Addressing the issue of whether a technical expert's failure to disclose specific testing methodology was merely a "typo" or a previously non-disclosed opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the district court's judgment of non-infringement because the expert failed to support evidence of infringement. Rembrandt Vision Technologies, L.P. v. Johnson & Johnson Vision Care, Inc., Case No. 12-1510 (Fed. Cir., Aug. 7, 2013) (Moore, J.)
Plaintiff Rembrandt Vision Technologies sued Johnson & Johnson Vision Care (JJVC) for patent infringement by JJVC's Advance and Oasys contact lenses. At issue was whether JJVC's lenses were "soft gas permeable lenses." The parties agreed to a claim construction of this term as "a contact lens having a Hardness (Shore D) less than five."
At trial, the plaintiff's expert, Dr. Thomas Beebe, Jr., testified that the accused lenses had a Shore D Hardness less than five to demonstrate that the accused lenses were "soft." During direct examination, Dr. Beebe testified that his testing methodology showed infringement by stacking the accused lenses around a stainless steel ball to show a Shore D Hardness of less than five, as disclosed in his expert report. JJVC moved to exclude that testing as not complying with industry-standard methodology that did not allow for the use of stainless steel balls. During cross-examination, JJVC questioned how Dr. Beebe could have shown a Shore D Hardness of less than five using that methodology, and Dr. Beebe "suddenly changed course" by describing a Shore D Hardness test he performed on the accused lenses that was not disclosed in his expert report. That test involved cutting and stacking the lenses and did not use a stainless steel ball. Dr. Beebe claimed that there was a typo in his expert report, and that he intended to disclose the cutting and stacking methodology.
JJVC renewed its motion to exclude Dr. Beebe's testimony and for judgment as a matter of law. The district court granted the motions, and Rembrandt filed an appeal.
The Federal Circuit affirmed, stating that Federal Rule of Civil Procedure 26 requires that an expert witness disclose a complete statement of all opinions, which Dr. Beebe failed to do with his newly described testing methodology. The Federal Circuit held that an expert may not testify beyond the scope of the report unless the failure to include the information was "substantially justified or harmless." The Federal Circuit noted that Dr. Beebe had submitted his expert report nearly six months prior to trial and had given no indication that he would testify to a different type of testing methodology, so the lack of disclosure was not substantially justified. The Federal Circuit also found that the non-disclosure was not harmless, because Dr. Beebe's testing methodology was the subject of depositions and pre-trial motions, and was at issue at trial, substantially affecting JJVC's non-infringement defense. The Federal Circuit concluded that Rembrandt had made no attempt to supplement or revise the expert report.
Practice Note: Expert witnesses must disclose all opinions and all testing methodology, and cannot proffer testimony that contradicts their opinions disclosed under Rule 26.
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