What happens when a judge says he'll order one thing, but then writes the order as something much different? That was the issue in a recent patent appeal decided by the U.S. Court of Appeals for the Federal Circuit.
At the final pretrial conference in the case, the judge granted the plaintiff's request to exclude expert testimony on the issue of obviousness. But in subsequently writing the order, the judge mistakenly barred the defendant from entering any evidence of obviousness at trial.
Did the judge's mistake require reversal of the resulting infringement verdict against the defendant? No, said the Federal Circuit, ruling Jan. 17 that the exclusion order did not result in "a miscarriage of justice" that would justify a new trial.
The issue arose in a suit brought by Innogenetics N.V. against Abbot Laboratories in federal court in Wisconsin. Innogenetics claimed infringement of its patent pertaining to a diagnostic tool for detecting hepatitis C.
At the final pretrial conference, the district judge granted Innogenetics' motion to exclude testimony by Abbott's expert witness on the issue of obviousness. He made this decision after reviewing the expert's report and concluding his testimony would be insufficient to support a finding of obviousness.
But in writing the order after the conference, the judge mistakenly said that Abbott was precluded from entering any evidence of obviousness at trial.
Correction Never Sought
Abbott never asked the judge to correct the written order. Instead, its counsel advised Innogenetics that it would not contest the order and would put in no evidence of obviousness. On the first day of trial, Abbott reiterated this, but noted that it wished to preserve an objection on the issue.
After bifurcating the case, the judge entered judgment as a matter of law as to infringement by Abbott and sent it to a jury to determine damages. The jury awarded Innogenetics $7 million.
On appeal to the Federal Circuit, Abbott raised a number of issues, among them that the trial court erred in precluding its obviousness defense.
The Federal Circuit began its analysis with the trial judge's decision to exclude the expert's testimony. It agreed with the judge that the expert's report was deficient because it merely listed various prior art references and then concluded with the stock phrase, "to one skilled in the art it would have been obvious" to perform the method of the patent.
An expert's report must contain "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness," the court explained. But nowhere did Abbott's expert show how one would have found the patent obvious in light of those prior references, it said.
As to the broader issue of the trial judge's preclusion of all evidence of obviousness, the Federal Circuit likewise found no grounds for reversal.
A new trial would be warranted, the court said, only if the verdict "resulted in a miscarriage of justice or where the verdict, on the record, cries out to be overturned or shocks our conscience." This was not such a case, it concluded.
"In its opening brief, Abbott's only support for its argument that it had suffered prejudice from not being able to present other witnesses on obviousness is the bald statement that some of its other non-expert witnesses 'could have' established invalidity," the court reasoned. "Speculation is not sufficient to demonstrate prejudice."
"Without having provided any satisfactory explanation as to why it waited until the conclusion of trial to alert the court to the inaccurate order," the court continued, "Abbott will have to bear the cost of being precluded from presenting any evidence of obviousness at trial."
In a related ruling, the circuit court addressed a question undecided in the 7th Circuit, from which this case arose: Whether experts not specially retained but providing scientific testimony must comply with the federal rule requiring expert reports.
The issue arose because the trial judge limited the testimony of another Abbott witness for failing to submit an expert report, even though he was not a retained expert. The judge restricted the witness, Dr. Tai-An Cha, the inventor and author of three prior-art references, to the actual words and content of his patent applications.
Finding that Abbott had failed to present this issue properly on appeal, the circuit court let the judge's order stand.
This article was originally published in BullsEye, a newsletter distributed by IMS Expert Services.