Sundance, Inc. v. DeMonte Fabricating, Ltd.

Sundance, Inc., and Merlot Tarpaulin and Sidekit Manufacturing Co., Inc. (collectively, Sundance) (plaintiffs) filed a patent-infringement lawsuit in federal court against DeMonte Fabricating Ltd. and Quick Draw Tarpaulin Systems, Inc. (collectively, DeMonte) (defendants). The lawsuit alleged that DeMonte infringed on Claim 1 of United States Patent No. 5,026,109 (the 109 patent). Prior to trial, DeMonte provided Sundance and the district court with the report of its patent-law expert, patent lawyer Charles Bliss. Bliss’s report listed the issues about which he intended to testify as an expert. Sundance filed a motion in limine seeking to prohibit Bliss from testifying as an expert at trial because he lacked the necessary qualifications or background. In response, DeMonte argued that Bliss’s extensive experience as a patent lawyer qualified Bliss as an expert but did not argue that Bliss had any specialized knowledge of the pertinent art. The district court denied the motion in limine and permitted Bliss to testify at trial. Bliss testified in detail about technical matters and offered legal opinions to the jury about the claims of noninfringement and invalidity. Bliss asserted that a person of ordinary skill would likely combine prior art, a conclusion that supported DeMonte’s argument that Claim 1 of the 109 patent was invalid for obviousness. The jury found that although DeMonte had infringed Claim 1 of the 109 patent, the claim was invalid for obviousness. Sundance appealed.