Intellectual Property Law

Use of court-appointed expert not abuse of discretion, even when jury told of neutrality

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Federal Circuit held it was not an abuse of discretion for a district court to retain an independent expert pursuant to Rule 706 to assist the jury in understanding the technology relating to a complicated electrical patent.  The district court was frustrated with the technology, and observed "the notion that a jury is going to understand [the technical details], to me, is foolishness."  The district court judge was concerned the jury would make a decision for reasons other than the scientific merits, and invoked Rule 706 to have a neutral expert testify at trial.  The judge also informed the jury that the expert had been retained by neither party, but further stated they should give him no additional weight because of this.  The jury held two claims infringed under the doctrine of equivalents, but all asserted claims invalid as obvious.

The Federal Circuit affirmed.  The court held the appointment of an independent expert and the disclosure of his independence was not an abuse of discretion.  This was based in part on the fact that the jury's findings did not exactly track the independent expert's testimony:  the jury held more claims infringed and more claims obvious compared to the expert's testimony.  While the court did state the disclosure of the expert's neutrality to the jury "trouble[d] this court to some extent," in the Ninth Circuit district courts have "wide latitude" to make such appointments.

On the merits, the court held substantial evidence supported the jury's implicit factual finding underlying its obviousness determination, namely all elements of the asserted claims were present in the prior art, based on the testimony of the defendant's expert and the neutral expert.

More detail of Monolithic Power Sys., Inc. v. O2 Micro Int'l Ltd. after the jump.

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Full post as published by FileWrapper on April 16, 2009 (boomark / email).