as the right of the parties to call their own experts exists at the trial level, it is anticipated that the parties would offer their own expert evidence, at least in the class of cases to which this proposed expert procedure would be applicable, namely, cases in which the technical facts are highly complex and disputable.366 Also, in view of the primary function assigned to the expert adviser, the procedure would call for preliminary interpretations and opinions to be given by the parties' experts, although it would not require this.367

SEC. 3. SELECTION OF THE EXPERT ADVISER.-The court shall select the expert adviser for each new case from among the members of a panel [or panels] of experts established for its judicial circuit of the United States. Where necessary, the expert adviser may be selected from the panel [or panels] established for other judicial circuits of the United States.

Comment. As suggested in the study, the panel system of qualifying an expert as a court expert seems superior to other methods.368 The section provides for the creation of a panel, or panels, as may be the case, for each judicial circuit of the United States. This is deemed desirable in order to facilitate convenience and lessen expense in the administration of the procedure. Where necessary, because of the nature of the expertise required in the particular case, or for other reasons, the section authorizes the court to select the expert adviser from the panels of the other circuits.

SEC. 4. DETERMINATION OF PANEL MEMBERSHIP.-Each Judicial Circuit panel [or panels] shall be approved by the Supreme Court of the United States and shall consist of persons representing the various scientific fields who, because of their superior qualifications and willingness to serve as panel members, have been selected jointly by [here insert name of governmental agency and recognized scientific society] to be members of the panel [or panels]. If necessary, the panels shall be revised annually.

Comment. This section implements section 3 by providing for the manner in which the experts are to be selected for panel membership. Here again, the conclusions reached earlier in the study call for a rule which would vest selection in an organization or organizations familiar with qualified scientific personnel in the various fields.369 (The identity of the agency and society charged with the responsibility of selection is not specified at this time.) The selecting agencies should not be subject to restrictions in making their selections other than by the criteria of superiority in qualifications and acceptance by those selected. The section also requires the approval of each panel by the Supreme Court of the United States. Further, an annual revision of the panels is required if it is found necessary due to death, resignation, need for increasing membership, etc.

SEC. 5. ORDER OF APPOINTMENT OF EXPERT ADVISER AND CONTENTS THEREOF. After selecting the expert from the panel [or panels], the court shall prepare an order of appointment, a copy of which shall be given to the expert, designating the expert as the adviser to the court or trier of fact in the pending case. The order shall also contain a detailed explanation by the court of the duties and functions which the court expects the adviser to perform in assisting the court or trier of fact. The failure to so specify a particular duty or function shall not be construed as a limitation upon the later performance of that duty or function should the need for the assistance arise subsequent to the execution of the order of appointment.

Comment. This section provides a method for giving the expert official status in the case. More important, it requires a detailed

366 See the introduction supra.

367 See pp. 67-76 supra.

368 See pp. 37-38 supra.

360 See pp. 37-38 supra.

explanation by the court of the duties and functions of the expert adviser and should thus overcome any weaknesses in the adviser's assistance resulting from a misunderstanding of his role in the litigation.370

SEC. 6. DOCUMENTS AND OTHER THINGS TO BE FURNISHED TO THE EXPERT ADVISER. Upon its own motion or the motion of the expert adviser or any party, and after reasonable notice and a hearing, the court may order that there be furnished to the expert adviser or made available for inspection by him, such documents and other things as it deems necessary to a full and complete understanding of the technical issues in the case and to assist him in the performance of his duties. Comment. This provision is designed to assist the expert adviser in making adequate preparation for the effective performance of his functions and is similar to section 5 of the Model Act and rule 405 of the Model Code.371 It differs from these proposals principally in the fact that the expert may also make the initial request on the theory that he should also have some control over the direction of his investigation.

SEC. 7. DUTIES AND FUNCTIONS OF THE EXPERT ADVISER IN THE TRIAL COURT. It shall be the function of the expert adviser to assist the trier of fact in understanding and interpreting the disputed technical issues. For this

purpose

(1) the trial court, upon its own motion, or on the motion of any party, after reasonable notice and a hearing thereon, may, under such conditions as the court shall then prescribe, require the expert adviser to

(a) attend any or all hearings held in the case and be available to render such assistance to the trier of fact as may be required, except that, without the prior permission of the parties or their counsel, the expert adviser shall not advise the trier of fact in their absence;

(b) perform, supervise, or otherwise participate in the conduct of any experiments pertaining to the subject matter of the litigation; (c) confer with the party experts; and

(d) file with the clerk of the court written reports prepared under oath, alone or jointly with the party experts, which shall be open to inspection by any party and admissible in evidence subject to any lawful objections thereto; and

(2) the expert adviser appointed by the court may be called during trial to testify and be examined by the judge or any party the same as if the expert had been called by an adverse party.

All

Comment. The function of the expert adviser which it has been suggested should be emphasized is spelled out in this section.372 of the duties and functions specified in subsection (1) will be performed upon the court's motion or the motion of one of the parties, but only after notice and hearing so that the parties can be heard on any proper objections they may have regarding the role of the expert adviser in the litigation. In this respect, subsection (1) is similar to both the Model Act and Model Code.373 The duties and functions spelled out are also similar.3

374

Subsection (1) (a) authorizes attendance during pretrial, trial, or at any other proceeding which may be held at the trial stage.375 The section is general in nature, so as to provide latitude in the type of functions which the expert adviser may be expected to perform during hearings. Compare subsection (2) which deals separately with

* See p. 67 supra at note 309. See also, pp. 72-73 supra.

See Model Act, appended, at p. 93 infra; Model Code, appended, at p. 94 infra.

m See p. 65 supra.

See Model Act, secs, 5, 6, and 7, appended at p. 93, infra; Model Code, rules 405, 406, and 408, appended at pp. 94-95 infra.

274 Ibid. See also, p. 42 supra.

See p. 43 supra.

the interparty examination of the expert adviser during trial in order that his testimony may be required, as a matter of right, by the parties. Subsection (1) (b) implements the conclusions already fully discussed in the section of the study dealing with experimental evidence.376

Subsection (1) (c) provides a means by which the difficulties inherent in grasping complex technical matters can be minimized by eliminating unnecessary contradictions and false issues. Thus, the crucial issues in the litigation can be stated with greater clarity and thus assist the trier of fact.

Subsection (1) (d) is included to provide for those instances in which the court deems formal documentation necessary. This might include, for example, written reports of the results of experiments, conclusions reached by the expert adviser, or conclusions reached jointly by the expert adviser and the party experts.

Subsection (2) is separate from subsection (1) to give any party, as a matter of right, the privilege to examine the expert adviser in accordance with the recommendation made in section Å of the conclusions to this study.377 The same right is afforded the parties pursuant to the provisions of the Model Act and Model Code, although the provision in these two latter proposals requiring disclosure of the expert's status to the trier of fact is omitted as unnecessary. 378

SEC. 8. DUTIES AND FUNCTIONS OF THE EXPERT ADVISER IN THE APPELLATE COURT. The appellate court may require the expert adviser to attend hearings and perform such other duties and functions as the court may deem necessary to assist the court in understanding and interpreting the technical data upon which a determination of the issues in the case before the court depend. The court, upon its own motion, or on the motion of any party, shall require the expert adviser to prepare a written report which shall be filed with the clerk of the court. Comment. By this section, the appellate courts are given somewhat more discretion than are the trial courts, in prescribing the duties and functions of the expert adviser in assisting them in the disposition of cases. This seems necessary due to the procedural differences existing at the two levels and the resultant difference in the function which the expert would perform at the appellate level, namely, one of an advisory nature. A fact-finding process is not involved and the expert adviser would serve in an advisory capacity to help the appellate tribunals understand the technical data insofar as such understanding is necessary to a determination of the questions of law before the court. This section contemplates that the advice would not necessarily be furnished in the presence of the parties or their counsel. The parties' rights are protected by requiring, on motion, the preparation and filing of a written report embodying the technical advice of the adviser which can, in the proper case, form the basis for a petition for rehearing.379

SEC. 9. COMPENSATION OF THE EXPERT ADVISER AND RELATED MATTERS.The court shall fix the compensation of the expert adviser at a reasonable amount and direct its payment out of a fund to be appropriated by Congress for that purpose. The fees of experts called by the parties shall be subject to the approval of the court.

Comment. In accordance with the conclusions reached earlier in this study, the fees of the expert adviser should be assumed by the

376 See p. 81 supra.

377 See pp. 85-86 supra.

37 See Model Act, sec. 8, appended at p. 93 infra; Model Code rule 407, appended, p. 95 infra.

379 See p. 24 supra.

Government since he is called primarily to assist the court.380 The second sentence of this provision is designed as a check on the payment of unreasonable compensation to experts called by the parties.381

C. SUGGESTIONS FOR FURTHER STUDY

At the present time, three new directions of study in the problems of proof of scientific fact in patent litigation can be suggested. First, some effort should be made to examine the subject in a larger perspective than has been possible within the confines of the present study, with the focal point continuing to be the "trial of scientific issues of fact in patent litigation." This would call for the examination, in some detail, of the extent to which the materials with which the courts, parties and experts must work, contribute to problems in proof. For example, take the question of broadly drawn claims and specifications on which the experts are called to render their scientific interpretations and opinions. The broader the claim or specification, the greater the divergence in interpretation. Varying interpretations may or may not affect scientific result. To the extent that they may, however, a variable is introduced into the litigation which may adversely affect the ultimate determination of fact. There is evidence in the Carter Products case indicating that broadly drawn. specifications can be troublesome. 382 This is but one area of the substantive patent law which may create, or contribute to, problems in the proof of scientific fact. There are undoubtedly others. The subject appears of sufficient importance to warrant detailed study. Second, an experimental application in the Federal courts of the expert adviser procedure which has been proposed, or one similar to it, could contribute much to a greater understanding of both the strengths and weaknesses of such a procedure. The experiment might be conducted along the lines followed in the New York County Medical Expert Testimony Project, perhaps modified to the extent necessary to employ a controlled experimental means whereby the procedure would be applied to one group of cases and withheld from another.383 Such a procedure would thus increase the reliability of the findings concerning the usefulness of the neutral expert procedure in patent litigation.384 The cases to which the experiment was applied could be studied by joint committees composed of a representative membership from the legal profession and the sciences involved in the cases selected for study. The conclusions of such committees should prove extremely useful in evaluating the procedure as applied to patent litigation.

Finally, in the introduction attention was called to the frequent proposals which have been made for specialized tribunals at the trial level and the arguments pro and con concerning these proposals.385 Further attention should be given to this question, with especial attention to the question whether the judge of a specialized court can possess technical qualifications and concentrate on technically oriented litigation, and still retain the balance and perspective necessary to a wise. and sound administration of the patent laws.

30 See p. 40 supra.

* See pp. 39-40 supra.

130 F. Supp. 557 (D. C. Md. 1955), affirmed 230 F. 2d 855 (4th Cir. 1956), certiorari denied, 352 U. S. 843 (1956). See pp. 68-72 supra. See Zeisel, The New York Expert Testimony Project: Some Reflections on Legal Experiments, 8 Stan. L. Rev. 730 (1956).

14 Ibid.

38 See pp. 7-8 supra.