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.

By Jason Rantanen

The Charles Machine Works, Inc. v. Vermeer Manufacturing Company (Fed. Cir. 2013)
Panel: Dyk, Mayer, Moore (author)

The Charles Machine Works (CMW) holds U.S. Patent No. 5,490,569, which relates to a two-pipe apparatus for boring underground holes in the horizontal direction.  Claim 1 is illustrative (emphasis added):

1. An apparatus for boring a hole with a directional control from the surface comprising:

In 2011, CMW brought an infringement suit against Vermeer Manufacturing.  A central issue in the dispute was the design of the drill casing.  "Vermeer’s apparatus for boring is a “bent sub,” in which two sides of the body or casing are attached together to form a bend or elbow in the casing."  Order Granting Summary Judgment for Defendant, Charles Machine Works, Inc. v. Vermeer Manufacturing Co., No. 4-11-cv-507-CRW-CFB (June 21, 2012).  CMW contended that this "bent sub" structure met the "deflection shoe" and "mounted on" limitations.  After construing "mounted on" to mean "attached to" and "deflection shoe" to mean a "structure that can be attached to the side of the body or casing and that can be positioned to deflect the boring apparatus from a linear path," the district court granted summary judgment of nonfringement, both literal and equivalents.

On appeal, the Federal Circuit affirmed the district court's claim construction and summary judgment of no literal infringement without substantive discussion. The Court then turned to the doctrine of equivalents.  From the district court's summary judgment order:

Also there is no infringement in this record under the doctrine of equivalents. A bent sub is plainly different from and not the equivalent of the “deflection shoe” described over and over in the ‘569 patent that must be “mounted on” the apparatus, fully described with drawings in the patent itself. This record does not establish that persons learned in the art would deem the bent sub and mounted shoe interchangeable. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950). None of Vermeer’s products described in this summary judgment record infringes any of the claims in the ‘569 patent.

Order Granting Summary Judgment for Defendant at 8.  The Federal Circuit disagreed and found that the testimony of CMW's expert was sufficient to raise a genuine factual dispute under the "function-way-result" test for determining equivalency.

Vitiation: In addition to arguing the factual issue of equivalency, Vermeer's brief also raised a vitiation argument: that allowing the "bent sub" to satisfy the deflection shoe limitation would "read the “deflection shoe” and “mounted on” limitations out of the claims."  Vermeer Response Brief at 58. In addressing this argument, the Federal Circuit reaffirmed its pushback against the vitiation doctrine.  Just as the court did in Deere and Brilliant Instruments, Charles Machine Works treats vitation not as an exception to equivalency, but as simply the application of the "function-way-result" or "insubstantial differences" tests:

Vitiation is “a legal determination that ‘the evidence is such that no reasonable jury could determine two elements to be equivalent.’” Deere, 703 F.3d at 1356 (quoting Warner-Jenkinson, 520 U.S. at 39 n.8). “[S]aying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established ‘function-way-result’ or ‘insubstantial differences’ tests.” Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013)

…

We also conclude that the doctrine of claim vitiation does not bar CMW’s application of the doctrine of equivalents. On summary judgment, the appropriate question for the court was whether no reasonable jury could find equivalence based on the record. Deere, 703 F.3d at 1356. Based on CMW’s expert declaration, we hold that a reasonable jury could have found equivalence, and the court erred by making a contrary legal determination.

Slip Op. at 8-9.  The court's conclusion in this case is particularly notable given that it applied vitiation in a very different way to a "mounted on" limitation in Asyst Technologies, Inc. v. Emtrak, Inc. 402 F.3d 1188, 1195 (Fed. Cir. 2005), ("This case falls within both that doctrine and its corollary, the "specific exclusion" principle, since the term "mounted" can fairly be said to specifically exclude objects that are "unmounted."). 

CMW's Lack of Notice: The Federal Circuit also reversed the district court's grant of summary judgment as to Vermeer's non-commercial prototypes (which include a structure called a wear pad) on the ground that CMW had insufficient notice that the summary judgment decision would include the prototypes.  Vermeer's moving papers were titled "MOTION FOR SUMMARY JUDGMENT THAT VERMEER’S COMMERCIAL
PRODUCTS DO NOT INFRINGE," its proposed rulings bore the heading "GRANT SUMMARY JUDGMENT
THAT VERMEER’S COMMERCIAL PRODUCT DOES NOT INFRINGE THE ASSERTED CLAIMS . . . OF THE
’569 PATENT," and at oral argument it indicated that the prototypes were not the focus of the motion and trial would still be required on the prototypes. 

By Jason Rantanen

UPDATE: On Wednesday, the content of the Advisory Council page on the Federal Circuit's website was removed and replaced with the message "This site is being updated and will be posted soon."  Consequently, the two Model Orders referenced below are no longer available at the Court's website.

This morning the Federal Circuit Advisory Council, a committee including practitioners and academics formed to advise the Federal Circuit on the rules and internal operating procedures of the court, released its Model Order Re: Excess Claims and Prior art.  Download Model Order Excess Claims

The Model Order is being provided as an aid to trial courts should they choose to exercise their discretion to limit the number of claims and prior art references asserted by patent holders and accused infringers.  While it is not binding on district courts, and its specific language has not been approved by the Court of Appeals for the Federal Circuit, this model order holds the potential to be a powerful mechanism for standardizing the procedures of patent litigation.  (It's also worth noting that Chief Judge Rader, three district court judges and an ITC judge served on the Model Order committee itself).  It should also be noted that the order itself is flexible and can be tailored to individual cases.

Some key points:

• Limits imposed at two points: A preliminary stage occuring after production of "core" technical documents but before claim construction and a final stage after claim construction but before expert reports consisting of a subset of the preliminary claims/references.
• At both stages the patent holder first identifies the asserted claims.  Fourteen days later the patent defendant identifies the prior art references.   
• Preliminary stage: the patent holder is limited to no more than 10 claims from each patent and not more than 32 claims total, while the patent defendant is limited to no more than 12 prior art references against each patent and not more than 40 references total.
• Final stage: the patent holder is limited to no more than 5 claims from each patent and not more than 16 claims total, while the patent defendant is limited to no more than 6 prior art references per patent and not more than 20 references total.  
• The Model Order also includes a three-page explanation, with citations, of why adopting an order limiting excess patent claims and prior art benefits both the court and the parties themselves. 

The Model Order Re: Excess Claims follows on the heels of the Advisory Council's E-Discovery Model Order, which Dennis previously wrote about.  I've heard from several practitioners that the E-Discovery Model Order has produced a substantial positive impact on discovery in patent litigation, and that the trend is toward leaner, more focused discovery.  I'd be interested in hearing whether that's reflective of patent litigation more broadly.