Rembrandt Vision Technologies L P v. Johnson & Johnson Vision Care Inc
Filing
317
ORDER granting defendant's motion to exclude evidence of Shore D testing and for judgment as a matter of law; granting defendant's motion for judgment as a matter of law on the issue of willful infringement. Signed by Judge Timothy J. Corrigan on 6/4/2012. (JMS)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
JACKSONVILLE DIVISION
REMBRANDT VISION
TECHNOLOGIES, L.P.,
Plaintiff,
vs.
Case No. 3:11-cv-819-J-32JRK
JOHNSON & JOHNSON
VISION CARE, INC.,
Defendant.
ORDER
During the trial of this patent case, plaintiff’s expert, Dr. Thomas Beebe, testified for
the first time on cross-examination that he had followed an undocumented protocol for his
Shore D testing that is entirely inconsistent with the procedures disclosed in his expert
report. This caused defendant Johnson & Johnson Vision Care, Inc. (“JJVC”) to make an
ore tenus motion to exclude Dr. Beebe’s testimony regarding his Shore D testing and for
judgment as a matter of law under Rule 50(a). The parties submitted briefing on this issue
(Docs. 265, 266, 274), and oral argument was held on May 4, 2012, May 11, 2012, and May
14, 2012, the transcripts of which are incorporated by reference (Tr. Trans. Vol. VI at 39-93;
Tr. Trans. Vol. X at 5-108; Tr. Trans. Vol. XI at 16-56). On May 14, 2012, the Court ruled
on the record that it would grant JJVC’s motion to strike Dr. Beebe’s Shore D testimony and
for judgment as a matter of law under Rule 50(a). (Tr. Trans. Vol. XI at 51.) This Order
constitutes the Court’s reasoning for that ruling, as well as its ruling on the issue of willful
infringement.1
I.
BACKGROUND
Rembrandt alleges that JJVC’s Acuvue Advance and Acuvue Oasys contact lenses
infringe United States Patent Number 5,712,327 (the “‘327 patent”). The '327 patent claims
a "soft gas permeable contact lens" containing certain properties. At the joint request of the
parties, the Court construed the term "soft gas permeable contact lens" to mean "a contact
lens having a Hardness (Shore D) of less than five." (Doc. 69 at 2.)
Rembrandt retained Dr. Thomas Beebe to determine the Shore D hardness of the
accused products. In his expert report, Dr. Beebe stated that he used the following standard
operating procedures:
1. A Shore-D durometer . . . was used for all hardness
testing. . . .
2. The sample must be thick enough to allow full
penetration of the probe through the material to be tested. The
probe is 0.100 inch (2.54 mm) in length.
3. When the sample is thinner than this (as is the case
with contact lenses), individual pieces of the sample must be
stacked on top of each other in order to provide the required
sample thickness.
4. The lenses were removed from their packaging and
carefully stacked on a stainless steel ball having a curvature that
matched the curvature of the lenses. . . . Stack 24 individual lens
samples on each other, keeping the material hydrated in its
original packaging fluid.
5. Locate the durometer probe at the location on the
sample to be tested and slowly press the probe into the sample
stack. Stop advancing when the durometer bottoms out.
6. The durometer was pressed into the test stack of
1
At the conclusion of the evidence, the Court granted JJVC’s ore tenus Rule 50(a) motion
for judgment as a matter of law with respect to Rembrandt’s claim of willful infringement. (Tr.
Trans. Vol. VI at 92.)
2
lenses in sets of 10 replicates, each at a different location. . . .
7. Lenses were discarded after testing. All lens boxes
with lot information were retained in a lab notebook.
(Doc. 265, ex. 2 at 46-47.)
Pretrial, JJVC moved to exclude Dr. Beebe's testimony under Daubert v. Merrell Dow
Pharms., Inc., 509 U.S. 579, 592–93 (1993), and for summary judgment on the grounds that
no reasonable juror could conclude that the accused products are "soft" based on Dr.
Beebe's testing. (Docs. 148, 152 at 27-34.) JJVC primarily argued that Dr. Beebe should
have tested a dehydrated button of material rather than hydrated contact lenses. JJVC also
argued that Dr. Beebe's testing procedures did not conform to the governing scientific
standards. The Court denied the motion for summary judgment; at the joint request of the
parties, the Court deferred ruling on the Daubert motion until after Dr. Beebe testified at trial.
(Docs. 237, 255.)
At trial, Dr. Beebe testified on direct examination that he performed his Shore D
testing consistent with the procedures listed in his expert report. Specifically, Dr. Beebe
stated that, when he conducted his testing, "other than the fact that [the lenses] were
stacked up, they were as they come out of the case." (Tr. Trans. Vol. III at 56.) He also
testified that his testing was consistent with the testing he performed during the
reexamination of the '327 patent and in prior litigation, (id.) and such testing was similar to
that disclosed in his expert report.
On cross-examination, Dr. Beebe had difficulty articulating how he designed his Shore
D test. He conceded that he had only performed Shore D testing in the context of litigation
for Rembrandt and that he was not an expert on Shore D testing. (Tr. Trans. Vol. III at 2313
32.)2 Dr. Beebe also stated that he “didn’t really refer to the patent in deciding how to do
[his] testing” and that he had not attempted to determine how the inventor had conducted
Shore D testing. (Id. at 232-33.) He further stated that, when he designed his test, he had
not reviewed the patent office file history. (Id. at 236.) While Dr. Beebe asserted that he had
looked at scientific standards for measurements, he stated: "I can't recall whether I looked
at the ASTM or the ANSI [standards]. The acronyms are similar. I looked at one of the
standards." (Tr. Trans. Vol. III at 237)(emphasis added).
JJVC then asked a series of questions designed to show that Dr. Beebe’s procedures,
as disclosed in his expert report, did not conform to the governing scientific standards. At
first, Dr. Beebe attempted to defend his written procedures; however, he had difficulty
explaining how they met the standards. For example, when asked why he chose to test a
stack of contact lenses rather than a button or blank of contact lens material, Dr. Beebe gave
an implausible reading of the standards, opining that perhaps a “comma” was missing from
the standards, which would alter their meaning. (Id. at 240.) JJVC next inquired into
2
The following exchange took place:
Q.
And I think it's fair to say that Shore D testing is not
something you do in your work as a research scientist; is
that right?
A.
Correct
Q.
It's something you've basically only done for Rembrandt,
right?
A.
Yes.
Q.
So you wouldn’t call yourself an expert in Shore D
testing?
A.
Yes.
Q.
That’s correct? You’re not an expert on Shore D testing?
A.
Okay. Yes.
(Tr. Trans. Vol. III at 231-32.)
4
whether Dr. Beebe tested a sample of the appropriate thickness:
Q.
A.
Q.
A.
Q.
A.
Q.
A.
Q.
Q.
A.
Q.
A.
Q.
A.
Q.
A.
You testified something was 6 millimeters thick?
Yes.
What was that?
That was the stacked-up lenses that were stacked up in
order to achieve a minimum thickness of 6 millimeters.
Whoa. I thought you said in your report that you stacked
24 lenses.
Okay.
Is that true? Here's your expert report. . . . The sample
must be thick enough to allow full penetration of the
probe, and that's 2.54 millimeters, right?
Yes. And I believe that's a mistake, actually. I think that
— I think the actual — that might be a typo. The correct
value is one — one-quarter of an inch...
...
How on earth do 24 lenses add up to 6 millimeters? . . .
Oasys [has a] center thickness [of] .07.
...
And my math tells me that 24 times .07 is 1.68
millimeters. Does that sound about right?
That math sounds right, yes.
Okay. So you had 24 lenses, and they didn't come close
to 6 millimeters, did they?
Yes, they did. I actually measured that with a micrometer.
Your report, of course, says it came up to 2.54
[millimeters]. And that's just wrong?
...
. . . I'm saying that I think the correct numbers are 6
millimeters and one-quarter of an inch.
Okay.
And I tested that with a micrometer caliber as I was
stacking them up to make sure that was the case. I think
this might be a typo.
(Id. at 240-43.) After unsuccessfully trying to explain how his sample had the appropriate
thickness, Dr. Beebe began to change his account of his testing protocol:
Q.
A.
But you stacked 24 lenses, right? That's — that's
not a typo, is it?
That's not a typo.
5
Q.
A.
And you stacked —
Well, I don't know if it's a typo. I stacked the number of
lenses required to get a 24 — rather, the required 6
millimeter sample height —
(Id. at 243.)3
JJVC next asked Dr. Beebe how he complied with the requirement in the standards
that samples be flat:
Q.
A.
Q.
A.
And, of course, the contact lenses aren't flat, right?
That's correct.
So setting aside whether you did 6 millimeters or didn't do
6 millimeters, you certainly didn't have flat samples,
correct?
That's not correct. I disagree.
(Id. at 245.)
Unable to explain how his written procedures complied with the standards, Dr. Beebe
suddenly changed course in the middle of cross-examination and testified that he did not
follow the procedures listed in his expert report. Instead, he claimed that he forgot to
mention that the testing procedures he actually used were markedly different from those
disclosed in his expert report:
A.
Q.
A.
Q.
Q.
I — I — now I think I know what — what I'm not
remembering.
Okay.
So the lens — I cut the lens into quarters and
stacked those quarters up, and I cut 24 lenses into
quarters, and that's what I tested. And I made sure that
it was more than 6 millimeters.
Let's take a look — that doesn't appear anywhere in
your standard operating procedures, does it?
...
Is something missing here? You didn't tell us what
3
Dr. Beebe also acknowledged that, to be compliant with the standards, it was important
that his sample be at least 6 millimeters thick. (Id. at 246.)
6
A.
Q.
A.
Q.
A.
Q.
A.
Q.
A.
you did?
There was a step where I — in order to make them
flat — you can't make a curve — an accurate
measurement on the curved lenses, as you pointed out
a minute ago. So the lenses were quartered and stacked
so I could make them flat.
You didn't think you should tell us that?
It's not that I'm hiding it, but I just told you I —
that . . .
...
Right. Because how can you — how could you — sir,
your report says you stacked them on a stainless steel
ball having the curvature that matched the curvature of
the lenses. Is this some other experiment you're telling
us about?
That's — that's a typo, yes. That's not what I —
that's not how I made the measurements.
Okay. So you didn't carefully stack them on a stainless
steel ball having a curvature that matched the curvature
of the lenses; you cut them into quarters and stacked
them up?
On an aluminum plate, that's right.
...
Okay. So is it fair to say that more or less this is a
standard that you made up of cutting the lenses and
stacking them up?
The part about cutting in order to stack them up is
something that I did in order to achieve what the standard
says you need for the minimum thickness.
(Id. at 247-50)(emphasis added). Therefore, while Dr. Beebe’s expert report stated that he
tested 24 whole contact lenses with a thickness of not less than 2.54 millimeters on a curved
steel ball, he now testified that he had cut the 24 lenses into quarters and stacked as many
as needed on an aluminum plate to reach a height of six millimeters. Dr. Beebe gave two
explanations for his new procedures: cutting the lenses into quarters produced a flat surface;
and, cutting the lenses allowed him to achieve a minimum thickness of 6 millimeters (though
he later testified that he had an unlimited number of lenses).
7
Dr. Beebe also testified that he had no documentation to support the new procedures
he claimed to have employed:
Q.
A.
Q.
A.
Q.
A.
Q.
A.
Okay. And so far at least, we're just trusting you on the 6
millimeters. It's not — so far we haven't seen it in your
records?
As you are trusting me as I testify here, yes.
Okay. And, lastly, you took a video, as I recall, of your
microtoming procedure, right?
Yes.
But you didn't provide even a photograph of your stack of
lenses, did you?
No.
So we don't really know what it is you tested or what they
looked like, do we?
Well, I'm testifying here, telling you that I tested a stack
of quartered contact lenses out of the case, so that's what
I tested.
(Tr. Trans. Vol. III at 250-51.)
On re-direct, Dr. Beebe provided no further explanation for his departure from the
procedures listed in his expert report. Instead, when asked why he had not disclosed that
he cut the lenses, Dr. Beebe stated: “[if] I had it to do over again I would have included that
detail. I just forgot to put it in.” (Tr. Trans. Vol. IV at 13.)
During re-cross examination, Dr. Beebe acknowledged that his lab notebook also did
not mention cutting the lenses, having a sample of 6 millimeters in thickness, stacking the
lens pieces on an aluminum plate, or any of the other procedures that Dr. Beebe had
mentioned for the first time on cross-examination. (Tr. Trans. Vol. IV at 46.) Dr. Beebe thus
testified that a scientist reviewing his work would not be able to reproduce his testing
methodology:
Q.
Okay. So any scientist trying to understand what you did
8
A.
based on the written record rather than your oral
testimony — your written record says you took 24 lenses
and stacked them up on a curved ball, right?
Yes, if you put it all together.
(Id. at 46.) However, Dr. Beebe agreed that it is important to “good science to accurately
record what it is you’re doing.” (Id. at 44-45.) Dr. Beebe also acknowledged that a scientist
who read the standard operating procedures from his expert report would realize that they
are not consistent with the applicable scientific standards. (Id. at 41.)
After the completion of Dr. Beebe’s testimony, JJVC moved to exclude his testimony
regarding Shore D testing under Daubert. (Id. at 77-81.) Rather than hear a response from
Rembrandt, the Court scheduled argument on this issue, which occurred at the conclusion
of Rembrandt’s case-in-chief. (Id. at 81-82.) Both parties filed briefing on the Shore D issue
prior to the argument. (Docs. 265, 266.) At the argument, JJVC moved to strike Dr. Beebe’s
testimony under both Daubert and Federal Rules of Civil Procedure 26 and 37. JJVC further
moved for judgment as a matter of law under Federal Rule of Civil Procedure 50(a) because,
if Dr. Beebe’s testimony was excluded, Rembrandt would have no evidence to meet its
burden of proof on the “soft” claim limitation. (Doc. 265.) JJVC also moved for judgment as
a matter of law under Rule 50(a) on the issue of willful infringement. (Tr. Trans. Vol VI at 593.)
At argument, when the Court asked Rembrandt what it would tell the jury regarding
Dr. Beebe’s Shore D testing, Rembrandt’s counsel stated:
I can only live with the testimony he gave, Your Honor. His
testimony is that he did it the way he said he did it. I -- I have no
basis to say that that's not true. . . . I'm going to say that Dr.
Beebe got extremely flustered on cross under a very vigorous
9
cross. . . . His testimony was not clean by any way, shape, or
form, but his test results are reliable.
(Id. at 74-75.) The Court deferred ruling on JJVC’s motion to exclude Dr. Beebe’s testimony
until the conclusion of the liability phase of trial. (Tr. Trans. VI at 91-92.) However, the Court
granted JJVC’s Rule 50(a) motion with respect to willfulness, and thus did not permit
Rembrandt to argue willful infringement to the jury. (Id.)
At the close of the evidence, JJVC renewed its motion to exclude Dr. Beebe’s Shore
D testimony. The Court continued to defer ruling. (Tr. Trans. Vol. IX at 134.)
During closing, Rembrandt told the jury that the differences between Dr. Beebe’s
expert report and his testimony at trial did not affect the reliability of his results. Rembrandt
stated:
So you have to ask yourself this question as you sit there and
listen to some of the criticisms [of Dr. Beebe] and ask yourself:
Does this one — does this one really matter on this one? And
only you can answer that question, but the expected value of
any kind of testing on the Shore D is zero.
(Tr. Trans. Vol. IX at 187.) Rembrandt then referred the jury to Shore D testing that Dr.
Beebe had conducted on other contact lenses during a reexamination of the ‘327 patent and
asserted: “as you can see, it doesn’t matter how you stack them, where you test them, the
result is zero. It’s what you expect and that’s the results you get.” (Id.) Rembrandt thus
essentially told the jury that it could disregard any flaws in Dr. Beebe’s methodology or the
change in his testimony because “the expected result” was a Shore D value of less than 5.
The Court conducted another lengthy hearing after the case was submitted to the jury,
(Tr. Trans. Vol. X at 1-108) and Rembrandt filed a supplemental memorandum (Doc. 274).
10
After the jury returned a verdict of non-infringement, the Court announced that it would
alternatively grant JJVC’s motion to strike Dr. Beebe’s Shore D testimony and for judgment
as a matter of law under Rule 50(a). (Tr. Trans. Vol. XI at 51-52.)4
II.
STANDARD OF REVIEW
In this patent case, this Court applies the law of the Eleventh Circuit with respect to
evidentiary issues and the standard applicable to a motion for judgment as a matter of law.
See Retractable Tech., Inc. v. Becton, Dickinson and Co., 653 F.3d 1296, 1302 (Fed. Cir.
2011)(“In reviewing evidentiary rulings and denials of motions for JMOL, we apply the law
of the regional circuit . . . .”); Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1218
(Fed. Cir. 2006)(applying regional circuit law when reviewing a Daubert ruling).
Under Rule 50(a), "[i]f a party has been fully heard on an issue during a jury trial and
the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to
find for the party on that issue, the court may resolve the issue against the party." The
Eleventh Circuit has instructed that Rule 50 motions "should be granted . . . when the plaintiff
presents no legally sufficient evidentiary basis for a reasonable jury to find for him on a
material element of his cause of action." Howard v. Walgreen Co., 605 F.3d 1239, 1242
(11th Cir. 2010). The Court "look[s] at the record evidence, drawing all inferences in favor
of the nonmoving party." Collado v. United Parcel Service, Co., 419 F.3d 1143, 1149 (11th
Cir. 2005).
4
Rembrandt contended that the Shore D issue was moot in light of the jury’s verdict.
However, after fully discussing the mootness issue with the parties, the Court decided to
proceed with an alternative ruling for the reasons stated on the record. (Tr. Trans. Vol. XI
at 12-52.)
11
III.
DISCUSSION
A.
JJVC’s Motion to Exclude Dr. Beebe’s Shore D Testimony
While Dr. Beebe’s shifting testimony casts doubt on his credibility, for purposes of this
Order, the Court will assume that Dr. Beebe testified truthfully on cross-examination.5 The
Court will thus assume that, in his expert report and during his own direct examination, Dr.
Beebe disclosed a different testing methodology than he actually performed. The Court will
also accept that Dr. Beebe tested a stack of an unknown number of “cut-up” quarter-contact
lenses which measured 6 millimeters. Finally, the Court will accept Dr. Beebe’s testimony
that, although it is important to good science to keep accurate records, Dr. Beebe has
absolutely no record of his procedures.6
1.
Rules 26 and 37
Federal Rule of Civil Procedure 26(a) requires an expert witness to produce a report
which contains, among other things, “a complete statement of all opinions the witness will
express and the basis and reasons for them” and “the facts or data considered by the
witness in forming them.” Fed. R. Civ. P. 26(a)(2). Moreover, Rule 26(e) states a party must
supplement its expert report “if the party learns that in some material respect the disclosure
or response is incomplete or incorrect.” Fed. R. Civ. P. 26(e). The Eleventh Circuit has
explained that “the expert disclosure rule is intended to provide opposing parties reasonable
5
Rembrandt has likewise stated that it relies on Dr. Beebe’s “new” testimony rather than
his expert report or his testimony on direct examination.
6
In fact, the documentary record of Dr. Beebe’s testing flatly contradicts the methodology
he now says he actually used.
12
opportunity to prepare for effective cross examination and perhaps arrange for expert
testimony from other witnesses.”
Reese v. Herbert, 527 F.3d 1253, 1265 (11th Cir.
2008)(quotation omitted).
Under Rule 37, “[i]f a party fails to provide information or identify a witness as required
by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply
evidence . . . at a trial, unless the failure was substantially justified or is harmless.” Fed. R.
Civ. P. 37(c)(1). “The burden of establishing that a failure to disclose was substantially
justified or harmless rests on the nondisclosing party.” Mitchell v. Ford Motor Co., 318 F.
App’x 821, 824 (11th Cir. 2009).
As the First Circuit has explained:
The Advisory Committee notes to the 1993 amendments to
[Rule 37] state that the harmlessness provision is intended “to
avoid unduly harsh penalties in a variety of situations.”
Illustrative examples are late disclosures of a potential witness
known to all parties, a trial witness already listed by the adverse
party, or a witness on behalf of a pro se litigant ignorant of the
requirement. These suggest a fairly limited concept of
“harmless.”
Gagnon v. Teledyne Princeton, Inc., 437 F.3d 188, 197 (1st Cir. 2006); see also Burney v.
Rheem Mfg. Co., 196 F.R.D. 659, 692 (M.D. Ala. 2000) (“This commentary strongly suggests
that ‘harmless involves an honest mistake on the part of a party coupled with sufficient
knowledge on the part of the other party.’”) (quoting Vance v. United States, 182 F.3d 920
(6th Cir. 1999)).7
7
When determining if a failure to disclose was substantially justified or harmless, courts
consider, among other things: “(1) the surprise to the party against whom the evidence would
be offered; (2) the ability of that party to cure the surprise; (3) the extent to which allowing
13
Dr. Beebe’s expert report is woefully deficient under Rule 26. Rather than disclosing
the basis for his opinions, Dr. Beebe’s report describes a Shore D test that is completely
different from the test he now states he actually performed. In his expert report, Dr. Beebe
stated that 24 “lenses were removed from their packaging and carefully stacked on a
stainless steel ball.” (Doc. 265, ex. 2 at 46.) The report further states that the stack of
lenses was at least 2.54 millimeters thick.
procedures during direct examination.
(Id. at 47.)
Dr. Beebe confirmed these
During cross-examination, however, Dr. Beebe
stated that he had cut the 24 lenses into quarters and stacked an unknown number of these
quarter lenses to a height of 6 millimeters. (Tr. Trans. Vol. III at 247.) He also explained
the evidence would disrupt the trial; (4) the importance of the evidence; and (5) the
nondisclosing party's explanation for its failure to disclose the evidence.” Mobile Shelter Sys.
USA, Inc. v. Grate Pallet Solutions, LLC, —F. Supp. 2d—, 2012 WL 115601, at *7 (M.D. Fla.
Jan. 14, 2012).
Rembrandt asserts that the Court should also consider whether there has been “bad
faith or willfulness in failing to comply with the district court’s order.” (Doc. 274 at 6.) The
cases Rembrandt relies on, however, are in the context of a party that violates a court order
prior to trial. (See Doc. 274.) The courts in those cases thus had the ability to ameliorate
prejudice by extending deadlines, reopening discovery, or granting other relief (or, in some
cases, there simply was no prejudice). Unlike in those cases, however, because JJVC
learned for the first time in the middle of trial that Dr. Beebe had not disclosed his testing
procedures, the Court was left with few remedial options. In this situation, sanctions may be
appropriate even absent a showing of willfulness because the prejudice to JJVC was largely
unavoidable.
Moreover, the Eleventh Circuit has affirmed the exclusion of expert witness testimony
under Rules 26 and 37 without requiring a showing of bad faith. See Mitchell, 318 F. App’x
at 824 (affirming the exclusion of an expert who “did not fully disclose the bases of his expert
opinions or supplement the disclosures when it became clear that his Rule 26 disclosures
and deposition had not been sufficient”); Romero v. Drummond Co., 552 F.3d 1303, 1323
(11th Cir. 2008)(affirming exclusion where the expert’s report did not state the “anticipated
opinion with sufficient specificity to allow [the opposing party] to prepare for rebuttal or
cross-examination”); see also Nelson v. City & County of San Francisco, 123 F. App’x 817,
819-20 (9th Cir. 2005)(showing that a district court may exclude evidence under Rule 37
without finding willful deception).
14
that, rather than placing them on a stainless steel ball, he stacked the lenses on an
aluminum plate. (Id. at 249.) Dr. Beebe thus employed drastically different testing
procedures than those disclosed in his expert report.
Rembrandt asserts that Dr. Beebe merely made “minor mistakes” when reporting his
testing procedures. (Doc. 266 at 9.) This assertion is no more tenable than Dr. Beebe’s claim
that the problems in his expert report were due to a series of “typos.” In fact, the differences
between the procedures listed in Dr. Beebe’s reporting and those he testified to at trial are
so substantial that Dr. Beebe essentially performed an entirely different test. Rembrandt’s
failure to alert JJVC to the true nature of Dr. Beebe’s testing was thus a blatant violation of
Rule 26.
The Court recognizes that Rule 26 “does not limit an expert's testimony simply to
reading his report. The Rule contemplates that the expert will supplement, elaborate upon,
and explain his report in his oral testimony.” Muldrow ex rel. Estate of Muldrow v. Re-Direct,
Inc., 493 F.3d 160, 167 (D.C. Cir. 2007)(quotation omitted). This case, however, is easily
distinguishable from those where courts have allowed an expert to vary from his expert
report. In McPherson v. Rowe, 366 F. App’x 43 (11th Cir. 2010), for example, the Eleventh
Circuit held that the district court did not abuse its discretion by failing to exclude expert
testimony regarding certain new information that had not been disclosed in an expert report
because “neither of the [expert] witnesses testified to opinions based on the ‘new
information.’” Id. at 45. Here, rather than permissibly elaborating on or supplementing his
analysis, Dr. Beebe disclosed an entirely new testing protocol that formed the basis for his
expert opinion. This Rule 26 does not allow.
15
Rembrandt’s failure to disclose cannot be “substantially justified.” Fed. R. Civ. P.
37(c)(1). Rembrandt produced Dr. Beebe’s expert report to JJVC on October 3, 2011. Since
that time, Dr. Beebe has been deposed (on other aspects of his Shore D testing) and JJVC
has moved for summary judgment based on Dr. Beebe’s Shore D testing methodology.
(Doc. 152.) Throughout the pretrial proceedings, Dr. Beebe thus apparently either did not
review his expert report or forgot how he had actually performed the test. There is simply no
excuse for Dr. Beebe waiting until cross-examination to disclose his testing procedures, and
Rembrandt has not attempted to offer any explanation or justification.
However, Rembrandt contends that sanctions should not be imposed because its
failure to disclose was harmless. Rembrandt asserts that JJVC suffered no prejudice for
three reasons: (1) “JJVC paid no attention to Dr. Beebe’s Shore D testing procedures until
its cross-examination of Dr. Beebe;” (2) “not a single one of JJVC's experts reported making
any effort whatsoever to duplicate Dr. Beebe's tests;” and (3) “Dr. Beebe’s consistent results
of zero are expected.” (Doc. 266 at 8-12.)
Rembrandt’s first contention is simply incorrect. JJVC moved for summary judgment
and to exclude Dr. Beebe’s testimony on the grounds that, “by failing to comply with the
appropriate testing standards of ANSI and ASTM, Rembrandt generated results wholly
unreliable under the standards of Daubert.” (Doc. 152 at 38.) Although JJVC did not discuss
Shore D testing procedures with Dr. Beebe during his deposition, JJVC was entitled to
assume that Dr. Beebe had actually followed the procedures listed in his expert report.
Rembrandt’s second contention is irrelevant. Although JJVC may not have attempted
to duplicate the testing procedures listed in Dr. Beebe’s expert report, JJVC was not given
16
the opportunity to duplicate the testing procedures actually used by Dr. Beebe. JJVC now
asserts that, had it known of the procedures actually used by Dr. Beebe, it would have put
on evidence showing that his new procedures were impractical and not in accordance with
standards. (Tr. Trans. Vol. VI at 47.) Moreover, regardless of whether JJVC would have
duplicated Dr. Beebe’s testing, Rembrandt’s failure to disclose Dr. Beebe’s testing
procedures until well into cross-examination obviously denied JJVC the ability to prepare for
cross-examination. See, e.g., Thibeault v. Square D Co., 960 F.2d 239, 246-47 (1st Cir.
1992) (“Many courts . . . have recognized that the introduction of new expert testimony on
the eve of trial can be seriously prejudicial to the opposing party.”). This prejudice is
demonstrated by the fact that, after Dr. Beebe concluded his testimony, JJVC informed the
Court in its Daubert motion that Dr. Beebe’s new procedures violated scientific standards in
ways it had neglected to raise before the jury.8
Rembrandt next argues that JJVC suffered no prejudice because the accused lenses
are “soft” under ordinary usage; however, this argument belies the nature of patent litigation.
The plaintiff in an infringement case has the burden to prove that the defendant’s product
meets each and every claim limitation, as defined by the Court. At the joint request of the
parties, the Court construed the “soft” limitation to mean “a contact lens having a Hardness
(Shore D) of less than five.” (Doc. 69 at 2.) As the Court ruled when Rembrandt raised this
8
As more fully explained below in the Daubert discussion, the standards require that
testing be performed at least three millimeters from any edge of the sample. By cutting the
lenses in quarters, JJVC now argues that Dr. Beebe’s samples were too small to comply with
this requirement. Although JJVC raised this issue in its Daubert motion, it failed to do so
before the jury. (Tr. Trans. Vol. IV at 80-81.)
17
issue in its motion in limine, common usage of the term “soft” is simply not relevant. (See
Doc. 255 at 95-96.)
Finally, Rembrandt contends that JJVC suffered no prejudice because, based on
testing from other cases, Rembrandt believes the accused lenses have a Shore D value of
less than five regardless of how they are tested. (Doc. 266 at 8.) However, to credit
Rembrandt’s argument, the Court would need to accept testing that was performed on
different lenses in litigation to which JJVC was not a party. This the Court cannot do. Aside
from Dr. Beebe’s testimony in this case, neither the Court nor the jury had any way of
knowing the Shore D value of JJVC’s lenses. Moreover, JJVC is entitled to put Rembrandt
to its proof with respect to each claim limitation, and Rembrandt’s failure to disclose Dr.
Beebe’s testing procedures seriously impaired JJVC’s ability to do so.
JJVC also suffered prejudice during closing arguments. Rather than attempt to
defend Dr. Beebe’s science, Rembrandt told the jury to ignore the problems with his
testimony and methodology because “the expected value of any kind of testing on the Shore
D is zero.” (Tr. Trans. Vol. IX at 187.) Rembrandt told the jury: “it doesn’t matter how you
stack them, where you test them, the result is zero.” (Id.) Rembrandt thus intimated that the
jury could disregard Dr. Beebe’s testing and still find that the accused products met the “soft”
claim limitation. But, of course, Dr. Beebe’s testing was the only evidence that Rembrandt
offered on this issue.
While Rembrandt has cited a number of cases in which courts have decided not to
exclude expert testimony when faced with a violation of Rule 26, each of those cases is
easily distinguishable because none involved a disclosure of new testing procedures in the
18
middle of trial. See, e.g., McClain v. Metabolife Int’l, Inc., 193 F. Supp.2d 1252 (N.D. Ala.
2002); Graphic Packing Int’l, Inc. v. C.W. Zumbiel Co., No. 3:10-cv-891-J-37JBT, 2011 WL
5357833 (M.D. Fla. Nov. 3, 2011). While a failure to comply with disclosure deadlines may
be harmless in certain situations when the disclosure is ultimately made well before trial, the
situation here is markedly different. Unlike in those cases, the Court could not simply extend
a deadline or amend the case schedule to cure the prejudice to JJVC.9
The Court “acknowledge[s] that preclusion of expert testimony is a grave step, not to
be undertaken lightly.” Thibeault, 960 F.2d at 247. However, Dr. Beebe performed an
entirely different test than that disclosed in his expert report, and Rembrandt’s failure to
disclose this fact was a clear and unjustified violation of Rule 26. Because this failure
seriously prejudiced JJVC’s defense, Dr. Beebe’s Shore D testimony is due to be excluded
under Rule 37.
2.
Daubert
JJVC also contends that Dr. Beebe’s testimony regarding Shore D should be
excluded under Daubert. JJVC asserts that Dr. Beebe is not qualified to testify with respect
to Shore D testing and his testing methodology is unreliable. According to JJVC, Dr.
Beebe’s methodology is unreliable both because it does not comply with scientific standards
and because it is not recorded and thus his tests are not reproducible. (Doc. 265 at 17-24.)
9
Rembrandt contends that “[t]he prejudice to JJVC was resoundingly cured by Mr.
Diskant’s [JJVC’s counsel] withering cross-examination.” (Doc. 274 at 8). However,
Rembrandt has cited no authority for this argument, and the Court finds that it is not well
taken. As explained above, Dr. Beebe’s failure to properly disclose his procedures impaired
JJVC’s ability to adequately prepare for cross-examination.
19
Federal Rule of Evidence 702 governs the admissibility of expert testimony. In
Daubert, the Supreme Court instructed that, under Rule 702, district courts must perform a
“gatekeeping” role with respect to expert scientific testimony and must consider whether:
(1) the expert is qualified to testify competently regarding the
matters he intends to address; (2) the methodology by which the
expert reaches his conclusions is sufficiently reliable as
determined by the sort of inquiry mandated in Daubert; and (3)
the testimony assists the trier of fact, through the application of
scientific, technical, or specialized expertise, to understand the
evidence or to determine a fact in issue.
United States v. Frazier, 387 F.3d 1244, 1260 (11th Cir. 2004) (en banc), cert. denied, 544
U.S. 1063 (2005). When evaluating whether an expert’s methodology is reliable, the Court
considers, among other things:
(1) whether the expert's theory can be and has been tested; (2)
whether the theory has been subjected to peer review and
publication; (3) the known or potential rate of error of the
particular scientific technique; and (4) whether the technique is
generally accepted in the scientific community.
Frazier, 387 F.3d at 1262.
“The burden of laying a proper foundation for the admissibility of an expert’s testimony
is on the party offering the expert, and the admissibility must be shown by a preponderance
of the evidence.” Hall v. United Ins. Co. of America, 367 F.3d 1255, 1261 (11th Cir.
2004)(citation omitted). The admission of expert testimony is a matter within the discretion
of the district court, which is accorded “considerable leeway” in making its determination.
Cook ex rel. Estate of Tessier v. Sheriff of Monroe Cnty, Fla., 402 F.3d 1092, 1103 (11th Cir.
2005); Frazier, 387 F.3d at 1258-59.
Rembrandt first argues that Dr. Beebe’s testimony should not be excluded because
20
“the weight and credibility of an expert’s testimony are questions to be resolved by the jury.”
(Doc. 266 at 10.) Rembrandt thus accepts the new methodology Dr. Beebe described during
his cross-examination and disclaims the methodology listed in Dr. Beebe’s expert report.
(Id.) As explained above, for purposes of this Order, the Court likewise assumes that Dr.
Beebe testified truthfully at trial during cross-examination.
The Court will also assume, without deciding, that Dr. Beebe is sufficiently qualified
to testify regarding Shore D testing and that his opinions, if reliable, would assist the jury.
However, even accepting Dr. Beebe’s testimony as true, Rembrandt has not met its burden
of proving that Dr. Beebe’s methodology is sufficiently reliable.
During oral argument, Rembrandt repeatedly asserted that Dr. Beebe’s testing was
reliable because “his test results are reliable.” (Tr. Trans. Vol. VI. at 64, 75, 79, 85.)10
Rembrandt thus essentially argues that Dr. Beebe’s testimony should be allowed so long
as the Court concludes that his results are correct. Daubert, however, does not ask courts
to evaluate whether an expert’s opinion is correct; instead, it requires courts to determine
whether the expert has used a reliable methodology. See, e.g., Smelser v. Norfolk Southern
Railway Co., 105 F.3d 299, 303 (6th Cir. 1997) (“When considering reliability, the trial court
must focus on the soundness of the expert’s methodology and not the correctness of his
conclusions.”). That Dr. Beebe’s ultimate opinion may be consistent with the expected result
is not relevant to the issue of whether he employed a scientifically reliable methodology to
10
To support this assertion, Rembrandt again refers to the common usage of the term
“soft” and testing Dr. Beebe performed on other contact lenses in litigation against other
companies.
21
reach his opinion. Just as a court need not accept opinions that are “connected to existing
data only by the ipse dixit of the expert,” General Electric v. Joiner, 522 U.S. 136, 146
(1997), this Court cannot simply accept the bald assertion that JJVC’s lenses have a Shore
D value of less than five. As the Eleventh Circuit has explained, district courts must conduct
“an exacting analysis of the foundations of expert opinions.” Frazier, 387 F.3d at 1260
(emphasis in original).
Rembrandt also asserts that Dr. Beebe’s methodology is reliable because it complies
with the ASTM standards for Shore D testing. (Doc. 266 at 6.) Dr. Beebe’s procedures,
however, significantly depart from those standards. For example, the ASTM standards state
that “[t]he lateral dimensions of the specimen shall be sufficient to permit measurements at
least 12.0 mm (0.48 inch.) from any edge, unless it is known that identical results are
obtained when measurements are made at a lesser distance from an edge.” (Doc. 265, ex.
8 at 5.) Moreover, the ANSI standards, which Dr. Beebe stated he did not read,11 provide
that measurements must be made at least 3 mm from any edge. Because Dr. Beebe cut his
sample lenses into quarters, however, it is mathematically impossible that he complied with
either standard. His samples were simply too small. Moreover, the ASTM standards provide
that “[t]he specimen shall be suitably supported to provide for positioning and stability.”
(Doc. 265, ex. 8 at 5.) However, Dr. Beebe’s protocol, as he explained it at trial, nowhere
11
Dr. Beebe stated: "I can't recall whether I looked at the ASTM or the ANSI. The
acronyms are similar. I looked at one of the standards." (Tr. Trans. Vol. III at 237.) He later
stated that he had consulted the ASTM standards.
22
mentions how the quarter-lenses were stacked or supported.12 Finally, while the ASTM
standards state that “a specimen may be composed of plied pieces to obtain the necessary
thickness,” it warns that “determinations made on such specimens may not agree with those
made on solid specimens.” (Doc. 265 at ex. 8.)13 In sum, even accepting Dr. Beebe’s
testimony as true, his testing contained serious deviations from the applicable scientific
standards.
Not only did Dr. Beebe depart from generally accepted scientific standards, his
methodology is also unreliable because he failed to keep proper records and documentation
of his procedures. Under Daubert, courts must ensure that an expert “employs in the
courtroom the same level of intellectual rigor that characterizes the practice of an expert in
the relevant field.” Frazier, 387 F.3d at 1260. As Dr. Beebe stated at trial, experts in his field
record their methodology so that other scientists can reproduce and test their experiments.
(Tr. Trans. Vol. IV at 37, 44-45.) In fact, reproducible testing is a hallmark of reliable
science. See, e.g., Daubert, 509 U.S. at 593 (“Scientific methodology today is based on
generating hypotheses and testing them to see if they can be falsified; indeed, this
12
The standard operating procedures provided in Dr. Beebe’s expert report also fail to
indicate how the samples were supported. (See Doc. 266, ex. 2 at 46.)
13
The ANSI standards state that “a test specimen consists of a contact lens button or
blank that has the dimension of a disc of at least 6 mm thick and a diameter of at least
12.7mm.” When asked about this provision on cross-examination, Dr. Beebe implausibly
suggested that there may be a comma missing from the standard, such that it permitted the
testing of a “contact lens [ , ] button or blank.” Dr. Beebe’s inability to provide any
justification for his clear departure from the ANSI standards cuts against the reliability of his
work. While the ASTM standards are more supportive of his methodology, Dr. Beebe
seemed totally unaware of this fact throughout cross-examination.
23
methodology is what distinguishes science from other fields of human inquiry.”)(quotation
omitted); Zenith Electronics Corp. v. WH-TV Broadcasting Corp., 395 F.3d 416, 419 (7th Cir.
2005)(“Someone else using the same data and methods must be able to replicate the
result.”). Dr. Beebe’s testing, however, was not reproducible because he failed to document
and disclose the procedures he used to conduct his tests.14 This lack of documentation
strongly weighs against the reliability of Dr. Beebe’s methodology. See Smelser, 105 F.3d
at 303 (testimony improperly admitted where expert had “failed to adequately document
testing conditions and the rate of error so the test could be repeated and its results verified
and critiqued”); United States v. Hebshie, 754 F. Supp.2d 89,125 (D. Mass.
2010)(“Documentation is necessary to test a hypothesis; in fact, reproducibility is the sine
qua non of science.”); Morehouse v. Louisville Ladder Group LLC, No. Civ.A 3:03-887-22,
2004 WL 2431796, at *7 (D. S.C. 2004)(excluding expert testimony in part because the
expert “failed to record his hypothesis testing or include relevant details in his report”); Black
v. Rhone-Poulenc, Inc., 19 F. Supp.2d 592, 598 (S.D. W. Va. 1998)(finding that an expert’s
failure to document his study weighed against admissibility because “independent
reconstruction would be exceedingly difficult if not impossible.”).
The Court thus concludes that Dr. Beebe’s methodology is not scientifically reliable.
His testing procedures are undocumented and do not conform to the governing scientific
standards. The Court would be abdicating its gatekeeping role if it allowed the jury to rely
on Dr. Beebe’s opinion. Dr. Beebe’s Shore D testimony is thus due to be excluded under
14
This is because, as previously discussed, Dr. Beebe’s laboratory records and expert
report describe an entirely different testing regimen.
24
Daubert as well as Rule 37.
3.
Summation
While the Court has analyzed the Shore D issue as Rules 26 and 37 and Daubert
require, this recitation may not capture the full import of what happened. Dr. Bebee provided
the only evidence of an essential element of Rembrandt’s infringement case. In the
discipline of testing contact lenses, where measurements are often made in millimeters and
the slightest variation in methodology can make a significant difference, Dr. Bebee tendered
his Rule 26 report stating his method for conducting the Shore D test. He then testified
consistent with his report on direct examination and even for part of cross-examination. It
was only when he was repeatedly challenged on cross-examination concerning flaws in his
method that he, on the fly, completely changed his testimony as to how he conducted the
Shore D test. In doing so, he gave explanations that bordered on the fanciful, such as that
virtually the entire testing method he disclosed in his expert report was a "typo".
JJVC was left without the ability to effectively cross-examine Dr. Bebee on this "new"
testing methodology he had just announced. The jury, tasked with the Herculean challenge
of deciphering the highly technical evidence in this patent case, was entirely disserved by
the expert's sudden change in course.
Instead of the orderly and fair trial process
contemplated by Rule 26 and Daubert, Dr. Bebee's abrupt and still unexplained implosion
led to derailment of the trial as to this issue. Rule 26, Rule 37 and Daubert, as applied to
these egregious facts, compel the striking of Dr. Beebe’s Shore D testimony.
B.
JJVC’s Rule 50(a) Motions
1.
Dr. Beebe’s Shore D Testimony
25
Dr. Beebe’s Shore D testimony constitutes the only evidence advanced by Rembrandt
to prove that the accused JJVC products meet the “soft” claim limitation. Once Dr. Beebe’s
testimony is excluded, no reasonable jury could find infringement.15 Pursuant to Rule 50(a),
JJVC is therefore entitled to judgment as a matter of law.16
2.
Willfulness
The Court has also granted JJVC’s Rule 50(a) motion with respect to the issue of
willful infringement. The Federal Circuit has explained that,
to establish willful infringement, a patentee must show by clear
and convincing evidence that the infringer acted despite an
objectively high likelihood that its actions constituted
infringement of a valid patent. The state of mind of the accused
infringer is not relevant to this objective inquiry. If this threshold
objective standard is satisfied, the patentee must also
demonstrate that this objectively-defined risk (determined by the
record developed in the infringement proceeding) was either
known or so obvious that it should have been known to the
accused infringer.
In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). "[B]oth legitimate
defenses to infringement claims and credible invalidity arguments demonstrate the lack of
an objectively high likelihood that a party took actions constituting infringement of a valid
patent." Black & Decker, Inc. v. Robert Bosch Tool Corp., 260 F. App'x 284, 291 (Fed. Cir.
2008).
Moreover, willfulness is not present where a claim term is susceptible to "a
15
Rembrandt conceded this point at the May 11, 2012 hearing. (See Tr. Trans. Vol. X
at 19-20.)
16
As stated on the record, the Court believes the motion is properly analyzed under Rule
50(a). (Tr. Trans. Vol. XI at 15-52.) However, if the motion is more properly brought under
Rule 50(b), the Court’s ruling would be the same.
26
reasonable construction" under which the defendant's products did not infringe. Cohesive
Technologies, Inc. v. Waters Corp., 543 F.3d 1351, 1374 (Fed. Cir. 2008). "The answer to
whether an accused infringer's reliance on a particular issue or defense is reasonable is a
question for the court when the resolution of that particular issue or defense is a matter of
law. Should the court determine that the infringer's reliance on a defense was not objectively
reckless, it cannot send the question of willfulness to the jury . . . ." Powell v. Home Depot
U.S.A., Inc., 663 F.3d 1221, 1236 (Fed. Cir. 2011).
Rembrandt has not presented a legally sufficient evidentiary basis for a reasonable
jury to find by clear and convincing evidence that JJVC acted despite an objectively high
likelihood that its actions constituted infringement of a valid patent. JJVC presented cogent
and reasonable arguments that its products did not meet several limitations, including the
"soft" and "surface layer" limitations. Moreover, the Court finds that JJVC’s reliance on its
claim construction arguments and indefiniteness defenses was not objectively reckless.
Accordingly, it is hereby
ORDERED:
1.
Johnson & Johnson Vision Care, Inc.’s ore tenus motion to exclude evidence
of Shore D testing and for judgment as a matter of law is GRANTED.
2.
Johnson & Johnson Vision Care, Inc.’s ore tenus motion for judgment as a
matter of law on the issue of willful infringement is GRANTED.
3.
Pursuant to the jury’s verdict (Doc. 277) and this Order, each of which shall
constitute alternative bases, judgment will be entered in favor of defendant Johnson &
Johnson Vision Care, Inc. and against plaintiff Rembrandt Vision Technologies, L.P.
27
DONE AND ORDERED at Jacksonville, Florida this 4th day of June, 2012.
js.
Copies:
counsel of record
28
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