Reexamination Control No. 90/005,742
Patent 5,253,341
1 Finally, Dr. Koopman's conclusory testimony will be given weight only to the extent it
2 has support in the documentary evidence. See Rohm & Haas. v. Co. v. Brotech Corp., 127 F.3d
3 1089, 1092, 44 SPQ2d 1459, 1462 (Fed. Cir. 1997):
4 While an expert may testify to the ultimate issue in a case without
5 giving the basis for that opinion, Fed. R. Evid. 704, 705, nothing in the
6 rules requires a fact finder to accept this conclusion. InSymbol
7 Technologies [v. Opticon, Inc., 935 F.2d 1569, 1582, 19 USPQ2d 1241,
8 1250 (Fed. Cir. 1991)], this court explained the distinction between a
9 proffer of evidence and the sufficiency of the proffered evidence: "In
10 short, [the patentee] was permitted to rest its prima facie case on [the]
11 expert testimony, including charts, that the patents were infringed, and the
12 District Court was free to accept or reject that evidence." 935 F.2d at
13 1576. Nothing in the rules or in our jurisprudence requires the fact finder
14 to credit the unsupported assertions of an expert witness.
15
16 See also In re Wright, 999 F.2d 1557, 1563, 27 USPQ2d 1510, 1514 (Fed. Cir. 1993)("each of
17 these affidavits fails in its purpose because each merely contains unsupported conclusory
18 statements as to the ultimate legal question").
19 K. The allegations of commercial success
20 A determination of obviousness requires consideration of any objective evidence of
21 nonobviousness. See In re Huang, 100 F.3d 135, 138, 40 USPQ2d 1685, 1687-88 (Fed. Cir.
22 1996):
23 The ultimate determination as to whether or not an invention is obvious is
24 a legal conclusion based on underlying factual inquiries including: (1) the
25 scope and content of the prior art; (2) the level of ordinary skill in the art;
26 (3) the differences between the claimed invention and the prior art; and
27 (4) objective evidence of nonobviousness. Graham v. John Deere Co.,
28 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
29
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