10/28/13

Rembrandt v. J&J: Deviations of Expert Testimony from Expert Report Excludable per Rules 26 and 37


Category: Civil Procedure
 
 
By: Abby Lin, Contributor   
 
TitleRembrandt Vision Tech., L.P., v Johnson & Johnson Vision Care, Inc., No. 2012-1510 (Fed. Cir. Aug. 7 2013).
Issues
[1] Expert Testimony: “Rembrandt argues that, because the court erroneously excluded Dr. Beebe’s testimony [under Federal Rules of Civil Procedure 26 and 37], [this Court] should reverse the district court’s grant of judgment as a matter of law”. Rembrandt at *6. “The issue is ... whether, under Rule 37(c)(1), it was “substantially justified or harmless that Dr. Beebe waited until trial to disclose the testing methodology that he claims he actually employed [as opposed to those he disclosed in his expert report].” Id. at *8 (text added).
[2] Circumstantial Evidence: “Rembrandt also argues that its circumstantial evidence that the accused lenses are generally known as ‘soft’ precludes judgment as a matter of law … the district court erred by categorically excluding that circumstantial evidence … [which] shows that accused lenses meet the ‘soft’ limitation.” Id. at *6. “JJVC argues that the court did not err … because the ‘soft’ limitation requires the lenses to meet a specific hardness measure…[and] Rembrandt did not present any admissible evidence that the accused lenses were ‘soft’”. Id. at *7.
Holdings
[1] “The district court did not err in concluding that the late disclosure was not substantially justified. The court rightly found that ‘[t]here is simply no excuse for Dr. Beebe waiting until cross-examination to disclose his testing procedure.’ … The district court [also] did not err in finding that Dr. Beebe’s failure to disclose his testing methodology harmed JJVC [because Dr. Beebe’s testimony that the errors in his report were typos was an substantive and substantial shift in his testimony and significantly hampered JJVC’s ability to adequately cross-examine Dr. Beebe and its opportunity to develop or introduce competing evidence.] … We conclude that the district court did not abuse its discretion in excluding Dr. Beebe’s trial testimony under Rule 37.” Rembrandt at *8-9 (internal citations omitted, text added).
[2] “The court was within its discretion to exclude … evidence [which were general statements that the accused lenses are ‘soft’ because they had the potential to confuse the jury and did not bear on whether the accused lenses had a Shore D Hardness of less than five.  See FED. R. EVID. 403.” Id. at *9-10(text added). “Because Rembrandt failed to offer any admissible evidence that the accused lenses met the ‘soft gas permeable contact lens’ limitation, we affirm the district court’s judgment that JJVC does not infringe the asserted claims of the ‘327 patent.” Id. at *10.
 

Procedural HistoryRembrandt sued Johnson & Johnson Vision Care, Inc (“JJVC”) in the Middle District of Florida, “alleging that [JJVC’s] Advance® and Oasis® contact lenses infringed the [U.S. Patent No. 5.712.327 (’327)] patent claims. JJVC prevailed at trial, and the district court, in the alternative, granted judgment as a matter of law that Rembrandt failed to prove that the accused lenses were ‘soft gas permeable’ contract lenses [and thus JJVC did not infringe on the claims]… Rembrandt also challenges the denial of its motion for a new trial based on the district court’s construction of the “surface layer” limitation, its exclusion of evidence related to that limitation, and its denial of Rembrandt’s attempt to reopen expert discovery regarding the surface layer issue. Because [this Court] affirm[ed] the district court’s grant of judgment as a matter of law, [it] do[es] not address those other issues.”
Rembrandt at *3-5 (internal citations omitted, text added).
 
 
 
Legal Reasoning (Dyk, Clevenger, and Moore)
Background
Claim 1 Language of ‘327 patent:A hydrophilic soft gas permeable contact lens comprised of a polymerization product … said lens comprising a hydrophilic lens body and a tear wettable surface layer integral therewith, said lens body being comprised of said polymerization product and said tear-wettable surface layer being comprised of polymeric material containing hydroxyl acrylic monomer units…
Rembrandt at *2-3.
Judgment as a Matter of Law: Legal Standard
Judgment as a matter of law is appropriate when, after a party has been fully heard on an issue, “a reasonable jury would not have a legally sufficient evidentiary basis to find for the party.” FED. R. CIV. P. 50(a)..." Id. at *6.
"'A district court’s evidentiary rulings are reviewed for an abuse of discretion.' Goodman-Cable-Gould Co. v. Tiara Condominium Ass’n, Inc., 595 F. 3d 1203, 1210 (11th Cir. 2010)." Id. at *6.
[1] Expert Testimony: District Court Did Not Abuse Discretion in Excluding Testimony Because Testimony was Neither Substantially Justified Nor Harmless
Legal Standard: Expert Testimony
Rule 26: Content“Rule 26 requires an expert witness to disclose an expert report that contains a complete statement of all opinions the witness will express and the basis and reasons for them.’ FED. R. CIV. P. 26(a)(2)(B)(i).” Rembrandt at *7.
Rule 37: Scope“An expert witness may not testify to subject matter beyond the scope of the witness’s expert report unless the failure to include that information in the report was ‘substantially justified or harmless.’ FED. R. CIV. P. 37(c)(1).” Id. at *6-7(text added).
Failure to Comply with Rule 26“[I]t is undisputed that Dr. Beebe failed to produce a report [meeting Rule 26’s requirements].” Id. at *7. “[Failure to comply can result in a sanction.] The burden is on the party facing sanctions to prove that its failure to comply with Rule 26(a) was ‘substantially justified or harmless.’ Yeti by Molly, Ltd. V. Deckers Outdoor Corp., 259 F.3d 1101, 1107 (9th Cir. 2001).” Id. at *6-7 (text added).
a) “Substantially Justified” Factor[E]ven though the adequacy of his Shore D Hardness testing methodology was in dispute prior to trial, Dr. Beebe never attempted to supplement his expert report. As the district court observed, “Dr. Beebe thus apparently either did not review his expert report or forgot how he had actually performed the test.” Nothing in the record indicates that Dr. Beebe’s failure to disclose his testing methodology was substantially justified.
Id. at *8 (internal citations omitted).
b) “Harmless” Factor
"The purpose of the expert disclosure rule is to 'provide opposing parties reasonable opportunity to prepare for effective cross examination and perhaps arrange for expert testimony from other witnesses.' Reese v. Herbert, 527 F.3d 1253, 1265 (11th Cir. 2008)(quotations omitted)."
Rembrandt at *7.
JJVC prepared its noninfringement defense based on the methodology disclosed in Dr. Beebe’s expert report, and opted to challenge that metholodogy rather than introduce competing expert testimony… Dr. Beebe only recanted his expert report when, after being “repeatedly challenged on cross-examination,” he was “[u]nable to explain how his written procedures complied with the standards” that govern hardness testing… it is undisputed that the shift in his testimony was both substantive and substantial. Such a late change in course significantly hampered JJVC’s ability to adequately cross-examine Dr. Beebe and its opportunity to develop or introduce competing evidence.
Id. at *9 (internal citations omitted).
[2] Circumstantial Evidence: Generic Statements Which Do Not Bear on Specifics at Issue are Excludable by Court’s Discretion
Potential to Confuse Adequate Grounds to Exclude“[Since] Rembrandt agreed to a construction of ‘soft gas permeable contact lens’ that required the lens to have a Shore D Harness less than five’…[t]he [district] court was within its discretion to exclude … evidence [which were general statements that the accused lenses are ‘soft’ because they had the potential to confuse the jury and did not bear on whether the accused lenses had a Shore D Hardness of less than five. See FED. R. EVID. 403.” Rembrandt at *9-10(text added).
Issues Not Raised in District Court are Not Considered on Appeal“We decline to upend the district court’s decision on a basis that was not raised below [in the district court].” Id. at *10(text added).
Conclusion
"For the forego- ing reasons, the judgment of the district court is AFFIRMED" Rembrandt at *10.
 
 
Image Attribution Statement: Piotr Siedlecki, "Lenses," available under a Public Domain license, http://www.publicdomainpictures.net/view-image.php?image=48307&picture=lenses (last visited Oct. 28, 2013). 
 
 
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