Federal Evidence Review

While noting concerns in appointing an expert, Federal Circuit agrees court-appointed expert was appropriate in “unusually complex case” involving “what appeared to be starkly conflicting expert testimony,” in Monolithic Power Systems, Inc. v. O2 Micro Intern. Ltd., 558 F.3d 1341 (Fed. Cir. March 5, 2009) (No. 2008-1128, 2008-1136)

While trial courts have the authority to appoint a court expert under FRE 706, this power is rarely invoked. In a recent patent trial, the losing party challenged the trial court’s appointment of an expert to assist the jury in understanding technical issues.

In the case, consolidated actions were brought before the district court concerning a patent involving power inverter circuitry for laptop computers, entitled “High-Efficiency Adaptive DC/AC converter.” Monolithic Power Systems, Inc. (MPS) claimed the patent was invalid, not infringed, and unenforceable. Patent holder O2 Micro International Limited claimed its Patent '722 was infringed by MPS and Advanced Semiconductor Manufacturing Corp. (ASMC). The '722 patent (circuitry pictured above) disclosed a device to convert low voltage DC battery power used in a laptop computer into high voltage AC power for use by the cold cathode fluorescent lamp of a backlit laptop screen.

The district court noted the complexities of the technical issues in the case and suggested a court-appointed expert testify “on the electrical engineering aspects” and assist the jury in determining the factual issues. Ultimately the parties agreed on an independent expert. At trial, the court-appointed expert testimony largely supported the position of non-infringement of MPS. The jury was instructed that the expert was “an independent witness retained by the parties jointly at the court’s direction to assist in explaining the technology at issue in this case.” The court further instructed

“You should not give any greater weight to Professor Santi’s opinion testimony than to the testimony of any other witness simply because the court ordered the parties to retain an independent witness. In evaluating his opinion, you should carefully assess the nature of and basis for Professor Santi’s opinion just as you would do with any other witness’ opinion.”

Monolithic Power Systems, 558 F.3d at 1348. The jury returned a verdict for MPS. On appeal, O2 Micro claimed the court-appointed expert “unduly burdened its Seventh Amendment right to a trial by jury” and that there was “no ‘complexity exception’ to a litigant’s Seventh Amendment rights.”

The Federal Circuit found no abuse of discretion in the appointment of the expert and no violation of the Seventh Amendment. The circuit concurred with the procedure employed by the trial court:

“In accord with Rule 706(a), the court allowed the parties to show cause why an expert witness should not be appointed, and over O2 Micro’s objections, instructed the parties to nominate candidates and confer upon a mutually agreeable witness. Further in accord with 706(a), the district court provided detailed written instructions to [court-appointed expert] Dr. Santi regarding his duties, and ordered Dr. Santi to make himself available for depositions and for examination at trial. In accord with 706(b), the court instructed the parties to share Dr. Santi’s reasonable fees and expenses. Id. And as per 706(d), the court did not limit in any way the parties’ ability to call their own experts, and allowed these experts to attack, support, or supplement the testimony of Dr. Santi.

“The record shows that the trial court gave Dr. Santi only thirty-five days to review all relevant materials and prepare a report. The strictures of this time frame, however, do not amount to an abuse of discretion. Dr. Santi testified repeatedly that he had enough time to complete his analysis.… Further, he made himself available for depositions and met with counsel for both sides before trial to prepare a technology tutorial for the court.”

Monolithic Power Systems, 558 F.3d at 1347.

The court found no error in the manner in which the jury was instructed of the independent status of the expert. In reviewing the record, the circuit did not believe the court-appointed expert unduly influenced the jury. The jury’s verdict concluded more claims were obvious that the expert opined and an additional claim was infringed. The circuit rejected the arguments of O2 Micro that the expert’s “testimony relieved the jury of its tasks” as essentially “policy arguments against Rule 706” which Congress had considered and rejected. The circuit noted some concerns inherent in the court appointment of an expert but in this case there was no abuse of discretion.

The case highlights several issues that may be considered in the court appointment of an expert. One delicate issue is the manner in which the jury learns the independent status of the expert.