By Jason Rantanen
Rembrandt Vision Technologies, L.P. v. Johnson & Johnson Vision Care, Inc. (Fed. Cir. 2013) Download Rembrandt v J&J
Panel: Dyk, Clevenger, Moore (author)
While this opinion is precedential, it does not contain any major legal prouncements. It does, however, illustrate the importance of procedural rules in patent litigation. Here, Rules 26 and 37 of the Federal Rules of Civil Procedure played the pivotal role in the outcome of the infringement suit.
Rembrandt sued Johnson & Johnson Vision Care (JJVC) for infringement of a patent covering a type of soft gas permeable contact lenses. At issue during trial was whether JJVC's lenses were "soft" under the parties' agreed upon claim construction ("a contact lens having a Hardness (Shore D) less than five"). To support its position that JJCV's lenses met this limitation, Rembrandt relied on the testimony of its expert witness who allegedly conducted a hardness test using procedures described in his expert report.
While on the stand at trial, however, Rembrandt's expert "suddenly changed course in the middle of cross-examination and testified that he did not follow the procedures listed in his expert report." Slip Op. at 4-5 (quoting district court). Instead, he testified that he followed a different procedure that was less susceptible to many of the criticisms that JJVC was leveling at the methodology described in the report. Based on the inconsistency, the court struck the expert's testimony under FRCP 26 and 37 and, because his testimony was the only evidence that the "soft" limitation was met, granted JMOL in favor of JJVC.
The Federal Circuit affirmed the district court's rulings on appeal. "Rule 26 requires an expert witness to disclose an expert report that contains “a complete statement of all opinions the witness will express and the basis and reasons for them.” Slip Op. at 7, quoting FRCP 26(a)(2)(B)(i). Furthermore, "[a]n expert witness may not testify to subject matter beyond the scope of the witness’s expert report unless the failure to include that information in the report was “substantially justified or harmless.” Id. (quoting FRCP 37(c)(1)).
At issue was whether the expert's failure to comply with the requirements of Rule 26 was "substantially justified or harmless. The Federal Circuit agreed that it was not substantially justified:
The court rightly found that “[t]here is simply no excuse for Dr. Beebe waiting until cross-examination to disclose his testing procedures.” JMOL Order, 282 F.R.D. at 664. Dr. Beebe submitted his expert report nearly six months prior to trial. Id. at 663–64; J.A. 96. Leading up to trial, the contents of his expert report were the subject of his deposition and were at issue in the pre-trial briefing, including dispositive motions. JMOL Order, 282 F.R.D. at 663–64. JJVC moved to exclude Dr. Beebe’s testimony on the basis that his Shore D testing did not comply with industry standards. Id. at 658. JJVC also moved for summary judgment on the ground that the testing was not sufficient to raise a genuine issue of material fact as to the Shore D Hardness values of the accused lenses. Id. Nevertheless, even though the adequacy of his Shore D Hardness testing methodology was in dispute prior to trial, Dr. Beebe never attempted to supplement his expert report. As the district court observed, “Dr. Beebe thus apparently either did not review his expert report or forgot how he had actually performed the test.” Id. at 664.
Slip Op. at 8. Nor was it harmless:
JJVC prepared its noninfringement defense based on the methodology disclosed in Dr. Beebe’s expert report, and opted to challenge that methodology rather than introduce competing expert testimony. JMOL Order, 282 F.R.D. at 664. Nothing during the course of the proceedings alerted JJVC to the possibility that Dr. Beebe would change his testimony. To the contrary, Rembrandt stood behind Dr. Beebe’s expert report at summary judgment and Dr. Beebe testified to the veracity of his report on direct examination. Id. at 657–58. Dr. Beebe even initially defended his testing methodology upon cross-examination. Id. at 658–59. Dr. Beebe only recanted his expert report when, after being “repeatedly challenged on cross-examination,” he was “[u]nable to explain how his written procedures complied with the standards” that govern hardness testing. Id. at 659, 668. While Dr. Beebe characterized the errors in his report as “typo[s],” it is undisputed that the shift in his testimony was both substantive and substantial. Such a late change in course significantly hampered JJVC’s ability to adequately cross-examine Dr. Beebe and denied it the opportunity to develop or introduce competing evidence.
Id. at 8-9. The expert's testimony was the only evidence that Rembrandt pointed to on the Shore D Hardness requirement. What about other evidence of the "soft" limitation? Because Rembrandt agreed to the construction of "soft" as requring the lenses to have a Hardness (Shore D) less than five, JJVC's characterization of its lenses as "soft" was irrelevant. "Generic statements that the accused lenses are “soft” had the potential to confuse the jury and did not bear on whether the accused lenses had a Shore D Hardness of less than five." Id. at 10.