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Volume XII, Number 146

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Federal Circuit Drills Down on Ordinary Skill Requirement in Vacating ITC Infringement Determination

In Kyocera Senco Indus. Tools Inc. v. ITC, No. 20-1046 (Fed. Cir. Jan. 21, 2022), the Federal Circuit vacated and remanded an International Trade Commission decision finding that Koki Holdings America Ltd. infringed Kyocera’s drilling tool patent.

The Federal Circuit’s decision was based in part on its finding that the Administrative Law Judge (“ALJ”) abused his discretion by admitting any testimony from Kyocera’s expert.  The parties agreed that a person of ordinary skill in the art (“POSA”) that required at least two years’ experience designing power nailers. Because Kyocera’s expert had no experience in power-nailer design, the ALJ excluded his testimony on infringement under the doctrine of equivalents, but nevertheless allowed him to testify regarding literal infringement. The Federal Circuit explained that an expert must possess at least ordinary skill in the art to testify from the perspective of a POSA. Kyocera’s expert did not have the requisite skill, and, as a result, his testimony regarding any issue (including literal infringement) analyzed through the lens of a POSA was neither relevant, nor reliable. Therefore, the Court found that the ALJ abused its discretion in admitting the expert’s testimony regarding literal infringement.

© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XII, Number 26
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About this Author

Law Clerk

Angeline Premraj is a law clerk in Finnegan’s Washington, DC office.

202-408-4174
Caitlin O’Connell Intellectual Property Litigation Attorney Finnegan Law Firm
Associate

Caitlin O’Connell focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Caitlin is involved in all phases of litigation, including pre-litigation analysis, claim construction, fact discovery, expert discovery, and trial. Caitlin’s litigation experience includes drafting pleadings, preparing fact and corporate witnesses for depositions, coordinating discovery, working with experts to develop infringement and validity positions, preparing expert...

202 408 4004
Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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