Reprinted with permission.
IMS ExpertServices periodically sends me e-mails that highlight recent key court
cases that can significantly affect the effectiveness of expert testimony, both for the plaintiff and for the defendant.
Attorney Joshua Fruchter
has posted a new article that is very instructive.
To a large extent, the practice of law is a lot like writing HTML code for a web page. Think of a lawyer as a
programmer who writes his HTML code to produce a specific output for a specific input. Codified law is analogous
to the HTML specification as published by the World Wide Web Consortium (W3C). The judge and/or jury is
equivalent to the browser creator. As we all are painfully aware, even relatively simple web page code can end up
displaying vastly differently on not just browsers from various manufacturers (Chrome, IE,
Firefox, Safari, et al), but within successive versions of the same browser. For instance, a web page
designer (i.e., lawyer) might create a page using specific font typefaces and sizes,
margin and padding distances, region border definitions, etc., that render exactly as intended on Internet
Explorer (i.e., judge #1), but looks like <expletive> on Firefox
(judge #2) or Safari (judge #3). The HTML page's code conforms
in every way with the W3C specification (codified law), and the web
page designer (lawyer) developed his/her strategy to comply with the letter of the
specification, but ultimately the page's rendering was at the discretion of the browser's (judge's)
interpretation of the W3C documentation (law) - as well as personal biases.
The foregoing is an apt analogy for introducing Mr. Joshua Fruchter's article titled "Inventor Testimony in Patent Litigation,"
in which he presents a judge's expressed distinction of legally admissible testimony from an 'expert' witness and
a 'lay' witness, as well as when a person can qualify as an 'expert.' It might not be what you have assumed.
Joshua Fruchter, Esq. is the principal of eLawMarketing, a leading provider since 2002 of website development,
email marketing, blogging, search engine optimization (SEO), and social media services to law firms of all sizes.
Joshua is a graduate of NYU School of Law, a member of the New York Bar Association, and a former attorney at
a large NYC firm. Joshua combines his legal background and marketing technology expertise to help law firms generate
leads and business from Internet marketing. Joshua has published articles on legal marketing technologies in numerous
law-related periodicals, and has presented on legal marketing technologies before various bar and legal marketing
associations. Joshua is also the editor of LawyerCasting, a blog covering "best practices" in online marketing
for lawyers and law firms.
Inventor Testimony in Patent Litigation
Posted by Joshua Fruchter,
October 13, 2014
October 10, 2014
The long-running technology and Internet boom has
spawned extensive patent litigation as companies seek an edge over competitors by suing for infringement. Many of
the entrepreneurial founders of technology companies are themselves extremely knowledgeable about the technologies
on which their businesses are based. As such, parties often perceive advantages to having the inventor of a patent
or of an allegedly infringing product testify concerning the relevant technologies. Among such advantages is that
an inventor can testify based on firsthand experience and may thus be in the best position to credibly describe the
relevant technologies to a jury. However, this strategy has downsides as well, insofar as courts have questioned how
far a lay witness can go in testifying about technical matters before he or she must be designated as an expert witness
(a designation which activates a whole set of requirements under the Federal Rules of Evidence). This issue was recently
taken up in 523 IP LLC v. CureMD.com, 2014 WL 4746140 (S.D.N.Y. Sept. 24, 2014), in which the parties pursued contrasting
strategies, with the plaintiff proffering its founder as an expert witness and the defendant offering its founder
as a lay witness providing opinion testimony.
The plaintiff had obtained a patent on a system for routing after-hours
messages from patients to physicians using physician-established criteria to determine the priority and destination
(e.g., a physician's cellphone) of the message based on its content. The inventor of the patent was the plaintiff's
founder, Joseph Sameh, an entrepreneur who had previously founded businesses that provided patient communication solutions
to medical practices.
The defendant, a company founded by two brothers, Kamal and Bilal Hashmat, offered to
medical practices a comprehensive software solution that included a module called "Patient Portal," which enabled
patients to send messages to the staff of a given medical practice, including physicians. Messages sent through Patient
Portal were stored in patients' electronic medical charts.
Plaintiff alleged that the Patient Portal product
infringed its patent and sued. In connection with the parties' motions for summary judgment, Sameh submitted an expert
report while Bilal Hashmat submitted a declaration as a lay witness. Each side then sought to exclude each other's
submissions under Daubert.
The Court first examined Hashmat's declaration, which plaintiff had attacked as
inadmissible expert testimony from a lay witness. After noting that defendant had not proffered Hashmat as an expert
witness, the Court laid down some basic principles concerning opinion testimony from a lay witness. First, opinion
testimony from a lay witness who is not an expert must be based on the witness's personal knowledge, not "on scientific,
technical or other specialized knowledge." The opinion expressed by the lay witness may also not purport to tell the
jury what conclusion to reach with respect to a question of fact within the province of the jury.
and other principles in mind, the Court declined to exclude testimony from Hashmat concerning the features and functionality
of Patient Portal. Since Hashmat, as a founder of the defendant, had been deeply involved with the development of
Patient Portal, he could testify from personal knowledge concerning how the product worked. However, the Court struck
those portions of Hashmat's testimony that improperly usurped the fact-finding function of the jury by essentially
"telling the jury" that the plaintiff's evidence did not support a finding of infringement.
In contrast, plaintiff
proffered its founder, Sameh, as an expert witness. The Court reviewed Sameh's qualifications and experience in significant
detail and concluded that while Sameh was an expert in the field of doctor-patient communications, he was not an expert
in the disciplines of computer programming or software engineering. In particular, the Court noted that while Sameh
had developed the concept at the heart of plaintiff's patent, he had hired programmers to translate that concept into
actual software. Thus, Sameh was not qualified to opine on how defendant's software infringed his patent.
Court also rejected Sameh's contentions regarding the proper construction of the claims comprising his patent. As
the Court noted, claim construction is a matter of law for a court to decide and is not within the purview of an expert.
That is, Sameh could not advise the Court to construe the claims in his patent in a manner that established infringement;
indeed, the Court observed, "an inventor's self-serving statements are rarely relevant to the proper construction
of a claim term."
The 523 IP decision illustrates some of the issues that must be navigated when proffering
testimony from an inventor. Have you been involved in patent litigation in which an inventor was introduced as an
expert or lay witness? If so, what issues did you encounter, and how did you deal with them? ---
This article was originally published in
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Posted October 16, 2014