Court-Appointed Experts in Patent Infringement Cases

Under the recent Federal Circuit opinion in Monolithic Power Systems v. O2 Micro International, 558 F.3d 1341 (Fed. Cir. 2009), courts are permitted to appoint their own technical experts to aid in understanding complex technology involved in patent suits. Such court-appointed experts may even testify before the jury, raising concerns about undue influence and encroachment on the jury's decisional role. As discussed in this article, Monolithic appears to have left these concerns somewhat unresolved, creating a likelihood that they will arise again in future patent cases.

Types of Experts Relied upon By Courts

For assistance in cases involving complex technology, courts may turn to several types of experts: special masters, technical advisers, or court-appointed experts. The roles and responsibilities of each type vary, as well as the degree of control exercised over each type by the parties.

Special Masters

Special masters may be appointed under Federal Rule of Civil Procedure 53. These appointments are limited in scope, and the court must give the parties notice and the opportunity to be heard before making an appointment. A special master is generally appointed where it is believed that: 1) a master can deal with the relevant issues faster than the district court, and/or 2) a master with technical expertise can better deal with highly technical issues that are beyond the scope of the judge's expertise. Generally, courts may appoint masters to perform duties to which the parties agree, or, under limited circumstances, to act as masters during some phase of the trial, pre-trial or post-trial proceedings. Courts must give the parties notice and the opportunity to be heard before acting on a master's orders, reports, or recommendations.

Of the three types of technical experts, special masters give parties the most opportunity for control over the appointment and conclusions of the expert. Special masters, rather than acting like expert witnesses, act more as appendages of the court. However, while Rule 53 contemplates allowing a special master to decide issues of law, the master may not displace the court itself. Special masters may aid in performing specific judicial duties, but courts may not abdicate their judicial function by depriving parties of a trial on the basic issues of the litigation. La Buy v. Howes Leather Co., 352 U.S. 249, 256 (1957); FDIC v. St. Paul Cos., No. 03-cv-00115-MEH-BNB, 2009 U.S. Dist. LEXIS 3148, at 3-4 (D. Colo. Jan. 16, 2009) (same).

Technical Advisers

Technical adviser appointments fall outside the scope of Federal Rule of Evidence 706 and instead are made under a court's inherent authority. Techsearch L.L.C. v. Intel Corp., 286 F.3d 1360, 1377-78 (Fed. Cir. 2002). In the patent context, the court may exercise its authority to appoint a technical adviser in limited circumstances, where the court requires assistance to understand scientifically complex technology underlying a patent. Id. at 1378. In a sense, technical advisers act as judicial tutors by helping judges to understand the technical aspects of scientific evidence. See, e.g., FTC v. Enforma Natural Prods., Inc., 362 F.3d 1204, 1213 (9th Cir. 2004). Although parties have little control over the appointment and effect of technical advisers, these advisers' conclusions are utilized only by the judge in chambers, and are not made known to the jury.

Court-Appointed Experts

Court-appointed experts are governed by Federal Rule of Evidence 706(a). Court-appointed experts function essentially as third-party expert witnesses. While the court may appoint an expert agreed upon by the parties, the court may also select and appoint an expert of its own choosing. These experts must advise the parties of their findings, and either party may depose the expert. The expert may also be called to testify by the court or by either party. And either party may cross-examine the expert, including a party that calls the expert to testify. The court also has discretion to authorize disclosure to the jury that the expert witness was appointed by the court.

Obviously, the parties have limited control over the conclusions and effects of a court-appointed expert, and such an expert can potentially influence a jury. However, the parties may present plausible diverging viewpoints through their own appointed experts, and point out weaknesses in the court-appointed expert's conclusions via cross-examination.

The Federal Circuit Weighs in On Court-Appointed Experts

Recently, in Monolithic Power Systems v. O2 Micro International, the Federal Circuit affirmed a trial court's appointment of an independent expert in a patent case. 558 F.3d 1341 (Fed. Cir. 2009). Monolithic had challenged the validity and infringement of O2 Micro's patent for power inverter circuitry for laptop computers. The trial court decided to appoint an expert under Rule 706 because the court did not understand the technology of the patent at issue and was concerned that the jury also would not understand it. The court defined the expert's scope to include not only technical issues, but infringement and validity as well.

During trial, the court instructed the jury that the court-appointed expert was an independent witness retained at the court's direction to assist in explaining the technology at issue in the case. The court also instructed the jury to give no greater weight to the court-appointed expert's opinion testimony than to the testimony of any other witness. In the end, after the expert testified favorably to Monolithic, the jury rendered a verdict in favor of Monolithic, finding O2 Micro's patent invalid.

O2 Micro appealed the decision to the Federal Circuit. On appeal, O2 Micro argued that the district court had abused its discretion by appointing the expert and that the court-appointed expert had unduly influenced the jury, which encumbered O2 Micro's Seventh Amendment right to a trial by jury. The Federal Circuit did not agree. It recognized that “the Federal Rules do authorize [these] appointments” and found that the district court had “properly administered the standards set by Rule 706.” 558 F.3d at 1346-47. The Federal Circuit, however, went on to add that “[the] predicaments inherent in court appointment of an independent expert and revelations to the jury about the expert's neutral status trouble[d the] court to some extent.” Id. at 1348. According to courts and commentators, “Rule 706 should be invoked only in rare and compelling circumstances.” Id.

Issues Raised By Monolithic

While special masters and technical advisers lie at opposite ends of the spectrum with respect to the control parties have over their appointment and effect, a court's use of those experts does not have jury implications. The same may not be true, however, for court-appointed experts who testify before a jury, as was observed by O2 Micro in its unsuccessful petition for rehearing following the Federal Circuit's decision.

O2 Micro cited post-Rule 706 studies indicating that both judges and juries are more likely to decide cases consistently with the findings of a court-appointed expert. This suggests that cross-examination by the parties, and even an instruction by the judge, may be insufficient to counteract that expert's influence on the jury where, as here, the jury knew that the expert was appointed by the court. O2 Micro also noted that the Federal Circuit's opinion did not address whether the court had gone too far in permitting the court-appointed expert to move beyond filling in gaps in the jury's technical knowledge and testify on legal issues of infringement and validity.

O2 Micro further observed that the court-appointed expert may have usurped the jury's decision-making role by basing his conclusions on a review of the parties' contentions, dispositive motions, and expert reports, rather than conducting his own independent investigation into the technology at issue. Indeed, it seems possible that some legal limit on a court-appointed expert's duties, similar to that set by the U.S. Supreme Court in La Buy for special masters, might exist where the court-appointed expert acts as a de facto “tiebreaker” between conflicting positions of parties' experts.

Despite these concerns, and the Federal Circuit's own statement that it was “trouble[d] ' to some extent” by the practice, Monolithic established that court-appointed experts will remain an option for patent trial judges. Indeed, because (as noted by O2 Micro in its petition) many patent infringement cases involve highly complex technology and stark conflicts between parties' own experts, the use of court-appointed experts for clarification and resolution could become even more common. It remains an open question whether the Federal Circuit's statement that such experts be used only in “rare and compelling circumstances” might motivate it to revisit Monolithic if it comes to believe that court-appointed experts are being appointed too frequently or under the wrong criteria. The Federal Circuit also based its opinion partly upon Ninth Circuit interpretations of Rule 706, which give district courts “wide latitude” to appoint experts (558 F.3d at 1348), raising the issue of whether a similar patent case appealed from a different circuit might have a different outcome, or whether the Federal Circuit might eventually craft a rule specific to patent law.

Of course, if patent trial courts were to become more specialized by technological area or hire clerks with a technological background (as the Federal Circuit already does), then judges might be better equipped to understand the technology at issue and perhaps feel less need for an outside expert. But converting to such a specialized system would likely take time and great expense.

Conclusion

The use of testifying court-appointed technical experts in patent cases, while seemingly approved by the Federal Circuit in Monolithic, left unresolved issues about such experts' possible undue influence upon a jury and the role of such experts in a patent-specific context. It is likely that these questions will arise in later patent cases unless and until the Federal Circuit chooses to revisit these issues.

Under the recent Federal Circuit opinion in Monolithic Power Systems v. O2 Micro International, 558 F.3d 1341 (Fed. Cir. 2009), courts are permitted to appoint their own technical experts to aid in understanding complex technology involved in patent suits. Such court-appointed experts may even testify before the jury, raising concerns about undue influence and encroachment on the jury's decisional role. As discussed in this article, Monolithic appears to have left these concerns somewhat unresolved, creating a likelihood that they will arise again in future patent cases.

Types of Experts Relied upon By Courts

For assistance in cases involving complex technology, courts may turn to several types of experts: special masters, technical advisers, or court-appointed experts. The roles and responsibilities of each type vary, as well as the degree of control exercised over each type by the parties.

Special Masters

Special masters may be appointed under Federal Rule of Civil Procedure 53. These appointments are limited in scope, and the court must give the parties notice and the opportunity to be heard before making an appointment. A special master is generally appointed where it is believed that: 1) a master can deal with the relevant issues faster than the district court, and/or 2) a master with technical expertise can better deal with highly technical issues that are beyond the scope of the judge's expertise. Generally, courts may appoint masters to perform duties to which the parties agree, or, under limited circumstances, to act as masters during some phase of the trial, pre-trial or post-trial proceedings. Courts must give the parties notice and the opportunity to be heard before acting on a master's orders, reports, or recommendations.

Of the three types of technical experts, special masters give parties the most opportunity for control over the appointment and conclusions of the expert. Special masters, rather than acting like expert witnesses, act more as appendages of the court. However, while Rule 53 contemplates allowing a special master to decide issues of law, the master may not displace the court itself. Special masters may aid in performing specific judicial duties, but courts may not abdicate their judicial function by depriving parties of a trial on the basic issues of the litigation. La Buy v. Howes Leather Co. , 352 U.S. 249, 256 (1957); FDIC v. St. Paul Cos., No. 03-cv-00115-MEH-BNB, 2009 U.S. Dist. LEXIS 3148, at 3-4 (D. Colo. Jan. 16, 2009) (same).

Technical Advisers

Technical adviser appointments fall outside the scope of Federal Rule of Evidence 706 and instead are made under a court's inherent authority. Techsearch L.L.C. v. Intel Corp. , 286 F.3d 1360, 1377-78 (Fed. Cir. 2002). In the patent context, the court may exercise its authority to appoint a technical adviser in limited circumstances, where the court requires assistance to understand scientifically complex technology underlying a patent. Id. at 1378. In a sense, technical advisers act as judicial tutors by helping judges to understand the technical aspects of scientific evidence. See, e.g., FTC v. Enforma Natural Prods., Inc. , 362 F.3d 1204, 1213 (9th Cir. 2004). Although parties have little control over the appointment and effect of technical advisers, these advisers' conclusions are utilized only by the judge in chambers, and are not made known to the jury.

Court-Appointed Experts

Court-appointed experts are governed by Federal Rule of Evidence 706(a). Court-appointed experts function essentially as third-party expert witnesses. While the court may appoint an expert agreed upon by the parties, the court may also select and appoint an expert of its own choosing. These experts must advise the parties of their findings, and either party may depose the expert. The expert may also be called to testify by the court or by either party. And either party may cross-examine the expert, including a party that calls the expert to testify. The court also has discretion to authorize disclosure to the jury that the expert witness was appointed by the court.

Obviously, the parties have limited control over the conclusions and effects of a court-appointed expert, and such an expert can potentially influence a jury. However, the parties may present plausible diverging viewpoints through their own appointed experts, and point out weaknesses in the court-appointed expert's conclusions via cross-examination.

The Federal Circuit Weighs in On Court-Appointed Experts

Recently, in Monolithic Power Systems v. O2 Micro International, the Federal Circuit affirmed a trial court's appointment of an independent expert in a patent case. 558 F.3d 1341 (Fed. Cir. 2009). Monolithic had challenged the validity and infringement of O2 Micro's patent for power inverter circuitry for laptop computers. The trial court decided to appoint an expert under Rule 706 because the court did not understand the technology of the patent at issue and was concerned that the jury also would not understand it. The court defined the expert's scope to include not only technical issues, but infringement and validity as well.

During trial, the court instructed the jury that the court-appointed expert was an independent witness retained at the court's direction to assist in explaining the technology at issue in the case. The court also instructed the jury to give no greater weight to the court-appointed expert's opinion testimony than to the testimony of any other witness. In the end, after the expert testified favorably to Monolithic, the jury rendered a verdict in favor of Monolithic, finding O2 Micro's patent invalid.

O2 Micro appealed the decision to the Federal Circuit. On appeal, O2 Micro argued that the district court had abused its discretion by appointing the expert and that the court-appointed expert had unduly influenced the jury, which encumbered O2 Micro's Seventh Amendment right to a trial by jury. The Federal Circuit did not agree. It recognized that “the Federal Rules do authorize [these] appointments” and found that the district court had “properly administered the standards set by Rule 706.” 558 F.3d at 1346-47. The Federal Circuit, however, went on to add that “[the] predicaments inherent in court appointment of an independent expert and revelations to the jury about the expert's neutral status trouble[d the] court to some extent.” Id. at 1348. According to courts and commentators, “Rule 706 should be invoked only in rare and compelling circumstances.” Id.

Issues Raised By Monolithic

While special masters and technical advisers lie at opposite ends of the spectrum with respect to the control parties have over their appointment and effect, a court's use of those experts does not have jury implications. The same may not be true, however, for court-appointed experts who testify before a jury, as was observed by O2 Micro in its unsuccessful petition for rehearing following the Federal Circuit's decision.

O2 Micro cited post-Rule 706 studies indicating that both judges and juries are more likely to decide cases consistently with the findings of a court-appointed expert. This suggests that cross-examination by the parties, and even an instruction by the judge, may be insufficient to counteract that expert's influence on the jury where, as here, the jury knew that the expert was appointed by the court. O2 Micro also noted that the Federal Circuit's opinion did not address whether the court had gone too far in permitting the court-appointed expert to move beyond filling in gaps in the jury's technical knowledge and testify on legal issues of infringement and validity.

O2 Micro further observed that the court-appointed expert may have usurped the jury's decision-making role by basing his conclusions on a review of the parties' contentions, dispositive motions, and expert reports, rather than conducting his own independent investigation into the technology at issue. Indeed, it seems possible that some legal limit on a court-appointed expert's duties, similar to that set by the U.S. Supreme Court in La Buy for special masters, might exist where the court-appointed expert acts as a de facto “tiebreaker” between conflicting positions of parties' experts.

Despite these concerns, and the Federal Circuit's own statement that it was “trouble[d] ' to some extent” by the practice, Monolithic established that court-appointed experts will remain an option for patent trial judges. Indeed, because (as noted by O2 Micro in its petition) many patent infringement cases involve highly complex technology and stark conflicts between parties' own experts, the use of court-appointed experts for clarification and resolution could become even more common. It remains an open question whether the Federal Circuit's statement that such experts be used only in “rare and compelling circumstances” might motivate it to revisit Monolithic if it comes to believe that court-appointed experts are being appointed too frequently or under the wrong criteria. The Federal Circuit also based its opinion partly upon Ninth Circuit interpretations of Rule 706, which give district courts “wide latitude” to appoint experts (558 F.3d at 1348), raising the issue of whether a similar patent case appealed from a different circuit might have a different outcome, or whether the Federal Circuit might eventually craft a rule specific to patent law.

Of course, if patent trial courts were to become more specialized by technological area or hire clerks with a technological background (as the Federal Circuit already does), then judges might be better equipped to understand the technology at issue and perhaps feel less need for an outside expert. But converting to such a specialized system would likely take time and great expense.

Conclusion

The use of testifying court-appointed technical experts in patent cases, while seemingly approved by the Federal Circuit in Monolithic, left unresolved issues about such experts' possible undue influence upon a jury and the role of such experts in a patent-specific context. It is likely that these questions will arise in later patent cases unless and until the Federal Circuit chooses to revisit these issues.