Use of Experts, Daubert, and Motions in Limine · 2018-02-15 · This confidential draft is a...

Use of Experts, Daubert, and Motions in Limine

WG10 Commentary on Patent Litigation Best PracticesThe Sedona Conference Phoenix, AZ

Copyright 2014 The Sedona Conference All rights reserved.

This confidential draft is a work-in-progress of The Sedona Conference® Working Group 10 and are not for publication or dissemination to anyone who is not a member of the Working Group Series without prior written permission.

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USE OF EXPERTS, DAUBERT, AND MOTIONS IN LIMINE

Drafting Team

Tina Chappell Richard D. Egan

Andrea Weiss Jeffries Lisa B. Pensabene William R. Poynter

Mark Supko

WG10 Steering Committee Liaisons

Robert Baechtold Vera M. Elson

WG10 Judicial Advisors

Hon. Joy Flowers Conti Hon. Faith S. Hochberg

Managing Editor

Jim W. Ko

Editor-in-Chief

Gary M. Hoffman


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Contents Introduction - Overview of Different Types of Expert Witnesses ......................................... 1

A. Party-Retained Experts ........................................................................................... 1

B. Variations in presentations of parties’ own experts ................................................ 2

1. Consecutive Presentation Issue by Issues ............................................................... 2

2. The Australian “Hot Tub” Approach To Party-Retained Experts .......................... 2

C. Court Appointed Experts ........................................................................................ 3

1. Testifying Court Appointed Experts ....................................................................... 3

2. Technical Advisors ................................................................................................. 4

D. Best Practices For Use of Court Appointed Experts - Generally ............................ 5

Use of Experts in Pre-filing Investigations and Drafting Early Pleadings ............................ 6

A. Background ............................................................................................................. 6

B. Best Practices .......................................................................................................... 6

Use of Experts To Present A Technical Tutorial ................................................................... 7

A. Background ............................................................................................................. 7

B. Best Practices .......................................................................................................... 7

Use of Experts at the Markman Hearing .............................................................................. 10

A. Background ........................................................................................................... 10

B. Best Practices ........................................................................................................ 10

Expert Discovery ................................................................................................................. 15

A. Background ........................................................................................................... 15

B. Best Practices ........................................................................................................ 17

Use of Experts On Summary Judgment ............................................................................... 19

A. Background ........................................................................................................... 19

B. Best Practices ........................................................................................................ 19

Daubert and In Limine Motions ........................................................................................... 21

A. Background ........................................................................................................... 21

B. Best Practices ........................................................................................................ 21

Use of Experts at Trial ......................................................................................................... 23

A. Background ........................................................................................................... 23

1. Potential Evidentiary Issues .................................................................................. 23

2. Methods to Address Potential Issues with Expert Testimony at Trial .................. 25

3. Demonstratives To Aid Expert Testimony ........................................................... 26


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B. Best Practices ........................................................................................................ 28


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Use of Experts, Daubert, and Motions in Limine Best Practices “At a Glance”

Best Practice 1 – Communications between the court and the CAE (or technical advisor) shall occur in the presence of the party attorneys or put on the record in some fashion. ........................ 5

Best Practice 2 – To the extent the Court intends to utilize the CAE to assist with the Markman hearing or with a submitted motion, the court should provide a tentative ruling in advance and permit the parties to address any technical flaws prior to making the ruling final. ........................ 5

Best Practice 3 – In cases requiring special expertise beyond that available in-house with companies or law firms, counsel should specially retain technical experts that can assist in meeting the requirements of Rule 11 and in preparing infringement or validity contentions. ....... 6

Best Practice 4 – In Rule 11 disputes, counsel should consider using specially-retained technical experts to explain how Rule 11 was, or was not, satisfied in the case. ........................................... 6

Best Practice 5 – The timing and format of the technology tutorial should be discussed at the Rule 26(f) conference and addressed in the Court’s Rule 16(b) Scheduling Order ....................... 7

Best Practice 6 – If a “live” technology tutorial is to be presented to the court, the presentation ordinarily should be made by counsel, with the parties’ retained experts available to respond to questions from the court.................................................................................................................. 8

Best Practice 7 – A court-appointed expert or technical advisor generally should not be used to provide a technology tutorial to the court. ...................................................................................... 8

Best Practice 8 – The issue of whether and to what extent experts will be involved in the Markman process should be discussed during the Rule 26(f) conference and addressed in the court’s Rule 16(b) scheduling order. ............................................................................................ 10

Best Practice 9 – Experts retained by the parties may serve a useful role for the Markman hearing in appropriate cases, such as cases involving relatively complex technology or disputes over how a person of ordinary skill in the relevant art would understand technical terms in the patent. ..... 11

Best Practice 10 – The court may consider a “hot tubbing” approach in which the opposing experts appear together and are given the opportunity to engage in dialog in response to questions posed by the court and/or counsel................................................................................. 12

Best Practice 11 – Testimony from patent law experts should be received only in very rare cases........................................................................................................................................................ 12

Best Practice 12 – Testimony from a court-appointed expert should be received at the Markman hearing only sparingly. .................................................................................................................. 13

Best Practice 13 – A court-appointed technical advisor generally should not be used to provide off-the-record, substantive input to the court on the meaning of disputed claim terms, but with


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appropriate safeguards may be used to assist the court in understanding complex technical issues........................................................................................................................................................ 13

Best Practice 14 – In general, it is most efficient to phase the case such that expert reports are prepared after the Court has ruled on claim construction. ............................................................ 17

Best Practice 15 – Consider providing a date in the scheduling order for disclosure of the subject matter of expert reports to be filed before opening reports are scheduled to be exchanged or of the experts who may be filing an expert report. ............................................................................ 18

Best Practice 16 – Parties should serve all art relied upon with the expert report. ....................... 18

Best Practice 17 – Parties should conduct expert depositions, for any that are to be taken, after all expert reports have been served. ................................................................................................... 18

Best Practice 18 – The expert report under Rule 26 should set forth all opinions that the expert may present at trial and a complete explanation and full support for the opinion to the extent any such testimony will be presented at trial. Court should limit the expert’s trial testimony to what is fairly and reasonably presented in the expert’s report. ............................................................. 18

Best Practice 19 – If the expert is deposed, the expert should not be able to utilize the deposition as a mechanism to voluntarily supplement his/her report. ............................................................ 18

Best Practice 20 – Expert testimony in support of a motion for summary judgment should be based on facts that are truly undisputed. ....................................................................................... 19

Best Practice 21 – In opposing a motion for summary judgment, a party should submit expert testimony that truly disputes facts, or that is supported by actual disputes of fact. ...................... 19

Best Practice 22 – Expert declarations should be consistent with opinions provided in prior, timely-served reports meeting requirements of Rule 26. .............................................................. 19

Best Practice 25 – Expert discovery normally should be completed prior to summary judgment submissions. .................................................................................................................................. 20

Best Practice 26 – Experts should not be permitted to opine as to the intent element of inequitable conduct in conjunction with a summary judgment motion. ....................................... 20

Best Practice 27 – Expert testimony regarding patent office procedure and factual developments during prosecution should be carefully scrutinized to ensure that it does not veer improperly into the legal conclusions of an expert witness. ................................................................................... 20

Best Practice 28 – Daubert challenges should be made early on, after expert discovery but well in advance of trial.......................................................................................................................... 21


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Best Practice 29 – Daubert challenges should not be used in the absence of evidence that the scientific methodology is wrong, or that the expert lacks the qualifications to draw the opinions he does. ......................................................................................................................................... 21

Best Practice 30 – Daubert challenges should not be brought if testing or methodology is a disputed issue—that should be reserved for cross examination ................................................... 22

Best Practice 31 – The Court should focus on reliability in evaluating Daubert motions and in exercising its gatekeeper function. ................................................................................................ 22

Best Practice 32 – Seek permission to prepare and serve a supplemental expert report as soon as an evidentiary issue is identified. .................................................................................................. 28

Best Practice 33 – Determine, as early as possible, whether there may be objections to an expert’s qualifications or anticipated testimony. .......................................................................... 29

Best Practice 34 – Use motions in limine to address potential issues with expert testimony rather than waiting to object at trial. ....................................................................................................... 30

Best Practice 35 – File motions in limine regarding expert testimony along with any other motions in limine........................................................................................................................... 31

Best Practice 36 – If a motion in limine to exclude an expert’s testimony is not granted or a definitive ruling is not obtained, restate and preserve the objection at trial. ................................ 31

Best Practice 37 – If expert testimony has been excluded by a motion in limine, the proponent of the evidence should make an offer of proof to preserve the issue for appeal. .............................. 31

Best Practice 38 – For objections that raise issues more complicated than the scope of the report, a bench memo, or copies of case law, are suggested to aid the court. .......................................... 31

Best Practice 39 – Demonstratives to be used by an expert should contain citations to the evidence. ....................................................................................................................................... 32

Best Practice 40 – A procedure for the exchange of demonstratives should established between the parties and be set out in the pretrial order. .............................................................................. 32

Best Practice 41 – Expert testimony should not consist of an expert reading through demonstratives on direct examination. ......................................................................................... 32

Best Practice 42 – Experts should assist in the creation of the exhibits to be used on their direct examination. .................................................................................................................................. 32

This confidential draft is a work-in-progress of The Sedona Conference® Working Group 10 and are not for publication or dissemination to anyone who is not a member of Working Group 10 without prior written permission.

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Introduction - Overview of Different Types of Expert Witnesses

Patent litigation may involve several different types of experts. Depending on the case, the parties may invoke the assistance of one or more subject matter experts, such as technical experts in the technical fields of the patent(s)-in-suit, and experts on damages-related issues, such as economists, licensing experts, and market survey experts. Each subject matter expert involved in a given case may be retained in a number of different ways, and, depending on the nature of the retention, will interact with the parties, their attorneys, and the Court (or other tribunal, such as an arbitration panel) in a particular manner.

A. PARTY-RETAINED EXPERTS

One standard approach in U.S. patent litigation is for the parties to retain their own experts and to pay them an hourly or daily rate for the time they spend working on the matter. Each party is free to evaluate potential experts’ education and training and ability communicate with the fact-finder(s), and to pay the expert the rate it deems appropriate. Such experts typically work with the attorneys for the party who retained him/her to prepare expert reports pursuant to Federal Rule of Civil Procedure 26, to prepare for his/her deposition, evaluate the opposing expert’s report, assist the attorneys with the opposing expert’s deposition, present a tutorial to the court (or to assist in the preparation of a tutorial to be delivered by an attorney), and to testify at the Markman hearing and/or at trial. There are several benefits associated with party-retained experts. Such experts may help the judge and jury to understand complicated technical, economic, and/or other issues in the case and can present the party’s position on the disputed issues clearly in light of their background. Opposing counsel, often with the assistance of their own experts, can point out weaknesses in an expert’s opinion(s) on cross-examination, and explain those weaknesses to the jury in closing. Moreover, as compared to a single expert, such as in the Court Appointed Expert scenario, multiple party-retained experts have the benefit of allowing different perspectives on technical issues to be aired before the fact-finder. There are also drawbacks to party-retained experts. As an initial matter, the judge and jury hear one side at a time. Experts often talk past each other or have irreconcilable positions which can be confusing to lay persons. As a result, the jury may decide important questions, such as infringement and validity, based on the personal characteristics of the expert(s) or other issues unrelated to the substance of the expert’s opinion. In addition, party-retained experts may be biased in favor of the party who retained them. Bias may result from a number of different sources. Compensation by a party, which is discoverable,1 may create bias; paid experts are often criticized as “hired guns.” Bias may also result from the manner in which party-retained experts are selected as attorneys hiring the expert naturally seek out experts who support their viewpoint.

1 Under Fed. R. Civ. P. 26(b)(4)(C), communications between the party’s attorney and any witness required to provide a report under Fed. R. Civ. P. 26(a)(2)(B) are protected from disclosure, except to the extent that the communications relate to compensation for the expert’s study or testimony.


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B. VARIATIONS IN PRESENTATIONS OF PARTIES’ OWN EXPERTS

1. Consecutive Presentation Issue by Issues

It would be helpful to develop a process for the jury to better understanding the testimony of the experts and to be able to do a side by side comparison. The topics that the experts are going to testify on can be broken into a series of categories. Then each category being taken one at a time. The first expert would take the stand and provide direct testimony relevant to the category and then be cross examined and finally any redirect. Then the opposing expert would provide testimony on that category. This would continue until all categories are completed. This could be further dissected so that during plaintiff’s case, only infringement and non-infringement arguments are covered. Invalidity issues would then be covered in the defendant’s case in the same manner. 2. The Australian “Hot Tub” Approach To Party-Retained Experts

As discussed further below in connection with certain best practices, Australian “hot tubbing” is a technique utilized in Australian courts and some U.S. courts for receiving evidence from multiple experts simultaneously. This technique, sometimes referred to as “concurrent expert evidence” generally works as follows (1) each side selects and pays for its own experts; (2) there is a pre-trial exchange of expert reports and a joint submission with all points of agreement/disagreement among the experts; (3) after all “lay evidence” has been presented at trial, each expert files a brief summary of his/her position in light of the evidence; (4) competing experts are sworn in and seated in the witness box (fully clothed and without hot water); (5) the plaintiff’s expert offers a brief oral exposition (around 10 minutes); (6) the defendant’s expert asks the plaintiff’s expert questions directly (without counsel); (7) the defendant’s expert offers a brief oral exposition (around 10 minutes); (8) the plaintiff’s expert asks the defendant’s expert questions directly (without counsel); and finally, (9) each expert provides a summary of their discussion. After the “hot tubbing” process is completed, counsel cross-examine and re-examine in the conventional way. This approach is said to be beneficial because it focuses the expert testimony on true areas of substantive disputes and eliminates superfluous testimony. In addition, since experts are testifying at the same time on the same issues rather than having testimonies days or even weeks apart, their disputes are more apparent and the issue of “talking past each other” can be avoided. By directly addressing (and being directly addressed by) their peers, experts can stay focused on the substance of the technical issues, rather than on the drama of cross-examination. This approach is reported to be more economical as well, taking about half the time of more traditional methods. Of course, “hot tubbing” also has its limits. As an initial matter, to date it has only been used for non-jury matters, and the consensus of the working group is that it may create more confusion for a jury to listen to this type of debate between experts and hence is unlikely to be suitable for a jury in a patent infringement case. Moreover, for it to be effective, the judge must be well


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prepared to moderate the discussion and to prevent it from devolving into unproductive squabbles. The approach may also unfairly favor more articulate experts as some experts may perform poorly due to a lack of conversational speaking ability. Additionally, junior experts may defer to more senior experts given the general pecking order common in academia. Finally, because experts are retained by the parties, this approach may be susceptible to the same bias issues discussed above. Thus far, the “hot tub” approach has only been used in a handful of cases in the U.S. For example, Judge Woodlock of the U.S. District Court for the District of Massachusetts first used “hot tubbing” in Black Political Task Force,2 wherein two political scientists discussed a voting rights issue. The U.S. Court of Federal Claims has also used “hot tubbing” for a damages issue in a breach of contract case.3 The Northern District of Ohio has also used “hot tubbing” in a Daubert hearing.4 With respect to its usage in patent cases, Judge Woodlock has also used “hot tubbing” in a Markman hearing in Genzyme Corp.,5 as well as in other patent cases.6 Best practices for the use of party-retained experts at various stages of patent litigation are discussed in the subsections below.

C. COURT APPOINTED EXPERTS

1. Testifying Court Appointed Experts

A Court Appointed Expert (“CAE”) is an expert who is appointed by the Court, either with or without the parties’ consent.7 The parties divide equally the compensation to the expert based on the expert’s hourly rate. Generally, the CAE is the only technical expert to testify at trial, but Federal Rule of Evidence 706(e) makes clear that the “rule does not limit a party in calling its own experts.” Some courts favor this approach because it eliminates bias based on selection by counsel, working with counsel, and being paid by counsel or the party being represented by counsel. Practitioners generally disfavor the CAE approach. First, the use of a single expert may deprive the fact-finder of a second, valid viewpoint on an issue. Second, the CAE could be incorrect on one or more issues, and there is no other expert to 2 Black Political Task Force v. Galvin, 300 F. Supp. 2d 291 (D. Mass. 2004). 3 Anchor Sav. Bank v. U.S., Case No. 1:95-cv-00039 [complete cite] 4 In re Welding Fume Prods. Liab. Litig., 2005 WL 1868046, FN 39 (N.D. Ohio Aug. 8, 2005) (O’Malley, J.) (After receiving “dramatically different views” from two experts, “the Court suggested an additional day of hearings, using what has come to be known as the ‘hot tub’ format: both [experts] would appear before the Court simultaneously to answer questions from the Court and to respond directly to each other’s opinions. The two experts did re-appear, and the parties and the Court found this ‘hot tub’ approach extremely valuable and enlightening.”). 5 Genzyme Corp. v. Seikagaku Corp., Case No. 11-cv-10636 (D. Mass. 2012). 6 Judge Woodlock is quoted as saying he has used “hot tubbing” in a number of non-jury cases including patent and business cases, but he did not specify the other cases. Lisa C. Wood, “Experts in the Hot Tub,” 21 Antitrust ABA 95 (Summer 2007). 7 Fed. R. Evid. 706(a).


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point out errors or to challenge the CAE. Indeed, with no party or attorney overseeing the CAE’s efforts, the CAE may not devote the time necessary to thoroughly understand important aspects of the parties’ positions and thus may not be as immersed in the issues, or be able to provide as informed a decision, as party experts would be. There are also open questions relating to the deposition of an expert and his/her testimony at trial (e.g., who prepares the expert and to what extent?). And, relatedly, some practitioners find it difficult to cross-examine a CAE aggressively at trial for fear that the jury may perceive an aggressive cross as an attack on the Court. Third, where the parties seek to use their own experts in addition to a CAE, the CAE may have undue sway with a jury as the court-sanctioned provider of a “neutral” opinion; in effect, neutralizing the work put into presenting a party expert, and can have a “loose cannon” effect. Finally, the presence of a CAE who must also be dealt with, deposed, and paid for, adds further burden and expense to what is often already a burdensome and expensive case.8 2. Technical Advisors

In some cases, a district court judge will request or the parties will offer to provide a technical advisor to the court.9 A technical advisor, as distinct from a CAE, would not be expected to testify in the matter. Rather, the technical advisor works with the judge in a manner similar to that of a law clerk, but on technical rather than legal issues. That is, the technical advisor would be available to explain the technology of the patent(s)-in-suit to the judge and to answer technical questions. Judges employ different practices when it comes to technical advisors. Some judges put all discussions with a technical advisor on the record, but most judges prefer to consult with the technical advisor privately. The parties would typically split the fees of the technical advisor (based on an hourly rate). The parties retain their own experts in accordance with the party-retained expert approach described above. This approach allows the judge to ask “dumb questions” in order to become familiar with the technology at issue. It allows the judge to evaluate the party experts’ testimony, particularly at the Markman stage. However, this approach can be problematic if it allows the judge to be influenced improperly on legal issues in a way that is hidden from counsel and the parties. As discussed above in connection with a CAE, a technical advisor will have and will thus present a single view of technology, and he/she may get it wrong, or there may be room for another view of the technology. Further, the technical advisor may be overly influenced by his/her knowledge of the technology rather than what is set forth in the patent documentation. The inherent technical biases of the technical advisor may sway the court, and if that happens in a way that is undetectable (e.g., the court freely consults with the technical advisor off the record), the parties will not have the ability to address the potentially problematic viewpoints. 8 See Monolithic Power Sys. v. O2 Micro Int’l. Ltd., 558 F.3d 1341 (Fed. Cir. 2009) (discussing the use of court-appointed testifying experts pursuant to Fed. R. Evid. 706). 9 See Xilinx, Inc. v. Altera Corp., 1997 WL 581426, at *1 (N.D. Cal. June 3, 1997) (ordering that the parties submit to the court the name of a technical advisor; or if the parties cannot agree to a technical advisor, the parties are to submit two names of potential technical advisors for the court’s appointment); see also MediaCom Corp. v. Rates Tech., Inc., 34 F. Supp. 2d 76, 77 (D. Mass. 1998) (appointing a technical advisor selected by the parties to assist the court in claim construction).


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D. BEST PRACTICES FOR USE OF COURT APPOINTED EXPERTS -

GENERALLY

Best Practice 1 – Communications between the court and the CAE (or technical advisor) shall occur in the presence of the party attorneys or put on the record in some fashion.

Transparency with respect to communications between the CAE and/or technical advisor and the court is beneficial to the parties and to the court. It may not be necessary to transcribe all conversations, but the court could identify the topics of discussion held with the expert and present a summary of the discussion to the parties. This will not only improve transparency, but will also help to ensure that the CAE/technical advisor is adequately prepared and appropriately involved in the matter.

Best Practice 2 – To the extent the Court intends to utilize the CAE to assist with the Markman hearing or with a submitted motion, the court should provide a tentative ruling in advance and permit the parties to address any technical flaws prior to making the ruling final.

As noted above, a CAE or technical advisor may have technical biases that may not be apparent, but, if unchecked, may sway the court to rule in a manner that is problematic. By providing a tentative ruling with reasoning, the parties have the opportunity to use their own experts to explain any technical errors to the court. This should enable the court to ensure that it is not issuing a ruling based on a flawed understanding of the technical issues. Additional Best Practices regarding the use of Court Appointed Experts at various stages of a patent infringement matter are discussed in the subsections below.


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Use of Experts in Pre-filing Investigations and Drafting Early Pleadings

A. BACKGROUND

Rule 11 imposes a pre-filing obligation on patent holders to “apply the claims of each and every patent that is being brought into the lawsuit to an accused device and conclude that there is a reasonable basis for a finding of infringement of at least one claim of each patent so asserted.”10 Although technical evaluation of a patent claim is critical in order to satisfy the Rule 11 requirements, the use of specially-retained technical experts before filing a complaint is not typical and may vary widely depending on the complexity and circumstances of each case.

B. BEST PRACTICES

Best Practice 3 – In cases requiring special expertise beyond that available in-house with companies or law firms, counsel should specially retain technical experts that can assist in meeting the requirements of Rule 11 and in preparing infringement or validity contentions.

In some cases in-house engineers or scientists at law firms may have the necessary background to perform the technical evaluation requisite to pre-filing and early stage infringement analysis. In other cases, the patent claims may be of such a complexity that use of an outside technical expert is necessary. Decisions on when to use specially-retained technical experts should be made on a case-by-case basis, based on the complexity of the technology, the available in-house expertise, and local court pleading requirements and preferences.

Best Practice 4 – In Rule 11 disputes, counsel should consider using specially-retained technical experts to explain how Rule 11 was, or was not, satisfied in the case.

One situation in which the early use of outside technical experts should be considered is for contested Rule 11 proceedings, where the defendant seeks sanctions for an alleged violation of Rule 11. Depending upon the nature of the technology and the Court’s preferences, the parties’ may submit written responses from experts skilled in the relevant technical area to assist the Court in evaluating whether Rule 11 was satisfied.

10 View Engineering, Inc. v. Robotic Vision Systems, Inc., 208 F.3d 981 (Fed. Cir. 2000).


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Use of Experts To Present A Technical Tutorial

A. BACKGROUND

It has become common for courts to receive a technology tutorial as part of the claim construction process, either shortly before or during a Markman hearing. In jurisdictions with local patent rules, submission of a technology tutorial is typically a required step in the claim construction process; and in jurisdictions without such rules, the parties often propose that a technology tutorial be included in the process, particularly when the technology at issue is relatively complex. The goal of a technology tutorial is to educate the court regarding the underlying technology at issue in the case. As an earlier The Sedona Conference working group observed:

The tutorial itself should be a non-argumentative presentation of the technology and its background, without argument concerning the patents involved or the accused products or methods. While some basic discussion about the patents and accused devices is appropriate, the tutorial is not intended for the purpose of arguing specific claim construction issues. The primary goal is to educate the court on the technology as it relates to the patents, claims, and accused products in the case.11

B. BEST PRACTICES

Best Practice 5 – The timing and format of the technology tutorial should be discussed at the Rule 26(f) conference and addressed in the Court’s Rule 16(b) Scheduling Order

In an ideal world, the parties would be able to agree on a single, joint technology tutorial to be presented to the court. In practice, however, it is often difficult to achieve consensus between the parties and/or their retained experts, and a substantial amount of time and expense can be wasted on the effort. For that reason, the parties should discuss early in the case, preferably as part of the Rule 26(f) conference, whether the technology tutorial will be presented jointly or individually, and the format of the tutorial to be presented. Over time, counsel and courts have come to develop their preferences for the format of a tutorial. Tutorials may be presented as written submissions, as videos with “voice over” on DVDs, or in-person to the Court, either on or off the record. While it is almost always advisable for the parties to memorialize their tutorial (whether joint or individual) in the form of a written and/or video submission (e.g., on a DVD or flash drive) for the Court to review at its convenience (and which becomes part of the record for appeal), a “live” presentation, either before or at the beginning of the Markman hearing, is often the preferred format for many courts and counsel.12 Such an approach may be useful, for example, when the technology at issue is particularly

11 The Sedona Conference® Report on the Markman Process, Principle 4, pg. 3 (November 2010). 12 The live tutorial may be recorded on video so that it too may be available for review by the court and its staff subsequent to the live presentation, and made part of the appellate record.


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complex, or when the parties disagree about some significant aspect of the underlying technology.

Best Practice 6 – If a “live” technology tutorial is to be presented to the court, the presentation ordinarily should be made by counsel, with the parties’ retained experts available to respond to questions from the court.

When a live tutorial is to be presented, it will ordinarily be preferable for the presentation to be made by counsel, rather than through testimony of the parties’ retained experts or a court-appointed expert. Experienced trial counsel should be able to make such a presentation to the court efficiently, focusing on the aspects of the technology that are most relevant to the issues in the case. By contrast, the standard vehicle for eliciting expert testimony – direct and cross-examination – injects an undesirable level of formality into the tutorial process, as well as additional time and expense. Further, experience suggests that inviting an expert to expound on technical issues in a narrative form may introduce inefficiency. Nevertheless, the working group recognizes that each case is different, and the Court may have its own preferences regarding what form of presentation may be most effective, so this decision should be made on a case-by-case basis. Depending upon the nature of the technology and the Court’s preferences, the parties’ experts can, and should, serve an important role in the tutorial process by being available to respond to the court’s questions regarding tutorials presented by counsel. Ideally, questions could be posed to the experts and responded to in a relatively informal, give-and-take manner conducive to educating the court. In fact, the “hot tubbing” referenced in Section I.B. above may be particularly effective for this purpose, providing the experts an opportunity to interact with one another and with the judge in a non-confrontational setting, with the goal of ensuring the court has a solid foundation in the technology at issue.

Best Practice 7 – A court-appointed expert or technical advisor generally should not be used to provide a technology tutorial to the court.

With appropriate safeguards designed to promote transparency and inspire confidence in the fairness of the process, the use of a court-appointed expert or technical advisor can substantially improve a judge’s ability to understand complex technology at a level sufficient to enable him or her to resolve the disputed claim construction issues in a case. However, for a number of reasons, a court-appointed expert or technical advisor generally should not be used to provide a technology tutorial to the court. As an initial matter, the scope and complexity of the task typically does not lend itself well to an “independent” expert whose efforts are not directed and whose time is not controlled by the parties, particularly where one or both parties may find themselves in the position of having to pay for results with which they don’t agree. Likewise, using a court-appointed expert or technical advisor to lay the foundation for the court’s understanding of the disputed technical issues in the case sacrifices the balanced presentation of views that is inherent in the adversarial legal system. Even the most fair-minded scientist has subjective opinions and biases that will


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necessarily influence his or her presentation of scientific concepts, such that the court’s determination of disputed technical issues may be inadvertently skewed at an early stage of the claim construction process, before the parties have a full opportunity to express opposing views through their retained experts. Use of a technical advisor to provide a technology tutorial may be particularly problematic, as such an “expert” operates beyond the purview of Federal Rule of Evidence 706. The Federal Circuit has held that “in those limited cases where the scientific complexity of the technology is such that the district court may require the assistance of a technical advisor to aid in understanding the complex technology underlying the patent, it has the inherent authority to appoint such an advisor.”13 Nevertheless, the appellate court emphasized the need for “safeguards to prevent the technical advisor from introducing new evidence and to assure that the technical advisor does not influence the district court’s review of the factual disputes.”14

13 Techsearch L.L.C. v. Intel Corp., No. 286 F.3d 1360, 1378 (Fed. Cir. 2002) (interpreting Ninth Circuit law). 14 Id. at 1377.


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Use of Experts at the Markman Hearing

A. BACKGROUND

Whether expert (and/or inventor) testimony will be permitted at a Markman hearing should be addressed during the Rule 26(f) process. Experts are not necessary for all claim construction proceedings. Experts may be helpful where claims use technical terms or terms of art that are not explicitly defined in the specification but have meaning to a person of ordinary skill in the art (“POSITA”). Experts may also be helpful for consideration of complex technical issues, such as indefiniteness. However, the use of experts necessarily makes the proceeding more complex and more expensive. In addition, conflicting expert testimony presents a risk of confusing the court and/or making issues unnecessarily complicated. In a worst-case scenario, conflicting opinions may lead the court to give little or no weight to either expert’s testimony, resulting in wasted effort and expense. Where experts are useful, written submissions may be sufficient. Reliance on written submissions should help reduce the expense of the Markman proceeding. Disclosure of claim construction opinions and depositions in advance of written submissions to the court may help define/limit the issues to be resolved by the court, but depositions may be unnecessary or undesirable since the court can, if it so chooses, take the opportunity to pose questions itself. Certain circumstances call for live testimony, such as where the technology at issue is particularly complex and/or outside common experience. Live testimony may be useful where written submissions reveal dramatically conflicting positions on how a POSITA would understand technical terms or terms of art.

B. BEST PRACTICES

Best Practice 8 – The issue of whether and to what extent experts will be involved in the Markman process should be discussed during the Rule 26(f) conference and addressed in the court’s Rule 16(b) scheduling order.

The decision whether to use expert testimony for claim construction has significant implications for both the parties and the court. For the parties, in addition to the cost of using an expert, there are logistical considerations such as identifying and retaining a suitable expert, clearing any potential conflicts of interest with the opposing party, and working with the expert to develop a declaration or report. For the court, accommodation may need to be made in the schedule for discovery regarding the experts’ opinions, and generally more time will have to be set aside for the hearing itself if live testimony is contemplated. It can thus be extremely disruptive if one or both sides in a litigation decide relatively late in the game that they would like to present expert testimony at the Markman hearing. To avoid such disruptions, it is advisable to include this issue among the topics to be addressed by the parties in the context of the Rule 26(f) conference and discovery plan, and any corresponding procedures should be reflected in the court’s Rule 16(b) scheduling order.


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Best Practice 9 – Experts retained by the parties may serve a useful role for the

Markman hearing in appropriate cases, such as cases involving relatively complex technology or disputes over how a person of ordinary skill in the relevant art would understand technical terms in the patent.

It is well-settled that a court may appropriately receive expert testimony on various issues relating to claim construction. For example, expert testimony may be received “to explain relevant scientific principles, the meaning of technical terms, and the state of the art.”15 Likewise, expert testimony may be received “to provide background on the technology at issue, to explain how an invention works, to ensure that the court’s understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field.”16 Indeed, this last example may be one in which the introduction of expert testimony is not merely permissible, but also advisable. Ultimately the court’s objective is to determine how a person of ordinary skill in the relevant art would understand a disputed claim term, so the introduction of expert testimony regarding well-accepted or established meanings of technical terms may substantially increase the probability that the court will reach the “right” result. This assumes, of course, that the testifying expert is competent to testify about the understanding of persons skilled in that art. Similarly, if the court elects to address the alleged indefiniteness of a disputed claim term at the Markman hearing stage – an approach that is generally most efficient given the close parallels between a definiteness inquiry and the claim construction process – testimony regarding how a person of ordinary skill in the art would understand the challenged claim term would be highly relevant. While the use of experts in the Markman process can enhance the judge’s understanding of the facts underlying the legal issues to be resolved, that benefit clearly comes at a cost, both in terms of dollars and time. Whenever experts are used, the parties incur not only the cost of the experts’ time, but often also the costs associated with depositions and the experts’ appearance at the hearing. As for time, the court’s claim construction schedule typically must accommodate procedures for disclosing the expert’s opinions and providing the opposing party an opportunity to examine the expert on those opinions in advance of the hearing. Since the use of experts in the Markman process tends to make patent litigation more expensive and time consuming, the parties and the court should carefully consider whether the potential benefit justifies the cost in any given case before a decision is made to use experts at the Markman hearing. To help manage the cost of litigation, direct testimony from an expert on claim construction issues should be in the form of written submissions whenever practicable. The expert’s opinions should be subject to discovery by the opposing party, including both a prior written disclosure (e.g., an expert report) and an opportunity to depose the expert. Moreover, the opposing party should be afforded an opportunity to respond to the expert’s testimony, either through a rebuttal submission or through cross-examination at the hearing. Even when the experts will present

15 Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). 16 Id. at 1318.


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their direct testimony live, disclosing the substance of the expert’s anticipated testimony to the court in advance of the hearing may better equip the court to identify issues or formulate questions to be addressed by the experts at the hearing.17

Best Practice 10 – The court may consider a “hot tubbing” approach in which the opposing experts appear together and are given the opportunity to engage in dialog in response to questions posed by the court and/or counsel.

At its most basic level, the purpose of a Markman hearing is to provide the judge with information that he or she may find useful in determining, as a matter of law, the meaning of disputed claim terms. In contrast to a jury trial, strict compliance with the Rules of Evidence is neither necessary nor especially desirable, as such legal formalities tend to increase the cost and duration of an already expensive and time-consuming process.18 Accordingly, the Australian “hot tubbing” technique discussed above may be particularly well-suited for use at a Markman hearing. Under one possible implementation of a “hot tubbing” approach, the experts could exchange written submissions detailing their opinions on any contested claim construction issues, after which the parties could make a joint pre-hearing submission to the court that identifies the various points of agreement and disagreement between experts. At the Markman hearing, the experts would be sworn in and appear in the witness box together. The plaintiff’s expert could first present a brief oral explanation of his or her positions, after which the defendant’s expert could be given an opportunity to question the plaintiff’s expert directly (i.e., without counsel). The process could then be reversed, with the defendant’s expert presenting his or her position, followed by questions by the plaintiff’s expert. Each expert could then be given an opportunity to summarize his or her position based on the preceding dialog. In a “typical” application of hot tubbing, counsel could then be given the opportunity to cross-examine and re-examine each expert in the conventional way, but in the context of a Markman hearing, such an approach runs counter to the goal of reducing the cost and complexity of the process. Of course, however the process is implemented, the court will have the ability to pose questions to either or both experts.

Best Practice 11 – Testimony from patent law experts should be received only in very rare cases.

The Sedona Conference® Report on the Markman Process, issued in November 2010, contains the following guidance on the use of patent law experts for claim construction:

A patent law expert may be useful to illuminate arcane aspects of patent prosecution. However, the Federal Circuit very recently “caution[ed] the district court regarding its

17 Given that the goal of claim construction is to determine the meaning of disputed claim terms from the perspective of a person having ordinary skill in the relevant art, any testifying expert should be competent to testify regarding the understanding of such a person. Sundance, Inc. v. De Monte Fabricating, Ltd., 550 F.3d 1356, 1363-64 (Fed. Cir. 2008). 18 See, e.g., The Sedona Conference® Report on the Markman Process: A Project of the Sedona Conference® Working Group on Markman Hearings & Claim Construction (WG5), Principle 7, pg. 4-5 (November 2010) (recommending that the Markman hearing proceed more like a closing argument than a trial).


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reliance on testimony from any patent attorney on technical issues, as opposed to issues concerning legal procedure. In particular, a patent expert should not be permitted to construe claim terms unless he is first qualified as an expert in the pertinent art.”19

Subsequent to the Landers decision cited in the earlier report, the Federal Circuit went even further, expressly holding that “where an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expert in that art.”20 Of course, the meaning of disputed claim terms is an issue that “calls for consideration of evidence from the perspective of one of ordinary skill in the art.” In view of Federal Circuit precedent, it is clearly inappropriate to have a patent law expert testify as to the meaning of disputed claim terms unless he or she is first qualified as a technical expert in the relevant technical art. On the other hand, there may be circumstances where testimony from a patent law expert could be useful to the court, such as in a case involving a particularly complicated prosecution history. Such circumstances, however, should be relatively rare.

Best Practice 12 – Testimony from a court-appointed expert should be received at the Markman hearing only sparingly.

The law permits a district court to appoint an expert when circumstances warrant, and if a district court does so, that expert’s testimony should be heard at the Markman hearing and subject to cross-examination by the parties. However, the circumstances in which a district court finds the need to appoint an expert in addition to the experts proffered by the parties should be the exception, not the norm. Should a court appoint an expert for purposes of claim construction, that expert should be required, before the due date for the claim construction briefs, to submit an expert report disclosing his or her opinions on the disputed claim construction issues, be deposed by both parties, and then at the hearing the parties may introduce the relevant portions of the expert’s report and deposition testimony.21

Best Practice 13 – A court-appointed technical advisor generally should not be used to provide off-the-record, substantive input to the court on the meaning of disputed claim terms, but with appropriate safeguards may be used to assist the court in understanding complex technical issues.

The working group appreciates that claim construction can be a daunting task for a busy district court judge, who typically will not have a technical background, or at a minimum will lack prior experience with the particular technology at issue in any given patent. For that reason, it is understood, and indeed expected, that a judge may rely heavily on informal, off-the-record

19 The Sedona Conference® Report on the Markman Process: A Project of the Sedona Conference® Working Group on Markman Hearings & Claim Construction (WG5), Principle 13, pg. 8 (November 2010) (citing Landers v. Sideways, LLC, 2005 WL 1772692, at *4 n.3 (Fed. Cir. 2005) (non-precedential).. 20 Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008). 21 See The Sedona Conference® Report on the Markman Process: A Project of the Sedona Conference® Working Group on Markman Hearings & Claim Construction (WG5), Principle 14, pg. 9 (November 2010).


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communications with his or her clerks during claim construction, not only to help gain an understanding of the technology at issue, but also to help work through substantive issues concerning the meaning of disputed claim terms. However, off-the-record communications on substantive claim construction issues become more problematic, at least from the standpoint of the litigants, when a judge is communicating with a technical advisor rather than a law clerk. This is because a judge may naturally tend to view the technical advisor more like a court-appointed expert, with a consequent tendency to defer to the technical advisor’s views of the disputed claim construction issues. The influence that such a technical advisor may exert on the court’s decision-making causes great concern on the part of litigants, as the litigants have no ability to determine, let alone correct, any biases or misunderstandings that the technical advisor inadvertently may be conveying to the court. With appropriate safeguards designed to promote transparency and inspire confidence in the fairness of the process, a technical advisor may be used as necessary to assist a judge in understanding particularly complex technology or technical issues relevant to the meaning of disputed claim terms.22 Such cases should be relatively rare, however, and the use of a technical advisor in the Markman context requires “safeguards to prevent the technical advisor from introducing new evidence and to assure that the technical advisor does not influence the district court’s review of the factual disputes.”23

22 See, e.g., Techsearch L.L.C. v. Intel Corp., No. 286 F.3d 1360, 1378 (Fed. Cir. 2002) (applying Ninth Circuit law, the court noted that “in those limited cases where the scientific complexity of the technology is such that the district court may require the assistance of a technical advisor to aid in understanding the complex technology underlying the patent, it has the inherent authority to appoint such an advisor”). 23 Id. at 1377.


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Expert Discovery

A. BACKGROUND

Rule 26(a)(2) provides for the staging of expert reports to minimize the problem of late disclosures of expert opinions. Schedules that provide for experts to submit reply reports are best. The reply report needs to be limited to responding to the rebuttal report; it isn’t a “do over.” Under FRCP 26(a)(2), the written report must contain the following: a complete statement of all opinions the witness will express and the basis and reasons for them; the facts or data considered by the witness in forming them; any exhibits that will be used to summarize or support them; the witness's qualifications, including a list of all publications authored in the previous 10 years; a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and a statement of the compensation to be paid for the study and testimony in the case. Because the purpose of expert discovery is to set up the pretrial and trial stages of litigation, attention to these requirements when preparing expert reports is extremely important. Failure to adhere creates evidentiary issues at trial, allowing for objections and motions to be made to expert testimony. The issues that arise at trial are as follows:

whether the opinions to be given or the support to be relied upon is outside the scope of the expert’s report(s),

whether an expert’s opinion is relevant, whether the information used as the bases for the expert’s opinion is admissible, whether the potential testimony is proper expert testimony, and whether the expert is appropriately qualified.

Generally, an expert will be precluded from testifying to any opinions that were not disclosed in the expert report. Fed. R. Civ. P 37(c)(1) (2008) (“If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.”). Some elaboration of what is explicit in the report should be allowed, but experts should not be permitted to offer new opinions at trial beyond what is in the report. It is too difficult for a judge to review deposition testimony during trial to assess whether an expert opined on a given subject. All opinions should be disclosed in the Rule 26 reports to avoid objections at trial that testimony is outside the scope of the report. Similarly, a conclusory report is insufficient. Under Rule 26(a), a “report must be complete such that opposing counsel is not forced to depose an expert in order to avoid an ambush at trial; and moreover the report must be sufficiently complete so as to shorten or decrease the need for expert depositions and thus to conserve resources.” and “expert reports must include ‘how’ and ‘why’ the expert reached a particular result, not merely the expert's conclusory opinions.” Id.


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A vague and conclusory report may lead to exclusion of testimony – failure to “state how or why.” Thus, it is important to disclose a complete statement of all opinions the expert will express at the discovery stage. To the extent an expert’s opinions are not complete when served, supplemental reports are permitted under Rule 26(e)(1) only in the following situations: (1) upon court order; (2) when the party learns that the earlier information is inaccurate or incomplete; or (3) when answers to discovery requests are inaccurate or incomplete. Such reports should be served as early as possible. Care must also be taken, when drafting an expert report, to tie the proposed expert testimony to an issue in the litigation to avoid a relevance objection at trial and to determine the admissibility of the facts underlying the expert’s opinion. While experts may rely on information that may not be admissible evidence when forming their opinions, the expert’s testimony may not be used as a conduit for inadmissible evidence to enter the record. Federal Rule of Evidence 703 provides that:

[a]n expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed. If experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted. But if the facts or data would otherwise be inadmissible, the proponent of the opinion may disclose them to the jury only if their probative value in helping the jury evaluate the opinion substantially outweighs their prejudicial effect.

This rule was amended in 2000 “to emphasize that when an expert reasonably relies on inadmissible information to form an opinion or inference, the underlying information is not admissible simply because the opinion or inference is admitted. The “Rule’s balancing test clearly establishes a presumption against disclosure to the jury of otherwise inadmissible evidence.”24 Ensuring that the expert’s opinions constitute proper expert testimony is another factor that should be considered at the expert discovery stage. Testimony that offers improper factual or legal conclusions may be objectionable at trial.25 This concern is lessened when the judge is the trier of fact, leading many practitioners to include such “ultimate” opinions in expert reports. Finally, when choosing an expert, consideration of the expert’s credentials and experience is important to avoid an evidentiary issue at trial concerning whether the expert qualifies to testify regarding the relevant issues presented in the expert’s reports. Having a discussion with the

24 Pineda v. Ford Motor Co., 520 F.3d 237, 247 (3d Cir. 2008). 25 Island Intellectual Property LLC v. Deutsche Bank AG, No. 09-2675, 2012 WL 526722, at **2, 5 (S.D. N.Y. Feb. 14, 2012). (Expert is “precluded, though, from testifying as to his ultimate conclusion” of whether a product “is” or “is not” “public use prior art to the patents-in-suit” because “[t]hat is a determination for the jury to make, following instruction on the law.”).


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expert regarding his areas of expertise early on in the process along with reviewing of relevant publications is helpful in making such a determination. After all expert reports are served, experts are deposed. While deposing each expert after the submission of each report, might allow for full explanation of opinions, such a schedule would be inefficient because the experts, who are often busy with other engagements, would need to be deposed twice or more. At deposition, attorneys probe the facts and bases considered in forming an expert’s opinions. Prior to 2010 the scope of discovery was much broader. Historically, it was the case that work product given to an expert was discoverable. Attorneys went to great lengths to avoid providing such information to the expert to prevent discovery of it. Alternatively, attorneys stipulated to non-disclosure of draft expert reports and communications with counsel. In 2010, Rule 26 was amended to exclude such discovery, limiting the scope of discovery to “facts or data considered by the witness in forming” the opinions offered. Thus, attorney work product and draft expert reports are now excluded from discovery. However, the Advisory Committee Notes provide:

Rules 26(b)(4)(B) and (C) do not impede discovery about the opinions to be offered by the expert or the development, foundation, or basis of those opinions. For example, the expert’s testing of material involved in litigation, and notes of any such testing, would not be exempted from discovery by this rule. Similarly, inquiry about communications the expert had with anyone other than the party’s counsel about the opinions expressed is unaffected by the rule. Counsel are also free to question expert witnesses about alternative analyses, testing methods, or approaches to the issues on which they are testifying, whether or not the expert considered them in forming the opinions expressed.

Thus, while the 2010 Amendment streamlined the process of preparing expert reports, attorneys should continue to be cognizant of what facts and data are used in forming the bases of an expert’s opinions.

B. BEST PRACTICES

Best Practice 14 – In general, it is most efficient to phase the case such that expert reports are prepared after the Court has ruled on claim construction.

If the case is not phased in this manner, there are two options: (1) have experts opine on infringement/validity issues under both constructions; or (2) have experts opine only under their own side’s constructions and supplement later. In some jurisdictions, expert may be precluded from offering opinions not disclosed in Rule 26 reports, i.e., no supplementation allowed. This means that the experts must opine on infringement/validity issues under all possible constructions. However, if a case involves numerous technologies and disputed terms, it may be inefficient and utterly confusing to attempt expert discovery under all claim constructions, particularly where the Judge may enter his/her own construction


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Best Practice 15 – Consider providing a date in the scheduling order for disclosure of the subject matter of expert reports to be filed before opening reports are scheduled to be exchanged or of the experts who may be filing an expert report.

Typically scheduling orders provide for four to six weeks between opening expert reports and rebuttal expert reports. Prior to receiving opening expert reports, counsel may not know the subject matter of all of the expert reports to be received and, in fact, often counsel only knows of experts who the other side has disclosed pursuant to a protective order. However, some experts do not need to use the other party’s confidential information. For example a survey expert may perform a survey based on publicly available materials and file an expert report. In this scenario, if the survey expert filed an opening report, the opposing party would then only have four to six weeks to identify and retain a survey expert to prepare and serve a rebuttal survey expert report. To even the playing field, parties should consider agreeing on a date for disclosure of the subject matter or of experts who may be providing testimony on an issue for which that party bears the burden at trial. Depending on the circumstances, two to four weeks should be sufficient. Doing so eliminates an element of surprise with respect to preparing and serving expert reports.

Best Practice 16 – Parties should serve all art relied upon with the expert report. To expedite the expert discovery process, parties should agree to produce documents relied on in an expert report with the expert’s report, to the extent the documents have not already been produced. Doing so will not only save litigation costs but may reduce issues such as exactly what is included in the particular reference.

Best Practice 17 – Parties should conduct expert depositions, for any that are to be taken, after all expert reports have been served.

Conducting expert depositions after all expert reports have been served is practical and cost effective and should be employed in all cases. If a supplemental report is served, a short follow-up deposition should be scheduled, limited in scope to the new opinions expressed in the supplemental report. However, to the extent a supplemental report only memorializes information given at an expert deposition, a new deposition may not be necessary.

Best Practice 18 – The expert report under Rule 26 should set forth all opinions that the expert may present at trial and a complete explanation and full support for the opinion to the extent any such testimony will be presented at trial. Court should limit the expert’s trial testimony to what is fairly and reasonably presented in the expert’s report.

Best Practice 19 – If the expert is deposed, the expert should not be able to utilize

the deposition as a mechanism to voluntarily supplement his/her report.


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Use of Experts On Summary Judgment

A. BACKGROUND

In seeking or opposing summary judgment on technical or damages issues, patent litigants usually submit expert opinions to the Court. The expert submissions may come in different forms, depending on the nature of the summary judgment proceeding. Possible formats include expert reports, deposition testimony, supporting declarations, and/or live testimony. For infringement or non-infringement motions, expert submissions may incorporate claim charts, schematics, photographs, and/or source code. For motions involving patent validity, expert submissions may incorporate claim charts and/or prior art. Parties may submit summary judgment motions on other issues as well, including patent prosecution, inequitable conduct, willful infringement, and/or damages issues.

B. BEST PRACTICES

Best Practice 20 – Expert testimony in support of a motion for summary judgment should be based on facts that are truly undisputed.

Conclusory opinions and legal opinions should be avoided. Claim charts are a useful way to present opinion. Parties should use experts with the requisite expertise, which may mean using more than one expert for a given summary judgment motion, e.g., a system/hardware expert and a software expert. Experts should avoid, and Courts should disregard, expert testimony that is based solely on the ipse dixit of the expert. A solid foundation of undisputed facts should underlie each expert’s submission at the summary judgment phase.

Best Practice 21 – In opposing a motion for summary judgment, a party should submit expert testimony that truly disputes facts, or that is supported by actual disputes of fact.

Best Practice 22 – Expert declarations should be consistent with opinions

provided in prior, timely-served reports meeting requirements of Rule 26. Summary judgment practice should occur only after expert witnesses have provided both all disclosures required under Rule 26 and their deposition testimony. Despite having done so, nevertheless, expert declarations submitted in support of or opposition to a motion for summary judgment should not go beyond the bounds of their Rule 26 disclosures. A party should not add substance to the expert’s written disclosures to the expert’s declarations submitted in conjunction with summary judgment motions, even if the expert’s deposition covered testimony that was not part of the expert’s written disclosures. This rule should be vigorously enforced, and the Court should entertain motions to strike expert opinions, submitted in conjunction with summary judgment motions, that are outside the scope of the previously disclosed expert reports. In addition, if necessary, expert reports should be supplemented well in advance of filing the expert declaration. [Note: Best Practice Nos 23-24 have been intentionally omitted]


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Best Practice 23 – Expert discovery normally should be completed prior to

summary judgment submissions. Because in patent cases summary judgment motions are often dependent on expert submissions, a best practice is for the Court to schedule summary judgment proceedings after the close of expert discovery. Permitting the experts to serve all written reports, and sit for depositions, prior to submitting any declarations in connection with summary judgment proceedings enables the parties to fully develop the expert opinions, and will enable the Court to determine whether factual disputes truly exist. A best practice is for the Court to specifically set forth deadlines for the close of fact discovery, the close of expert discovery, and the filing of dispositive motions.

Best Practice 24 – Experts should not be permitted to opine as to the intent element of inequitable conduct in conjunction with a summary judgment motion.

Intent is an element of inequitable conduct. However, it is not a best practice for the Court to entertain expert testimony on the issue of an applicant’s intent, in assessing whether a patent is invalid for inequitable conduct. Such factual evidence involves issues beyond the scope of the expert’s expertise, such as the state of mind of the applicant, or the applicant’s knowledge of particular references, and it is improper for an expert witness to attempt to opine on this element. Of course, a qualified expert is free to opine as to the materiality of various references which the applicant allegedly failed to disclose.

Best Practice 25 – Expert testimony regarding patent office procedure and factual developments during prosecution should be carefully scrutinized to ensure that it does not veer improperly into the legal conclusions of an expert witness.

In cases in which the prosecution history of the patent is relevant to either patent infringement or validity, the parties may submit expert testimony regarding various aspects of patent prosecution. Such experts often take the form of a former officer at the PTO, or a former patent examiner, who is offered to provide expert testimony as to patent office procedures, and the rules and regulations governing patent prosecution. Although properly submitted as long as the expert limits her testimony to factual developments during prosecution, or applicable rules and regulations, the Court should be careful not to permit such testimony to move from procedure into legal conclusions about the prosecution history, legal consequences of actions taken during prosecution, legal opinions as to whether certain rules or regulations were followed, or legal conclusions regarding the PTO generally. To guard against this, and especially to prevent such testimony from making its way in front of the jury, the Court may consider having a separate hearing for this type of testimony. The Court may also consider hearing this testimony during trial, outside the presence of the jury.


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Daubert and In Limine Motions

A. BACKGROUND

It is the rare patent case that does not involve a Daubert challenge to virtually each expert whose testimony has been offered. Daubert challenges have become routine in patent litigation, and the following guidelines may assist the Court and the parties in ensuring that all such challenges are properly founded and presented to the Court, such that the Supreme Court’s concerns in Daubert with unreliable testimony being presented to the jury are addressed.26

B. BEST PRACTICES

Best Practice 26 – Daubert challenges should be made early on, after expert discovery but well in advance of trial.

Because they can greatly alter the landscape of the litigation, Daubert challenges should be made after the close of expert discovery, but well in advance of trial. There is the age-old quandary that a party must navigate in making a Daubert challenge. If the motion is filed early in the case, the party whose expert is subject to challenge will simply try to supplement the disclosures, or repair the testimony, and the Court may conclude that there is no prejudice because there is time left in the case. On the other hand, if the motion is filed later in the case, especially on the eve of trial, and the motion is unsuccessful, there is little a party can do to rectify the situation before trial. Despite the horns of this dilemma, best practice is not to wait until the eve of trial, to file a Daubert challenge to an expert witness. Patent litigation so often consists of a battle of experts, and experts are so often crucial to a party’s ability to prove its patent case in court. The Court should be given ample time to evaluate all Daubert challenges, as their importance cannot be overstated. But at the same time, Courts should be loathe to permit a party to supplement expert disclosures in an attempt to cure deficiencies brought out by a Daubert motion, especially if expert discovery is closed. A party should not be penalized for filing a timely Daubert motion well in advance of trial.

Best Practice 27 – Daubert challenges should not be used in the absence of evidence that the scientific methodology is wrong, or that the expert lacks the qualifications to draw the opinions he does.

Daubert motions should not to be used as means to cross examine an expert. Best practice is to abide by the true intention of Daubert to exclude junk science: weaknesses do not serve as a basis for a Daubert motion. Best practice is not to have the expert stray into inappropriate topics, but if the expert does, then a Daubert challenge to all or a portion of the testimony is warranted. For example, it is inappropriate for experts to opine on intent, for inequitable conduct. Proper Daubert motions may focus on the lack of an expert’s qualifications. For example, the expert may lack education, training, or expertise. Daubert motions may also focus on the expert’s methodology with respect to the legal framework she is applying. For example, an

26 [ADD CITE]


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expert may fail to apply appropriate claim construction, or may fail to apply correct legal standard, e.g., re: obviousness / doctrine of equivalents, etc. It is appropriate to get legal standards from the lawyers, and there is a section of the report that lays that out, and then they go on and give their opinions. Daubert motions may also focus on the technical or financial/accounting methodology used by the expert, for example, where an expert fails to physically examine / test product where required, problems with testing methodology.

Best Practice 28 – Daubert challenges should not be brought if testing or methodology is a disputed issue—that should be reserved for cross examination

In some instances, there is no accepted methodology, or it really is a disputed issue how to properly test a product. In those cases, new technology may be breaking new ground, and there is an absence of an accepted method among experts. Or there may really be no clear guidelines as far what the correct methodology is, for example in assessing whether a produce performs a method step in a software patent. When it comes to science, methodology does not necessarily have consensus—often disagreement over the proper testing methodology. In these cases, best practice is not to file a Daubert challenge. Rather, recognizing that consensus is lacking, the parties should rely upon cross-examination of the experts at trial, rather than a pretrial Daubert challenge.

Best Practice 29 – The Court should focus on reliability in evaluating Daubert motions and in exercising its gatekeeper function.

In assessing Daubert motions, the first and foremost consideration for the Court should be the reliability of the testimony. Best practice is for the court to keep reliability as the primary consideration when deciding whether to permit the evidence to go in front of the jury. As a gatekeeper, if the Court finds the testimony reliable above all else, the concerns raised in Daubert will be fulfilled. Reliability then should be the Court’s guide in evaluating whether expert testimony meets the Daubert standard.


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Use of Experts at Trial

A. BACKGROUND

Experts may be used at trial for a number of reasons, including: explaining technical subject matter in such a way that is intelligible and easy to understand to the fact finder(s); setting forth evidence to satisfy the elements of a claim or defense in order to persuade the fact finder(s) that the position(s) being articulated are reasonable and correct; explaining why an adversary’s position(s) may be unreasonable and incorrect; supporting a fact witnesses’ testimony to give it more weight; and at times, explaining areas of law or practice that may be unfamiliar to the fact finder(s). In preparing to use an expert to give such testimony at trial, a number of issues arise. 1. Potential Evidentiary Issues

In preparing to elicit the testimony described above, trial counsel can (and should) anticipate a number of potential evidentiary issues (in addition to the Daubert issues addressed above). Those issues can include: determining whether the opinions to be given or the support to be relied upon is outside the scope of the expert’s report(s), determining the relevance of an expert’s opinion, determining whether the potential testimony is proper expert testimony, determining the admissibility of the information used as the bases for the expert’s opinion, and determining the qualifications of the expert.

Outside Scope of Report One of the most common evidentiary issues with expert testimony at trial is whether the proposed or offered testimony is outside the scope of the expert’s report. Under Federal Rule of Civil Procedure 37(c)(1), testimony outside the scope of the expert report (or from an expert witness who was not timely identified) may be precluded. Rule 37 provides that “[i]f a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence . . . at trial, unless the failure was substantially justified or is harmless.” This rule also supports preclusion of an expert’s testimony when the report is vague and conclusory or, said another way, fails to “state how or why.”

Relevance of an expert’s opinion Testimony regarding an expert opinion that is not relevant to any issues in the case is objectionable.27

Admissibility of the materials forming the bases for the expert’s opinion

27 See Paradigm Sales, Inc. v. Weber Marking Systems, Inc., 880 F. Supp. 1247, 1252 (N.D. Ind. 1995) (granting a motion in limine requesting the exclusion of expert testimony regarding an opinion that was not relevant to infringement); see also Fed. R. Evid. 402.


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In forming an opinion, an expert may rely on information that may not be admissible evidence. This, however, does not mean that the expert’s testimony may be used to allow inadmissible evidence to enter the record. Federal Rule of Evidence 703 provides that:

[a]n expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed. If experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted. But if the facts or data would otherwise be inadmissible, the proponent of the opinion may disclose them to the jury only if their probative value in helping the jury evaluate the opinion substantially outweighs their prejudicial effect.

The Advisory Committee Notes on the 2000 Amendment to Rule 703 explain that the Rule “has been amended to emphasize that when an expert reasonably relies on inadmissible information to form an opinion or inference, the underlying information is not admissible simply because the opinion or inference is admitted. The “Rule's balancing test clearly establishes a presumption against disclosure to the jury of otherwise inadmissible evidence.”28

Whether the potential testimony is proper expert testimony Another potential objection may be that the proffered testimony is not proper expert testimony because it offers improper factual or legal conclusions. An expert is not permitted to testify in a manner that is essentially a closing argument for a party by summarizing evidence and drawing inferences therefrom.29 Where the line is drawn between proper and improper expert testimony is less clear with regard to an expert’s description of the facts. Expert testimony is not permitted if it consists of the expert drawing simple inferences “from uncomplicated facts that serve only to buttress [a party's] theory of the case.”30 A brighter line is available with regard to legal conclusions -- a technical expert may not testify as to his or her understanding of the law.31

The qualifications of the expert

28 Pineda v. Ford Motor Co., 520 F.3d 237, 247 (3d Cir. 2008). 29 See Carnegie Mellon Univ. v. Marvell Tech. Group., Ltd., No. 09-290, 2012 WL 656221, at *16 (W.D. Pa. Dec. 15, 2012). In re Rezulin, 309 F.Supp.2d 531, 551 (S.D.N.Y.2004); see also Snyder v. Wells Fargo Bank, N.A., No. Civ. 4496(SAS), 2012 WL 4876938, at *4 (S.D. N.Y. Oct. 15, 2012) (preventing an expert to give a “summation” of evidence from the witness stand). 30 Island Intellectual Property LLC v. Deutsche Bank AG, No. 09-2675, 2012 WL 526722, at *2, 5 (S.D. N.Y. Feb. 14, 2012).; see also Snyder, 2012 WL 4876938, at *2–3 (“Expert testimony is also inadmissible when it addresses “lay matters which [the trier of fact] is capable of understanding and deciding without the expert’s help.”). 31 Donnelly Corp. v. Gentex Corp., 918 F. Supp. 1126, 1137 (W.D. Mich. 1996); see also Pharmacia Corp. v. Par Pharmaceutical, No. 01-6011 (SRC), 2004 WL 5614917, at *1-2 (D.N.J. Feb. 18, 2004).


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Another potential objection to an expert’s testimony at trial could be to the expert’s qualifications generally or to a particular niche in a scientific field. Limited exposure to a particular field is insufficient to establish an area of expertise. Also, a review of literature does not create an area of expertise. 2. Methods to Address Potential Issues with Expert Testimony at Trial

Potentially objectionable expert testimony at trial can be addressed either before trial with pretrial motions in limine or, at trial, by objections during the testimony.

In Limine Motion Practice The preferable way to address many, if not all, of the above potential issues with expert testimony is before trial, with motions in limine because the issues listed above will likely be clear from expert discovery. The benefits of raising an issue with proposed expert testimony in a motion in limine relate primarily to timing and planning. With respect to timing, considering the issue in advance of trial provides the court with written submissions and the opportunity to consider the legal authorities supporting the objection. With respect to planning, having a decision by the court in advance of trial provides the parties time to make adjustments to the presentation of evidence and to preparations for cross-examination of the expert. Motions in limine with regard to expert testimony are best filed along with any other motions in limine. It is advisable, to the extent possible, to anticipate and brief any issues that may be the subject of a motion in limine in advance, and even before the deadline for such motions. It is best to include a proposed order with such a motion for clarity. The result of a motion in limine can vary widely, given that courts have broad discretion in ruling on motions in limine and may grant or deny the motion or may even postpone ruling on the motion. Further, a trial court is not bound by its in limine ruling. Rather rulings on motions in limine “are by definition preliminary and are subject to change as the case unfolds.”32 Even if nothing unexpected happens at trial, the district judge is free, in the exercise of sound judicial discretion, to alter a previous in limine ruling.33

Objections Not every issue with expert testimony can be predicted in advance and resolved through a motion in limine. Also, as discussed above, such motions may be denied or deferred. Therefore, objections at trial remain integral to addressing evidentiary issues with expert testimony at trial.

32 Ultra-Precision Mfg. Ltd. v. Ford Motor Co., 338 F.3d 1353, 1359 (Fed. Cir. 2003) (citing Luce v. United States, 469 U.S. 38, 41-42 (1984)). 33 Luce, 469 U.S. at 41-42.


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Courts are split as to whether, if a motion in limine has been filed and denied, a party must object at trial to preserve the issue for appeal.34 However, most authorities suggest that the issue could be waived, if not timely raised again at trial. Thus it is advisable to renew a motion in limine in the form of an objection at trial. Conversely, if expert testimony has been excluded by a motion in limine, the proponent of the evidence should make an offer of proof to preserve the issue for appeal.35 An offer of proof should include not only a description of the content of the proposed testimony but also what is expected to be shown by the evidence and what the grounds are for admissibility.36 All of the evidentiary issues listed above may be addressed by objection at trial. In preparing for trial, the procedure by which an objection may be lodged should be reviewed as courts employ different procedures, though, in general, it is preferable to object in advance. For example, at least one court requires that any evidentiary dispute be raised before the witness takes the stand or the issue is waived. A bench memo, or copies of case law, may help the court to quickly understand more complicated issues and are suggested. 3. Demonstratives To Aid Expert Testimony

In our increasingly visually based society, demonstrative exhibits have become more important for all trials and are particularly important to eliciting direct (and even cross) testimony of expert witnesses. For example, in patent cases, demonstrative exhibits may aid judges and juries in understanding difficult, seemingly foreign scientific concepts. Indeed, the scientific expert witness often will expect and be most comfortable presenting with demonstratives, as scientific talks are generally accompanied by the same sorts of visuals to aid understanding. A diagram outlining the replication of a virus or the workings of a circuit breathes life into technical jargon. In fact, increasingly, trial court decisions in patent cases reproduce particularly important demonstrative illustrations to assist the reader in understanding the facts underlying the decision.37 Demonstratives may also summarize large volumes of evidence, particularly data that an expert may need to present. Such summaries are expressly contemplated by Federal Rule of Evidence 1006. That rule permits “contents of voluminous writings or photographs which cannot conveniently be examined in court [to] be presented in the form of a chart, summary, or calculation.” Such summaries and compilations not only make powerful points, but also permit

34 See Palmerin v. City of Riverside, 794 F.2d 1409, 1411-1413 (9th Cir. 1986) (discussing the sharp division of views among and within circuits and state courts as to whether a contemporaneous objection during trial is required to preserve a right to appeal on an evidentiary matter admitted over a denied motion in limine). 35 See Fed. R. Evid. 103(a)(2). 36 Polys v. Trans-Colorado Airlines, Inc., 941 F.2d 1404, 1406-07 (10th Cir. 1991). 37 See Figures 1 through 8 in Daiichi Sankyo Co. v. Mylan Pharmaceuticals, 670 F. Supp. 2d 359, 362-66, 373, 385 (D.N.J. 2009) (reproducing chemical formulae demonstratives and a market share demonstrative); Insite Vision Inc. v. Sandoz Inc., No. 11-3080(MLC), 2013 WL 5975015, at * 4 (reproducing diagram of the layers of the eye).


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the efficient presentation of expert testimony. This type of presentation is becoming commonplace as more courts are turning to timed trials.38 On the more practical side, because testimony of an expert in a patent case may take place over the course of more than a day, demonstratives can provide a road map of the testimony of an expert. Types of demonstratives commonly used with expert testimony in patent cases include: illustrations of technical principles, time lines, “call outs” of important sections of text or other portions of exhibits, compilations, and animations. Whatever the form of the demonstrative, a foundation must be provided. The foundation required depends on the type of demonstrative to be introduced. For example, a computer animation requires a detailed foundation such as screen shots of the animation with source citations to trial exhibits or witness testimony.39 On the other hand, a simple call out from evidence in the record put onto a board or included on a demonstrative, requires only the identification of the exhibit number from the exhibit list provided the court. It is advisable to also note the exhibit number on the slide or board. Demonstratives must fairly portray the evidence on which they are based and will be excluded if probative value is substantially outweighed by the danger of unfair prejudice or confusion.40 Prejudicial in this context means that the demonstrative has an undue tendency to suggest a decision on an improper basis. When a demonstrative exhibit is likely to confuse, raise collateral issues, or is more prejudicial than probative, the court should refuse to allow it to be used at trial.41 Also, and as discussed above with respect to previously undisclosed expert opinions, a demonstrative exhibit cannot include new theories that are not contained in the testifying expert’s report. For most courts, as long as the expert report explains the “how and why” in support of the demonstrative, the demonstrative itself does not need to be part of the report.42 A demonstrative should also identify the evidence on which it is based, preferably via citations included with the demonstrative, and the evidence cited should be covered in the expert’s report. Indeed, it is preferable to identify on the demonstrative the citations to the paragraphs of the expert’s report that give notice of the testimony in the demonstrative. However, it should be noted that in the Northern District of California, at least two judges’ rules provide that “Illustrative animations, diagrams, charts and models may be used on direct examination only if they were part of the expert’s report, with the exception of simple drawings and tabulations that plainly illustrate what is already in the report, which can be drawn by the witness at trial or

38 See Official Committee of Unsecured Creditors v. Baldwin, No. 10-800, 2013 WL 309975 (W.D. Pa. Jan. 25, 2013) (discussion trial time limits and noting two patents cases trials subject to time limits). 39 See Charles J. Faruki, “The Preparation and Trial of Intellectual Property and Other Complex Cases,” 34 U. Dayton L. Rev. 125, 138-39 (Winter 2009). 40 Fed. R. Evid. 403. 41 See Carnegie Mellon Univ. v. Marvell Tech. Group., Ltd., No. 09-290, 2012 WL 656221, at **15-16 (W.D. Pa. Dec. 15, 2012). 42 CNH America LLC v. Kinze Mfg., Inc., 809 F. Supp. 2d 280, 287-88 (D. Del. 2011).


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otherwise shown to the jury.” It is advisable to indicate on a demonstrative the paragraph number(s) of the expert report that provide support. Demonstratives for direct testimony must be disclosed to the other side prior to the expert’s testimony. Ideally, the procedure for the exchange, including the timing, the method of exchange and the possibility for a meet and confer, should be set out in the pretrial order. If following the exchange, an objection is raised that cannot be resolved between the parties, it may be best to request a ruling on the objection in advance of the proposed testimony. Doubt at trial about the use of a demonstrative exhibit should be disclosed outside the presence of a jury before it is used in direct examination. In any event, resolving any questions about the availability of a demonstrative exhibit prior to a direct examination will allow for a much smoother presentation with the witness. Finally, when using demonstratives at trial, it is not appropriate for an expert to simply be led through slides on direct.43 To ensure this, it is useful to make demonstratives with input from the expert. While an expert does not need to physically create a demonstrative exhibit, obtaining an expert’s input ensures accuracy and that the expert will be familiar with the demonstratives and comfortable referring to them during the expert’s testimony.

B. BEST PRACTICES

Best Practice 30 – Seek permission to prepare and serve a supplemental expert report as soon as an evidentiary issue is identified.

As discussed above, the most common objection to expert testimony is outside the scope of the report.44 Similarly, opinions contained in a report that fail to sufficiently explain the reasons and bases underlying the opinions provided, including the data and other information considered by the expert in forming those opinions may be precluded.45 43 See, e.g., Carnegie Mellon Univ. v. Marvell Tech. Group., Ltd., No. 09-290, 2012 WL 656221, at *15 (W.D. Pa. Dec. 15, 2012) (Court excluded slide presentation, without prejudice, and ruled that expert “would testify the ‘old fashioned way’ i.e., without the assistance of a slide deck.”). 44 See Pfizer Inc. v. Ranbaxy Labs. Ltd., No. Civ. A. 03-209 (JJF), 2005 WL 3525681, at *2 (D. Del. Dec. 22, 2005) (expert precluded from expanding opinions related to methods of analysis that were not disclosed in his expert report); Inline Connection Corp. v. AOL Time Warner Inc., 472 F.Supp.2d 604, 609-10, 613-15 (D. Del. 2007) (expert precluded from testifying at trial on new bases for infringement because they were not previously disclosed in expert reports); STS Software Sys., Ltd. v. Witness Sys., Inc., No. 1:04-cv-2111(RWS), 2008 WL 660325, at *2 (N.D. Ga. Mar.6, 2008) (“The Court notes that Plaintiffs will suffer prejudice as a result of the untimely disclosure of these opinions because Plaintiffs’ experts did not have an opportunity to respond to the new opinions submitted in Defendant’s rebuttal reports.”). 45 Honeywell Int’l Inc. v. Universal Avionics Systems Corp., 347 F. Supp. 2d 114, 119-120 (D. Del. 2004) (Excluding testimony on doctrine of equivalents when technical witness provided only conclusory opinions unsupported by any analysis in his report); see also Magnetar Techs. Corp. v. Six Flags Theme Park Inc., No. 1-07-cv-00127 (Slip Op.) (D. Del. Feb. 7, 2014) (recommending granting defendants’ motion to strike the report of plaintiffs’ infringement expert, finding the opinions unreliable for failure to provide any analysis of how infringement was determined. “[I]t is not the court’s role . . . to comb through these documents, extrapolate the necessary information, analyze it, and hobble together an expert opinion based on assumptions of what the expert felt was significant.”).


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Therefore, once the proponent of such expert testimony realizes that the proposed testimony is outside the scope of the expert report(s) or is not sufficiently detailed, the issue can (and should) be addressed as early as possible, and proactively through a request to submit a supplemental report. Supplementing an expert’s opinion is captured by Federal Rule of Civil Procedure 26(e)(2) that provides:

For an expert whose report must be disclosed under Rule 26(a)(2)(B), the party’s duty to supplement extends both to information included in the report and to information given during the expert’s deposition. Any additions or changes to this information must be disclosed by the time the party’s pretrial disclosures under Rule 26(a)(3) are due.

Supplementation should ideally be taken in consultation with the court. For example, there may be facts or opinions raised by the opposing expert that were not anticipated or perhaps there were issues that were not believed to be important enough to be addressed in the expert report. Obtaining permission and serving the expert report as early as possible brings the issue to the forefront in a timely manner, preventing allegations of sand-bagging at trial. Early supplementation also affords the parties and the court time to address the issue and may put the onus on the opposing party to demonstrate prejudice. Also, courts generally prefer to conduct trials based on a full record, rather than risk excluding important material that may provide the basis for appeal. While the proponent of an expert’s opinion should always endeavor to prepare a complete report, if the proponent believes there is a risk that any supplemental report may be precluded based, for example, on the particular court’s practices, the proponent should be incentivized to ensure the report is as complete as possible in the first instance.

Best Practice 31 – Determine, as early as possible, whether there may be objections to an expert’s qualifications or anticipated testimony.

There are many potential objections to an expert’s proposed testimony. For example, some or all of an expert’s testimony may be excluded based on Federal Rule of Evidence 403 (which permits the exclusion of relevant evidence for prejudice, confusion, waste of time, or other reasons) to prevent unnecessary cumulative testimony.46 Also, if an expert’s qualifications are limited to a very narrow field, or if the expert has not established sufficient expertise in the field, an objection should be lodged. For example, if there is an issue in a patent litigation that depends on the perspective of one of ordinary skill in the art at the time of the invention, an expert’s expertise must be in the relevant field of art.47

46 See Donnelly Corp. v. Gentex Corp., 918 F. Supp. 1126, 1136-37 (W.D. Mich. 1996); see also Leefe v. Air Logistics, Inc., 876 F.2d 409, 410-11 (5th Cir. 1989) (affirming the district court’s holding that an expert’s testimony was cumulative and therefore inadmissible). 47 See Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1355-56, 60 (Fed. Cir. 2006).


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Attention must also be given to how such objections are handled as some judges have explicit procedures. At least one judge’s procedure permits only the statement “outside the scope of the report” and only a response citing a paragraph number of the report.48 The objection is resolved post-trial, if necessary. Another judge who also resolves the objection post trial, includes the sanction that if the court “determine[s] that the expert’s testimony was impermissibly broad, the party proffering such testimony may be sanctioned, e.g., by having to assume the costs for a new trial.”49 Procedures like these underscore the benefits for raising the issues in advance or, on the other side, moving to file a supplemental report. On the other hand, in preparing an expert to testify in court, it is advisable to have the expert testify as to his opinions, but not testify regarding the ultimate legal question; the determination that the judge or jury will make after hearing all of the evidence. In fact, an expert may be precluded from doing so if it impinges on the province of the fact finder, be it judge or jury.50 The line is less clear with respect to an expert’s description of facts. One court explained where it drew the line, noting that the expert could testify about the prior art in that his technical expertise will help the jury understand the art and its significance for the validity of the patents in suit, however, the expert could not be used as a substitute for admitting into evidence information establishing the contents of the prior art.51 Rather, as the Island court explained, the expert could list the materials he has reviewed, discuss them briefly, and provide an opinion as to the workings of the art.52

Best Practice 32 – Use motions in limine to address potential issues with expert testimony rather than waiting to object at trial.

While not all evidentiary issues can be anticipated, those that can be should be raised in a motion in limine. A written, pre-trial motion in limine (as compared to an oral objection at trial) may more effectively educate the court about the evidentiary issue and provide the court with the opportunity to carefully consider the issue rather than a more hurried ruling on an oral objection at trial. This is particularly important in a jury trial to avoid potential reference to prejudicial information in front of the jury. This also prevents the problem of emphasizing in front of a jury the very portion of an expert’s testimony that is believed should be excluded. Even if the motion is denied, an objection can and should be made during the trial, to preserve an issue for appeal, and because the motion in limine was filed, the objection can be made in front of a jury using sanitized terms and references to the motion.

48 [ADD CITE] 49 [ADD CITE] 50 Island Intellectual Property LLC v. Deutsche Bank AG, No. 09-2675, 2012 WL 526722, at **2, 5 (S.D. N.Y. Feb. 14, 2012) (precluding an expert from testifying as to his ultimate conclusion of whether or not a product was “public use prior art to the patents-in-suit” because “[t]hat is a determination for the jury to make, following instruction on the law.”). 51 Island Intellectual Property LLC v. Deutsche Bank AG, No. 09-2675, 2012 WL 526722, at *2, 5 (S.D. N.Y. Feb. 14, 2012). 52 Id.


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A motion in limine should state clearly and briefly the specific grounds for excluding or admitting the particular evidence and should explain explicitly the boundaries of the testimony sought to be excluded. It is advisable to file a proposed order along with the motion in limine.

Best Practice 33 – File motions in limine regarding expert testimony along with any other motions in limine.

It is advisable, to the extent possible, to anticipate and brief any issues that may be the subject of a motion in limine in advance, and even before the deadline for such motions. As motions in limine are usually addressed by the court at the pretrial conference, it may be advisable to file a motion regarding expert testimony early and styling it as a motion to strike. Doing so, may cause the court to address the motion before the pretrial conference and may give the parties clarity regarding the scope of expert testimony allowed at trial prior to the date for the pretrial conference. Such a strategy, however, should be viewed in accordance with the particular court’s rules and practices.

Best Practice 34 – If a motion in limine to exclude an expert’s testimony is not granted or a definitive ruling is not obtained, restate and preserve the objection at trial.

As motions in limine are viewed as preliminary and subject to change as the case unfolds, counsel should be prepared to raise any evidentiary disputes before the expert witness takes the stand as the denial of a pre-trial motion in limine does not bar the same objection at trial when the evidence at issue can be evaluated in the context of the trial. For this reason, a clear briefing of the issue in advance, even if the motion is denied, can lead to a favorable result later, during trial, when the issue crystallizes during the testimony

Best Practice 35 – If expert testimony has been excluded by a motion in limine, the proponent of the evidence should make an offer of proof to preserve the issue for appeal.

When a motion in limine has been granted excluding expert evidence, the proponent of the excluded evidence should be prepared to identify the specific paragraphs of an expert’s report that support the testimony being offered. An offer of proof should include not only a description of the content of the proposed testimony but also what is expected to be shown by the evidence and what the grounds are for admissibility.53

Best Practice 36 – For objections that raise issues more complicated than the scope of the report, a bench memo, or copies of case law, are suggested to aid the court.

53 Polys v. Trans-Colorado Airlines, Inc., 941 F.2d 1404, 1406-07 (10th Cir. 1991).


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It is often the case with expert testimony that the proposed testimony is complicated and difficult to understand. In such situations, providing the court with a bench memo or copies of case law may help the court to hone in on the relevant issue.

Best Practice 37 – Demonstratives to be used by an expert should contain citations to the evidence.

Citations to the foundation for the demonstrative should be included on the demonstrative. Citations to the support in the expert report for the demonstrative may also be included on the demonstrative. Doing so is beneficial for at least two reasons. First, if there is an objection to outside the scope of the report, the parties and the court can easily find the purported support for the testimony and resolve the objection. Second, being able to quickly resolve such objections maintains the flow or continuity of the direct examination.

Best Practice 38 – A procedure for the exchange of demonstratives should established between the parties and be set out in the pretrial order.

Typically, the procedure will include an exchange of demonstratives 48 to 72 hours prior to their anticipated use at trial. The key is to provide sufficient time for the opposing party to object to the proposed demonstrative and for the court to consider any such objections.54 The exchange can often be completed via email, though if need be, a time and place for inspection of certain demonstratives can be arranged.

Best Practice 39 – Expert testimony should not consist of an expert reading through demonstratives on direct examination.

A purpose of demonstratives is to educate, by providing visual illustrations of the expert’s testimony regarding the opinion being elicited. Thus, having an expert read through slides may suggest to the fact finder that the expert is nothing more than a paid mouthpiece. Moreover, an expert should not and may not be allowed to just read through slides as direct testimony especially in a jury case as such “testimony” may be subject to a leading objection. While engaging in such a practice may save time and money in preparing for trial by reducing the effort needed to be expended by the expert and counsel, it may lead the fact finder(s) to discredit or give less weight to such testimony, potentially changing the results of the litigation. Therefore, much time and effort should be taken in preparation of direct expert testimony and in preparation of demonstratives that support such testimony.

Best Practice 40 – Experts should assist in the creation of the exhibits to be used on their direct examination.

While an expert does not need to physically create a demonstrative exhibit, the demonstratives to be used during the expert’s trial testimony should be made with input from the expert to ensure

54 See Carnegie Mellon Univ. v. Marvell Tech. Group., Ltd., No. 09-290, 2012 WL 656221, at *3 (W.D. Pa. Dec. 15, 2012).


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their accuracy and to ensure accuracy and familiarity with the demonstratives. This way, the expert will be comfortable referring to them during the expert’s testimony.

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