A recurring issue in patent cases is when a technical expert’s opinion is consistent with the Court’s claims construction, and simply opines whether infringement exists under the construction, and when it is not. A recent case provided three useful examples where an expert did – but in some cases did not – proffer opinions that were consistent with the claim constructions the jury would have to consider, or was otherwise permissible.
One of the EDTX cases being handled by Judge William C. Bryson of the Federal Circuit has an upcoming hearing on whether the defendant should be held in contempt for not making ordered royalty payments as to certain products following a jury verdict of trade secret misappropriation (later affirmed on appeal and cert denied). Judge Bryson recently issued a couple of orders in connection with that hearing that readers might find of interest.
I once was talking to a lawyer from another state about why his side kept offering a specific piece of evidence in a patent case after the judge had – repeatedly – excluded it. He explained that where he was from, you keep offering the evidence until the judge threatens to jail you if you don’t stop. Well, we don’t do it that way here – most lawyers this way have this endearing tendency to follow court rulings once an objection is preserved, but here’s an example of a case where one side that didn’t think that was the way to go – and what followed.
Much like this photo of our twins after seeing their first Broadway show last month, there’s content here to make you both happy and sad.
First, have you ever been frustrated looking for an order to give that obnoxious partner/associate that wants to file a motion to strike something because it’s a few hours late? Well, click through and the Court’s haiku-like resolution is yours to embrace.
The Court declines to do so.
[Defendant] has not suffered any prejudice.
But there’s substantive information in this order granting a motion to strike portions of a plaintiff’s expert report because they are different than what was in their infringement contentions that’ll put a smile on your face.
With trial only a few weeks away in this case, the Court ruled on Defendant’s corrected motion to exclude portions of the plaintiff’s damages and technical experts, which arguing that their opinions are insufficiently reliable under FRE 702. The Court’s ruling on the motions sets out the relevant considerations for experts, and explains its rulings in some detail. They also include, candidly, interesting holdings on what constitutes expert versus lay testimony, and when a defendant’s gross sales numbers might be admissible.
Patent cases often involve production of confidential technical information, which is then reviewed by another party’s experts in preparation for trial. Occasionally, an expert’s work for a competitor causes issues with determining whether the expert can review certain information. That was the case recently in a EDTX case involving electronic products. In that case
Those who have been reading this weblog for a while know that I’ve got a thing for JMOL rulings. They are hands down not just the most useful documents to review for a forensic understanding of what happened in a particular case, but also to learn what the requirements are for claims and defenses.
My interest in JMOLs started before I even started practicing law. In the winter of 1991 I was in my last quarter at Baylor Law School, preparing for my upcoming clerkship with Judge Hall in Marshall by interning for a federal judge in Waco and taking Federal Courts from Prof. Bill Underwood, who had just started at Baylor the prior year. Prof. Underwood emphasized the importance of knowing the FRCPs by pronouncing that if we didn’t know the forthcoming Dec. 1, 1991 amendments to the FRCPs, we wouldn’t pass his class. As a result, I spent the next ten years as (it seemed) the only lawyer east of Dallas that knew what the rules were on subpoena range – because they were in that batch of rule changes.
I have to mention that this was before Prof. Underwood became the Baylor Practice Court professor, a job he held before becoming Baylor’s interim president from 2005-2006, a job he did surprisingly well in. I say “surprisingly” because it’s hard to picture a Baylor PC professor excelling in a job that doesn’t involve torturing law students. It’s like finding out that Genghis Khan took a sabbatical from pillaging to run a successful Habitat for Humanity program. Or a T-rex taking a break from chasing sauropods to set up a child care program for Triceratops eggs. It’s just not expected. I note that Professor Underwood has continued his career outside the fields of torture and despair enhancement as president of Mercer University since 2006, and I wish him well. Again, I didn’t have him for PC, so this is easy for me to say.
Where was I? Oh, yes, JMOLs. Guess what else was in those Dec. 1, 1991 amendments? The motion previously known as a “directed verdict” was renamed “judgment as a matter of law” and given a new scope. And wouldn’t you know it, nine months later I’m minding my own business at the law clerk’s table in the courtroom in Marshall when Judge Hall grants one of these newfangled motions, sends the jury home, and promises a written order.
What came out of that 13 days later was Johnson v. Bekins Van Lines, 808 F.Supp. 545 (E.D. Tex. 1992) – one of the first reported cases using the new name and standard, and a foxhole’s-eye view as to the new rule in the most sensitive of contexts – a court deciding that the evidence was insufficient for the case to go to the jury. I still have the advance sheet on a shelf in my office, and I’ve never stopped appreciating the unique insight that the explanations contained in JMOL rulings can provide into a case.
The most recent JMOL from the EDTX comes from Tyler, in
This is a patent case in which the defendant sought to exclude the testimony of the plaintiff’s damages expert on five grounds. In the attached order, Judge Gilstrap granted the motion in part, as analyzed below:
If you are under 40, you probably have no idea why there is a picture of a bottle of ketchup next to the word “anticipation.” Go down the hall and ask a senior partner and enjoy the stream of profanity that comes back at you. Anyway, as I type this, the parties are arguing this case to the jury across the street in Judge Gilstrap’s court, but I thought it was worth providing a brief analysis of the court’s ruling last month recommending denying the plaintiff’s motion for summary judgment on the defendants “anticipation” defenses. This is a patent infringement case in which the plaintiffs allege that the defendant’s computer program infringes multiple claims of the three asserted patents. The plaintiff moved for summary judgment on the anticipation defenses based on the testimony of the defendant’s expert. In its order denying the motion,
When I started practicing law just a few weeks shy of 25 years ago, the most common cases I worked on were product liability cases, in which plaintiffs asserted that defective products, most commonly motor vehicles, caused injuries or death. While these cases are rarer than they once were, they still show up from time to time, and a perennial issue in them is the admissibility of testimony of the parties’ expert witnesses on the various issues in the case, including the existence of a defect, whether the defect caused the plaintiff’s injuries, and the extent of the plaintiff’s injuries. In this case, Judge Clark recently resolved two motions dealing with expert testimony in a vehicle product liability case. In the first,