experts || experts in patent cases

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Experts in Patent Cases Author(s): Roy E. Hofer Source: Litigation, Vol. 8, No. 2, EXPERTS (Winter 1982), pp. 44-46, 61-62 Published by: American Bar Association Stable URL: http://www.jstor.org/stable/29758691 . Accessed: 14/06/2014 09:38 Your use of the JSTOR archive indicates your acceptance of the Terms & Conditions of Use, available at . http://www.jstor.org/page/info/about/policies/terms.jsp . JSTOR is a not-for-profit service that helps scholars, researchers, and students discover, use, and build upon a wide range of content in a trusted digital archive. We use information technology and tools to increase productivity and facilitate new forms of scholarship. For more information about JSTOR, please contact [email protected]. . American Bar Association is collaborating with JSTOR to digitize, preserve and extend access to Litigation. http://www.jstor.org This content downloaded from 195.78.108.163 on Sat, 14 Jun 2014 09:38:13 AM All use subject to JSTOR Terms and Conditions

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Page 1: EXPERTS || Experts in Patent Cases

Experts in Patent CasesAuthor(s): Roy E. HoferSource: Litigation, Vol. 8, No. 2, EXPERTS (Winter 1982), pp. 44-46, 61-62Published by: American Bar AssociationStable URL: http://www.jstor.org/stable/29758691 .

Accessed: 14/06/2014 09:38

Your use of the JSTOR archive indicates your acceptance of the Terms & Conditions of Use, available at .http://www.jstor.org/page/info/about/policies/terms.jsp

.JSTOR is a not-for-profit service that helps scholars, researchers, and students discover, use, and build upon a wide range ofcontent in a trusted digital archive. We use information technology and tools to increase productivity and facilitate new formsof scholarship. For more information about JSTOR, please contact [email protected].

.

American Bar Association is collaborating with JSTOR to digitize, preserve and extend access to Litigation.

http://www.jstor.org

This content downloaded from 195.78.108.163 on Sat, 14 Jun 2014 09:38:13 AMAll use subject to JSTOR Terms and Conditions

Page 2: EXPERTS || Experts in Patent Cases

Experts in Patent Cases

b> RoyE.Hofer Are the results in patent infringement cases different when the case is tried by a jury instead of a federal judge? The available data demonstrate that the answer is a resounding "yes." In all patent cases decided in federal courts during a five-year period ending June 30, 1979, federal judges held 67 percent of the patents invalid, while juries found 61.5 percent valid. Thus, as a general rule, the patent owner in federal court is a two to one favorite in a jury trial and the underdog in a bench trial.

Despite the odds against the patent owner most patent cases still follow the customary approach?a bench trial.

However, recognizing that there is a two out of three chance that a federal judge will conclude that the patent is invalid should influence the litigant's trial strategy, and

especially the selection and use of experts. Patent cases generally present two basic issues: is the

patent valid? Has it been infringed? The crux of the validi?

ty issue is usually the prior art (patents, literature, and other public knowledge). The defendant contends that the

prior art either rendered the invention obvious to one with

ordinary skill in the art, or discloses that the invention is not novel, or both. To understand these issues, the trier of fact must understand the relevant technology. A technical

expert is well suited to the task. Generally, the infringe? ment issue is also technical and likewise will require a technical expert.

The validity issue also embraces the much abused "fraud on the Patent Office" defense?the defendant con? tends that the plaintiff-owner misrepresented the facts to the Patent Office so that the patent examiner was misled and erroneously issued the patent. To understand this

issue, the trier of fact needs to understand in general terms the procedures of the Patent Office and the obligations of disclosure imposed on the inventor and patent owner dur?

ing the Patent Office proceedings. A patent lawyer can ex?

plain that process.

The author is a member of Hume, Clement, Brinks, Willian & Olds, Ltd. in Chicago.

Most patent infringement trials land in federal court. The issues are validity and infringement, and they are bench trials. How should the attorney for the inventor or

patent owner select expert witnesses? The client is a full

fledged, certified underdog: his chances of success are about one in three. To convince the judge that the patent has merit, only all out effort will work.

The fact that the client's patent has a presumption of

validity (35 U.S.C. ? 282) is not much help because fed? eral judges frequently ignore it. A recent case tried for a

patent owner before an experienced federal judge illus? trates the point. The plaintiff and defendant both had

sought to patent the same invention. The Patent Office identified the conflict and placed the parties in an "inter? ference proceeding," where they fought for years to determine who was entitled to the patent. When the

plaintiff won and was issued the patent, it sued the defendant for infringement. Then, of course, the defen? dant said that the patent, for which it had fought for

years, was invalid.

Because the defendant had sought vigorously to patent the same subject matter, the presumption of validity should have had meaning. However, the district court considered this to be just another de novo trial:

I certainly do not feel bound by anything that hap? pened in the Patent Office in an original applica? tion, and I would think the same would be true in an interference proceeding.

But unless you can convince me to the contrary, I assume that we have a de novo proceeding herein

[and] that nothing that was done in the interference

proceeding is any way binding on anybody or con? stitutes collateral estoppel on any issue. [Novo In? dus tri A/S v. Travenol Laboratories, Inc., No. 77-C-2778 (N.D. Ill .), trial transcript of February 24, 1981, p. 39.]

That is the attitude most federal judges bring to a patent case.

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Page 3: EXPERTS || Experts in Patent Cases

To persuade the judge that a patent is valid, the owner needs a technical expert who can explain at least four

major points: ? the pertinent technology; ? the patent and its claims; ? the "basic factual inquiries" underlying whether the

patent was obvious, as explained in Graham v. John Deere Co., 383 U.S. 1,17 (1966), the scope and con? tent of the prior art, "the differences between the

prior art and the claimed invention," and the "level of

ordinary skill in the art"; and ? the method, apparatus, or product accused of in?

fringing the patent. Who can explain these issues best? The plaintiffs

search should begin with the inventor, who obviously has the necessary expertise. In fact, the inventor's intimacy with the subject matter is a unique qualification for the

plaintiff. Unless the inventor is a below average witness, based on his demeanor and ability to articulate, he is the ideal expert witness.

If the inventor cannot fill this role, other employees of the

patent owner, such as in-house engineers and scientists, may qualify. The essential ingredient to an outstanding technical expert in a patent case is practical experience.

Prior Art A judge will rely less on an "expert" who has not worked

in the specific technology involved in the case. For exam?

ple, in a patent case involving a milk-coagulating enzyme (microbial rennet) made from the fungus Mucor miehei, where the best prior art related to making a microbial rennet from the fungus Mucor pusillus, the defendant's

expert, who had impressive credentials in microbiology and genetic engineering, testified on cross-examination:

Q. Have you, in the 25 years from . . . 1954 ... to

1979 . . . , in the 156 articles and books in your resume,

prepared any article or discussed in any book making milk-coagulating enzymes with a Mucor miehei or Mucor pusillus?

A. I have not.

Q. When did you first get involved in this litigation? A. I think it's during the year of 1980.

Q. Was it around March of 1980? A. It probably was.

Q. Now, prior to March of 1980, what if any hands-on

experience had you had with a milk-coagulating enzyme made of Mucor miehei?

A. I have had no hands-on experience. Q. Prior to March of 1980, did you have any hands-on

experience with a milk-coagulating enzyme made by Mucor pusillus?

A. No.

Q. Prior to March of 1980 did you have any hands-on

experience with any microbial rennet? A. No.

Q. Now, since March of 1980 have you prepared any microbial rennet made of Mucor miehei?

A. No.

Q. Have you made a microbial rennet made of Mucor

pusillus?

A. No.

Q. Have you prepared any microbial rennet? A. No.

Q. Have you ever tested any milk-coagulating enzyme made from Mucor pusillus?

A. No.

Q. Have you ever tested a milk-coagulating enzyme made from Mucor miehei?

A. No.

Q. Have you ever tested a milk-coagulating enzyme made by any microbial rennet?

A. No.

Novo Industri A/S v. Travenol Laboratories, Inc., No. 77-C-2778 (N.D. 111.), trial transcript of March 17, 1981,

pp. 1557-60.

It was no wonder that the federal judge concluded that one opinion expressed by this witness "came close to be?

ing the low point of the expert testimony in this case, if it was not the low point."

Off the Wall Federal judges are intelligent, educated people. They

want to understand the technical issues in patent cases.

Many of them believe that given the facts they can draw scientific conclusions as well as the scientist, because once the facts are determined the scientist and lawyer use

the same tool?logic. In pursuing this worthy goal the judge will ask ques?

tions. Most will be relevant. Such questions can be antic?

ipated and the witness prepared. However, during his

learning process, the judge may ask tangential and irrel? evant questions, or even some that are "off the wall."

The expert who does not have actual experience in the

technology will have a difficult and embarrassing time

trying to handle these questions, and the judge will sense

the witness's lack of expertise immediately. However, the

person who has worked in the field, though possibly sur?

prised at the question, will be able to handle it or at least be able to say, "In my thirty years of experience I have never seen that happen."

If the in-house search for an expert proves fruitless, then rely on the most experienced available person in the

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Page 4: EXPERTS || Experts in Patent Cases

relevant field. For example, an inventor, a consultant, or a writer, preferrably with some practical experience, may be available.

Two types of witnesses should not be used as technical

experts?patent lawyers, and consultants and academi? cians who do not have any practical experience. Although it was a common practice for many years, and some law?

yers still believe in that antiquated approach, it is unwise to present a patent lawyer to discuss the invention, the

prior art, the level of skill in the art, or to express opinions about the obviousness of the invention, because patent lawyers are not persons skilled in the art. Many judges will not let patent attorneys testify as technical experts.

Recently a court of appeals politely, but firmly, criti? cized the use of patent lawyers as technical experts:

Caplan, a member of the patent bar, was admittedly unskilled in the art and based his testimony upon the disclosures in the patent documents, not upon any training or experience in engineering. He

acknowledged during his testimony that he knew lit? tle about the arch action described in the [patent] claims. This testimony is of questionable value in

overcoming the presumptive validity of the patent. Santa Fe-Pomeroy, Inc. v. P & Z Co., 569 F.2d 1084, 1093 n.17 (9th Cir. 1978)

Although the defendant in the typical case also needs a technical expert, the defendant's expert plays a less criti? cal role than the plaintiffs expert. The defendant's ex?

pert only has to neutralize the plaintiffs expert. He does not have to be the "most valuable player of the game." The plaintiffs technical expert does. If the defendant's

expert gets a draw with the plaintiffs expert, the defen? dant probably will win because of the overwhelming anti invention advantage the defendant has in a patent in?

fringement case tried before an experienced federal dis? trict court judge.

The defendant also wants an expert with working ex?

perience in the art, but the defendant must avoid the

expert whose testimony could prove embarrassing. For

example, the defendant should not use an expert who himself tried unsuccessfully to solve the problem the in? vention has solved, or a person who copied the inventor's idea. Any expert who has praised the invention should not be selected, because this would be embarrassing dur?

ing cross-examination. Defendant's trial counsel is less

likely to find an in-house expert, because that person has

probably copied, or at least borrowed, the technology de?

veloped by the inventor.

No Gamble Since defendants generally are favored in a bench trial

in the federal court, they should not gamble with their ex?

perts. The ideal defendant's expert, seldom available, in?

dependently solved the problem and did not file a patent application because he did not believe it was an invention.

After the technical experts have been chosen, is a pat? ent expert required? A cadre of professional patent ex?

perts is available; it includes most of the living former commissioners of the Patent Office, some present and

past professors in intellectual property law, and some

private practitioners who spend most of their time

writing and testifying. But in a bench trial, there is sel? dom a need for a patent lawyer as an expert.

First, the attorneys want the trial judge to look to them to explain the relevant laws and how the facts fit with the law. A lawyer must establish his own credibility with the trial judge, not the credibility of another patent lawyer who is not going to make the closing argument or sign the posttrial briefs.

Second, patent lawyers seldom add anything to what trial counsel can do just as effectively. Outside experts do not have firsthand knowledge of the facts, and must base their testimony on facts in the record. They sel? dom know more relevant law than trial counsel, and trial counsel can tell the judge in pretrial briefs, or at any appropriate time during the course of the trial, what the law is. In short, these witnesses do not perform any func? tion that trial counsel cannot handle.

Furthermore, district judges may be insulted when a witness testifies about the patent laws. And if such a wit? ness is precluded from testifying or the scope of his testi?

mony is limited, it may be embarrassing to have put the witness on the stand.

Added Expense Finally, the use of a patent expert is an unnecessary

added expense. These experts seldom contribute any spe? cial expertise in preparing and trying a case. They do not decide strategy; they merely carry it out. Moreover, if a

professional expert witness believes he knows how to run the case better than you do, there is a substantial potential conflict. There can be only one leader of the trial team.

If, instead of an experienced federal judge, the judge has never tried a patent case (or only one or two), the plain? tiffs approach should be the same. However, the defen? dant's approach may change. The defendant may now want to use a patent lawyer to explain the law, particularly a complicated or esoteric defense. For example, if the defendant relies on the patent owner's failure to disclose certain prior art to the Patent Office, a patent expert may explain the procedures in the Patent Office and the duties and obligations of the patent applicant that were violated. This modified approach would also be used in a bench trial in a state court, because the judge would necessarily have little or no experience in patent cases.

If the trier of fact is a jury, the defendant is the under?

dog?and has a formidable burden. If the defendant can?

not make the jury understand his defenses, he will lose. The plaintiff is more likely to use outside technical ex?

perts, at least to supplement the testimony of the inven?

tor, because jurors are more likely to read bias into the

testimony of the inventor or in-house experts. Further?

more, if the inventor is not what a jury expects an inven? tor to be, it may be advisable not to call him as an expert at all. In a jury case, intangible qualities become more

important. Appearance, demeanor, and ability to articu? late to lay people can be as important as credentials and

experience in the field.

The defendant selects the technical expert as he did in

a nonjury case, except more emphasis is placed on intan?

gible qualities. However, the defendant now needs an

(Please turn to page 61)

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Page 5: EXPERTS || Experts in Patent Cases

Nor did the work product rule pro? vide protection. The expert's report was not prepared "in an adversary context," but rather to facilitate set? tlement. Under the confidentiality agreement, DOD could never use the

report in litigation. Thus, the report was not prepared in contemplation of

litigation?a prerequisite to applica? tion of the work product doctrine:

The critical factor here is that the

confidentiality agreement bars DOD from ever using the report in litigation against RMI or TMCA [defendants in the anti? trust case]. This circumstance

separates the present case from those relied on by objectants. Even though the materials in those cases were prepared for settlement purposes or to decide whether to litigate, no restriction barred later use of the subject matter if litigation ensued. The

proposition objectants seek to

uphold thus becomes, in effect, whether documents prepared for use in settlement alone, without

prospect for use in litigation, de? serve protection from discovery. In the unique circumstances of this case, we hold that they do not, because they were not pre? pared in an adversary context. Indeed, the very community of interest in settlement which ob?

jectants argue precludes a find?

ing of waiver . . . underscores how far from an adversarial con? text this report was prepared, [sic] The report was intended to be the common foundation for settlement of the claims of three sets of adversaries ... .It did not embody an adversary's com?

peting view of the effects of asserted antitrust violations.

Id. at 90.

Finally, the court held that even if the report were considered work prod? uct, the privilege against disclosure had been waived by disclosure to DOD's potential adversaries: "Dis? closure to an adversary waives the work product protection as to items

actually disclosed, even where disclo? sure occurs in settlement." Id.

The Grumman decision is an im?

portant reminder that disclosure pur? suant to confidentiality agreements

and in settlement negotiations may not protect against discovery of sen? sitive information.

Trial Judge May Not Create New Theory of Liability

An activist trial judge trying to see that justice is done may be tempted to

apply a proper theory of liability that

plaintiffs counsel has overlooked. If he does so in a manner that surprises the defendant, his effort and a verdict based on it cannot stand. Price v. In? land Oil Co., 649 F.2d 90 (3d Cir. 1981)

In this personal injury action, the

plaintiffs counsel, during pretrial pro? ceedings, narrowed the focus of his case to a claim based solely on a strict

liability theory. After the jury's an? swer to certain special interrogato? ries, however, the trial judge molded a verdict for the plaintiff based on neg? ligence. He rejected the defendant's

key objection that a negligence theory of liability was not argued at trial and should not be presented to the jury.

There was no pretrial order that

shaped and limited the issues and theories to be tried. After noting that in approximately one-third of all cases tried no pretrial order is entered, the court of appeals stated that "[i]n such cases, we believe it

proper to look to the purpose of Rule 16 to determine whether the effect of the pretrial negotiations was to limit the issues at trial." 646 F.2d at 96.

In this case the court accepted the defendant's argument that it was sur?

prised, after a pretrial memorandum had explicitly stated that the plaintiffs sought recovery only on a strict liabil?

ity theory, that the trial court was will?

ing to submit the case on a negligence theory. The court of appeals con? cluded that the trial judge's action

was not one that provided an

adequate warning to the [defen? dant] appellant of the theories

against which it had to defend. ... In the absence of a pre-trial order to the contrary, we must assume that the pre-trial memo? randum represented the parties' and the court's consensus on the

theory for liability. If the trial court was going to reject this

position, it should have done so before trial. To do so after the

submission of evidence, was an abuse of discretion.

Id. The Price case is an important il?

lustration of the limitations upon the

power of a trial judge to engraft new theories of liability not urged by the

parties when such action results in un? fair surprise. It also illustrates that, even where no pretrial order is entered

limiting the issues to be tried, a state? ment of position by one of the parties may limit that party's ability to try the case on issues not argued in the mem? orandum.

Patent

Cases

(Continued from page 46) "all-star" because of its underdog status.

The defendant may now want to use a patent lawyer to explain the law to the jury, despite the fact that the law will be explained in the jury instruc? tions. But the defendant should real? ize that this testimony is basically an educational tool, rather than an advo?

cacy weapon, because the plaintiffs lawyer should be able on cross-exam? ination to extract from the patent lawyer witness all the law the plaintiff

wants the jury to hear. The patent lawyer's role as a witness is thus a limited one.

A last comment about technical ex?

perts in patent cases. The expert must understand that testifying is one of the most difficult professional under?

takings. Expert testimony in a patent case requires not only the ability to ar? ticulate the technology, but thorough familiarity with the many documents involved. Preparation requires knowl?

edge of the patent, the claims, the file

history, and all the prior art. Thou? sands of pages of information, and hundreds of hours of study and prep? aration may be involved. The theory of the case has been developed by the

lawyers and modified in accordance with technical errors found by the ex?

pert; the technical expert is working

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Page 6: EXPERTS || Experts in Patent Cases

in the lawyers' arena, rather than in his customary scientific arena.

The best expert witnesses frequent? ly are virgins to the witness stand.

They may never testify again?a fact for which they are probably grateful. Newcomers approach the task with a freshness and earnestness generally not found in the "professional" wit? ness. But it requires a great deal of work by trial counsel. On the other hand, second to winning, there is no

greater joy in trying a patent case than to take a scientist who knows his sub?

ject, prepare him for trial, and watch him, on direct and cross-examina?

tion, convince the judge or jury of the

Tightness of the case.

From

the Bench

(Continued from page 6) ters of common interest, acted in similar ways, or perhaps helped one another. You must find beyond a rea? sonable doubt a joint plan to import cocaine.

"Concerning the second question, if you find that Smith and Green entered into a conspiracy you must then decide whether the evidence shows beyond a reasonable doubt that defendant Jones joined them. To find

against defendant Jones here, you must find that he became a member of a conspiracy knowing of the unlaw? ful plan and intending to help ac?

complish it. . .

Bringing the evidence into the in? structions thus gives the jury a familiar context in which to apply the rules of law.

Instructions may also properly in? clude a succinct statement of the issues in dispute, or the substance of the controversy. But this does not

mean that instructions should

necessarily summarize the evidence.

Although federal judges are permit? ted to do so, it is a risky undertaking because the manner in which the evidence is presented, including the selection of what to include and what to exclude, may have a dispropor

tionate impact on the jury. Where the

jury is called on to decide policy issues, however, such as questions of reasonableness and good faith, in? structions should list the relevant

types or categories of evidence that the jury may consider in making its

judgment.

Rarely Comment

Closely related is the question whether the judge should comment on the evidence. Federal judges are authorized to do so but rarely do. In

approving the practice, the Supreme Court in Quercia v. United States, 289 U.S. 466, 469-470 (1933), ex?

plained that its purpose is "to assist the jury in arriving at a just conclusion

by explaining and commenting upon the evidence [and] by drawing their attention to the parts of it which [the judge] thinks important. . .

Though the judge "may analyze and dissect the evidence," he is not free to "distort it or add to it."

In cases where juries must pass on issues and evidence foreign to their

experience, such as technical or so?

phisticated business practices, judi? cial comment as a part of the instruc? tions may be desirable. Such comment

might, for example, place conduct unfamiliar to jurors in the proper con?

text, but should always make clear that the ultimate decisions are for the

jury to make. Pattern instructions have other

drawbacks. Their ready availability and easy use has produced practices that reduce juror understanding. One of them is the common practice of re?

questing published instructions by number. The judge then assembles a collection of copies and reads it from

beginning to end. The way this mass of material is presented to the jury has little order or logic. Certainly this pro? cedure gives no hint of the interrela?

tionship of the legal concepts and the manner in which the jury should sort them out. A better procedure is for the lawyers to propose an integrated set of instructions in narrative form, complete with headings, explana? tions, and transitions, which the court may then revise and supplement as necessary.

Another practice bred by pattern instructions is giving excessively

lengthy and redundant instructions. Pattern instructions contain numer? ous general statements that, for the most part, will not apply to the par? ticular case. Often, repetitious in? structions are given, sometimes in

slightly different phrasing, on a point thought to be important. But psycho linguistic experiments and common sense tell us that the capacity of peo? ple to receive, process, and remember information is limited. Thus, to pro?

mote understanding by jurors, redun? dant or inapplicable instructions should be deleted. If instructions are well organized and sent to the jury room so that jurors may refer to them as needed during deliberation, such

duplication and elaboration can con?

fidently be eliminated.

Thumbnail Sketch Three frequently requested types of

instructions are often unnecessary and should be scrutinized closely. In? structions concerning the parties' theories are rarely needed, except in criminal cases where they can be stated very briefly. While it can be

helpful for the court to give a thumb? nail sketch of the key facts of the con?

troversy, theories should be left to counsel to argue.

Similarly, drawing particular infer? ences from certain facts is a matter for

argument and should be left to the at?

torneys. For the court to instruct on such matters as inferring weakness in a case from the failure to produce evidence injects the judge into par? tisan argument and is unnecessary ex?

cept in unusual circumstances. So

long as a general explanatory instruc? tion on the drawing of inferences is

given, the jury can make its own deci? sions based on its common sense and

experience. The jury might, for exam?

ple, be given a general instruction such as the following:

The word "infer"?or the ex?

pression "to draw an infer? ence"?means to find that a fact exists based on proof of another fact. For example, if you see water on the street outside your window, you can infer that it has rained. In other words, the fact of rain is an inference that could be drawn from the presence of water on the street. An inference

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