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Use of court-appointed expert not abuse of discretion, even when jury told of neutrality
April 16, 2009

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.

O2 Micro owns several patents relating to DC/AC converters. The one patent at issue on appeal relates to power inverter circuitry for laptop computers, and more particularly circuitry that controls the amount of power delivered from the battery to cold cathode fluorescent lamps used in backlit screens. O2 Micro sued Monolithic Power Systems (MPS) for infringement.

At a case management conference approximately two and a half years after the case was originally filed, the district court expressed doubt that a jury would be able to understand the technology involved in the patent. As stated by the district court:

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.

Based on this, the court decided to appoint an independent expert pursuant to Rule 706 to testify regarding the issues in the case. At trial, the court instructed the jury that the independent expert was "an independent witness retained by the parties jointly at the court's direction to assist in explaining the technology at issue in this case." The court further advised the jury it was not to give the independent expert's opinion any additional weight based on his status as an independent expert:

You should not give any greater weight to Professor Santi's opinion testimony than to the testimony of any other witness simply because the court ordered the parties to retain an independent witness. In evaluating his opinion, you should carefully assess the nature of and basis for Professor Santi's opinion just as you would do with any other witness' opinion.

Claims 1, 2, 9, 12, 14, and 18 were asserted in the case. The independent expert opined that only claim 12 was infringed (under the doctrine of equivalents), and that the remaining claims were obvious. The jury returned a verdict finding claims 12 and 14 infringed under the doctrine of equivalents, but holding all claims were obvious and invalid under the on-sale bar. O2 Micro appealed both the district court's decision to appoint an expert under Rule 706 and the jury's invalidity determination.

The Federal Circuit affirmed. The court first observed that courts have discretion to appoint experts under Rule 706, and such a decision (under Ninth Circuit law) is reviewed for abuse of discretion. The court held the district court had not abused its discretion here. Specifically, even though the independent expert had only 35 days to review the case materials, he spent over 75 hours analyzing the materials and preparing a 27-page report with detailed claim charts. He also met with both parties' counsel before trial. This effort, combined with the district court's jury instruction not to give the independent expert's testimony additional weight simply because he was independent, was sufficient. The Federal Circuit also observed the jury's findings did not track exactly the independent expert's opinions, with the jury finding one more claim infringed and 5 more claims obvious. Accordingly, the decision to appoint an independent expert under Rule 706 was not an abuse of discretion.

Turning to the merits of the jury's obviousness determination, the court also affirmed. O2 Micro challenged the jury's implicit underlying finding that all claim elements were present in the prior art, specifically contesting the presence of three limitations. The court held substantial evidence existed to support the jury's determination on each limitation, observing one or both of Monolithic's expert and the independent expert testified they were present, and the testimony was support by the actual prior art of record. Accordingly, the Federal Circuit affirmed the jury's determination that all asserted claims were obvious.

To read the full decision in Monolithic Power Sys., Inc. v. O2 Micro Int'l Ltd., click here.

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