Should you ever ask a federal judge to appoint an expert? Ought you to object if the judge comes up with the idea herself? If the other side does?
A Federal Circuit decision today didn't directly address those questions, but they lurked about anyway.
The case involved an invention involving "power inverter circuitry for laptop computers." At a case management conference, Her Honor told the lawyers:
On the technical issues here . . . I find this extremely difficult to understand. And the notion that a jury is going to understand it, to me, is foolishness. You can talk for months and the jury isn't really going to understand this in the sense of being able to make a reasoned, rational decision about it.
They will make a decision, we hope. Maybe they will hang because they'll say that we can't possibly understand this, but in my experience, they make a decision. But what is it based on? . . . It is kind of trial by ordeal or by sort of a champion, like a jousting contest rather than on the actual scientific merits of who is right and who is wrong.
The judge also mused about retaining her own expert under Rule 706 of the Federal Rules of Evidence. The expert, she said, "would essentially, I can't say decide the case, but would testify and [the jury] would be told 'This is the court's expert on these points.'"
The patentholder, 02 Micro International Limited, objected; but the infringement defendant, Monolithic Power Systems, said fine. U.S. District Judge Claudia Wilken directed 02 and MPS to agree on a technical expert and to pay the freight for the help. They settled on one, and he did indeed prepare an analysis, give a deposition, and testify at trial.
Guess which side his conclusions favored? Correct! The party that didn't oppose his appointment, MPS.
The jury found the 02 patent invalid for obviousness as well as for violation of the on-sale bar. It also refused to find literal infringement but determined that 02 did infringe two claims of the patent under the doctrine of equivalents. Judge Wilken entered judgment according to the verdict. MPS appealed.
The Federal Circuit affirmed. It held that, due to the complexity of the technology, the trial judge didn't abuse her discretion in appointing the expert. It did so despite the fact that "[t]he predicaments inherent in court appointment of an independent expert and revelations to the jury about the expert's neutral status trouble this court to some extent." Monolithic Power Systems, Inc. v. 02 Micro Int'l Ltd., No. 08-1128, slip op. at 10 (Fed. Cir. Mar. 5, 2009). The court also sustained the judgment for 02 on the basis of the jury's findings as to obviousness.
Regarding the questions we posed at the outset, Blawgletter recognizes that answering them will depend on a host of considerations in each case. But we'll hazard one generalization: the side that favors a Rule 706 appointment enhances its credibility, and the party that opposes hurts its. That holds true whether the judge ultimately appoints an expert or not.
We can't help but think that MPS earned a break or two before and during trial simply by showing confidence that an independent expert would get it right. And a break or two can make all the difference in the world.
