January 31, 2008 by thomason.

Last week’s lesson was to have testimony in reserve to rebut your own expert, as U.S.D.J. Walls suggested. This week we learn that it is impermissible for one expert to parse the opinions of the other side’s expert. The CAFC in TIVO v. Echostar, (1/31/08) affirmed a ruling that prohibited a defense expert from giving a “criticism of” the opposing expert’s “report or previous testimony.” These courts decided, as an exercise in discretion, that the more germane approach limiting experts to comparing the “prior art …to the claims as construed.” This was a more elegant approach, which “avoided possible jury confusion.”

How this fits within the ‘adversarial’ model for litigation, or stokes the ‘crucible’ for finding the truth is left wanting for a new litigation metaphor. Why not just have the Judge read the experts’ reports to the jury, and save the litigants about $10K per side? Since when it is fair to disallow Doctor X from testifying that ‘the report of the Honorable Doctor Y is, respectfully, a quiver full of errors.’ Indeed, in complex patent cases, with multiple testifying experts, the jury is less confused when Doctor X can tell them, ‘I’m here to contradict what Doctor Y told you,’ and why ‘he’s wrong.’ Otherwise, all the experts opinions can coalesce, especially when the jury is not given the benefit of an expert pointing clearly to the differences and disputes between the competing opinions.

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January 22, 2008 by thomason.

The judicial acorn of wisdom to patent litigators in 2008 comes from the Hon. William Walls (D.N.J.).  “Defendant’s counsel did not see the necessity of providing expert testimony to aid the Court in understanding the term.  “The more fatal point is that defendants did not provide expert testimony to rebut their own witness, Dr. Gsell, whose testimony corroborated the testimony of plaintiff’s expert.”

I’ve not seen recently the standard form pretrial order used in the D.N.J., but I don’t recall a place where a party listed its “Experts to Rebut Its Own Witnesses.”  That possibly was what Judge Walls expected in Howmedica v. Zimmer, 05-897, (1/2/08).

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January 17, 2008 by thomason.

Digging into Innogenetics v. Abbott Labs, (1/17/08 CAFC), you find a case that went from filing through trial in the W.D. Wisconsin in only one year. That is a laudable goal for patent litigation. While swift justice is hoped for, an accompanying feature is that some proofs and strategies get cut away. Here, the CAFC affirms the pretrial exclusion of a “supplemental” expert report as well as the lay-expert testimony of the inventor of claimed invalidating references. Ouch!

One notion that is not often heard is exclusion of a prior art reference that was not disclosed until “the final day of discovery.” Most patent litigators have gotten use to that disclosure being made 30 days before trial, as the statute allows, and regardless of dates in the pretrial order. Here though, the last day of discovery was deemed too late for the opponent to prepare and deal with the reference.

Similarly, there so often is a last-minute flurry of “supplemental” expert reports, but apparently not in Wisconsin. The lower court excluded that, about six weeks before trial, stating that the permission to supplement is “not a blank check for a party to use submit new arguments regarding a matter previously mentioned.” In application, that exclusionary logic was applied to contentions in the supplemental report, which regarded a previously cited prior art. The supplemental report and excluded reference were known “intimately” to the opponent, since the references were key to the inequitable conduct claims - but, the court ruled that was old, and the way the supplemental submissions dealt with the matters was new, and so, excluded. Ouch! In the main, it was thought that the courts had a duty to assess the validity of a patent, in view of all art, even that which was late-cited or even uncited. The public interest in the validity of any patent monopoly outweighed the narrow concerns with control over the docket and the deadlines. But, apparently not in Wisconsin

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January 15, 2008 by thomason.

In the typical, nonprecedential CAFC ruling (if any there have been), the rule of plain and ordinary meaning is applied. The atypical exception is where a ruling is denominated nonprecedential as a way to relegate it to the waste heap of deviations from precedent.  Out of the Box v. Bonaka (1/15/08 CAFC) may be a fitting caption for this 2-1 nonprecedential affirmance. Quare: is an opinion that departs from precedent appropriately designated nonprecedential because it does not add to the body of established law?

With Out of the Box, the claimed box had a bottom panel “joined between” side panels. The patentee wanted “between” to include a panel that joined the side panels even if it extended past the joints. That would be, like ya’know, common and ordinary meaning. Indeed, the CAFC acknowledged it was “correct that the preposition ‘between’ could be used to describe something that extends beyond the bounds of the objects of the preposition.” (Try to diagram such a sentence). What then could take away that plain and ordinary, even Markmanesque, meaning? The “written description and drawings of the ’104 patent do not support such a broad interpretation of the term ‘between’ in the claims.” Let us return to the lessons of yesteryear. Claim terms enjoy an ordinary meaning, unless it is a specialized term in the art, or unless the applicant “unequivocally” disclaims that meaning. Well, actually, there is a third, albeit nonprecedential rule that can cut away the plain meaning of a term: the it’s not in the FIGS. rule.

The dissent fairly notes that “between” is not a limiting or narrowing term. Think of the cross-bar between the vertical lines of the symbol Pi, which extends a bit past the joining points. The present ruling is that no preliminary injunction would issue, but the claim construction in an injunction setting is interlocutory. So, the term is still fair game between a full-scale Markman hearing on remand, and perhaps a second appeal.

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