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Jesse Greenspan, a Legal Reporter with Portfoliomedia.com, writing in IP Law 360 on May 24, 2007 reported that a district Court Judge in California has begun appointing independent legal experts to testify in complicated patent trials. The article is reprinted in its entirety HERE with permission of the author and publisher:
Judge Deploys New Type Of Expert
In an unprecedented move, a district judge in California has begun appointing independent technical experts to testify in complicated patent trials.
Thus far, Judge Claudia Wilken of the U.S. District Court for the Northern District of California has ordered the parties in at least two cases to find independent experts.
Unlike special masters, which have been obtained in many courts around the country to help judges understand the technology in question, Judge Wilken’s court-appointed experts testify at trial and are also subject to cross examination.
“I haven’t heard of this happening anywhere else,” said Igor Shoiket, a partner at Townsend and Townsend and Crew LLP who has a patent case currently pending before Judge Wilken. “I would guess that a court-appointed expert would have great swing power over the jury, because they would be looked at as impartial.”
“I’ve been trying cases for 30 years, and it has never happened before,” added Henry Bunsow, the managing partner of Howrey LLP’s Northern California offices.
Last week, Bunsow’s client, O2Micro International Ltd., lost a dispute with Monolithic Power Systems Inc. when a jury, helped by the testimony of an independent technical expert, ruled that MPS did not infringe one of O2Micro’s inverter controller patents.
In that case, Judge Wilken first mentioned the idea of an independent technical expert to testify at trial in October. Then, in January, she ordered the two sides to come up with a list of candidates, which they soon did.
*Reprinted with Permission of both author & publisher
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“She was concerned that the jury would not understand the underlying technology and that it would become a trial based more on personality rather than technical merits,” said Brian Mitchell, a partner with Cooley Godward Kronish LLP who represented MPS in the case.
One of the proposed candidates, Seth Sanders, a professor at the University of California, Berkeley, testified at a hearing the following month that he would not have enough time to prepare for a May trial.
“I would be looking for trouble if I agreed to read three boxes of material and produce a…fairly judged report in the next month,” he said, according to Bunsow.
As a result, Judge Wilken said at the hearing: “At this date it seems pretty unlikely that it’s humanly possible for a person to start now, read three boxes, write a report, get deposed and testify.”
However, MPS soon identified two more potential experts, one of whom was approved by Judge Wilken on March 12 over O2Micro’s objections.
At trial, the independent technical expert, Enrico Santi of the University of South Carolina, was the first witness to testify. He found five of the six claims in question to be noninfringed, a sixth claim to be not literally infringed but infringed under the doctrine of equivalents, and the entire patent to be invalid for obviousness.
In its ruling, the jury then agreed with the vast majority of Santi’s conclusions, leaving Cooley Godward content and Howrey furious.
“Based on this one experience, we were quite pleased with the results,” Mitchell said. “But we’re going to need to get a few more cases under our belt before…the courts decide whether this is something that’s going to be done on a regular basis.”
Lionel Lavenue, an attorney with Finnegan Henderson Farabow Garrett & Dunner LLP who is representing a company that was also sued by O2Micro over the same patent, added that the independent expert helped streamline the trial.
“In almost every patent case you hear the plaintiffs’ expert, you hear the defendants’ expert, and then you’re not really sure which one you like,” Lavenue said. “With respect to this case, we thought the independent expert did a fine job. I might feel differently if I was the plaintiff.”
Though Bunsow acknowledged that federal rules of evidence seem to allow the procedure, he said the whole idea of having an independent technical expert jeopardized the constitutional right to trial by jury.
“What happened is that an incompetent expert was appointed, and it became a one-person jury,” Bunsow said. “We believe the court of appeals will have a field day with this procedure.
“If judges start adopting this procedure we might as well throw the jury system out the window,” he added. “[Judge Wilken] ought to just take the independent expert’s report and go to summary judgment. I don’t know why we bothered with the charade of a trial.”
Bunsow also attacked the independent expert’s qualifications, saying he had never before testified as a patent expert, that he confused the legal requirements for anticipation and obviousness, and that he didn’t follow the claim construction of the court.
Shoiket of Townsend and Townsend, who observed the MPS v. O2Micro trial to see how the lawyers would cross-examine the independent expert, said attorneys from both sides seemed to treat him like a respected, well-known expert.
“I didn’t see them handling it very differently,” he said. “They were both very respectful of the expert and they weren’t trying to nail him.”
Judge Wilken declined to comment for the article.
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