Rembrandt Vision Tech v. Johnson & Johnson Vision

Expert May Not Testify Beyond the Scope of the Expert Report Unless Substantially Justified or Harmless


August 07, 2013

Saidman, Benjamin A.


Last Month at the Federal Circuit - September 2013

Judges: Dyk, Clevenger, Moore (author)

[Appealed from: M.D. Fla., Judge Corrigan]

In Rembrandt Vision Technologies, Inc. v. Johnson & Johnson Vision Care, Inc., No. 12-1510 (Fed. Cir. Aug. 7, 2013), the Federal Circuit affirmed the district court’s decision to strike expert testimony that went beyond the scope of the expert report and to grant JMOL of noninfringement.

Rembrandt Vision Technologies, Inc. (“Rembrandt”) sued Johnson & Johnson Vision Care, Inc. (“JJVC”), alleging that JJVC’s Advance® and Oasis® contact lenses infringed Rembrandt’s U.S. Patent No. 5,712,327 (“the ’327 patent”). Claim 1 of the ’327 patent is directed to a soft gas permeable contact lens. During claim construction, the district court adopted the parties’ agreed construction of “soft gas permeable contact lens” as “a contact lens having a Hardness (Shore D) less than five.” Slip op. at 3 (citation omitted).

At trial, Rembrandt relied on expert testimony from Dr. Thomas Beebe, Jr. to prove that the accused lens had a Shore D Hardness of less than five. Dr. Beebe testified in his expert report that he performed the Shore D Hardness test by stacking the accused lenses around a stainless steel ball and then probing them. During cross-examination, however, Dr. Beebe testified that he performed the Shore D Hardness testing by cutting the lenses into quarters, stacking the lens quarters on a flat surface, and then probing them. This procedure was not disclosed in Dr. Beebe’s expert report. As a result, the district court struck Dr. Beebe’s testimony under Fed. R. Civ. P. 26 and 37, and excluded the testimony under Fed. R. Evid. 702. With no additional evidence to prove that the accused lenses were “soft,” the district court granted JMOL that JJVC did not infringe. Rembrandt appealed.

On appeal, the Federal Circuit affirmed the district court’s grant of JMOL and exclusion of Dr. Beebe’s testimony under the Federal Rules of Civil Procedure. The Court found it was undisputed that Dr. Beebe failed to produce a report containing “a complete statement of all opinions the witness will express and the basis and reasons for them” as required by Rule 26. Slip op. at 7 (quoting Fed. R. Civ. P. 26(a)(2)(B)(i)). The only issue was whether, under Rule 37, it was “substantially justified or harmless” that Dr. Beebe waited until trial to disclose the testing methodology that he claims he actually employed. Id. at 8 (quoting Fed. R. Civ. P. 37(c)(1)).

The Court first held that nothing in the record indicated the failure to disclose the testing method was substantially justified. Dr. Beebe submitted his expert report six months prior to trial, and leading up to the trial, the contents of the expert report were the subject of his deposition and were at issue in pretrial briefing. Still, the Court noted, Dr. Beebe never attempted to supplement his expert report. Thus, the Court held the failure to disclose was not substantially justified.

The Court then held that Dr. Beebe’s disclosure was also not harmless. According to the Court, “[w]hile Dr. Beebe characterized the errors in his report as ‘typo[s],’ it is undisputed that the shift in his testimony was both substantive and substantial. Such a late change in course significantly hampered JJVC’s ability to adequately cross-examine Dr. Beebe and denied it the opportunity to develop or introduce competing evidence.” Id. at 9 (second alteration in original). Accordingly, the Court held that the district court did not abuse its discretion in excluding Dr. Beebe’s trial testimony under Rule 37.

Lastly, the Court held that Rembrandt’s circumstantial evidence, including JJVC’s prior generic characterization of its lenses as “soft,” did not preclude the grant of JMOL. Thus, the Federal Circuit affirmed the district court’s judgment that JJVC did not infringe the asserted claims of the ’327 patent.

Summary authored by Benjamin A. Saidman, Esq.