patent office procedures. Let's see how my little rule holds up.
Expert the first offered rebuttal expert opinion on inventorship:
Mr. Stoll, who has nearly thirty years of experience at the USPTO . . . refutes Dr. Cooper’s conclusions on inventorship through detailed explanations "related to the ins and outs of internal PTO practices and procedures.” Mr. Stoll’s opinions also include an explanation that the request to correct inventorship and signed statements by the named inventors complied with all of the relevant regulations and guidelines of the USPTO and were properly accepted as such, as is evidenced by the USPTO Director’s issuance of the certificates of correction to inventorship.
Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-GBW, at 7 (D. Del. May 2, 2023) (Mem. Order) (cleaned up).
"[I]ns and outs of internal PTO practices," "compliance with the relevant guidelines" -- sounds pretty boring to me. This testimony gets in!
Expert the second, on the other hand, put a bit more of a dramatic spin on his testimony relating to