Admissibility of Expert Testimony: Patent Law v. Federal Rules of Evidence
Judge Young recently wrote a colorful and entertaining decision addressing a “disconnect between the Federal Rules of Evidence and the substantive doctrines of patent law [that] seems to have gone totally unremarked both by the patent bar and evidence scholars.” In the end, Judge Young ruled that the patent laws on obviousness trump the Federal Rules of Evidence. NewRiver, Inc. v. Newkirk Products, Inc., C.A. No. 06-12146-WGY, Memorandum & Order (D. Mass. Dec. 16, 2009).
Plaintiff NewRiver brought a patent infringement action against the defendant Newkirk. After trial, the jury returned a verdict finding that Newkirk infringed claims 9-11 but that certain claims of the patent in suit, including the infringed claims 9-11, were invalid as obvious. The parties then filed various post trial motions including two filed by NewRiver: (1) a motion for judgment as matter of law that claims 9-11 are valid and not obvious; and (2) a motion for a new trial.
The Court reviewed the sufficiency of the evidence regarding the invalidity of claims 9-11, and found that evidence “sparse.” Indeed, the only evidence of invalidity of claims 9-11 consisted of the defendant’s expert reading the claim into evidence and concluding that the claims would have been obvious to a person skilled in the art. The expert did not identify any prior art, did not show where the limitations of the claims were in the prior art, or how the combined prior art references made the claims obvious. NewRiver did not object, and the issue of invalidity of claims 9-11 went to the jury with the only evidence being the expert’s unsupported opinion.
While considering the post trial motions, the Court examined the Federal Rules of Evidence to consider whether the expert’s testimony met the evidentiary threshold. In particular, the court examined the following relevant Federal Rules of Evidence which state:
Rule 704 . . . testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact.
Rule 705 . . . The expert may testify in terms of opinion or inference and give reasons therefor without first testifying to the underlying facts or data, unless the court requires otherwise. The expert may in any event be required to disclose the underlying facts or data on cross-examination.
Rule 103 . . . (a) Error may not be predicated upon a ruling which admits or excludes evidence unless a substantial right of the party is affected, and (1) Objection. In case the ruling is one admitting evidence, a timely objection or motion to strike appears of record, stating the specific ground of objection, if the specific ground was not apparent from the context . . .
The Court stated the expert’s opinion, while conclusory and unsupported, not only satisfied the evidentiary threshold, but fit these rules “as the hand the glove.” But the Court further noted that the Federal Circuit’s Koito decision made clear that, on the issues of anticipation, obviousness, and doctrine of equivalents, the unsupported opinion even of a qualified expert is simply not “substantial evidence” adequate to support a jury verdict. The District Court further explained the tension between the patent laws and the Federal Rules of Evidence:
The central holding of Daubert runs precisely to the contrary – lower federal courts are not permitted to engraft additional hurdles on the admissibility of evidence beyond those found in the Rules themselves. Despite the express teaching of Daubert, this is exactly what Federal Circuit jurisprudence does, at least on the issues of anticipation, obviousness, and doctrine of equivalents.
Notwithstanding Rules 704 and 705, Federal Circuit case law renders legally inadequate the opinions of qualified experts on the ultimate issues of anticipation, obviousness, and doctrine of equivalents unless the bases therefor are spelled out on the record.
Although the tension between the Federal Rules of Evidence (with their statutory authority) and the decisions of the Federal Circuit (with their precedential authority) seems irreconcilable, it is not open to a district court to chose one in disregard of the other. Both requirements necessarily must be followed. (citations and footnotes omitted)
After recognizing the tension between the two areas of law, the Court noted that the expert’s opinion was fatally flawed since its bases were never explained and the jury therefore was not entitled to credit. Absent the expert opinion, the jury had no basis to resolve the issue of obviousness of claims 9-11 and the matter ought not have been given to them to consider. The Court then ordered a new trial on the issues of infringement and invalidity of claims 9-11.
After being illuminated to the hidden disconnect between the two areas of law, Judge Young stated that he would revise his judicial procedures to avoid this issue by, at the earliest possible moment when an expert opinion is proffered on the issues of obviousness, anticipation, written description, or doctrine of equivalents, ruling sua sponte on the adequacy of the testimony. In this manner, Judge Young noted that Judge Lungstrum’s thoughtful opinion in Sprint v. Vonage No. 05-2433, 2007 WL 2572417, at *2 (D. Kan. 2007) would serve as a useful guide.
As a practical matter and to avoid the situation presented in this case, patent litigators should carefully scrutinize all expert testimony being offered by the opposing party. If such testimony lacks the requisite basis, appropriate preemptive relief should be obtained (e.g. through a motion in limine).