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How to Make Other Side's Expert Work for You

In a recent opinion the Federal Circuit took a non-precedential stance in declining to wade through substantive patent issues and stick, rather, to procedural grounds for overturning the district court’s grant of summary judgment. The grounds for reversal? The expert’s testimony was insufficient, and even ambiguous. The plaintiff, Semcon, did not need to invoke its own expert testimony. It needed only to point to the inconsistencies in the defendant’s expert testimony. 

Thumbs Up, Thumbs DownHave you ever heard of a chemical slurry? It is actually part of a process by which the two patent-holders in this case, proposed to finish semiconductor wafers during manufacture. The determination of whether Micron’s finishing process infringes on Semcon’s will be a costly blow to one of the parties. Knowing Semcon’s finishing method would easily qualify as “close prior art,” the defendant, Micron, included an anticipatory reference to it in its patent, couching the Semcon method as a “limitation” and dubbing its method a non-infringing improvement.  

That is the argument Micron’s expert spoon-fed to the district court, and they ate it up, finding Micron’s dual-sourced process, characterized as using both information about the initial thickness of a wafer and information gathered during the finishing process, did not infringe, and that “no reasonable finder of fact could find otherwise.” The court concluded that entry of summary judgment in Micron’s favor was thereby warranted.

The Federal Circuit, however, was not so willing to swallow this whole. On appeal, the court did find Micron’s expert’s testimony to be dual in nature — in that he said one thing in his deposition and another in his declaration. Micron’s expert also testified as to what the anticipatory reference in Micron’s patent disclosed but the court found those statements were not supported by the anticipatory reference itself. This contradictory testimony, which Semcon pointed out to the Federal Circuit, formed the basis of the court’s decision to overturn the entry of summary judgment in Micron’s favor.

Semcon was able to accomplish this without offering a single expert opinion. How? Because all that is needed to defeat summary judgment is establishment of a genuine issue of material fact. Semcon was savvy enough to recognize that Micron’s expert had done that for them, so they didn’t need an expert of their own. The Federal Circuit agreed with Semcon that, based on the tension between statements made by Micron’s expert as to what the anticipatory reference meant and what it said, as well as between the expert’s deposition and his declaration, a reasonable finder of fact might disagree with his expert analysis. If there is only one expert opinion offered—that being “We should win”—and the court finds a jury could disagree with it, Voila! a genuine issue of material fact is born. The fact that Semcon was able to claim this victory by painting Micron’s expert as inexpert is just icing on the cake.

This case also showcased a surprising use of a procedural, burden-of-proof basis for overturning an opinion of the district court below. The Federal Circuit has a notorious reputation for playing trial judge and jury by digging into the meaty substance of patent appeals, often biting down and chewing on issues that weren’t even raised on appeal. Here, the court specifically declined to do that and turned the case around quickly with the issuance of a non-precedential opinion, which may be a sign of the overwhelming caseload now flooding the Federal Circuit. 

© Copyright 2002-2021 IMS ExpertServices, All Rights Reserved.National Law Review, Volume VI, Number 300
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About this Author

Annie Dike, IMS Expert Services, Contributor, Alabama Litigation Lawyer,
Contributor

As a former Alabama trial and litigation attorney, Annie has a keen eye for expert evidentiary issues and a clear voice for practical solutions.  Annie is a published author of both fiction, non-fiction, and a comprehensive legal practitioner's guide to hourly billing published by LexisNexis.

Annie graduated from the University of Alabama School of Law cum laude.  While in law school, she served as Vice President of both the Bench and Bar Legal Honor Society and the Farrah Law Society and was a member of the Alabama Trial Advocacy Competition Team as...

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