Expert Witnesses

And the Survey Says: Nothing?

Order Vacating ITC Invalidity and Infringement Determinations and Remanding for Further Proceedings, Converse, Inc. v. Int’l Trade Commission, (Fed. Cir.) (Oct. 30, 2018) (Judges Dyk, O’Malley, and Hughes)

We’ve previously discussed some of the challenges of obtaining quality consumer survey evidence in trademark litigation in past posts, such as here and here. The persuasiveness and wisdom of a consumer survey was once again called into question, this time by the Federal Circuit in its October 30 opinion in Converse’s long-running trademark litigation against Skechers, New Balance, and others. The appeals court identified a “series of errors” requiring remand, including that the International Trade Commission applied incorrect standards to both invalidity and infringement and erred in its secondary meaning analysis. READ MORE

Disqualifying an Expert: When Is an Expert’s Prior Relationship Prejudicial to the Opposing Party?

Opinion Regarding Disqualification of Plaintiff’s Expert, Tabaian v. Intel Corp., D. Or. (September 22, 2018) (Judge Marco A. Hernandez) 

Expert witnesses play a critical role in patent litigation, particularly where the subject matter is highly technical.  The more specialized the technology, the more common it is for an expert witness to have had some prior relationship with the opposing party.  To determine whether such an expert should be disqualified, courts analyze the relationship under a three-part test: (1) whether the relationship between the expert and the opposing party was confidential; (2) whether the confidential information that the expert obtained under that relationship is relevant to the present lawsuit; and (3) how granting or denying a disqualification motion may prejudice the parties or affect the integrity of the legal process.  A recent opinion from the District of Oregon sheds light on this test. READ MORE

Judge Dow Orders New Trial Due to Unreliable Consumer Confusion Survey

Order Granting Motion for New Trial, The Black & Decker Corp., et al. v. Positec USA, Inc., et al., N.D. Ill. (September 11, 2017) (Judge Robert M. Dow, Jr.)

Trademark litigants often submit survey evidence to prove that there is (or is not) a likelihood of consumer confusion between two trademarks. Parties hoping to rely on such surveys should be careful, however, to mimic market conditions as closely as possible—for instance, ensuring that the emulated market conditions include an appropriate context reflecting how purchases actually are made. Parties also should heed professional survey research in constructing survey designs, so that the results are considered trustworthy and directed to the relevant issue. READ MORE

Beware of Firing Your Own Witness Prior to Trial

Orders Granting Certain Motions to Exclude Testimony, Greatbatch Ltd. v. AVX Corp. et al., D. Del. (July 20, 2017) (Judge Leonard P. Stark)

Judge Leonard Stark recently decided several pretrial motions in this medical device patent infringement suit leading up to next month’s jury trial. In the process, he reiterated certain standards for allowing witnesses to testify at trial that future parties should keep in mind.

In one Order, Judge Stark granted Plaintiff Greatbatch’s motion to preclude Defendant AVX from presenting at trial the testimony of a former employee through his deposition. That former employee—Dr. Panlener—had been an employee-turned-consultant of AVX and testified at length in deposition. However, AVX fired him after his depositions, and Dr. Panlener thus became unavailable to testify live at trial. Greatbatch moved to exclude his deposition testimony at trial. Judge Stark granted the motion, finding that it would be unfair to permit Dr. Panlener’s testimony to be used at trial since Greatbatch “has had no opportunity to question him regarding his termination” by AVX. Judge Stark did not ultimately conclude whether AVX “procured” Dr. Panlener’s absence by terminating the relationship, which, under the Federal Rules, would prevent usage of his testimony. But he disagreed with AVX’s contention that it is “entitled” under the Rules to present the deposition testimony and kept it out based on “the Court’s discretion to manage the trial in a manner that is fair to both sides and consistent with all other applicable rules.” READ MORE

Daubert Exclusion for Double Counting

Order Granting in Part Daubert Motion, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick)

Yogi Berra once said that “baseball is 90% mental; the other half is physical.” The humor in this statement, of course, is that Yogi’s percentages add up to more than 100%, which is impossible. The same idea applies to patent damages—a patent expert cannot double-count the value of patented features, especially when doing so might lead to damages greater than 100% of a product’s overall value. It sounds easy enough, but applying this rule can be difficult in multi-patent cases. A recent opinion from Judge Orrick sheds light on how to value patented features where multiple patents purport to cover similar features. READ MORE

No “Last Resort” Striking of Undisclosed Expert Opinion

Order Granting-in-Part Motion to Strike Declaration of Miguel Gomez, VIA Techs., Inc. et al. v. ASUS Computer Int’l, et al., Case No. 14-cv-03586 (Magistrate Judge Paul Grewal)

In a recent order in VIA Techs., Inc. v. ASUS Computer Int’l, Magistrate Judge Grewal Court found VIA’s expert disclosures insufficient under the “straightforward” claim construction process of the Northern District’s Patent Local Rules. Despite VIA’s failure to strictly comply with the rules, the Court rejected the “last resort” penalty of striking the expert’s testimony altogether, and instead granted ASUS additional deposition time to inquire into his opinions. In so ruling, the Court considered the “relative banality” of the undisclosed opinions and the weeks remaining before the claim construction hearing. READ MORE

The “Pot, Kettle, Black” Doctrine

“Oho!” said the pot to the kettle;
“You are dirty and ugly and black!
Sure no one would think you were metal,
Except when you’re given a crack.”

-Anonymous (excerpt)

The adage “the pot calling the kettle black”—referring to someone who is guilty of the very thing that he accuses another of—is a bit of equitable common sense that practitioners ought not to forget. READ MORE

Build On A Strong Foundation: How Expert Reports Are Constrained By Earlier Disclosures

Order on Motions to Strike Portions of Expert Reports, Finisar Corporation v. Nistica, Inc., Case No. 13-cv-03345-BLF (Judge Beth Freeman)

Expert reports are not written on a blank slate. Instead, parties are generally bound by what they’ve disclosed (or haven’t) earlier in the case. In ruling on Finisar’s and Nistica’s motions to strike portions of each other’s expert reports, Judge Freeman identified several rules of disclosure under the patent local rules and demonstrated their application. READ MORE

CLAIM CONSTRUCTION “GAMESMANSHIP”? Quantum Corporation’s Expert Ordered To Sit For Further Deposition On Claim Construction

Order Re Crossroads’ Motion To Strike, Quantum Corporation v. Crossroads Systems Inc., Case No. C 14-04293 WHA (Judge William Alsup)

Expert witnesses are often used during patent claim construction to offer extrinsic evidence relevant to the meaning of claim terms, such as how one skilled in the art would have understood the terms at the time of the invention. Yet, experts must be careful to avoid offering opinions on the ultimate meaning of claim terms, which is a question of law. This is a subtle balance that can be tricky to carry out in practice. As Judge Alsup’s recent opinion makes clear, an expert must be careful not to cross the line into “gamesmanship” territory when parsing “fact” opinions versus ultimate opinions on claim constructions. READ MORE

Too Much Knowledge Almost Became A Bad Thing: Court Overrules Objection to Choice of Expert Witness

Order Overruling Objection to Nistica’s Choice of Expert Witness, Finisar Corporation v. Nistica, Inc., 13-cv-03345-BLF-JSC (Magistrate Judge Jacqueline Corley)

Fans of spy thrillers know that it can be dangerous to know too much about an individual or secrets held by a conglomerate or the government. Nistica’s technical expert, Dr. Keren Bergman, narrowly escaped disqualification after Finisar complained that Dr. Bergman was conflicted because of her prior, allegedly confidential conversation with Finisar’s counsel on another matter, and the close relationship that Dr. Bergman and her lab share with Nistica. Based on these circumstances, Finisar objected under the Protective Order to Dr. Bergman having access to Finisar’s confidential information in the litigation, hoping to effectively prevent her participation. READ MORE