United States Court of Appeals for the Federal Circuit 

2008-1068, -1115 

SUNDANCE, INC. and 

MERLOT TARPAULIN AND SIDEKIT MANUFACTURING COMPANY, INC., 

Plaintiffs-Cross Appellants, 

v. 

DEMONTE FABRICATING LTD. 

and QUICKDRAW TARPAULIN SYSTEMS INC., 

Defendants-Appellants. 

 Thomas C. Wettach, Cohen & Grigsby, P.C., of Pittsburgh, Pennsylvania, argued 

for plaintiffs-cross-appellants. Of counsel on the brief were Kevin J. Heinl and Robert C. 

Brandenburg, Brooks Kushman P.C., of Southfield, Michigan. 

 Richard L. Rainey, Covington & Burling LLP, of Washington, DC, argued for 

defendants-appellants. With him on the brief were Roderick R. McKelvie, Scott C. 

Weidenfeller, and Roger A. Ford. 

Appealed from: United States District Court for the Eastern District of Michigan 

Senior Judge Avern Cohn 
United States Court of Appeals for the Federal Circuit 

2008-1068, -1115 

SUNDANCE, INC. and 

MERLOT TARPAULIN AND SIDEKIT MANUFACTURING COMPANY, INC., 

 Plaintiffs-Cross Appellants, 

v. 

DEMONTE FABRICATING LTD. 

and QUICKDRAW TARPAULIN SYSTEMS, INC., 

Defendants-Appellants. 

Appeals from the United States District Court for the Eastern District of Michigan in 

Case No. 02-CV-73543, Senior Judge Avern Cohn. 

____________________________ 

DECIDED: December 24, 2008 

____________________________ 

Before DYK, PROST, and MOORE, Circuit Judges. 

MOORE, Circuit Judge. 

Plaintiffs-Cross Appellants Sundance, Inc. and Merlot Tarpaulin and Sidekit 

Manufacturing Co., Inc. (collectively, Sundance) sued Defendants-Appellants DeMonte 

Fabricating Ltd. and Quick Draw Tarpaulin Systems, Inc. (collectively, DeMonte) in the 

United States District Court for the Eastern District of Michigan for infringement of claim 

1 of U.S. Patent No. 5,026,109 (the ’109 patent). A jury concluded that claim 1 was 

infringed but invalid for obviousness under 35 U.S.C. § 103. 

Following the jury verdict, Sundance moved for judgment as a matter of law 

(JMOL) that the ’109 patent was not invalid. The court granted Sundance’s motion, and 
denied DeMonte’s motion asking for reconsideration in light of KSR International Co. v. 

Teleflex Inc., 127 S. Ct. 1727 (2007). DeMonte also moved for JMOL of 

noninfringement, which the court denied. DeMonte appeals both rulings. Sundance 

cross-appeals the district court’s denial of prejudgment interest for infringing sales made 

prior to the date it filed suit. For the reasons set forth below, we reverse the district 

court’s judgment that the asserted claims are nonobvious as a matter of law, thereby 

resolving all issues between the parties. 

BACKGROUND 

The ’109 patent is directed to retractable segmented covering systems for 

“almost any structure or container,” such as truck trailers, swimming pools, porches, and 

patios. ’109 patent col.2 ll.35-43. Independent claim 1, the only asserted claim in this 

suit, reads as follows: 

A retractable segmented cover system used with a truck trailer comprising 

a plurality of flexible cover sections with a plurality of substantially parallel 

supporting bows spaced therebetween and a drive assembly, wherein 

each cover section is detachably connected between substantially parallel 

supporting bows, the bows are slideably supported on the truck trailer and 

at least one bow is fixedly connected to the drive assembly such that the 

cover system can be extended or retracted by the drive assembly and 

wherein a cover section can be removed from the cover system 

independent of the other cover sections. 

At trial, relevant to this appeal, DeMonte presented two prior art references to the 

jury as a basis for a determination of obviousness—U.S. Patent Nos. 4,189,178 

(Cramaro) and 3,415,260 (Hall). Cramaro discloses a retractable tarpaulin cover 

system for use in trucks. The parties agree that the difference between the cover 

system disclosed in claim 1 of the ’109 patent and the Cramaro cover system is that 

Cramaro does not include “segmented tarps.” Sundance’s Br. at 26. The parties further 

2008-1068,-1115 2
agree that Hall discloses a cover system divided into a number of “flexible screen 

members.” Id. at 27. Hall indicates that its system “may be used as a truck cover.” Hall 

col.6 l.48. Demonte’s patent law expert, Daniel Bliss, opined that one of ordinary skill in 

the art would be motivated to combine Cramaro and Hall.1 The jury determined that 

claim 1 of the ’109 patent was obvious.

 In a decision rendered before the Supreme Court’s holding in KSR, the district 

court granted Sundance’s motion for JMOL, ruling that “there was not sufficient 

evidence for the jury to conclude that one skilled in the art would have combined Hall 

and Cramaro so as to arrive at the invention—a segmented tarp used for truck covers.” 

Sundance, Inc. v. DeMonte Fabricating Ltd., No. 02-73543, 2006 WL 2708541, at *5 

(E.D. Mich. Sept. 20, 2006). In particular, the district court concluded that Hall was 

“prior art outside of the truck environment which used segmented tarps,” “a segmented 

pool cover,” and “a segmented non truck cover.” Id. at *3-4. 

In its ruling, the court also noted that Mr. Bliss “did not cite any references in 

either [Hall or Cramaro] to support his conclusion” that a person of ordinary skill in the 

art would have a motivation to combine the references. Id. at *5. Nor did the court find 

any “suggestion in the art to combine” Cramaro—which the court characterized as a 

truck cover—with Hall—which the court characterized as a non truck cover. Id. The 

court reasoned that its conclusion—that DeMonte failed to adduce sufficient evidence 

for the jury to conclude that one skilled in the art would have combined Hall and 

Cramaro—was “especially true in light of the fact that the level of skill in the art is low 

 1

 Sundance objected to the admission of the testimony of Mr. Bliss on the 

issues of invalidity and noninfringement, arguing that Mr. Bliss was not qualified as a 

technical expert, but merely a patent law expert. As explained below, the district court 

erroneously admitted the testimony over Sundance’s objection. 

2008-1068,-1115 3
and focuses on tarps used for truck covers.” Id. (emphasis added). The district court 

further stated that “secondary considerations . . . support[] a finding of nonobviousness,” 

including “long-felt but unresolved need” and “copying.” Id. After the Supreme Court 

decided KSR, DeMonte moved for reconsideration, which the district court denied, 

stating that it had not rigidly applied the teaching, suggestion, and motivation test in its 

original analysis.

 DeMonte has timely appealed, and Sundance has timely cross-appealed. We 

have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 

DISCUSSION 

I. 

We first consider the district court’s admission of testimony from DeMonte’s 

patent law expert, Mr. Bliss. Federal Rule of Evidence 702 provides that: 

[i]f scientific, technical, or other specialized knowledge will assist the trier 

of fact to understand the evidence or to determine a fact in issue, a 

witness qualified as an expert by knowledge, skill, experience, training, or 

education may testify thereto in the form of an opinion or otherwise, if 

(1) the testimony is based upon sufficient facts or data, (2) the testimony is 

the product of reliable principles and methods, and (3) the witness has 

applied the principles and methods reliably to the facts. 

Under Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579, 597 (1993), and 

Rule 702, courts are charged with a “gatekeeping role,” the objective of which is to 

ensure that expert testimony admitted into evidence is both reliable and relevant. See 

also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999) (holding that Rule 702 

applies not only to “scientific” testimony, but to all expert testimony). Patent cases, like 

all other cases, are governed by Rule 702. There is, of course, no basis for carving out 

a special rule as to experts in patent cases. 

2008-1068,-1115 4
We note that “[a]dmission of expert testimony is within the discretion of the trial 

court.” Acoustical Design, Inc. v. Control Elecs. Co., 932 F.2d 939, 942 (Fed. Cir. 1991) 

(citing Salem v. U.S. Lines Co., 370 U.S. 31, 35 (1962)). We review the admission of 

expert testimony for an abuse of discretion. Id. (citing Seattle Box Co. v. Indus. Crating 

& Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)); see also Kumho Tire Co., 526 U.S. 

at 152 (“[A] court of appeals is to apply an abuse-of-discretion standard when it reviews 

a trial court’s decision to admit or exclude expert testimony.”). 

DeMonte submitted the expert report of Mr. Bliss to the district court, indicating 

that Mr. Bliss would opine on: USPTO practices and procedures (eight pages explaining 

prosecution and reexamination); claim construction (four pages interpreting the claim 

construction ruling); noninfringement (seven pages concluding that the claims of the 

’109 patent are not infringed); invalidity, including anticipation and obviousness (thirteen 

pages concluding that the claims of the ’109 patent are invalid); and inequitable conduct 

(six pages concluding that the ’109 patent is unenforceable due to inequitable conduct). 

Expert Report of Daniel H. Bliss (Docket No. 99-4, Mar. 28, 2006) (Report). Sundance 

objected, filing a motion in limine to preclude Mr. Bliss from testifying at trial. Sundance 

argued that Mr. Bliss “lacks appropriate technical background in the field of the 

invention.” Sundance also argued that Mr. Bliss was not qualified to testify about “his 

interpretation of the law governing invalidity, infringement,” or ultimate legal conclusions. 

Opposing the motion, DeMonte argued that Mr. Bliss was qualified because he 

“is a patent attorney with extensive experience in patent law and procedure,” and that 

his testimony was admissible because courts may allow patent law experts to testify on 

“general procedures involved in the patent application process,” citing Bausch & Lomb, 

2008-1068,-1115 5
Inc. v. Alcon Laboratories, Inc., 79 F. Supp. 2d 252, 254-55 (W.D.N.Y. 2000). DeMonte 

further argued that Mr. Bliss’s testimony should be admitted even though “Mr. Bliss may 

not have experience specifically with segmented tarpaulin systems” because his 

qualifications are “an appropriate subject for cross examination, but would go more to 

the weight to be given his testimony,” citing Cameco Industries, Inc. v. Louisiana Cane 

Manufacturing, Inc., No. 92-3158, 1995 U.S. Dist. LEXIS 11294, at *10-11 (E.D. La. July 

27, 1995). The district court denied the motion in limine without comment, thereby 

permitting Mr. Bliss to testify before the jury on all of the issues submitted in his expert 

report. 

Although the motion in limine was denied in its entirety, Mr. Bliss did not actually 

testify as to all of the matters contained in his report. Mr. Bliss “was not asked to testify 

in general on patent office practice and procedure.” Oral Arg. 1:23-1:27, available at 

http://oralarguments.cafc.uscourts.gov/mp3/2008-1068.mp3. 2 Rather, his testimony 

focused on the issues of noninfringement and invalidity, including the factual predicates 

underlying obviousness as well as his conclusion that claim 1 of the ’109 patent would 

have been obvious. 

In their appellate briefs and during oral argument, the parties disputed whether 

the district court properly admitted the testimony of Mr. Bliss on the issues of 

noninfringement and invalidity. Sundance argues that “[a]lthough DeMonte refers to Mr. 

Bliss as a technical expert, he has no technical experience in the field of truck[s] or 

tarps and practiced as an engineer for but a year and a half in unrelated areas. He was 

 2

 We have no reason to doubt that Mr. Bliss—an experienced patent 

attorney—is qualified to testify as to patent office procedure generally. See Bausch & 

Lomb, Inc., 79 F. Supp. 2d at 254-55 (allowing testimony directed to general procedures 

involved in the patent application process).

2008-1068,-1115 6
not qualified at trial as a technical expert.” Sundance’s Br. at 14 n.4. DeMonte 

responded that “reliance on a ‘patent expert’ for ‘an opinion on the ultimate question,’ 

such as infringement or invalidity, is entirely appropriate.” DeMonte’s Reply Br. at 5 n.1 

(citing Snellman v. Ricoh Co., 862 F.2d 283, 287 (Fed. Cir. 1988)). 

We conclude that the district court abused its discretion in denying Sundance’s 

motion in limine; Mr. Bliss is not qualified to testify as an expert witness on the issues of 

infringement or validity. These issues are analyzed in great part from the perspective of 

a person of ordinary skill in the art, and testimony explaining the technical evidence 

from that perspective may be of great utility to the factfinder.3

 

Despite the absence of any suggestion of relevant technical expertise, Mr. Bliss 

offered expert testimony on several issues which are exclusively determined from the 

perspective of ordinary skill in the art. In elaborate technical detail, Mr. Bliss opined on 

how the disclosed invention, accused system, and prior art operate, including his 

opinions as to the noninfringement and invalidity of claim 1 of the ’109 patent. 

 3

 Patent claims are construed from the perspective of one of ordinary skill in 

the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). For the 

purposes of the doctrine of equivalents, identification of the claim elements as well as 

the determination of infringement itself are done from the perspective of one of ordinary 

skill in the art. See AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1329 

(Fed. Cir. 2007) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 

609 (1950)). What a prior art reference discloses or teaches is determined from the 

perspective of one of ordinary skill in the art. Scripps Clinic & Research Found. v. 

Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) (“There must be no difference 

between the claimed invention and the reference disclosure, as viewed by a person of 

ordinary skill in the field of the invention.”). Whether a patent claim would have been 

obvious in light of prior art references is determined from the perspective of one of 

ordinary skill in the art. See KSR, 127 S. Ct. at 1742 (2007) (emphasizing that, in 

determining whether a patent combining known elements would have been obvious, the 

focal question is whether the combination was obvious to a person with ordinary skill in 

the art). 

2008-1068,-1115 7
DeMonte failed to explain how Mr. Bliss possesses the relevant expertise in the 

pertinent art.4

 Mr. Bliss has no experience whatsoever in “the field of tarps or covers.” 

Nor does DeMonte purport that Mr. Bliss’s experience with engines and the like is 

sufficiently related to covers. See Cameco Indus., 1995 U.S. Dist. LEXIS 11294, at *10-

11 (finding that expert’s education and experience were “sufficiently related to the 

subject matter of plaintiff’s patent to allow him to speak with authority on the issues of 

validity and infringement”). Mr. Bliss is not “qualified as an expert by knowledge, skill, 

experience, training, or education” in the pertinent art; we therefore fail to see how he 

could “assist the trier of fact to understand the evidence or to determine a fact in issue.” 

Fed. R. Evid. 702. 

 4

 In its opening brief, DeMonte described Mr. Bliss as its “technical expert.” 

DeMonte’s Br. at 24. Nonetheless, the record clearly indicates that DeMonte at all 

times proffered Mr. Bliss as a patent law expert, and not as a technical expert. In 

response to Sundance’s interrogatories, DeMonte stated: “As to Daniel H. Bliss, the 

witness will be called to testify as a patent expert.” Def.’s Fourth Supp. Resp. to Pls.’ 

First Set of Interrogs. to Defs. at 3 (emphasis added). DeMonte’s response to 

Sundance’s motion in limine presents Mr. Bliss as “a patent attorney with extensive 

experience in patent law and procedure,” without any reference to his technical 

background. DeMonte did not suggest that Mr. Bliss was one of ordinary skill in the art 

or a technical expert. Rather it relied upon examples where patent law experts have 

been permitted in district courts to offer testimony on claim construction, infringement 

and validity, citing Bausch & Lomb and Cameco. 

Mr. Bliss’s pre-trial expert report details his years of experience as a patent 

attorney, including preparation of opinions on invalidity and knowledge of USPTO 

practice and procedure. Report at 3. The report does not present Mr. Bliss as having 

any personal technical experience, or skills in the field of mechanics, much less covers. 

Although Mr. Bliss also stated in his report that he has experience in “the vehicle field,” 

support for this statement was only in the context of preparing and prosecuting patent 

applications for inventions in the vehicle field and in testifying “as an expert on patent 

law and patent office procedure” in connection with a separate suit also related to the 

vehicle field. Id. at 3. Nor does his appended curriculum vitae reveal any relevant 

technical experience with vehicle or other cover systems. Id. at 50. Indeed, his report 

opines that the level of ordinary skill in the art “would be someone with a high school 

education and one or more years of experience in the field of tarps or covers”—

experience that he himself lacks. Id. at 40. 

2008-1068,-1115 8
Admitting testimony from a person such as Mr. Bliss, with no skill in the pertinent 

art, serves only to cause mischief and confuse the factfinder. Unless a patent lawyer is 

also a qualified technical expert, his testimony on these kinds of technical issues is 

improper and thus inadmissible. Because Mr. Bliss was never offered as a technical 

expert, and in fact was not qualified as a technical expert, it was an abuse of discretion 

for the district court to permit him to testify as an expert on the issues of 

noninfringement or invalidity. 

DeMonte relies on Snellman, 862 F.2d at 287, for the proposition that we 

previously allowed patent law experts to testify on the meaning of technical terms in 

claims and to give opinions on ultimate questions of infringement and invalidity. 

DeMonte mischaracterizes our holding in Snellman. In Snellman, we acknowledged 

that there was substantial evidence to uphold the jury verdict which included testimony 

from a patent law expert. Neither party raised the admissibility of the patent lawyer’s 

testimony nor did we address this issue. The opinion mentions the patent lawyer’s 

testimony in just two sentences without any analysis of the propriety of such testimony. 

See United States v. L.A. Tucker Truck Lines, Inc., 344 U.S. 33, 38 (1952) (holding that 

an issue neither “raised in briefs or argument nor discussed in the opinion of the Court” 

cannot be taken as “a binding precedent on this point”). 

We have on several occasions upheld a district court’s exclusion of testimony by 

a patent law expert. See, e.g., Medtronic Inc. v. Intermedics, Inc., 799 F.2d 734, 741 

(Fed. Cir. 1986) (determining no abuse of discretion where trial court excluded patent 

law expert’s testimony relating to the infringement of the asserted claims); see also

Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1572 (Fed. Cir. 1984) (agreeing 

2008-1068,-1115 9
with a district court that gave little weight to the opinion of a former patent attorney with 

no “expertise as to the scope of the field of endeavor of the inventions of the patents in 

suit or as to what other fields are analogous art”); Endress + Hauser, Inc. v. Hawk 

Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (“Indeed, this court 

has on numerous occasions noted the impropriety of patent lawyers testifying as expert 

witnesses and giving their opinion regarding the proper interpretation of a claim as a 

matter of law, the ultimate issue for the court to decide.”). In light of all the contrary 

precedent and the non-existent analysis in Snellman, we conclude that Snellman does 

not control the disposition in this case. 

We hold that it is an abuse of discretion to permit a witness to testify as an expert 

on the issues of noninfringement or invalidity unless that witness is qualified as an 

expert in the pertinent art. Testimony proffered by a witness lacking the relevant 

technical expertise fails the standard of admissibility under Fed. R. Evid. 702. Indeed, 

where an issue calls for consideration of evidence from the perspective of one of 

ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the 

issue who is not qualified as a technical expert in that art. We understand that patent 

lawyers are often qualified to testify as technical experts, but such a qualification must 

derive from a lawyer’s technical qualifications in the pertinent art. 

We do not, of course, suggest that being a person of ordinary skill in the art 

automatically entitles a witness to testify as an expert on these or other matters. On the 

other hand, our opinion should not be read as suggesting that Rule 702 requires a 

witness to possess something more than ordinary skill in the art to testify as an expert. 

A witness possessing merely ordinary skill will often be qualified to present expert 

2008-1068,-1115 10
testimony both in patent trials and more generally. See Fed. R. Evid. 702; see also

United States v. Wilson, 484 F.3d 267, 275-77 (4th Cir. 2007) (district court did not 

abuse discretion under Rule 702 by permitting police officer to testify as to the meaning 

of coded drug language); United States v. Marler, 614 F.2d 47, 49-50 (5th Cir. 1980) 

(district court did not err by permitting deputy fire marshal to offer expert testimony on 

cause of fire). Admission of expert testimony remains subject to the Rules of Evidence 

and is committed to the discretion of the district court. Fed. R. Evid. 702; Acoustical 

Design, 932 F.2d at 942.5

With regard to invalidity, for example, a witness not qualified in the pertinent art 

may not testify as an expert as to anticipation, or any of the underlying questions, such 

as the nature of the claimed invention, what a prior art references discloses, or whether 

the asserted claims read on the prior art reference. See Acoustical Design, 932 F.2d at 

942 (sustaining trial court’s preclusion of patent expert from testifying about the drafting 

of claims to avoid prior art and that the claims in suit read on the prior art, as it would 

not have been of any benefit to the jury). 

Nor may a witness not qualified in the pertinent art testify as an expert on 

obviousness,6 or any of the underlying technical questions, such as the nature of the 

 5

 Those of ordinary skill (or those of extraordinary skill) in the particular art 

are not, of course, the only witnesses who may testify as experts in a patent trial. For 

example, patent lawyers might offer testimony in contexts other than noninfringement 

and invalidity, such as patent office practice and procedure; a chemist not skilled in the 

particular art at issue might nevertheless appropriately testify as an expert as to the 

consequences of reacting two chemicals in a particular environment. 

6

 Our holding that it was an abuse of discretion to allow Mr. Bliss to testify 

on several issues including his opinion on the legal question of obviousness is not a 

general proclamation as to the admissibility of expert testimony on legal questions. The 

error here arises from Mr. Bliss’s lack of appropriate technical qualifications. Whether a 

qualified technical expert can testify as to the ultimate question of obviousness is of 

2008-1068,-1115 11
claimed invention, the scope and content of prior art, the differences between the 

claimed invention and the prior art, or the motivation of one of ordinary skill in the art to 

combine these references to achieve the claimed invention. See Medtronic, 799 F.2d at 

741; In re Deters, 515 F.2d 1152, 1155 (CCPA 1975) (rejecting patent expert testimony 

on nonobviousness where patent expert was not a person ordinarily skilled in the art 

and thus his opinion was “not evidence entitled to any weight in resolving the issue”). 

DeMonte has failed to demonstrate any possible relevancy or reliability of Mr. 

Bliss’s testimony as to technical matters in light of his lack of relevant technical 

expertise.7

 Mr. Bliss lacks the necessary expertise to be of assistance to the court or 

the jury on the technical aspects of this case. The court, in its role as gatekeeper, must 

exclude expert testimony that is not reliable and not specialized, and which invades the 

 

course left to the discretion of the district court. We note, however, that our court has 

held that allowing a witness to testify before the jury on claim construction would be 

improper. See Cytologix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172 (Fed. 

Cir. 2005) (noting that “[t]he risk of confusing the jury is high when experts opine on 

claim construction” before the jury); see also Endress + Hauser, 122 F.3d at 1042. 

7

 Notably, the District of Delaware has issued guidelines restricting the 

scope of patent law expert testimony to practice and procedure in the Patent and 

Trademark Office rather than legal issues and conclusions in an effort to prevent overly 

expansive expert testimony that may usurp the jury and judge’s roles. See Guidelines: 

Legal Expert Testimony in Patent Cases, 

http://www.ded.uscourts.gov/SLR/Misc/Guidelines.pdf (last visited Dec. 9, 2008); John 

E. Kidd & Keeto H. Sabharwal, The District of Delaware: An Ideal Venue for Patent 

Litigators, 18 Del. Law. 16, 17 (Winter 2000); see also Nisus Corp. v. Perma-Chink Sys, 

Inc., No. 3:03-CV-120, 2005 U.S. Dist. LEXIS 41068, at *10 (E.D. Tenn. May 27, 2005) 

(limiting patent expert’s testimony just to USPTO practice and procedures); Minn. 

Mining & Mfg. Co. v. Appleton Papers, Inc., No. 4-95-786, 1998 U.S. Dist. LEXIS 22597, 

at *4-5 (D. Minn. June 25, 2008) (allowing a former patent examiner with a degree in 

electrical engineering to testify as to USPTO procedure, but not as to claim 

construction, infringement, or validity, because he had “not shown that he [wa]s 

qualified to offer opinions from the perspective of a person of ordinary skill in the 

relevant art”). 

2008-1068,-1115 12
province of the jury to find facts and that of the court to make ultimate legal conclusions. 

Allowing a patent law expert without any technical expertise to testify on the issues of 

infringement and validity amounts to nothing more than advocacy from the witness 

stand.8

 The district court’s denial of the motion in limine to exclude the testimony of Mr. 

Bliss, a person not skilled in the pertinent art, was an abuse of discretion. 

II. 

We now consider the district court’s entry of JMOL overturning the jury verdict of 

obviousness. Under Sixth Circuit law, we review a grant of a motion for JMOL de novo, 

using the same standard of review required of the district court. Johnson Controls, Inc. 

v. Jay Indus. Inc., 459 F.3d 717, 722 (6th Cir. 2006). JMOL is appropriate when viewing 

the evidence in a light most favorable to the non-moving party—giving that party the 

benefit of all reasonable inferences—there is no genuine issue of material fact for the 

jury, and reasonable minds could come to but one conclusion in favor of the moving 

party. Barnes v. City of Cincinnati, 401 F.3d 729, 736 (6th Cir. 2005) (citations omitted). 

The consequence of our holding that the testimony of Mr. Bliss should have been 

excluded is that there was no expert testimony supporting a holding of obviousness; we 

conclude, however, that no such testimony was required because there are no 

 8

 “Expert evidence can be both powerful and quite misleading because of 

the difficulty in evaluating it.” Daubert, 509 U.S. at 595. This concern is further 

compounded where the purported witness is an attorney. It is already difficult enough 

for courts to separate intricate questions of fact in patent cases from equally intricate 

questions of law. A technically unqualified patent attorney can do much mischief by 

leading the jury to seemingly sound conclusions without ever providing a well-grounded 

factual basis in the pertinent art. See Bausch & Lomb, Inc., 79 F. Supp. 2d at 255 

(“Simply put, testimony that is designed to instruct the jury on the applicable law is not 

admissible because, by purporting to do what lies with the exclusive province of the 

court, it cannot be helpful to the jury.”). 

2008-1068,-1115 13
underlying factual issues in dispute as to obviousness. The technology is simple and 

neither party claims that expert testimony is required to support such a holding. See

Union Carbide, 724 F.2d at 1573 (“[T]he references and appellant’s invention are easily 

understandable without the need for expert explanatory testimony.”); see also Centricut, 

LLC v. Esab Group, Inc., 390 F.3d 1361, 1369-70 (Fed. Cir. 2004); Iron Grip Barbell 

Co., v. USA Sports, Inc., 392 F.3d 1317, 1323 n.3 (Fed. Cir. 2004). We reverse the 

district court’s grant of JMOL and conclude as a matter of law that claim 1 of the ’109 

patent would have been obvious and is therefore invalid. See KSR, 127 S. Ct. at 1745-

46 (“The ultimate judgment of obviousness is a legal determination.”). The factual 

inquiries underlying our determination of obviousness are not in material dispute 

regardless of the admissibility of the testimony of Mr. Bliss. See id. (“Where, as here, 

the content of the prior art, the scope of the patent claim, and the level of ordinary skill 

in the art are not in material dispute, and the obviousness of the claim is apparent in 

light of these factors, summary judgment is appropriate.”). 

A. 

On appeal, Sundance argues that the combination of Cramaro and Hall does not 

disclose every limitation of claim 1 of the ’109 patent. There is no dispute that Cramaro 

discloses a truck cover including every limitation of claim 1 except “a cover section [that] 

can be removed from the cover system independent of the other cover sections.” The 

district court construed the word “independent” to mean that “any one cover section can 

be removed from the cover system without removing any other cover section,” a 

definition that neither party challenges. The parties do not dispute that Hall discloses a 

cover made up of a number of cover sections. Rather, Sundance argues that any 

2008-1068,-1115 14
particular cover section of Hall cannot be removed “without removing any other cover 

section.” Sundance contends that, in order to remove one of the cover sections in Hall, 

a face plate must be completely removed such that the adjoining edge of adjacent 

sections will drape and that they will no longer be part of the cover. In other words, the 

process of removing one cover section of the Hall invention requires releasing one edge 

of the adjacent cover sections, and these adjacent cover sections are then left hanging 

from the cover frame. Oral Arg. at 22:10-23:15. According to Sundance, these hanging 

cover sections are no longer part of the cover, and thus the section that had been 

between the two hanging sections could not have been removed “without removing any 

other cover section.” 

Even accepting Sundance’s explanation of how the cover in Hall operates, there 

is no serious dispute that in Hall, a cover section can be removed independent of the 

other cover sections. The question is not whether the hanging sections are part of the 

cover; the question is whether the hanging sections have been removed. After a first 

section is removed, the two cover sections adjacent to the first section are still attached 

to the cover—they have not been removed. Thus, a combination of Hall and Cramaro 

satisfies every limitation of claim 1 of the ’109 patent. We next turn to whether the 

combination would have been obvious at the time of the invention. 

B. 

The district court’s decision to overturn the jury verdict was based upon its 

misunderstanding of Hall as “prior art outside of the truck environment which used 

segmented tarps.” Sundance, 2006 WL 2708541 at *3-4 (describing Hall as “a 

segmented pool cover” and “a segmented non truck cover”). Sundance does not 

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dispute that this determination was an error, doubtless because Hall explicitly and 

repeatedly suggests that its cover system may be used as a truck covering. In the “field 

of the invention” section of the specification, the patent states that a “field of art to which 

this invention might pertain is the general class of land vehicles, bodies and tops and in 

particular to the general subclass of tops and more particularly to load covers and 

collapsible standing tops.” Hall col.1 ll.29-34. The specification also describes one 

preferred embodiment of the Hall invention as being “used as a truck cover which may 

be moved to the cab or toward the end of the truck as desired.” Id. at col.6 ll.48-50. 

The specification further notes that “[i]t is, of course, realized that this type of structure 

may be used to provide an expandable cover for trucks.” Id. at col.6 ll.66-67.9 The 

district court based its grant of JMOL on a lack of motivation to combine Cramaro and 

Hall, a conclusion which itself was based on the district court’s misunderstanding of Hall 

as not within the scope of the relevant art. 

 “[I]n many cases a person of ordinary skill will be able to fit the teachings of 

multiple patents together like pieces of a puzzle.” KSR, 127 S. Ct. at 1742. Such a 

combination is more likely to be obvious where it “‘simply arranges old elements with 

each performing the same function it had been known to perform’ and yields no more 

than one would expect from such an arrangement.” Id. at 1740 (quoting Sakraida v. AG 

Pro, Inc., 425 U.S. 273, 282 (1976)). The truck cover of claim 1 of the ’109 patent is the 

result of precisely such an obvious combination. 

 9

 In addition, the ’109 patent itself clearly discloses that its invention is not 

limited for use in truck environments and can be used with swimming pools, just like the 

Hall invention. See ’109 patent col.2 ll.29-40 (“For example, the present cover system 

could be used as an awning over a porch or patio, or as a cover for a swimming pool.”). 

2008-1068,-1115 16
In combination with each other, the cover system of Cramaro performs exactly 

the function that it performs independent of Hall, and the removable cover sections of 

Hall perform exactly the function that they perform independent of Cramaro. The 

elements of the cover system of Cramaro perform several functions, including protection 

of the cargo, containment of the cargo, and retraction of the cover. None of these 

functions changes upon the simple act of replacing the one-piece cover of Cramaro with 

the segmented cover of Hall. The segmented cover of Hall performs the function of 

allowing individual replacement of the cover sections. This function does not change 

upon incorporation into the Cramaro cover system. The combination simply 

mechanizes Hall’s segmented cover or segments Cramaro’s mechanized cover. 

In KSR, the Court considered the obviousness of a claim directed to an 

adjustable automobile throttle pedal combined with an electronic sensor. The relevant 

prior art included a patent that disclosed an adjustable pedal and another that disclosed 

an electronic sensor. The Court held that it saw “little difference between the teachings 

of [the relevant prior art] and the adjustable electronic pedal disclosed in [the claim]. A 

person having ordinary skill in the art could have combined [the adjustable pedal] with a 

pedal position sensor in a fashion encompassed by [the claim], and would have seen 

the benefits of doing so.” KSR, 127 S. Ct. at 1743. 

Just as with the claim at issue in KSR, the segmented truck cover claimed in the 

’109 patent represents the “mere application of a known technique to a piece of prior art 

ready for the improvement.” Id. at 1740. It would have been obvious to replace the 

one-piece cover in Cramaro with the segmented cover of Hall. Indeed, the benefits of 

combining Hall and Cramaro would have been inescapably obvious to a person of 

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ordinary skill in the art at the time of the invention of the truck cover claimed in the ’109 

patent. Adding the removable cover sections of Hall to Cramaro would give the 

resulting design exactly the same benefit as Hall—individually replaceable cover 

sections. Neither party has suggested that the combination of the removable cover 

sections of Hall with the cover system of Cramaro yields anything “more than one would 

expect from such an arrangement,” nor is any such result apparent. Sakraida, 425 U.S. 

at 282. 

The ’109 patent explains that “it would be desirable to have a retractable cover 

system wherein only the damaged portion could easily be removed and replaced 

without replacing or disassembling the entire cover system.” ’109 patent col.2 ll.12-17. 

Hall explained that its segmented cover “can be prefabricated for ready assembly and 

that replacement and repair is easily provided for.” Hall col.6 ll.28-32. The remaining 

work to incorporate the replaceable cover sections of Hall into the design of Cramaro is 

“the work of the skillful mechanic, not that of the inventor.” Sakraida, 425 U.S. at 282 

(quoting Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 267 (1851)). We conclude 

that a cover designer of ordinary skill, at the time of the invention, would have found it 

obvious to incorporate the removable cover sections of Hall into the cover system of 

Cramaro. 

Secondary considerations of nonobviousness—considered here by the district 

court—simply cannot overcome this strong prima facie case of obviousness. Agrizap, 

Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008); see also Anderson’sBlack Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 61 (1969) (considering 

argument of secondary considerations but holding that “those matters without invention 

2008-1068,-1115 18
will not make patentability”); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 

1162 (Fed. Cir. 2007) (holding that the objective considerations of nonobviousness 

presented, including substantial evidence of commercial success, praise, and long-felt 

need, were inadequate to overcome a strong showing of primary considerations that 

rendered the claims at issue invalid); Dystar Textilfarben GMBH & Co. Deutschland KG 

v. C.H. Patrick Co., 464 F.3d 1356, 1371 (Fed. Cir. 2006) (“The presence of certain 

secondary considerations of nonobviousness are insufficient as a matter of law to 

overcome our conclusion that the evidence only supports a legal conclusion that claim 1 

would have been obvious.”). Based on the foregoing, we reverse the district court’s 

holding that the asserted claims are nonobvious as a matter of law. 

CONCLUSION 

Because we hold as a matter of law that claim 1 of the ’109 patent is invalid for 

obviousness, we need not address the issues of infringement or prejudgment interest. 

The judgment below is 

REVERSED.

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