Rembrandt v. Johnson & Johnson: Expert Reports and Inconsistent Testimony

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.

13 thoughts on “Rembrandt v. Johnson & Johnson: Expert Reports and Inconsistent Testimony

  1. 13

    Why of course DC, the claims are indefinite. And you know what the problem was? Neither the inventor nor any patent attorney working for him understood what they were doing. They were amateurs. They were note even of ordinary skill in the art. So they drafted the patent and claims without really understanding what they were talking about and they did so in a way that should have resulted in the claims being held invalid as indefinite.

    But they got a patent out of the patent office for some reason. And I don’t even want to begin to tell you what happened to us in court. To me was a very bitter experience.

  2. 12

    I would think that if there are two well established standards for roughness in the art, and the claim did not specify, and the accused device infringed under one standard and did not infringe under the other standard, then the claim would be invalid (indefinite or vague). It would be like claiming contact lenses with a hardness of 60 Shore, without specifying Shore A or Shore D. In both cases you have very well established tests that don’t leave much room for argument, and it seems necessary to be clear about which standard you are adopting for your claim language.

  3. 11

    anon, yes. A generic term cannot embrace two distinctly different measurements if is coupled to only one range.

    But, that seems to be what happened in Hemcon as well.

  4. 9

    Regardless, if there is an industry standard way of testing something, and an industry standard classification of soft or hard depending on the results, any expert opinion that did not comply with the industry standard should be tossed.

    I once had a case where the claims had the term “roughness factor” and a range. The specification used roughness factor two different senses, a measurement based upon average and a measurement based upon peak-to-valley. Within the industry there was a standard test that resulted in a peak-to-valley roughness that was a factor of 10 greater than the average roughness.

    The patentee had distinguished the prior art on the basis that the claimed roughness was significantly greater than the prior art. But the prior art disclosed an average roughness, which, converted to peak-to-valley, was within the claimed range.

    So what do the claims cover? To avoid the prior art, the claimed roughness factor would have to be peak-to-valley. But the patentee accused products having an average roughness within the claimed range.

    You decide.

  5. 8

    Pauly Shore raises an engineering issue: hardness measurements at the bottom of the Shore D scale are pretty unreliable. The same material can be tested repeatedly and yield different results. The Shore A scale would provide more reliable results. Contact lenses would be somewhere around 40-60 Shore A, right in the middle of the range, so the measurements would be more reliable and reproducible. That would favor one party or the other.

  6. 7

    Why would anyone need an expert to tell them that a contact lens was soft, rather than hard? I think any jury could make that determination without expert help.

    The parties agreed to the technical definition of “soft”. I’m sure the patentee would have been happy to let the jury make that assessment on their own as to infringement, but not with respect to validity.

    I wonder whether “soft” is actually a limitation at all, given its appearance in the preamble and the apparent lack of any link to the physical structure/characteristics in the claim body. But I guess the parties didn’t argue about that.

    If JVCC had criticisms of the test he used in his report, why not do another test, along with the proper test, that addresses those criticisms?

    They might not have wanted to know the answer. The burden of proof for infringement was on Rembrandt; once JVCC spotted flaws in the expert report, they could have decided to attack the affirmative case, rather than try to rebut it. It certainly worked out for them.

  7. 6

    all of my Hardness scales go from 0 to 100 … but D is for harder materials and A is for softer ones.

  8. 5

    “Why would anyone need an expert to tell them that a contact lens was soft, rather than hard?”
    – From what I gather reading Jason’s post and the CAFC opinion, it seems there was some standard that the expert appears to have initially said he followed, but then later admitted he did not follow.

    “If JVCC had criticisms of the test he used in his report, why not do another test, along with the proper test, that addresses those criticisms? The ASTM test takes only a few minutes.”
    – Because J&J did not figure out – until the expert actually admitted it during the trial – that he had not really followed the procedure he claimed to have followed.
    – I don’t care how fast a lab could run such a test, you can’t usefully get it while at trial. The person against whom such new evidence is offered has no ability to thoroughly review and counter such brand new manufactured evidence.

    (Disclaimer – not a litigator, alligator, or othergator.)

  9. 3

    Thinking back to my engineering days, I don’t think Shore D has a 5 on its scale. Shore A does…. ?

  10. 2

    This is a curios case.
    Isn’t there a standard ASTM test for hardness? And why not use that? There is no discussion in the patent as to the hardness value cut-off between hard and soft lenses, or what test is used to measure hardness for contact lenses. 5 Shore D came in through the prosecution history, and even there no test standard was discussed.
    Should claim construction have included the method under which the hardness was determined?
    Why would anyone need an expert to tell them that a contact lens was soft, rather than hard? I think any jury could make that determination without expert help.
    If JVCC had criticisms of the test he used in his report, why not do another test, along with the proper test, that addresses those criticisms? The ASTM test takes only a few minutes.
    Can anybody with litigation experience shed light on why this expert restricted himself to a single test, or why the claim construction did not specify a test?

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