MONOLITHIC POWER SYSTEMS, INC. (MPS), v. O2 MICRO INTERNATIONAL LIMITED (Fed. Cir. March 5, 2009)
District Court Did Not Abuse Its Discretion When it Appointed a Neutral Expert to Testify; and "Section 103 of Title 35 requires this court to inquire “whether the improvement is more than the predictable use of prior-art elements according to their established functions.”
This was a DJ action and the patentee is 02 Micro.
The district court was struggling with the technical complexities of the case. At a case management conference the judge stated the following:
On the technical issues here . . . I find this extremely difficult to
understand. And the notion that a jury is going to understand it, to me, is
foolishness. You can talk for months and the jury isn’t really going to
understand this in the sense of being able to make a reasoned, rational decision
about it.They will make a decision, we hope. Maybe they will hang
because they’ll say that we can’t possibly understand this, but in my
experience, they make a decision. But what is it based on? . . . It is kind of
trial by ordeal or by sort of a champion, like a jousting contest rather than on
the actual scientific merits of who is right and who is wrong.
Over the objection of 02 Micro the district court ordered the parties to confer on a Rule 706 expert, which was eventually appointed and who testified. The court-appointed expert, Dr. Santi, offered testimony largely consistent with MPS’s theory of the case, including MPS’s position that it did not infringe O2 Micro’s asserted claims. The district court instructed the jury that the appointed 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 Federal Rules of Evidence allow a court to appoint an expert either “on its own motion or on the motion of any party.” Fed. R. Evid. 706(a). It is reviewed under circuit law and this was in the ninth circuit.
The Federal circuit noted that "While commentators have observed that district courts rarely make Rule 706 appointments . . . this court acknowledges that the Federal Rules do authorize those appointments." O2 Micro argued that it violated its 7th amendment rights to a jury trial because it was taking issues out of the jury's hands. The Federal Circuit that this was not the case because the parties agreed on an expert, the jury instructions were proper, and they could call their own experts to attack, support, or supplement the 706(a) appointed expert. The district court instructed the jury in the following manner:
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.
The Federal Circuit noted that the jury's verdict did not track the expert's testimony. For example the CAFC stated, "Whereas Dr. Santi opined that only claim 12 of the ’722 patent was obvious, the jury found all claims obvious." The Federal Circuit ultimately held that O2's argument is a policy argument and it was rejected by Congress.
The Federal Circuit did not like the rule but followed it, they stated, " The predicaments inherent in court appointment of an independent expert and revelations to the jury about the expert’s neutral status trouble this court to some extent," but found that it did not violate the Ninth Circuit's liberal interpretation of circumstances of when the rule can be used.
The claims were also found to be obvious and this was upheld by the Federal Circuit. The CAFC found that the elements were known and there was motivation to make the combination. In framing whether the invention was obvious the court stated, "Section 103 of Title 35 requires this court to inquire “whether the improvement is more than the predictable use of prior-art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007)." They found that the combination was nothing more than a predictable use.
Case can be found here
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