IP Litigation Alert
March 2009
Authors:
Elaine Y. Chow
elaine.chow@klgates.com
+1.415.882.8008
Timothy P. Walker, Ph.D.
timothy.walker@klgates.com
+1.415.882.8031
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The Federal Circuit Upholds the Appointment
of an Independent Technical Expert Witness
to Testify in Complex Patent Cases
By approving the use of a seldom-used evidence rule, the U.S. Court of Appeals for
the Federal Circuit’s March 9, 2009 decision in Monolithic Power Systems, Inc. v.
O2 Micro Int’l Ltd. opens the door to having non-partisan technical specialists advise
the jury and potentially sway decisions on key issues in complex patent cases. In
Monolithic Power, the Federal Circuit upheld the appointment of an independent
technical expert witness under Fed. R. Evid. 706 to testify before the jury on the
contested issues in a patent infringement case. Rule 706 allows a court to appoint an
expert witness either “on its own motion or on the motion of any party.” Such a
witness “may be called to testify by the court.” Although the Federal Circuit noted
that “district courts rarely make Rule 706 appointments” and acknowledged that the
“predicaments inherent in court appointment and revelations to the jury about the
expert’s neutral status trouble this court to some extent,” the court found that the
district court did not abuse its discretion under Ninth Circuit precedent in appointing
a Rule 706 expert witness.
The Background
After expressing frustration with the technical complexities of the relevant patent at a
case management conference, Judge Claudia Wilken of the U.S. District Court for
the Northern District of California entertained the idea of appointing an independent
expert under Rule 706 to testify “on the electrical engineering aspects” of the case.
Defendant and patent holder O2 Micro Int’l Ltd. objected, while plaintiff Monolithic
Power Systems, Inc. (“MPS”) supported the idea. Nearly three months later, Judge
Wilken ordered the parties to agree upon an expert. The court also outlined a
protocol detailing what information the parties were to provide the expert and when
the parties were to complete discovery regarding the expert’s opinions. At trial, the
expert offered testimony largely consistent with MPS’ theory of the case. The
district court instructed the jury that the 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.” Ultimately, the jury rendered a verdict favorable to MPS, finding
that the asserted claims were invalid.
O2 Micro appealed, arguing that the district court’s appointment of an independent
expert witness who testified on the merits unduly burdened its Seventh Amendment
right to trial by jury. According to O2 Micro, the district court appointed the expert
because it believed that the technical issues were too complex for a jury, in violation
of established Ninth Circuit precedent that there is no “complexity exception” to a
litigant’s Seventh Amendment rights. O2 Micro also argued that the expert’s
testimony relieved the jury of its tasks.
IP Litigation Alert
The Decision
The appointment of an independent expert is a
procedural ruling reviewable under regional circuit
law. In reviewing this Northern District of
California case, the Federal Circuit applied Ninth
Circuit law with respect to Rule 706. The Ninth
Circuit reviews the decision to appoint a Rule 706
expert for an abuse of discretion. Acknowledging
that “[c]ourts and commentators alike have
remarked that Rule 706 should be invoked only in
rare and compelling circumstances,” the Federal
Circuit nevertheless noted that Ninth Circuit law
allows “wide latitude” for judges to do so. The
Federal Circuit further found that the district court
properly administered the standards set by Rule 706:
The court had allowed the parties to show cause why
an expert witness should not be appointed; over O2
Micro’s objections, the court instructed the parties to
confer upon a mutually agreeable witness; the court
provided detailed written instructions to the expert
regarding his duties; the court ordered the
independent expert to make himself available for
depositions and for examination at trial; the court
instructed the parties to share the expert’s fees and
expenses; and the court did not limit in any way the
parties’ ability to call their own experts, and allowed
these experts to attack, support or supplement the
independent expert's testimony. Finally, the court
instructed the jury that it should not assign the
independent expert’s opinion greater inherent weight
because of his independent status.
The Federal Circuit also rejected O2 Micro’s
argument that the expert’s testimony relieved the
jury of its tasks as policy arguments against Rule
706, noting that Congress had considered and
rejected the very same arguments during the framing
of Rule 706, and that the Supreme Court has long
recognized the constitutionality of court-appointed
experts. The Federal Circuit also pointed out that
the record did not show that O2 Micro’s jury
demand or Seventh Amendment rights were denied
or encumbered.
As a result, the Federal Circuit found that the
district court did not abuse its discretion where it
was “confronted by what it viewed as an unusually
complex case and what appeared to be starkly
conflicting expert testimony.”
Analysis
Monolithic Power affirms the authority of the
district court to appoint an independent technical
expert witness under Rule 706 to testify on the
merits of a patent case to a jury, provided that
certain procedures are followed and subject to the
law of the applicable circuit on Rule 706 experts.
As a result, courts now may be more willing to
appoint independent technical expert witnesses in
patent cases to provide guidance and clarity to the
jury on complex technical issues. Although the
Federal Circuit found that the district court in
Monolithic Power was “confronted by what it
viewed as an unusually complex case and what
appeared to be starkly conflicting expert testimony,”
it might be expected that many close patent cases 1)
would be complex and 2) would have conflicting
expert testimony. In other words, many patent cases
may present appropriate circumstances for
appointing an independent testifying expert witness.
Accordingly, litigants in patent cases should be alert
to the opportunities for proposing an independent
technical expert witness. Similarly, the prospect of
having an independent expert appointed will likely
compel litigants to vet their positions thoroughly. If
appointment of such an expert becomes more
frequent, the attending uncertainty over the
independent expert witness’ testimony may affect
settlements and, ultimately, which cases go to trial.
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©2009 K&L Gates LLP. All Rights Reserved
March 2009
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