Cite as: 11 TECH. L. REV., June 2014, at 155.
Articles
Qualification of Expert Witnesses in
United States Patent Litigation:
A Review of Federal Circuit Case Law
Regarding Rule 702 of the Federal
Rules of Evidence
*Ping-Hsun Chen
**Abstract
Expert witnesses serve an important role in United States patent litigation. Patent litigation often involves complex technological issues. Technical experts are needed to help a judge interpret claim language or to assist a jury to understand patented technology or infringing products. When resolving the patentability is-sues, such as anticipation and obviousness, technical experts are good consultants
DOI：10.3966/181130952014061101005
*
This article is derived from a conference article that was presented in the 2013 National Technology Law Conference, National Chiao Tung University. The author thanks the audi-ence for their comments.
The author thanks the reviewers for their comments and suggestions. The author also thanks all participating Taiwan nationals in the Sunflower Student Movement.
**
Assistant Professor, Gorduate Institute of Intellectual Property, National Taipei University of Technology; J.D., Washington University in St. Louis School of Law, U.S.A.
投稿日：2014 年 1 月 9 日；採用日：2014 年 3 月 15 日
for factfinders. Additionally, damages calculation requires knowledge of industries and financial or accounting theories. Damages experts must get in to resolve the issues of monetary remedies. While expert witnesses play an important role in pat-ent litigation, fewer studies explore the relevant case law about the qualification of experts or the admissibility of expert opinions. So, this paper is intended to address Federal Circuit case law regarding those issues. While Title 35 of the United States Code speaks nothing about expert witnesses, Rule 702 of the Federal Rules of Evi-dence is the only statutory basis for the requirements of qualified experts. In this paper, the case law review begins by examining the judicial interpretation of Rule 702. Three U.S. Supreme Court cases and several Federal Circuit cases will be ana-lyzed. Then, this paper focuses on two categories of experts: technical experts and damages experts. Cases related to either category will be discussed. While Rule 702 requires an expert to have “scientific, technical, or other specialized knowl-edge,” it is opt to a district court judge to admit or exclude expert witnesses or ex-pert opinions as evidence heard by a jury. Besides, the Federal Circuit’s review standard is an abuse of discretion. So, a district court judge usually has much lee-way. Furthermore, based on the analysis of the Federal Circuit cases, this article provides legal principles or propositions related to expert testimony.
Keywords: Nonobviousness, Patent Litigation, Expert Witness, Rules
of Evidence, Damages Calculation
科技法學評論，11 卷 1 期，頁 155（2014）
論美國專利訴訟之專家證人資格
⎯⎯以美國聯邦巡迴上訴法院與聯邦
證據規則第702條有關之判決為中心
陳秉訓
*摘 要
專家證人在美國專利訴訟中扮演重要的角色。專利訴訟常涉及技術議 題，需要技術專家的參與來幫助解釋請求項或協助陪審團瞭解專利技術或侵 權物。當處理可專利性爭點時，技術專家則是事實認定者很好的顧問。此 外，賠償金計算需要產業或財務會計理論等知識。賠償金專家必須參與，以 能讓金錢式賠償的爭議得以處理。雖然專家證人的角色重要，但對相關判例 法的研究不是很多，特別是針對證人資格或證詞採納等議題。因此，本文在 探討巡迴上訴法院針對該類議題之判例。美國專利法並無著墨專家證人之規 範，而相關議題主要是聯邦證據規則第 702 條所主導。在本文中，首先分析 與第 702 條解釋有關之司法意見，包括三件聯邦最高法院判決和幾件巡迴上 訴法院判決。接著，本文著重在討論二類專家證人（技術專家和賠償金專 家）之相關判決。第 702 條要求專家必須具有「科學的、技術的、或特殊的 知識」，但由地方法院的法官來裁定是否要准予或排除專家證人或意見作為 * 國立臺北科技大學智慧財產權研究所專任助理教授；美國聖路易華盛頓大學法學院 法律博士。作者感謝審稿委員的評論和建議。作者亦感謝所有參與太陽花學運的臺 灣國民。證據。此外，對於地院的裁定，巡迴上訴法院的審查基準是「裁量權之濫 用」。因而，地院法官有很大的裁量空間。本文亦對相關判決進行分析，並 整理相關法理原則。
關鍵詞：非顯而易知性、專利訴訟、專家證人、聯邦證據規則、
損害賠償計算
1. INTRODUCTION
Expert witnesses serve an important role in United States patent litigation.1 Patent litigation often involves complex technological issues.2 Technical experts are needed to help a judge interpret claim languages or to assist a jury to under-stand patented technology or infringing products.3 When resolving the patentabil-ity issues, such as anticipation and obviousness, technical experts are good consult-ants for factfinders.4 Additionally, damages calculation requires knowledge of in-dustries and utilization of financial or accounting theories.5 Damages experts are needed to resolve the issues of monetary remedies.6
1
See, e.g., Alex Reese, Employee and Inventor Witnesses in Patent Trials: The Blurry Line
Between Expert and Lay Testimony, 16 STAN. TECH. L. REV. 423, 424 (2013); Marilyn L. Huff, Developments in the Jurisprudence on the Use of Experts, 7 WASH. J.L. TECH. & ARTS 325, 326-33 (2012).
2
See Claire R. Rollor, Note and Comment, Logic, Not Evidence, Supports a Change in
Ex-pert Testimony Standards: Why Evidentiary Standards Promulgated by the Supreme Court for Scientific Expert Testimony Are Inappropriate and Inefficient When Applied in Patent Infringement Suits, 8 J. BUS. & TECH. L. 313, 316 (2013).
3
See id. at 321-22; see also Jonathan Hudis, Experts in Intellectual Property Cases: A New
Paradigm, 82 J. PAT. & TRADEMARK OFF. SOC’Y 651, 656-60 (2000); Aqua-Aerobic Sys-tems, Inc. v. Aerators Inc., 211 F.3d 1241, 1245 (Fed. Cir. 2000) (“Expert testimony is often useful to clarify the patented technology and to explain its meaning through the eyes of ex-perience, but it may not correct errors or erase limitations or otherwise diverge from the de-scription of the invention as contained in the patent documents.”).
4
See Rollor, supra note 2, at 330-32; John B. Sganga, Jr., Litigating Obviousness: A New
Approach for Using Expert Witnesses, 81 J. PAT. & TRADEMARK OFF. SOC’Y 181, 185-88 (1999).
5
See Erika Mayo, Student Note, Gatekeeping Post-Uniloc: Expert Testimony in
Multi-Component Patent Litigation, 9 HASTINGS BUS. L.J. 539, 546 (2013).
6
See Tejas N. Narechania & Jackson Taylor Kirklin, An Unsettling Development: The Use of
While Title 35 of the United States Code (American patent law) speaks noth-ing about expert witnesses, the admissibility of expert testimony is governed by Rule 702 of the Federal Rules of Evidence (2010).7 Rule 702 was created in 1975.8 Back then, Rule 702 stated:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a wit-ness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise.9
Rule 702 was amended first time and became effective in 2000.10 Rule 702 then provided:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a wit-ness 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 of the case.11
In the 2000 amendment, Congress specifically responded to two Supreme
J.L. TECH. & POL’Y 1, 39 (2012).
7
See James Ware, Patent Rules of Evidence, 23 SANTA CLARA COMPUTER & HIGH TECH. L.J. 749, 757-58 (2007).
8
See Rollor, supra note 2, at 326.
9
See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 588 (1993).
10
See U.S. GOV’T PRINTING OFFICE, FEDERAL RULES OF EVIDENCE 15 (2010), available at http://www.uscourts.gov/uscourts/rulesandpolicies/rules/2010%20rules/evidence.pdf (last visited Dec. 23, 2013).
11
Court decisions, Daubert v. Merrell Dow Pharms., Inc.12 of 1993 and Kumho Tire
Co. v. Carmichael13 of 1999.14 The 2000 amendment added more requirements to the nature of expert testimony and emphasized on reliability of a methodology un-derlying expert testimony.
The latest amendment of Rule 702 occurred in 2011. The current version pro-vides:15
A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of the case.
The current version is not much different from the previous one because the 2011 amendment of the Federal Rules of Evidence was simply a restyling change that was intended to make the statutory language more understandable and consis-tent with other rules.16
12
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993).
13
Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999).
14
See CHRISTOPHER B. MUELLER & LAIRD C. KIRKPATRICK, EVIDENCE 643 (Aspen Publishers 4th ed. 2009).
15
See U.S. GOV’T PRINTING OFFICE, FEDERAL RULES OF EVIDENCE 15 (2013), available at http://www.uscourts.gov/uscourts/rules/rules-evidence.pdf (last visited Dec. 23, 2013).
16
Philosophi-Rule 702 requires an admitted expert to have scientific, technical, or special-ized knowledge related to the issue she is about to testify on.17 However, Rule 702 is limited by other statutes. For instance, Rule 703 “provides that expert opinions based on otherwise inadmissible hearsay are to be admitted only if the facts or data are ‘of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject.’”18 For another example, Rule 403 “per-mits the exclusion of relevant evidence ‘if its probative value is substantially out-weighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury.’”19 Thus, an admitted expert cannot testify on whatever he wants to say.20
While expert witness entails expenses, the party who introduces an expert may be awarded “expert fees” by the district court as a sanction on the other party. The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) in
Marc-Tec, LLC v. Johnson & Johnson21 has held that “[a] district court has inherent au-thority to impose sanctions in the form of reasonable expert fees in excess of what is provided for by statute,”22 if it “makes a finding of fraud or bad faith whereby the very temple of justice has been defiled.”23 The plaintiff in MarcTec, LLC was sanctioned by the district court to pay expert fees to the defendant.24 The Federal
cal Idea of Justice: Using West Virginia as a Model for Change, 114 W. VA. L. REV. 1155, 1159 n.18 (2012).
17
See Ware, supra note 7, at 757.
18
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595 (1993).
19
Id.
20
See MUELLER & KIRKPATRICK, supra note 14, at 657-62.
21
MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907 (Fed. Cir. 2012).
22
Id. at 921 (quotation omitted).
23
Id. (quotation omitted).
24
Circuit affirmed the sanction mainly because “(1) [the defendant] was forced to incur expert witness expenses to rebut [the plaintiff’s] unreliable and irrelevant ex-pert testimony which was excluded under Daubert; and (2) the amount [the defen-dant] was required to expend on experts was not compensable under [35 U.S.C. § 285 that governs an award of attorney fees or litigation cost].”25 Therefore, “ex-pert fees” may be recovered by inherent authority of a district court while “ex“ex-pert evidence” may cause a party to be sanctioned to pay the opposing party’s expert fees if its litigation act falls within 35 U.S.C. § 285.
While expert witnesses play an important role in patent litigation, few studies specifically explore the relevant Federal Circuit case law about the qualification of experts or the admissibility of expert testimony. While Rule 702 of the Federal Rules of Evidence is the statutory basis for the requirements of qualified experts or expert testimony, the Federal Circuit case law governs ultimate evidentiary rules regarding expert testimony, because all patent appeals are heard by the Federal Cir-cuit. Therefore, this paper is intended to address relevant Federal Circuit case law.
In this paper, Part II examines the judicial interpretation of Rule 702. Relevant U.S. Supreme Court’s decisions and Federal Circuit’s decisions are analyzed. Parts III and IV focus on two categories of experts: technical experts and damages ex-perts. Cases related to each category will be discussed. This paper uses two key-words, “rule 702” and “patent”, in case searching through the Westlaw database.26
25
Id.
26
It should be noted, however, that certain cases were excluded from the scope of analysis. MicroStrategy Inc. v. Business Objects, S.A., 429 F.3d 1344 (Fed. Cir. 2005), was excluded from analysis because the damages expert issue there arose from a state law claim, so that the Federal Circuit applied the regional circuit case law. See id. at 1353-58. Baran v. Med. Device Techs., Inc., 616 F.3d 1309 (Fed. Cir. 2010), was excluded because the evidentiary issue related to the admissibility of an expert report. See id. at 1318. Byrne v. Wood, Herron & Evans, LLP, 450 F. App’x. 956 (Fed. Cir. 2011), vacated on other ground by Byrne v.
In those cases, the courts did not discuss evidential issues in terms of each individ-ual clause of Rule 702. Accordingly, when analyzing those cases, this article will not use individual clauses of Rule 702 to outline the discussion.
2. SUPREME COURT CASE LAW AND
RULE 702
2.1 Daubert v. Merrell Dow Pharms., Inc.
Until Daubert, federal courts had struggled with whether the admissibility of expert testimony under Rule 702 should be determined only under the Frye test.27 The Frye test is also known as the “general acceptance” test.28 The “general ac-ceptance” test requires:
[W]hile courts will go a long way in admitting expert testimony deduced from a well-recognized scientific principle or discovery, the thing from which the deduction is made must be sufficiently established to have gained general acceptance in the particular field in which it belongs.29
In Daubert, the Supreme Court resolved a question of whether the “general acceptance” test is an ultimate test under Rule 702.30 The Supreme Court held:
“General acceptance” is not a necessary precondition to the admissibility of scientific evidence under the Federal Rules of Evidence, but the Rules of Evidence—especially Rule 702—do assign to the trial judge the task
Wood, Herron & Evans, LLP, 133 S. Ct. 1454 (2013), was excluded because the case re-lates to malpractice. See Byrne, 450 F. App’x. at 962.
27
See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 585 (1993).
28
See James F. Rogers, James Shelson & Jessalyn H. Zeigler, Changes in the Reference
Man-ual on Scientific Evidence (Third Edition), 80 DEF. COUNS. J. 287, 291 (2013).
29
Frye v. United States, 293 F. 1013, 1014 (C.A.D.C 1923).
30
of ensuring that an expert’s testimony both rests on a reliable foundation and is relevant to the task at hand. Pertinent evidence based on scientifi-cally valid principles will satisfy those demands.31
Thus, the “general acceptance” test is not a prerequisite of the admissibility of expert testimony under Rule 702.
As for the requirements of “scientific knowledge,” the Supreme Court stated that “an inference or assertion must be derived by the scientific method. Proposed testimony must be supported by appropriate validation—i.e., ‘good grounds,’ based on what is known.”32 Therefore, such “scientific knowledge” can support eviden-tiary reliability.33 Because admitted expert testimony is considered reliable, “an expert is permitted wide latitude to offer opinions, including those that are not based on firsthand knowledge or observation.”34
Regarding relevancy, the Supreme Court stated, “Expert testimony which does not relate to any issue in the case is not relevant and, ergo, non-helpful.”35 It fur-ther provides a “helpness” standard requiring “a valid scientific connection to the pertinent inquiry as a precondition to admissibility.”36
The Supreme Court further suggested guidelines for district courts to deter-mine whether to admit expert witness. First, a district court judge must deterdeter-mine “whether the expert is proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact to understand or determine a fact in issue.”37 That is, a dis-trict court judge must perform “a preliminary assessment of whether the reasoning 31 Id. at 597. 32 Id. at 590. 33 See id. 34 Id. at 592. 35
Id. at 591 (citation omitted).
36
Id. at 591-92.
37
or methodology underlying the testimony is scientifically valid and of whether that reasoning or methodology properly can be applied to the facts in issue.”38
As for considerations of the admissibility assessment, the Supreme Court stated that the inquiry under Rule 702 is “a flexible one”39 and that the focus “must be solely on principles and methodology, not on the conclusions that they generate.”40 While not specifying any rigid test,41 the Supreme Court still provided several factors. First, “whether a theory or technique is scientific knowledge” depends on whether the theory or technique “can be (and has been) tested.”42 Second, “whether the theory or technique has been subjected to peer review and publication” may be considered.43 Third, the “known or potential rate of error” of a “particular scientific technique” and the “existence and maintenance of standards controlling the technique’s operation” may be considered.44 Last, the “general acceptance” test may be considered.45 It should be noted that those four factors, as the Supreme Court emphasized, are not a “definitive checklist or test.”46 More importantly, each factor is not dispositive.
2.2 General Elec. Co. v. Joiner
One of the most important procedural issues with regard to expert witness is the standard of the appellate review. Admission or exclusion of expert witness is an evidentiary ruling. On appeal, an appellate court has to choose a right standard to 38 Id. at 592-93. 39 Id. at 594. 40 Id. at 595. 41 See id. at 593. 42 Id. 43 Id. 44 Id. at 594. 45 Id. 46 Id. at 593.
review a district court’s ruling.47 The proper standard of appellate review signifi-cantly affects the ultimate outcome in every case involving such ruling in the dis-trict level.
Generally speaking, the choice of a review standard depends on which cate-gory a court decision belongs to.48 A court decision may be categorized into a question of law, a question of fact, or a matter of discretion.49 First, a question of law is a question decided by a judge alone.50 An appellate court reviews a district court decision on a question of law without deference to the district court.51 It will sit as a trial judge to review the same question of law.52 Second, a question of fact is a factual dispute decided by either a trial judge or jury.53 If a factual dispute is decided by the judge, an appellate court will review the decision by a “clear error” standard.54 That is, the appellate court will review the entire record of evidence to see whether, “with the definite and firm conviction,” “a mistake has been commit-ted.”55 A district court’s decision cannot be reversed simply because the entire re-cord supports a finding preferred by the appellate court.56
47
See Peter Nicolas, De Novo Review in Deferential Robes?: A Deconstruction of the
Stan-dard of Review of Evidentiary Errors in the Federal System, 54 SYRACUSE L. REV. 531, 531 (2004). 48 See id. at 532. 49 See id. 50 See id. 51 See id. 52 See id. 53 See id. 54 See id. 55
See id. (quoting United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948)).
56
See id. (“Under clear error review, the appellate court cannot reverse the trial court’s deter-mination merely because it would have found the facts differently had it been sitting as the trier of fact.”).
Third, a matter of discretion is a decision a trial judge can make according to law that offers various options for the trial judge to choose.57 Determining a mat-ter of discretion usually requires a trial judge to weigh several factors.58 Because each factor is not dispositive and the test is usually flexible, a trial judge has much leeway to resolve the issue.59 On appeal, an appellate court will review a matter of discretion by an “abuse of discretion” standard.60 The “abuse of discretion” stan-dard is more deferential than the “clear error” stanstan-dard.61 A trial judge’s decision that is “arbitrary,” “irrational,” “capricious,” “whimsical,” “fanciful,” or “unrea-sonable” constitutes an abuse of discretion.62 Alternatively speaking, no trial judge’s discretion will be reversed unless no reasonable person will support such discretion.63
In 1997, the Supreme Court in General Elec. Co. v. Joiner64 “determine[d] what standard an appellate court should apply in reviewing a trial court’s decision to admit or exclude expert testimony under Daubert,”65 and held that “abuse of discretion is the appropriate standard.”66 The holding is based on a long-time re-view standard for a district court’s evidentiary rulings, and the standard is “abuse of discretion.”67 The standard applies to “whether to receive or exclude the
57 See id. 58 See id. at 532-33. 59 See id. at 533. 60 See id. at 532. 61 See id. 62 See id. at 533. 63 See id. 64
General Elec. Co. v. Joiner, 522 U.S. 136 (1997).
65 Id. at 138-39. 66 Id. at 139. 67 See id. at 141.
dence.”68
In responding to the appellate court’s view about Daubert, the Supreme Court clarified that “Daubert did not address the standard of appellate review for eviden-tiary rulings at all.”69 The Supreme Court also reaffirmed that the “Frye standard of ‘general acceptance’ had not been carried over into the Federal Rules of Evi-dence [which, therefore,] allow district courts to admit a somewhat broader range of scientific testimony than would have been admissible under Frye.”70 Further-more, regarding the application of the abuse-of-discretion standard, the Supreme Court cautioned that appellate courts “may not categorically distinguish between rulings allowing expert testimony and rulings disallowing it.”71
2.3 Kumho Tire Co. v. Carmichael
In 1999, the Supreme Court in Kumho revisited Daubert because of the confu-sion among federal courts about “whether, or how, Daubert applies to expert testi-mony that might be characterized as based not upon ‘scientific’ knowledge, but rather upon ‘technical’ or ‘other specialized’ knowledge.”72 While recognizing that Daubert specifically referred to “scientifical knowledge,” the Supreme Court in Kumho concluded that Daubert extends to “technical or other specialized knowl-edge.”73
Additionally, the Supreme Court emphasized that the factors proposed by
Daubert are what the court “may” consider when determining the admission of
68 See id. at 142. 69 Id. 70 Id. 71 Id. 72
Kumho Tire Co. v. Carmichael, 526 U.S. 137, 146-47 (1999).
73
expert testimony.74 The Supreme Court also pointed out that “Daubert makes clear that the factors it mentions do not constitute a ‘definitive checklist or test.’”75 Moreover, the Supreme Court agreed with a notion that the “factors identified in
Daubert may or may not be pertinent in assessing reliability, depending on the
na-ture of the issue, the expert’s particular expertise, and the subject of his testi-mony.”76
While following Daubert, the Supreme Court further provided additional con-siderations. For the first consideration, the Supreme Court stated that “a claim made by a scientific witness has never been the subject of peer review, for the par-ticular application at issue may never previously have interested any scientist.”77 This reflects Daubert’s comments on the peer review/publication factor. Daubert stated that publication “does not necessarily correlate with reliability” because some “well-grounded but innovative theories will not have been published” or be-cause “[s]ome propositions . . . are too particular, too new, or of too limited interest to be published.”78
For the second consideration, the Supreme Court stated that “the presence of
Daubert’s general acceptance factor [does not] help show that an expert’s
testi-mony is reliable where the discipline itself lacks reliability, as, for example, do theories grounded in any so-called generally accepted principles of astrology.”79 This new aspect of the “general acceptance” factor shows a type of knowledge that is generally accepted but not reliable, which was not identified by Daubert.
In Kumho, the Supreme Court specifically addressed the admissibility of 74 Id. at 149-50. 75 Id. at 150. 76
Id. (quoting the Solicitor General’s brief).
77
Id. at 151.
78
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 593 (1993).
79
perience-based testimony and provided two main guidelines. First, the district court judge may ask “how often an engineering expert’s experience-based methodology has produced erroneous results, or whether such a method is generally accepted in the relevant engineering community.”80 This reflects the “rate of error” factor and “general acceptance” factor in Daubert.
The second guideline relates to knowledge purely based on experience. The Supreme Court provided an example, “a perfume tester able to distinguish among 140 odors at a sniff,”81 and considered such perfume tester as an expert based purely on experience.82 For such expert, a trial judge may ask “whether his prepa-ration is of a kind that others in the field would recognize as acceptable.”83 This question reflects the “general acceptance” factor in Daubert.
Moreover, while the Supreme Court did not add any substantially new ele-ment into the Daubert factors, it did specify the role of a trial judge in determining qualified expert testimony. First, a trial judge “must have considerable leeway in deciding in a particular case how to go about determining whether particular expert testimony is reliable.”84 Nonetheless, the Supreme Court pointed out that “a trial court should consider the specific factors identified in Daubert where they are rea-sonable measures of the reliability of expert testimony.”85 Second, a trial judge “must have the same kind of latitude in deciding how to test an expert’s reliability, and to decide whether or when special briefing or other proceedings are needed to investigate reliability, as it enjoys when it decides whether or not that expert’s 80 Id. 81 Id. 82 Id. 83 Id. 84 Id. at 152. 85 Id.
vant testimony is reliable” (emphasis added).86 Accordingly, the Supreme Court reaffirmed that the review standard for admission or exclusion of certain expert testimony is an “abuse-of-discretion” standard.87
Last, to clarify the appropriate application of the Daubert factors, the Supreme Court held that “whether Daubert’s specific factors are, or are not, reasonable measures of reliability in a particular case is a matter that the law grants the trial judge broad latitude to determine.”88 This reflects the Supreme Court’s belief in
Daubert that it is “confident that federal judges possess the capacity to undertake
this review [of reliability of expert testimony].”89 Thus, it is clear that a trial judge can decide whether to determine certain Daubert factor in one case but not in an-other case.
3. FEDERAL CIRCUIT CASE LAW AND
RULE 702
3.1 Choice of Law and Review Standard
It has been settled that the Federal Circuit “reviews the admission of expert testimony for an abuse of discretion.”90 However, because “[e]videntiary rulings by the district court are reviewed under regional circuit law,”91 it is possible that 86 Id. 87 Id. 88 Id. 89
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 593 (1993).
90
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir. 2008); Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1218 (Fed. Cir. 2006) (“[W]e review decisions to admit expert testimony for abuse of discretion under Seventh Circuit law.”).
91
Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1218 (Fed. Cir. 2006); Sie-mens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1284 (Fed. Cir. 2011) (“We review a district court’s decision to exclude evidence under the
the same factual context may result in different outcomes when applying different regional circuit laws. Nonetheless, the variation of those standards may be not sig-nificant in the case of patent litigation because the Federal Circuit ultimately ap-plies its patent case law for analysis or analogy.
3.2 Evolution of the Interpretation of Rule 702, Daubert,
and Kumho
3.2.1 Early Decisions
While Rule 702 was amended by Congress to respond to Daubert, the rules indicated in Daubert do coexist with Rule 702 under the Federal Circuit case law. The early decisions of the Federal Circuit focus on the general principles of apply-ing Rule 702 in view of Daubert. These cases were mainly related to reliability of a methodology that expert testimony relied on.
In 2003, the Federal Circuit in Micro Chem., Inc. v. Lextron, Inc.92 recog-nized Daubert as a landmark case that established “the analytical framework for determining the admissibility of expert testimony under Rule 702.”93 The Federal Circuit also stated that according to Daubert, “[t]he trial court acts as a ‘gate-keeper’ to exclude expert testimony that is irrelevant or does not result from the application of reliable methodologies or theories to the facts of the case.”94
With respect to the Daubert factors, the Federal Circuit held that Daubert “set forth a non-exclusive list of factors that district courts may use in evaluating expert testimony.”95 Besides, the Federal Circuit noted that Kumho “emphasized that the
law of the regional circuit.”).
92
Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387 (Fed. Cir. 2003).
93 Id. at 1391. 94 Id. 95 Id.
Daubert inquiry is ‘a flexible one’ and that the analysis will depend on the nature
of the issue, the witness’s expertise, and the subject of the testimony.”96 The Fed-eral Circuit also confirmed that Kumho “explained that the principles of Daubert apply not only to scientific testimony, but to all expert testimony.”97
Furthermore, the Federal Circuit distinguished the requirement for “sufficient facts and data” and the necessity for “reliable principles and methods.”98 By look-ing to the legislative history, the Federal Circuit stated that “[w]hen, as here, the parties’ experts rely on conflicting sets of facts, it is not the role of the trial court to evaluate the correctness of facts underlying one expert’s testimony.”99 This state-ment reaffirmed a trial judge’s role as a gatekeeper as opposed to “a replacestate-ment of the adversary system.”100 Whenever any underlying facts or data is challenged, as the Federal Circuit quoted, “[v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and ap-propriate means of attacking shaky but admissible evidence.”101 Thus, the dispute about the admissibility of expert testimony cannot rest on the reliability of facts or data that the expert relies on for her testimony.
In 2006, the Federal Circuit in Liquid Dynamics Corp. v. Vaughan Co.102 dis-cussed the application of the Daubert factors. The Federal Circuit considered
Daubert as guidance for a trial judge “[w]hen faced with expert scientific
testi-mony.”103 Under Daubert, as the Federal Circuit held, “a district court must first 96 Id. 97 Id. 98 See id. at 1392. 99 Id. 100 Id. 101
Id. (quoting Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595 (1993)).
102
Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209 (Fed. Cir. 2006).
103
determine ‘whether the expert is proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact to understand or determine a fact at issue.’”104 For satisfying this prerequisite, the Federal Circuit stated that Daubert “requires an assessment of the reasoning and methodology underlying the testimony to deter-mine whether it is scientifically valid.”105
Specifically, the Federal Circuit recognized that Daubert “set forth four fac-tors for district courts to consider when evaluating the validity and relevance of scientific evidence pursuant to Rule 702 of the Federal Rules of Evidence.”106 The Federal Circuit further rephrased the four factors as follows: “(1) whether the methodology can and has been tested, (2) whether the methodology is subject to peer review, (3) the potential rate of error, and (4) the general acceptance of the methodology.”107 When considering these four factors, as the Federal Circuit em-phasized, a district court must focus its “inquiry into the relevance and reliability of scientific evidence ... solely on principles and methodology, not on the conclusions that they generate.”108
In 2007, the Federal Circuit in MEMC Elec. Materials, Inc. v. Mitsubishi
Ma-terials Silicon Corp.109 held “[u]nder Daubert and Rule 702, expert opinion evi-dence must be both reliable and relevant to the issue before the trial court.”110 In
MEMC Elec. Materials, Inc., the disputed claim was a silicon wafer that is used to
104
Id. (quoting Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589 (1993)).
105 Id. 106 Id. at 1220-21. 107 Id. at 1221. 108
Id. (citations and quotations omitted).
109
MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 248 F. App’x. 199 (Fed. Cir. 2007).
110
make chips of integrated circuits.111 The disputed limitation of the claim was “substantially free of agglomerated intrinsic point defects” interpreted as “a concentration of agglomerated defects which is less than the detection limit of these defects, which is currently about 103 defects/cm3.”112
The plaintiff retained its employee as an expert witness.113 The expert pre-pared a defect analysis of accused wafers, but the analysis report was challenged by the defendant because the report did not provide objectively reliable evidence that can show that the accused wafers are read on the disputed limitation.114 Because the plaintiff’s expert opinion could not objectively verify the testing methodology, the district court excluded the expert from testifying on infringement.115
The Federal Circuit agreed with the district court’s ruling for two reasons. First, the Federal Circuit found that “While the various tests carried out by [the plaintiff’s expert] may be commonly used in the industry to examine defects in silicon wafers, the record indicates that the results of those tests cannot prove that all the claim limitations are met.”116 This may respond to the defendant’s assertion that the detection limit of the plaintiff’s defect testing is 3,300 defects/cm3.117 Sec-ond, to the extent that the expert modified the standard testing methodology, the Federal Circuit was of the view that the record supported the district court’s finding that the modification is scientifically reliable.118 This may respond to the defen-dant’s argument that the expert ignored noise or contamination in the test 111 See id. at 201. 112 Id. 113 See id. 114 See id. at 203. 115 See id. at 202. 116 Id. at 203. 117 Id. 118 Id.
sults.119 Therefore, the Federal Circuit held that the district court did not abuse its discretion by excluding the plaint’s expert testimony because the testimony “failed to meet the standards of relevance and reliability required by Rule 702.”120
3.2.2 Recent Decisions
While “reliability” of a methodology is the ultimate concern when a trial court applies the Daubert factors, the analysis of admissibility of expert testimony does not end. Rule 702 requires that expert testimony should be based on “sufficient data or facts.” Some recent Federal Circuit cases have addressed this issue.
In 2008, the Federal Circuit in Monsanto Co. v. David121 ruled that Rule 702 does not require that the facts or data which expert testimony relies on must be prepared by such expert.122 In Monsanto Co., the patent infringement dispute dealt with the issue that whether the defendant’s soybeans contained a gene that is claimed by the plaintiff’s patent.123 To prove infringement, the plaintiff prepared scientific field tests showing the defendant’s exclusive planting of the soybeans containing the patented gene.124 The plaintiff further presented expert testimony based on the scientific field tests.125 The defendant challenged the admission of the plaintiff’s expert testimony by stating that the tests the expert relied on were prepared by the plaintiff’s scientific team, but not by the expert.126
The Federal Circuit did not accept the defendant’s argument for two
119 Id. 120 Id. 121
Monsanto Co. v. David, 516 F.3d 1009 (Fed. Cir. 2008).
122 See id. at 1015-16. 123 See id. at 1012-13. 124 See id. at 1015. 125 See id. 126 See id.
sons.127 First, “Federal Rules of Evidence establish that an expert need not have obtained the basis for his opinion from personal perception.”128 By citing a state-ment in Daubert, the Federal Circuit recognized that an expert need not rely on first-hand knowledge.129 Second, Rule 703 supports that an expert herself need not prepare “facts or data” for her evidentiary analysis.130 The Federal Circuit in-terpreted Rule 703 as a provision that “expressly authorizes the admission of expert opinion that is based on ‘facts or data’ that themselves are inadmissible, as long as the evidence relied upon is ‘of a type reasonably relied upon by experts in the par-ticular field in forming opinions.’”131 Therefore, the admissibility of expert testi-mony does not depend on the admissibility for the “facts or date” prepared by oth-ers.132
In 2010, the Federal Circuit in i4i Ltd. P’ship v. Microsoft Corp.133 resolved whether a challenge to expert testimony is a question of weight or a question of admissibility. While recognizing that “Daubert requires the district court ensure that any scientific testimony ‘is not only relevant, but reliable,’”134 the Federal Circuit separated the issue of “relevance or reliability” and the issue of “the degree of relevance or reliability.”135 As the Federal Circuit held, “[w]hen the methodol-ogy is sound, and the evidence relied upon sufficiently related to the case at hand, disputes about the degree of relevance or accuracy (above this minimum threshold) 127 See id. at 1015-16. 128 Id. at 1015. 129 See id. 130 See id. at 1015-16. 131 Id. at 1016. 132 See id. 133
i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010).
134
Id. at 852.
135
may go to the testimony’s weight, but not its admissibility.”136 Therefore, the re-view of an evidentiary ruling on admission or exclusion of expert testimony should not focus on arguments about “the degree of relevance or accuracy” of the method-ology or evidence the expert relies on.
On appeal, the defendant in i4i Ltd. P’ship challenged the district court’s evi-dentiary ruling on admission of expert testimony of the plaintiff’s damages ex-pert.137 The defendant’s main argument rested on the relevant facts the plaintiff’s expert used to evaluate a reasonable royalty rate.138 While agreeing with the de-fendant that “[the plaintiff’s] expert could have used other data in his calcula-tions,”139 the Federal Circuit held no abuse of discretion.140
The holding was based on a notion that “[t]he existence of other facts ... does not mean that the facts used failed to meet the minimum standards of relevance or reliability.”141 What Rule 702 requires, as the Federal Circuit held, is to ask “whether the expert relied on facts sufficiently related to the disputed issue.”142 Therefore, although “the data were certainly imperfect, and more (or different) data might have resulted in a ‘better’ or more ‘accurate’ estimate in the absolute sense,”143 the Federal Circuit held that Daubert does not require a trial judge “to evaluate the correctness of facts underlying an expert’s testimony.”144 Instead, the Federal Circuit stated that it is the jury’s role to determine “what facts are most 136 Id. at 853. 137 See id. at 852. 138 See id. at 854. 139 Id. at 855. 140 See id. at 856. 141 Id. at 855-56. 142 Id. at 856. 143 Id. 144 Id.
relevant or reliable.”145 That is, when a case is subject to a jury trial, “[t]he jury [is] entitled to hear the expert testimony and decide for itself what to accept or re-ject.”146
In 2011, the Federal Circuit in Uniloc USA, Inc. v. Microsoft Corp.147 clari-fied that the facts an expert relied on under Rule 702 must be tied to the facts of the case. In Uniloc USA, Inc., the Federal Circuit abrogated the 25% Rule as a reliable method for estimating a reasonable royalty as damages for patent infringement. The holding was based primarily on a notion that “[e]xpert testimony which does not relate to any issue in the case is not relevant and, ergo, non-helpful,”148 and the notion was taken from Daubert.149 With that notion, the Federal Circuit further held, “If the patentee fails to tie the theory to the facts of the case, the testimony must be excluded.”150
To support its holding, the Federal Circuit further analyzed General Elec. Co. and Kumho to highlight why the Supreme Court affirmed the exclusion of expert testimony in both cases.151 Regarding General Elec. Co., the Federal Circuit pointed out the Supreme Court’s critique that “[t]he studies [done by the expert] were so dissimilar to the facts presented in this litigation.”152 This critique indi-cates the relevancy requirement of expert testimony. Regarding Kumho, the Federal Circuit characterized the issue there as “whether ‘it was [reasonable to] us[e] such an approach ... to draw a conclusion regarding the particular matter to which the 145 Id. 146 Id. 147
Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011).
148 Id. at 1315. 149 See id. 150 Id. 151 See id. at 1315-16. 152
expert testimony was directly relevant.’”153 Particularly, the Federal Circuit stated that Kumho required the district court to “decide whether this particular expert had sufficient specialized knowledge to assist the jurors ‘in deciding the particular is-sues in the case.’”154 This requirement indicates that the methodology the expert relies on has to relate to the particular issues.
The discussions on those two cases reflect the third requirement of expert tes-timony under Rule 702, that is, “the witness has applied the principles and methods reliably to the facts of the case.” Drawing from those two cases, the Federal Circuit concluded that “[t]he bottom line of [Kumho and General Elec. Co.] is that one major determinant of whether an expert should be excluded under Daubert is whether he has justified the application of a general theory to the facts of the case.”155
In 2013, the Federal Circuit in Power Integrations, Inc. v. Fairchild
Semicon-ductor Int’l, Inc.156 held that “data” must come from a reliable source. 157 In
Power Integrations, Inc., the expert testimony of the plaintiff was used for
dam-ages calculation.158 When preparing the damages testimony, the expert relied on some documents to estimate the shipments of infringing products.159 On appeal, the defendant challenged the admissibility of the expert testimony because the ex-pert used the data that “was an unauthenticated hearsay ‘press release’ retrieved
153
Id. at 1315-16 (quoting Kumho Tire Co. v. Carmichael, 526 U.S. 137, 153-54 (1999)) (em-phasis original).
154
Id. at 1316 (quoting Kumho Tire Co., 526 U.S. at 156).
155
Id. at 1315-16 (quoting Kumho Tire Co., 526 U.S. 137, 153-54 (1999)) (emphasis original).
156
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013). 157 Id. at 1373. 158 See id. at 1370. 159 See id. at 1372.
from the Internet.”160 The plaintiff responded that the “data source” was reliable because the same data “would be reasonably relied upon by experts in [the expert’s] field.161 However, the Federal Circuit disagreed with the plaintiff.162
The Federal Circuit questioned the source of those documents the plaintiff’s damages expert relied on.163 First, when the expert was asked of “whether the pro-vider of the documents ‘found [them] off the internet,’” the answer was “I can only assume so.”164 Second, the plaintiff unpersuasively responded that the expert “was a qualified expert, and he found the [documents] and other materials he considered, while researching the case.”165
This questioning reflects the Federal Circuit’s rephrasing of Rule 702(b) & (c) as amended in 2011. That is, expert testimony should be “‘the product of reliable principles and method’ applied to ‘sufficient facts or data.’”166 However, this view may cause a conflict with the Federal Circuit’s past view regarding “facts or data.” The traditional view (e.g., i4i Ltd. P’ship) does not require “facts or data” be reli-able. Instead, the Federal Circuit has held that the reliability of “facts or data” is subject to cross-examination and is a question of credibility to be decided by the jury. Now, under Power Integrations, Inc., both “reliable principles and methods” and “sufficient facts or data” are considered as a whole.167 As Federal Circuit held, “while an expert’s data need not be admissible, the data cannot be derived from a
160 Id. 161 Id. at 1373. 162 See id. 163 See id. 164
Id. (quoting the expert’s answer).
165
Id. (quoting the plaintiff’s response).
166
Id. (quoting Rule 702(b), (c)).
167
manifestly reliable source.”168
Maybe in the context of damages calculation, any method for calculation is drawn from data or facts in the market. So, “facts or data” that form the basis of expert testimony have to be reliable to some extent that the expert acquires the facts or data from a reliable source.
3.3 Rule 26 of the Federal Rules of Civil Procedure
Rule 26 of the Federal Rules of Civil Procedure requires a party to disclose the identity and expected testimony of its testifying experts.169 Under Meyer
Intel-lectual Properties Ltd. v. Bodum, Inc.,170 Rule 26 governs one prerequisite of a qualified expert.171 If an expert fails to prepare a written expert report, required by Rule 26(a), including “a complete statement of all opinions the witness will express and the basis and reasons for them”172 and such report cannot “convey the sub-stance of the expert’s opinion ... so that the opponent will be ready to rebut, to cross-examine, and to offer a competing expert if necessary,”173 then a district court may exclude such expert from testifying.174
One example of a deficient expert report is “an expert report that merely lists a number of prior art references and concludes that one skilled in the art would find the claims obvious.”175 In Innogenetics, N.V. v. Abbott Labs.,176 the report written
168
Id.
169
See GENE R. SHREVE & PETER RAVEN-HANSEN, UNDERSTANDING CIVIL PROCEDURE 324 (LexisNexis 3d ed. 2002).
170
Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354 (Fed. Cir. 2012).
171 See id. at 1374-75. 172 See id. at 1374. 173 See id. at 1374-75. 174 See id. at 1375. 175 Id. 176
by the defendant’s expert “merely [list] a number of prior art references and then [concluded]” that the disputed claim was obvious.177 Under the Federal Circuit case law, “there must be some articulated reasoning with some rational underpin-ning to support the legal conclusion of obviousness.”178 Because the report stated nothing about “how or why a person ordinarily skilled in the art would have found the claims of the [disputed] patent obvious in light of some combination of those particular references,”179 the Federal Circuit held “Such vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness.”180 As a result, the Federal Circuit “affirmed the district court’s decision precluding the expert’s vague and conclusory testimony regarding obviousness.”181
It should be noted, however, that a report that “contains a sufficiently detailed statement of his opinions and the bases for [the] conclusions”182 may qualify as a written expert report required by Rule 26.183 In Meyer Intellectual Properties Ltd., the expert report “defined a person of ordinary skill in the art” and “provided de-tailed claim charts comparing the asserted claims to the relevant prior art.”184 The expert report, however, did not explain a way of how a person of ordinary skill in the art would have been motivated to combine these prior arts, but merely stated such person “would have been familiar with” prior arts to conclude that “the com-bination would have been obvious” and that the invention only copied an old
177
Id. at 1373.
178
Id. (citation omitted).
179
Id.
180
Id.
181
Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354, 1375 (Fed. Cir. 2012).
182 Id. 183 See id. at 1375-76. 184 Id. at 1375.
ratus and method.185 Still, the Federal Circuit recognized such expert report as a Rule 26 report because the technology involved there was not complex.186 The Federal Circuit even accepted simple explanation such as “common sense” as one form of motivation.187
Moreover, under Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics
& Plastics, Inc.,188 while admitting expert testimony, a district court judge may limit the scope of testimony to what has been disclosed to another party. In Siemens
Med. Solutions USA, Inc., the infringement issue focused on the Doctrine of
Equivalents.189 The defendant’s expert had an experience with the claimed ele-ment and its asserted equivalent.190 However, the experience resulted from the ex-pert’s participation in a research related to national security issues.191 As the result, the expert could not “use any work-related materials in the litigation” or “produce any [research institute’s] documents during discovery.”192 Instead, the expert pre-pared the opinion by recollection without reviewing those government-owned, classified materials.193 The district court found that although the expert’s opinion cited some references that are documents from the research institute, it was unfair that the plaintiff could not examine those references that form the basis of the ex-pert’s analysis.194 Therefore, the district court granted the plaintiff’s “motion to 185 Id. 186 Id. 187 Id. 188
Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269 (Fed. Cir. 2011). 189 See id. at 1278. 190 See id. 191 See id. 192 See id. 193 See id. 194 See id.
exclude portions of [the expert’s] testimony that were not disclosed in discovery,” such as the expert’s report or deposition, and held that the expert could not rely on the testing that was not disclosed to the plaintiff during discovery as well.195
The defendant challenged the district court’s exclusion.196 The Federal Cir-cuit affirmed the district court’s ruling and held that the district court only “im-posed sensible limitations on pro“im-posed testimony based upon undisclosed data and information.”197 The Federal Circuit considered that the district court’s ruling comported with two provisions of the Federal Rules of Civil Procedure.198 Primar-ily, the district court’s ruling followed Rule 26 by which experts are required to “provide a written report containing a complete statement of all opinions the wit-ness will express and the basis and reasons for them and the facts or data consid-ered by the witness in forming them.”199 Rule 26 strengthens “fundamental fair-ness [which] requires disclosure of all information supplied to a testifying expert in connection with his testimony.”200 Because the plaintiff in Siemens Med. Solutions
USA, Inc. “had no principled way to test his recollection and opinion,”201 the dis-trict court was right on limiting the testimony of the defendant’s expert.202
195 See id. 196 See id. at 1285. 197 See id. at 1286. 198
See id. at 1286-87. The other provision is Rule 37, where “if a party fails to comply with Rule 26(a), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.” See id. at 1287 (quotation omitted) (citing Fed. R. Civ. P. 37(c)(1)). Because the defendant did not “argue that its failure to disclose was substantially justified or harmless,” the Federal Circuit did not discuss the issue related to Rule 37. See id.
199
Id. at 1286 (quotation omitted) (citing Fed. R. Civ. P. 26(a)(2)(B)(i)-(ii)).
200
Id. (citation omitted).
201
Id. (citation omitted).
202
In conclusion, to stand in front of a jury, a party must disclose an expert report under Rule 26 of the Federal Rules of Civil Procedure. The court can then consider whether to admit such expert testimony or whether to limit such expert testimony to what was disclosed in the Rule 26 report.
3.4 An Expert in the Pertinent Art
A qualified expert has to be an expert in the pertinent art. When a technical is-sue, often a factual question, is adjudicated in patent litigation, a court often re-solves such technical issue in view of a person having ordinary skill in the art.203 The Federal Circuit has made some important decisions elaborating the conceptual relationship between “an expert in the pertinent art” and “a person having ordinary skill in the art.”
3.4.1 A Person of Ordinary Skill in the Art
Under Sundance, Inc. v. DeMonte Fabricating Ltd.,204 a qualified expert must be an expert in the pertinent art to be able to testify on infringement or valid-ity. In Sundance, Inc., the defendant introduced its patent attorney as an expert to testify on patent prosecution, claim construction, non-infringement and invalid-ity.205 The district court admitted the defendant’s expert testimony, but the Federal Circuit held the evidentiary ruling was an abuse of discretion.206 On appeal, in-stead of explaining why the patent attorney acquired “the relevant expertise in the pertinent art,”207 the defendant mainly argued that “reliance on a ‘patent expert’ for ‘an opinion on the ultimate question,’ such as infringement or invalidity, is
203
See Rollor, supra note 2, at 321-22 .
204
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008).
205 See id. at 1360. 206 See id. at 1361. 207 Id. at 1362.
tirely appropriate.”208 But, the Federal Circuit disagreed.209
The Federal Circuit clarified that the issues of infringement or validity “are analyzed in great part from the perspective of a person of ordinary skill in the art”210 and that “testimony explaining the technical evidence from that perspective may be of great utility to the factfinder.”211 However, the defendant failed to ex-plain how its patent attorney “possesses the relevant expertise in the pertinent art.”212 There was no evidence showing that the defendant’s patent attorney has experiences in the technology at dispute.213 Accordingly, the Federal Circuit held that defendant’s patent attorney was not “qualified as an expert by knowledge, skill, experience, training, or education,”214 and, therefore, that the defendant “fail[ed] to see how [its patent attorney] could ‘assist the trier of fact to understand the evi-dence or to determine a fact in issue.’”215
While requiring that the proof of infringement, non-infringement, invalidity or validity should be based on “the perspective of a person of ordinary skill in the art,” the Federal Circuit did not use the term “a person of ordinary skill in the art” to describe the qualification of an expert. Instead, the Federal Circuit held that an expert witness has to be “qualified as an expert in the pertinent art” so as to testify on non-infringement or invalidity.216
Under Sundance, Inc., “an expert in the pertinent art” is not exactly the same
208
Id. at 1361 (quoting the defendant’s brief).
209 See id. 210 Id. 211 Id. 212 Id. at 1362. 213 Id. 214 Id. at 1362. 215
Id. (quoting Rule 702).
216
as “a person of ordinary skill in the art.” On the one hand, the Federal Circuit em-phasized that “[w]e 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 [and] that Rule 702 requires a witness to possess something more than or-dinary skill in the art to testify as an expert.”217 On the other hand, it recognized that “[a] witness possessing merely ordinary skill will often be qualified to present expert testimony both in patent trials and more generally.”218 Therefore, those two terms are either overlapped or independent.
Last, if a witness is not an expert in the pertinent art, as the Federal Circuit held, the witness may neither “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 refer-ence,”219 nor “testify as an expert on obviousness, or any of the underlying techni-cal questions, such as the nature of the claimed invention, the scope and content of prior art, the differences between the claimed invention and the prior art, or the mo-tivation of one of ordinary skill in the art to combine these references to achieve the claimed invention.”220
3.4.2 Patent Attorney
The Federal Circuit has clarified that a patent attorney is not a per se expert in patent cases. In Sundance, Inc. v. DeMonte Fabricating Ltd.,221 the Federal Circuit held “[u]nless a patent lawyer is also a qualified technical expert, his testimony on
217 Id. 218 Id. 219 Id. at 1364. 220 Id. 221
these kinds of technical issues is improper and thus inadmissible.”222 Regarding the capability of a patent attorney as a technical expert, the Federal Circuit stated 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.”223 Accordingly, a patent attorney who can testify as an expert is not based on his status as a patent attorney but a technical expert who happens to be an attorney.
In addition, a trial judge cannot exclude an expert from testifying simply be-cause he is not a patent attorney. In Outside the Box Innovations, LLC v. Travel
Caddy, Inc.,224 the Federal Circuit held that “the exclusion of a technical expert for the reason that he is not a lawyer is contrary to Federal Rule of Evidence 702 and the benefits of technological assistance in resolution of technological is-sues.”225 The holding was based on the nature of patent cases, as the Federal Cir-cuit clarified that “[d]espite the complexity of patent law, patents are not for inven-tions of law; they are for inveninven-tions of technology.”226 So, while recognizing that “many lawyers have technical training,”227 the Federal Circuit cautioned that “it is technological experience in the field of the invention that guides the determination of obviousness, not the rhetorical skill or nuanced advocacy of the lawyer.”228
3.4.3 Inventor
As illustrated in Federal Circuit case law, an inventor is not equal to a techni-cal expert. The expertise of an inventor must be evaluated case-by-case. In 222 Id. at 1362. 223 Id. at 1363. 224
Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285 (Fed. Cir. 2012).
225 Id. at 1296. 226 Id. 227 Id. at 1297. 228 Id.
tricut, LLC v. Esab Group, Inc.,229 the plaintiff submitted one inventor of the pat-ent-in-suit as an expert for testifying on infringement.230 The knowledge about the disputed claim relates to “work function.”231 The Federal Circuit held that the par-ticular inventor was not qualified as an expert under Rule 702 for three reasons.232 First, the inventor “admitted that he was not an expert on the issue of work func-tion.”233 He “had not studied the [work function] at college, and had no graduate degree.”234 Last, he did not acquire “an expert’s knowledge of work function dur-ing the course of his employment.”235
In Air Turbine Tech., Inc. v. Atlas Copco AB,236 while recognizing that the in-ventor “may have particularized knowledge and experience as a co-inin-ventor of the claimed invention,” the Federal Circuit, however, held that “[it] does not necessar-ily mean he also has particularized knowledge and experience in the structure and workings of the accused device.”237 Thus, an inventor may be an expert in the field of his invention, but not an expert in the field of the accused product.
3.5 Claim Construction
Claim construction is based on intrinsic evidence and extrinsic evidence. The former includes claims, specification, and prosecution history, while the latter cov-ers, among other things, expert testimony.238 Because claim construction is a
229
Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361 (Fed. Cir. 2004).
230 See id. at 1368. 231 See id. at 1365-66. 232 See id. at 1368. 233 Id. 234 Id. 235 Id. 236
Air Turbine Tech., Inc. v. Atlas Copco AB, 410 F.3d 701 (Fed. Cir. 2005).
237
Id. at 714.
238
Re-question of law decided by a trial judge alone, no procedural or evidentiary rule applies to this determination. This concept has been explored in a dictum in Pitney
Bowes, Inc. v. Hewlett-Packard Co.,239 which implies that Rule 702 does not ex-tend to the weighing of expert testimony as extrinsic evidence applied in claim construction.
In 1999, right after Kumho, the Federal Circuit in Pitney Bowes, Inc. discussed in footnote 2 the difference between the admissibility of expert testimony under Rule 702 and that under claim construction.240 The Federal Circuit compared
Kumho with Vitronics Corp. v. Conceptronic, Inc.,241 its 1996 case law that gov-erns the use of expert testimony in claim construction.242 Vitronics Corp. has been recognized as providing “specific guidance concerning the practical application of claim construction principles.”243
While both parties in the suit did not rely on Kumho as a ground for their ar-guments, the Federal Circuit highlighted a statement in Kumho that “the trial judge must have considerable leeway in deciding in a particular case how to go about determining whether particular expert testimony is reliable.”244 However, the
veal About Claim Construction at the Federal Circuit, 12 J. MARSHALL REV. INTELL. PROP. L. 583, 602 (2013); Etan S. Chatlynne, On Measuring the Expertise of Patent-Pilot Judges:
Encouraging Enhancement of Claim-Construction Uniformity, 12 J. MARSHALL REV. I N-TELL. PROP. L. 309, 313 (2013).
239
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999).
240
See id. at 1308 n.2.
241
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996).
242
See Pitney Bowes, Inc., 182 F.3d at 1308-09.
243
See Lawrence M. Sung, Echoes of Scientific Truth in the Halls of Justice: The Standards of
Review Applied by the United States Court of Appeals for the Federal Circuit in Patent-Related Matters, 48 AM. U. L. REV. 1233, 1247 (1999).
244
See Pitney Bowes, Inc., 182 F.3d at 1308 n.2 (quoting Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152 (1999)).
eral Circuit merely discussed how Kumho influences Vitronics Corp. and held that there is no substantial effect.245 The Federal Circuit’s conclusion was based on the rationale that “Rule 702’s gatekeeper function ... relates solely to the admissibility of evidence—a separate issue to claim construction.”246
Claim construction is a question of law that is not subject to jury’s determina-tion.247 Contrarily, Rule 702 governs the admissibility of expert testimony that is intended to help a jury understand the technical or scientific facts of the case.248 Because these two issues are distinguishable, the Federal Circuit stated, on the one hand, that “Vitronics does not prohibit courts from examining extrinsic evidence, even when the patent document is itself clear.”249 It also emphasized that
“Vitron-ics does not set forth any rules regarding the admissibility of expert testimony into
evidence.”250 On the other hand, Kumho was a case considered by the Federal Cir-cuit as one “discussing whether expert testimony was ‘reliable’ for purposes of the ‘basic gatekeeping obligation’ imposed on trial judges under Federal Rule of Evidence 702 to ensure that scientific, technical or other specialized knowledge is sufficiently ‘reliable’ to be admitted into evidence.”251 Therefore, the Federal Cir-cuit held that Vitronics Corp. “did not decide under what circumstances expert tes-timony should be admitted or excluded, but merely concerns whether and under what circumstances courts can rely on already admitted extrinsic evidence as dis-positive in their claim constructions.”252 This conclusion indicates that Rule 702 245 See id. 246 Id. 247 See id. at 1304. 248
See PAUL C. GIANNELLI, UNDERSTANDING EVIDENCE 307-08 (LexisNexis 2d ed. 2006).
249
Pitney Bowes, Inc., 182 F.3d at 1308.
250 Id. 251 Id. at 1308 n.2. 252 Id.
