The Intellectual Property Strategist
"Sundance v. DeMonte: Federal Circuit Overrules District Court’s Holding Of Non-obviousness"
On Dec. 24, 2008, the Federal Circuit issued its decision in Sundance v. DeMonte, 2008 WL 5351734 (Fed. Cir. 2008), overruling the district court’s holding of non-obviousness. Applying the standard set forth in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Federal Circuit found that the patent was an obvious combination of the prior art and noted that the district court committed two errors by: 1) erroneously allowing a patent attorney, who was not skilled in the relevant technology, to testify regarding obviousness; and 2) vacating the jury verdict of obviousness and granting judgment as a matter of law on non-obviousness, based on its erroneous interpretation of the prior art. The Federal Circuit also held a patent attorney, lacking the relevant expertise, could not testify as an expert witness regarding non-infringement and invalidity.