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Tutorials in Patent Litigation: Educating District Court Judges

By Jeffrey L. Snow and Andrea B. Reed

Nuclear physics, astronautics, and microbiology are highly complex scientific and technical disciplines for which most people, including district court judges, are unlikely to have any formal education or experience. Nevertheless, in patent litigation, district court judges must become proficient in the terminology and theories of such disciplines to properly perform their judicial duties. This is particularly true in construing patent claims in connection with a Markman hearing1 or on summary judgment.


District court judges have a number of tools available to aid in the learning process. For example, they may enlist the help of neutral, court-appointed expert witnesses and technical advisors. Judges may also entertain more “adversarial” forms of education such as joint or competing technical tutorials. Although these judicial tools are intended to foster the same outcome—namely, a court educated in the relevant scientific or technical discipline—they are different in source, implementation, and risks and benefits.


Appointing Expert Witnesses and Technical Advisors
Federal courts have authority to appoint neutral expert witnesses and technical advisors pursuant to two sources: (1) Federal Rule of Evidence 706, and (2) the inherent authority of the courts. Rule 706 governs court-appointed expert witnesses, who are subject to the procedures provided in the rule. Court-appointed technical advisors, appointed pursuant to the inherent authority of the courts, are subject to the procedural law of the circuit in which the court sits.2


Rule 706 provides that “[t]he court may appoint any expert witnesses agreed upon by the parties, and may appoint expert witnesses of its own selection.” Rule 706 also establishes a procedural framework for the function of the expert witness. For example, the expert witness must advise the parties of any findings, and the expert witness may be deposed, called to testify, and cross-examined by any party. Thus, through findings and testimony, the court-appointed expert witness plays an evidentiary role in the case.


Technical advisors, on the other hand, are appointed pursuant to the inherent authority of the courts. District courts have inherent authority to provide themselves with appropriate instruments required for the performance of their judicial duties.3 Court-appointed technical advisors are scientific or technical experts who work directly with the district court judge. They function as “a sounding board for the judge—helping the jurist to educate himself in the jargon and theory disclosed by the testimony.”4


Technical advisors do not themselves contribute testimony or any other form of evidence. Indeed, they are entirely outside the purview of the evidentiary provisions of Rule 706. Some courts compare technical advisors to law clerks, as “confidential advisors” with whom the judge may brainstorm and debate.5 This analogy illustrates the difference in the roles of technical advisors vis-à-vis expert witnesses, who may be deposed and cross-examined.


Technical advisors should not be appointed in every patent litigation. They are a “near-to-last resort” reserved for exceptional cases involving “well beyond the regular questions of fact and law with which judges must routinely grapple.”6 The concern is preservation of the judicial decision-making role. It has been noted that “a judge can filter out ‘bad’ legal advice or research from a law clerk; he or she is ill-equipped, however, to do the same with ‘bad’ technical advice.”7


To safeguard the judicial process and district court from undue influence and to enable meaningful appellate review, the Federal Circuit in TechSearch, L.L.C. v. Intel Corp., applying Ninth Circuit law, suggested guidelines regarding proper use of technical advisors. The guidelines include (1) choosing a technical advisor by a fair and open procedure in which the parties’ counsel may participate; (2) clearly defining and limiting the technical advisor’s duties in writing to all parties, for example, by means of pre- and post-appointment affidavits; (3) requiring the technical advisor to confine his or her information sources to those of record; and (4) making explicit, perhaps through a written report or record, the nature and content of the technical advisor’s tutelage concerning the technology.8


Advisors Versus Tutorials
Although the specific terms of a technical advisor’s engagement will vary from court to court—indeed, from judge to judge—the rules are the same. Technical advisors do not contribute evidence. They may not be deposed or cross-examined. They have limited, if any, interactions with the parties. They should only be appointed in exceptional cases and with procedural safeguards to prevent undue influence on the decision maker.


The technical tutorial has few common ground rules. In its most general form, the technical tutorial is a non-evidentiary presentation prepared for the educational benefit of the district court judge. Otherwise, it is a fluid concept, malleable to the needs of the judge and the preferences of the parties. For example, it may be adversarial or neutral. In an adversarial technical tutorial, both parties may be given the opportunity to explain the science and technology in open court through their own retained experts. Some district court judges hold technical tutorials contemporaneous with a Markman claim construction hearing or a summary judgment hearing—for example, allowing each side 90 minutes to present its respective tutorial and arguments on summary judgment. A non-adversarial technical tutorial, on the other hand, may be conducted by a neutral, court-appointed expert witness—a Rule 706 expert—after being deposed by both parties. Alternatively, a neutral technical tutorial may take the form of a jointly prepared report or video that the district court judge studies at his or her leisure in chambers.


From the parties’ perspective, technical tutorials offer more than just flexibility; they offer control. Unlike technical advisors, with whom the parties have no pre-hearing contact and no opportunity to depose or cross-examine, technical tutorials require active participation by counsel and their experts. Counsel must prepare their own experts, depose a Rule 706 expert, or cooperate with opposing counsel to jointly write a report or produce a video. The parties control the content and delivery of the judge’s education.


From the judge’s perspective, technical tutorials lack the personalized assistance inherent in the technical advisor relationship. However, technical tutorials may be a more comfortable option for judges hesitant to declare a case exceptional or interfere with the traditional adversary process. Regardless of which route the judge chooses, both technical advisors and tutorials offer a non-evidentiary form of education to promote informed judicial decision making.


Conclusion
There are numerous options for educating the court in the highly complex scientific and technical disciplines that arise in patent litigation. Both the judge and the parties should consider the particular circumstances and their level of comfort with each judicial learning tool to promote competent, informed judicial decision making in highly complex cases.


Keywords: Intellectual property, patents, district courts, judges, expert witness


Jeffrey L. Snow is a partner at K&L Gates LLP in Boston. Andrea B. Reed is an associate at K&L Gates LLP in Boston.


This article appears in the Fall 2009 (note: member protected) issue of Intellectual Property Litigation, from the Intellectual Property Litigation Committee.


 

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