CAFC OKs JMOL When Expert Changes Testimony at Trial


Recently, the Federal Circuit issued a decision in Rembrandt Vision Technologies v. Johnson & Johnson Vision Care. The issue in the case primarily centered around whether the district court correctly granted judgment as a matter of law that J&J did not infringe claims of U.S. Patent No. 5, 712,327.

The technology at issue in the case related to contact lenses. Two important characteristics of a contact lens are its permeability to oxygen and the wettability of its surface. By the 1980s, both hard and soft contact lenses that were permeable to oxygen were well known, but these contact lens often lacked a highly wettable surface.

The contact lens claimed in the ‘327 patent had both a highly wettable surface and were permeable to oxygen. The patent disclosed a soft gas-permeable lens that contained an acrylic layer on the surface of the lens body. This acrylic layer increased the wettability and comfort of the lens.

The central issue on appeal to the Federal Circuit was whether Rembrandt provided sufficient evidence that the accused lenses were “soft.” The district court adopted the parties’ agreed construction of “soft gas permeable contact lens,” defining the phrase to cover “a contact lens having a Hardness (Shore D) less than five.”

At trial, Rembrandt relied upon expert testimony from Dr. Thomas Beebe, Jr. In his expert report, Dr. Beebe concluded that the accused lenses had a Shore D Hardness of less than five. He came to this conclusion by testing the lenses by stacking the accused lenses around a stainless steel ball and then probing them. In fact, he stacked 24 individual hydrated contact lenses to achieve a thick enough sample to allow full penetration by a probe that was 2.54 mm in length.

At trial, Dr. Beebe’s methodology was called into question on cross-examination. Counsel representing J&J asked Dr. Beebe whether he had tested a sufficiently thick sample of stacked lenses to comply with the industry-standard Shore D Hardness testing protocols, which required a stack with a thickness of 6 mm or more. He claimed that he did test a stack that was 6 mm in thickness and not 2.54 mm in thickness as his report stated. He explained that 2.54 mm might be a typo.

J&J further probed Dr. Beebe, asking him if he tested 24 stacked lenses, each with a thickness of .07 mm, how it was possible that 24 multiplied by .07 mm could add up to 6 mm in total. Dr. Beebe conceded that 24 lenses of .07 mm thickness would not nearly approach 6 mm.

Upon further questioning, Dr. Beebe seemingly went off script. He suddenly changed course in the middle of cross-examination and admitted that he did not follow the procedures listed in his expert report, but rather remembered doing something different that would explain how he really had tested a stack that measured 6 mm in thickness as required by the industry standard.

On proper motion, the district court struck the entirety of Dr. Beebe’s testimony because his expert report was “woefully deficient” to support his trial testimony. With Dr. Beebe’s testimony struck, that left no evidence that the accused lenses satisfied the agreed-upon definition of “soft.” The district court thus granted judgment as a matter of law.

The Federal Circuit had little difficulty siding with J&J and determining that the district court properly granted a judgment as a matter of law. The Federal Circuit determined that Rule 26 of the Federal Rules of Civil Procedure clearly require an expert report that contains “a complete statement of all opinions the witness will express and the basis and reasons for them.”  The Federal Circuit, citing Rule 37 of the FRCP, went on to say: “An expert witness may not testify to subject matter beyond the scope of the witness’s expert report unless the failure to include that information in the report was substantially justified or harmless.”  In this case, the late change in testimony was not found to be substantially justified or harmless.

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