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When an inventor — whether of a patent-in-suit or of prior art — in a patent infringement case is called to give opinion testimony on matters of claim interpretation, enablement, sufficiency of written description and other validity issues, does he first have to be identified as an expert witness? Not necessarily. It may, in some circumstances be possible to present such testimony as lay opinion under Federal Rules of Evidence 701. In patent infringement litigation, inventors of a patent-in-suit will frequently be called on to provide testimony on a number of topics. At a minimum, the inventor of a patent-in-suit will be identified and deposed as a person with relevant factual knowledge on matters surrounding the development of the invention. Very often, however, the patent holder presents opinion testimony through the inventor supporting such matters as claim interpretation, validity or the teachings of prior art to the patent-in-suit. Similarly, the defendant may present prior-art inventors or authors to provide opinions supporting invalidity. Because such opinion testimony is grounded on the premise that the witness is a person who possesses at least ordinary skill in the relevant technical discipline to which the invention belongs, such witnesses are almost always designated as expert witnesses under Federal Rule of Civil Procedure 26(a)(2)(A). Rule 26(a)(2)(A) requires parties to disclose the identity of any person who may be used at trial to present expert testimony under Rules of Evidence 702, 703 or 705, but it does not require the identification of persons presenting admissible lay opinion testimony under Rule of Evidence 701, even when such testimony has a technical component. Further, while Rule 701 was amended in 2000 to protect against lay opinion testimony being used to evade Rule 702′s reliability requirements, the courts’ applications of Rule 701, historically and postamendment, leave open the possibility that such inventor opinion testimony may be admissible, in part at least, as lay opinion. An inventor may be an expert, but not necessarily an expert witness. Though attempting to present opinion testimony supporting or contesting validity entirely as lay opinion unnecessarily risks exclusion for failure to disclose under Fed. R. Civ. P. 37, there may be circumstances (a missed deadline for expert designation, for example) in which an alternative to designating such a witness is desirable or necessary. In such a situation, Rule 701 may provide an alternative. Before its amendment in 2000, Federal Rule of Evidence 701 imposed only two restrictions on nonexpert opinion testimony: It must be rationally based on the witness’s perceptions, and it must help the trier of fact to understand the witness’s testimony or to determine a fact in issue. The 2000 amendments added a new subsection (c) that provides that lay testimony should not be “based on scientific, technical, or other specialized knowledge within the scope of Rule 702.” Before the 2000 amendment, federal courts allowed lay opinion testimony requiring specialized knowledge when the opinion was based on personal perception, was one that a normal person would form from these perceptions and was helpful to the jury. See, e.g., Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 693 (Fed. Cir. 2001). Under these general guidelines, the federal courts held a wide range of opinion testimony admissible that consisted of witnesses applying specialized knowledge and training to material facts of which they had personal knowledge. These cases include two noteworthy patent decisions. The most often cited of these appears to be De Graffenried v. United States, 2 Cl. Ct. 640 (Cl. Ct. 1983). In De Graffenried, the defendant United States successfully moved to compel the patentee, Albert L. De Graffenried, who had not been designated an expert witness, to provide opinions in response to deposition questions regarding the disclosure of the patent-in-suit, the claimed invention’s contribution over the prior art and the infringement of the patent-in-suit by the accused devices. De Graffenried objected on several grounds, one being that the questions sought legal conclusions and opinions.The court overruled these objections, holding that because the patentee had extensive experience in the relevant art and was knowledgeable about his patent and its infringement, his opinions and inferences would be helpful to the court in developing a clear understanding of the facts in issue. Consequently, the court held that the deposition questions sought proper lay opinion testimony under Fed. R. Evid. 701. In a more recent case, the U.S. Court of Appeals for the Federal Circuit affirmed an even broader application of Rule 701 based on 5th Circuit law. Union Pacific Resources Co. v. Chesapeake Energy Corp. concerned infringement of a method patent for horizontal drilling of oil and gas wells. The defendant, Chesapeake, asserted that the patent-in-suit was invalid under 35 U.S.C. 112 for lack of enablement and indefiniteness. Because these issues hinge on what persons of ordinary skill in the relevant art would understand when reading the claims and specification of the patent, Chesapeake offered lay testimony under Rule 701 of eight witnesses having extensive personal experience in the oil drilling industry. Affirming the trial court’s invalidity findings, the Federal Circuit also found no error in admitting the testimony of Chesapeake’s eight lay witnesses. Observing that “many of the witnesses were employees of major oil drilling companies who had contributed extensively to the prior art in the field,” and that they had testified based on their own “personal experience,” the Federal Circuit held the testimony admissible under 5th Circuit precedent that had previously allowed lay opinions based on specialized knowledge. 236 F.3d at 693. WHAT’S STILL ADMISSIBLE? How much influence De Graffenried and Union Pacific may retain after the amendment to Rule 701 is not clear. While it is likely that future decisions will pull back from these holdings, there is, nevertheless, recent authority in some circuits that continues to justify the introduction of some lay testimony that applies technical or specialized knowledge to personal observations. Tampa Bay Shipbuilding & Repair Co. v. Cedar Shipping Co., 320 F.3d 1213 (11th Cir. 2003), is particularly interesting. In that case, the 11th Circuit affirmed the admissibility of lay opinion testimony by several of the plaintiff’s employees regarding whether work and charges in connection with a ship repair were reasonable and consistent with industry standards. Rejecting arguments that only a qualified expert could give testimony on industry standard and practice, the 11th Circuit analyzed the history and purpose of the 2000 amendment to Rule 701. The 11th Circuit pointed out that the original form of Rule 701(c) that had been published for comment did not contain the phrase “within the scope of Rule 702,” which appears in the adopted version. Id. at 1222. The Advisory Committee had added this language in response to an objection from the U.S. Department of Justice that, under the originally proposed rule, lay witnesses who offered to testify based on any “specialized knowledge they possess, whether through experience or professional learning” would be classified as expert witnesses and subjected to the expert disclosure rules. The added language, according to the Advisory Committee, would emphasize the intent of the new rule to protect against the evasion of Rule 702′s reliability requirements without requiring witnesses to qualify as experts who “had traditionally and properly been considered lay witnesses.” Considering both pre- and post-amendment cases, the 11th Circuit concluded that the opinion testimony that the plaintiff’s employees and officers had offered “was of a type traditionally and properly considered lay witness testimony.” Id. at 1223. See also Texas A&M Research Found. v. Magna Transp. Inc., 338 F.3d 394, 403 (5th Cir. 2003) (adopting reasoning in Tampa Bay Shipbuilding). TRADITIONAL AND PROPER What testimony has “traditionally and properly” been admitted under Rule 701 is still an open question. Over the years, federal courts of appeals have approved of a wide range of lay testimony based on specialized knowledge. Similar to the holdings in Tampa Bay Shipbuilding and Texas A&M Foundation, the 3rd Circuit has held admissible lay opinions on lost profits by business owners and employees, based on professional experience and personal observations. Teen-Ed Inc. v. Kimball Int’l Inc., 620 F.2d 399 (3d Cir. 1980); Wilburn v. Maritrans GP Inc., 139 F.3d 350 (3d Cir. 1998). The 9th Circuit affirmed a case in which an insurance claims manager presented a lay opinion on the validity of an insurance claim based on his experience and his evaluation of facts made known to him as the claims manager, including legal advice. Fireman’s Fund Ins. v. Alaskan Pride Partnership, 106 F.3d 1465 (9th Cir. 1997). In several circuits, the courts have permitted law enforcement officers testifying as lay witnesses to apply specialized knowledge and training regarding the meaning of alleged drug dealers’ “code words” and jargon to establish criminal activity. See e.g., United States v. Garcia, 994 F.2d 1499 (10th Cir. 1993); United States v. Novaton, 271 F.3d 968 (11th Cir. 2001); United States v. Miranda, 248 F.3d 434 (5th Cir. 2001). Perhaps the type of lay testimony most analogous to inventor testimony involves the treating-physician exception. This widespread preamendment application of Rule 701 admitted technically based testimony by the treating physician in a personal injury case. See, e.g., McCloughan v. City of Springfield, 208 F.R.D. 236, 240-41 (N.D. Ill. 2001) (collecting numerous treating-physician cases from various jurisdictions). In general, under this application of Rule 701, a treating physician may present testimony in the form of “lay” opinions when the testimony is based on observations made during the course of treatment; the testimony was not acquired or developed in anticipation of litigation or trial; and the testimony is based on personal knowledge. See Richardson v. Consol. Rail Corp., 17 F.3d 213, 218 (7th Cir. 1994); see also Fed. R. Civ. P. 26 advisory committee note (exempting treating physicians from expert-report requirement). An analogy between opinion testimony by treating physicians in personal injury cases and inventors in patent cases is not difficult to make, and at least one commentator has observed as much. See Steven E. Feldman, et al., “Mandatory Disclosures and the Rocket Dockets; Accelerating the Process of Litigation,” Patent Litigation 268, 287 (PLI No. G-456 1996). Both the physician and (usually, at least) the inventor bring substantial technical training and experience to bear on facts about which they have extensive personal knowledge. The physician applies technical training and experience to the facts of a medical case with which he or she is personally involved. Similarly, the inventor applies technical knowledge and professional experience to such issues as his understanding of the patent, teachings of the prior art to persons of ordinary skill in the relevant art, and infringement, all of which are material facts of which he has personal knowledge. See De Graffenried, 2 Cl. Ct. at 643; Union Pacific, 236 F.3d at 693. Successfully analogizing lay-inventor testimony to treating-physician testimony may depend, in part, on what was “traditionally” permitted in the circuit in which the case is tried. See Union Pacific, 236 F.3d at 693 (evidentiary rulings in patent cases are governed by law of the regional circuits). While preamendment decisions in some courts were more restrictive with “treating physician” testimony, excluding, for example, testimony on causation or standard of care, others were more liberal. See, e.g., McCloughan, 208 F.R.D. at 240-41; Piper v. Harnischfeger Corp., 170 F.R.D. 173, 174-75 (D. Nev. 1997). Postamendment treating-physician cases are not common. They continue, however, to reflect disagreement in how such testimony is received. See, e.g., McCloughan, 208 F.R.D. at 240-4 (permitting treating-physician testimony, including causation, under amended rule); Brandon v. City of Maywood, 179 F. Supp. 2d 847, 859-60 (allowing diagnosis testimony because simplicity of specific diagnosis required no specialized knowledge, but excluding prognosis as requiring expert testimony); Ferris v. Pennsylvania Fed. Bd. of Maint. of Way Employees, 153 F. Supp. 2d 736, 745 (E.D. Pa. 2001) (excluding treating physician’s lay testimony of psychological injury diagnosis and questioning, in dicta, the continued viability of the treating-physician exception after the 2000 amendments). While these cases provide no uniform guidance as to what technically based lay testimony may be admissible, neither the postamendment, nor the preamendment, cases flatly preclude such testimony. Admissibility of such lay opinions is not foreclosed, but the proponent of such testimony must be familiar with and tailor his arguments to the law of the regional circuit in which the case is being tried. The degree to which the federal courts will permit technically based lay testimony after the 2000 amendment to Rule 701 is still unsettled. The treating-physician exception, which presents a strong analogy to inventor testimony, still retains varying degrees of viability, and analogizing certain inventor testimony to this, and perhaps other “traditional and proper” applications of Rule 701 may provide an additional avenue of admissibility to the patent litigant. This approach has obvious risks, given the unsettled nature of the law at present, and the scarcity of directly applicable authority, but it is a potential option the litigator may wish to keep in mind for the right circumstance. Gerard Harrison, who was recently a partner in the Houston office of Washington’s Howrey Simon Arnold & White, is now chief legal officer and senior vice president for strategic development for Variance Dynamical Corp., a scientific research and development company specializing in machine intelligence, based in Houston and Anchorage, Ala. If you are interested in submitting an article to law.com, please click here for our submission guidelines.

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