*361 Copyright © 1992 by the PTC Research Foundation of the Franklin Pierce Law Center IDEA: The Journal of Law and Technology 1992 THE ADMISSIBILITY AND UTILITY OF EXPERT LEGAL TESTIMONY IN PATENT LITIGATION Howard G. Pollack [n.a1] A. INTRODUCTION The traditional view on the use of legal experts as witnesses in patent litigation was most clearly stated by Judge Learned Hand in Kohn v. Eimer, [n.1] We have not the slightest wish to minimize the vital importance of expert testimony in patent suits, or to suggest that we are not absolutely dependent upon it within its proper scope; but that scope is often altogether misapprehended. . . When the judge has understood the specifications, he cannot avoid the responsibility of deciding himself all questions of infringement and anticipation, and the testimony of experts on these issues is inevitably a burdensome impertinence. [n.2] These comments were made at a time when expert testimony in general was more proscribed than it is today. The use of experts was liberalized a great deal with the enactment of the Federal Rules of Evidence. [n.3] The new rules eased the requirements for the qualification of experts [n.4] and specifically abolished the common law prohibition as to opinions on ultimate issues. [n.5] The expanded use of experts under the Federal Rules, in addition to the increasing complexity of modern laws, may have changed the prevailing judicial attitude toward the utilization of legal experts. *362 The decision to use any experts at all is one that falls within the discretion of the trial judge. [n.6] This necessarily indicates that the use of such experts may vary widely among jurisdictions. This discretion, however, is guided by the opinions of the Courts of Appeals. In issues concerning the patent laws, and patent litigation, it is the Court of Appeals for the Federal Circuit that provides the most authoritative guidance. Accordingly, this paper will focus primarily on Federal Circuit opinions in an attempt to explore this court's views on the scope to which expert legal testimony on the patent law is both useful and permissible. This paper will address how the unique nature of the patent law affects the use of experts, and will attempt to set forth a number of specific factors which should be addressed in making the decision whether to use a patent expert. B. USE OF EXPERTS GENERALLY1. The Federal Rules The use of experts and opinion testimony is governed in the federal courts by Article VII of the Federal Rules of Evidence. Rule 702 states; If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise. The advisory committee notes explain that the rule allows "experts to take the further step of suggesting the inference which should be drawn from applying the specialized knowledge to the facts." These suggestions are made by the expert in the form of opinions. One major effect of the Federal Rules was to abolish the proscription on opinion testimony going to an ultimate issue. Rule 704 provides; (a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact. The advisory committee notes stress that the question of admissibility should focus on the helpfulness of the testimony and not its form. [n.7] The notes go on to point out that other rules allow for exclusion of evidence which wastes time. [n.8] These other rules provide "ample assurances against *363 the admission of opinions which would merely tell the jury what result to reach." [n.9] It is up to the trial judge to balance the usefulness of the expert's testimony with the potential for prejudice or waste of time. 2. Legal Experts The traditional common law rule against testimony on legal issues has been eroded by the enactment of the Federal Rules. In the past, it was presumed that the judge knew the law, and thus had no need for expert testimony on legal matters. The Federal Rules make no such distinction, and instead provide that the judge may admit any evidence which will aid the trier of fact in making a decision. In addition, the abolition of the "ultimate issue" rule by F.R.E. 704, opens the door for experts to state opinions on ultimate issues, even if such opinions require legal conclusions. In the past, the only exception to the rule against legal testimony was the allowance for an expert to testify where issues of foreign law were concerned. [n.10] This was permitted, because the presumption that the judge was aware of such law was seen to be clearly inapplicable. With the proliferation of modern statutory law, and an ever increasing number of judicial decisions on the books, the presumption that the judge is completely familiar with all aspects of U.S. law, especially the more complex and obscure areas of practice, is itself being eroded. [n.11] With the focus of the Federal Rules on helpfulness as the major criteria, courts seem more willing to admit testimonyfrom experts on what are technically legal issues. As will be seen below, a trial judge is afforded a good deal of discretion in making a determination that such testimony will be of aid to the trier of fact. C. THE SPECIAL CASE OF PATENTS The discipline of patent law is considered by many in the profession to be among the most complex, requiring a good deal of specialized knowledge. In addition, the technical nature of the factual situations to be addressed by the patent law, requires even further knowledge on the part of patent practitioners. Such considerations have made the use of experts a major component in patent litigation. *364 Another aspect of patent law which complicates litigation is the existence of issues commonly referred to as "mixed questions of law and fact." [n.12] These are issues wherein the ultimate conclusion is a legal one, but such a conclusion must be supported by reference to underlying facts. For example, the issue of obviousness is a legal conclusion, based on; (a) the scope and content of the prior art, (b) the differences between the prior art and claims at issue, (c) the level of ordinary skill in the art when the invention was made,
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