Docket No. 2012-1510
DYK, CLEVENGER, MOORE
August 7, 2013
Brief summary: Expert witness testimony was excluded because testing procedures did not concur with expert report and were not disclosed until trial (six months after submission of expert report). Rembrandt also agreed to DC claim construction and was not allowed to present additional circumstantial evidence for the first time in appeal.
Summary: Rembrandt appealed DC judgment that JJVC does not infringe U.S. Pat. No. 5,712,327 relating to contact lenses having an acrylic layer on the surface that increases “wettability” and comfort. The DC agreed with JJVC that Rembrandt failed to provide the accused contacts were “soft” (disputed claims encompass “soft gas permeable” lenses). A “soft gas permeable contact lens” was defined as “a contact lens having a Hardness (Shore D) less than five.” As such, Rembrandt was not allowed to introduce evidence that the accused lenses were generally known as “soft”. The testimony of Rembrandt’s expert was struck because his testimony did not correspond to his expert report (which was deemed “woefully deficient”). The FC panel agreed with the exclusion of that testimony because it did not comply with FRCP Rule 26(a) (and the failure to comply was not “substantially justified or harmless”). The main problem was that the expert did not disclose the testing methodology that was actually employed until trial (six months after submitting the report) and, even then, not until he was “repeatedly challenged on cross-examination”. The FC opinion also considered whether circumstantial evidence was properly excluded. Because Rembrandt agreed to the claim construction of “soft gas permeable contact lens” and generic statements regarding the term “‘soft’ had the potential to confuse the jury and did not bear on whether the accused lenses had a Shore D Hardness of less than five.” Rembrandt unsuccessfully attempted to present additional evidence in the appeal but the FC panel pointed out that it had “never argued that point to the district court” and could not do so for the first time in the appeal. Accordingly, the DC decision was affirmed.