Following a five-day Markman hearing in a complex patent dispute between Comcast and Sprint, the federal judge presiding over the case decided to take the uncommon step of appointing a technical adviser.
Comcast, which has sued alleging that Sprint is infringing on several of its patents related to texting technology, and Sprint jointly recommended Dr. A.J. Nichols to serve as the technical adviser. U.S. District Judge Jan E. DuBois of the Eastern District of Pennsylvania took their advice and appointed him to the position, which is, essentially, to act as a tutor to the judge on the highly complex and technical aspects of the patents.
A Markman hearing, so named for the 1996 U.S. Supreme Court case Markman v. Westview Instruments, is held before a patent trial for the judge to determine the meaning of terms used in the patent claim.
“The court is mindful that such appointments ‘should be used sparingly and only in highly complicated cases,’” DuBois said, quoting from a 2006 opinion from the Northern District of California in Regents of the University of California v. Micro Therapeutics.
“This is such an ‘extraordinary case where the introduction of outside skills and expertise, not possessed by the judge, will hasten the just adjudication of a dispute without dislodging the delicate balance of the juristic role,’” he said, quoting from a 2002 opinion from the U.S. Court of Appeals for the Federal Circuit in TechSearch v. Intel.
Comcast filed the suit in early 2012 alleging that Sprint has been infringing on several of its patents, some of which were granted in the late 1990s. Among the allegedly infringing products are Sprint’s services for MMS and SMS—commonly called picture messaging and text messaging.
“These patents involve a diverse array of technologies and implicate scientific and mathematical concepts ‘well beyond the regular questions of fact and law with which judges must routinely grapple,’” DuBois said, quoting from the First Circuit’s 1988 opinion in Reilly v. United States.
The judge explained that this case would qualify as being sufficiently complex to warrant the appointment of a technical adviser. He described that role as being somewhat akin to a court-appointed expert, but, instead of testifying on the record, he is there to help the judge navigate highly technical issues presented in the case.
“Dr. Nichols cogently described the role of a technical adviser in his Guidelines for Neutral Experts to the Court: ‘The primary use of this type of expert is to help the judge understand the technology. Your job is essentially to be a teacher with a class of one (or two if the judge’s law clerk is involved). It is usually best to start with broad concepts, narrow down to specifics only when necessary, and recognize that you may have to explain something a number of times before you hit on the right way to explain it. These discussions are most frequently carried out privately in chambers,’” DuBois said in a footnote.
DuBois was cautious in making the appointment and imposed strict parameters on the role of the technical adviser. The court “is acutely sensitive to and has carefully considered the due process concerns posed by the appointment of such an adviser,” DuBois said.
He then set out the specific conditions for the adviser’s role, which started with identifying the position as limited to helping the judge understand the technology underlying the patents in question and “‘act[ing] as a sounding board’ for the court to ‘think through the critical technical problems,’” DuBois quoted from Reilly.
Nichols might also review drafts of the court’s memoranda and orders to check for technical accuracy, DuBois said.
Similarly, Nichols might review any documents of record and, if he should need to consult extra-record materials he will have to get approval from the court and all of those materials will be identified for both parties, the judge said.
Nichols won’t weigh in on legal issues in the case, DuBois said, and he “shall be ‘vigilant about keeping any opinions [as to the merits of the parties' legal arguments] out of [his] explanations.’” There, DuBois quoted from Nichols’ guidelines for experts.
“Dr. Nichols’ communications with the court shall be ex parte,” DuBois said and, in the “unlikely event” that he is asked to write a formal report on the technical aspects of the case, that report will be provided to the parties.
Nichols is to be paid $500 per hour and is to be reimbursed for expenses, including travel. That cost is to be split evenly between the parties, according to the opinion.
(Copies of the 22-page opinion in Comcast v. Sprint, PICS No. 14-0494, are available from The Legal Intelligencer. Please call the Pennsylvania Instant Case Service at 800-276-PICS to order or for information.) •