3. Federal Rules of Civil Procedure, rules 39 (c) and 48. C. The technical adviser____ 1. Science Advisory Board.. 2. In England and the United States. 3. In the Federal district courts.. 4. At the appellate level D. The neutral expert. III. The neutral expert in patent litigation. A. Introduction.. B. Appointment... 1. Decision to appoint. 2. Time of appointment- C. Qualifications..... 2. By whom determined. 3. Difficulties in standardizing qualifications.. 5. Advisability of the advisory procedure at the trial 1. Recommended legislation.. 2. Present availability in the Federal courts. 3. Judicial Conference study.......... 4. The experience of the New York County Bar Associa- 5. Criticisms of the procedure.. 35 35 1. The general rule_ 35 36 37 4. The use of panels of experts.- 37 5. University faculties as a source of neutral experts. 38 D. Compensation. 39 1. Amount.. 39 F. The role of the neutral expert in two patent cases_ 1. Introductory.. 44 44 2. Summary of Carter Products, Inc. v. Colgate-Palmolive 44 3. Summary of Specialty Equipment & Machinery Corp. 59 4. Conclusions... 64 III. The neutral expert in patent litigation-Continued 1. As a translator of the technical language__ 2. As an expositor of the technical disagreement... 5. The performance of pertinent experiments.. b. Usefulness in patent litigation... c. Ex parte experiments... d. The role of the neutral expert.. Page 65 65 67 76 78 81 81 81 82 82 I. Model Expert Testimony Act. 93 93 94 96 IV. Conclusions. A. Generally. B. Proposed Expert Advisers Act. II. Model Code of Evidence, rules 402-410 III. Testimony concerning qualifications of neutral expert in Carter PUBLICATIONS OF THE SUBCOMMITTEE PATENT STUDIES No. 1. Bush, Proposals for Improving the Patent System (1956). No. 3. Patent Office, Distribution of Patents Issued to Corporations, 1939-1955 (1956). No. 4. Federico, Opposition and Revocation Proceedings in Patent Cases (1957). No. 5. Vernon, The International Patent System and Foreign Policy. No. 6. Palmer, Patents and Nonprofit Research. No. 7. Efforts To Establish a Statutory Standard of Invention. No. 8. Whinery, The Role of the Court Expert in Patent Litigation. OTHER PUBLICATIONS Hearings, American Patent System, October 10, 11, and 12, 1955. Hearings, Patent Extension, May 4 and June 13, 1956. Hearings, Wonder Drugs, July 5 and 6, 1956. Report, Review of the American Patent System (S. Rept. No. 1464, 1956). THE ROLE OF THE COURT EXPERT IN PATENT LITIGATION I. INTRODUCTION Historically, technical fact has been an important subject of inquiry by the courts in many areas of legal controversy. Where it is relevant, the courts must turn to the expert, as they have in the past, for the interpretations to be given and the inferences to be drawn from the technical data which the trier of fact must consider in deciding the issues. It is obvious that as the importance of technical fact in national life has increased, the importance of the expert's role in court has also increased. In consequence, our traditional party-expert procedure has been increasingly studied to determine whether it provides a satisfactory method of settling disputed technical issues. A wealth of critical literature has appeared and many proposals for change have resulted. Yet we have been slow to modify and improve upon the existing system. A. BIAS VERSUS HONEST EXPERT DISAGREEMENT The usual criticism of the traditional procedure is that the expert's testimony is shaped by his bias for the party who calls him. This bias is said to be attributable to the special fee paid or promised and prior consultations with the party which may result in the expert's self-committal to a particular view.5 Where these reasons explain the conscious temptation to improve a questionable case by dubious expert testimony, the criticisms of the present system are fully justified. They are no less sound where the element of bias is produced in response to subtle psychological forces arising either because of the two mentioned factors or unwarranted professional predilections." In 1 Hand, Historical and Practical Considerations Regarding Expert Testimony, 15 Harv. L. Rev. 40 (1901). In those instances in this paper where I have occasion to consider the expert and his role in the courtroom, he is referred to as the expert. The use of the term "expert witness" in Anglo-American law is, in most cases, a poor substitute for the continental term "expert." It is quite true that a person may be an expert witness, e. g., where he observes and later testifies to the procedure and results of an experiment. More often he is simply an expert who, not having witnessed an event, is called to assist the parties and trier of fact. 2 See 2 Wigmore, Evidence sec. 563 n. 2 (3d edition 1940) for a list of some of the more important articles. In addition, see Ladd, Expert and Other Opinion Testimony, 40 Minn. L. Rev. 437 (1956); Sink, The Unused Power of a Federal Judge to Call His Own Expert Witness, 29 So. Calif. L. Rev. 195 (1956); McCormick, Science, Experts and the Courts, 29 Tex. L. Rev. 611 (1951); Weihofen, Eliminating the Battle of Medical Experts in Criminal Insanity Cases, 48 Mich. L. Rev. 961 (1950); McKnight, The Minnesota Plan for Expert Testimony, 30 J. Am. Jud. Soc'y 186 (1947); Beuscher, A Code of Evidence for Wisconsin? Expert Witnesses, 1945 Wis. L. Rev. 593; Eliasberg, Opposing Expert Testimony, 36 J. Crim. L., C. and P. S. 231 (1945); Ball, The Expert Witness, 29 A. B. A. J. 695 (1943). An extremely significant project involves the use of court appointed experts in medical cases in the Supreme Court of New York County. Inaugurated in 1952, the results of the experiment to date are compiled in a recent report of the New York City Bar Association. See The Association of the Bar of the City of New York, Impartial Medical Testimony (1956). This project will be considered in more detail later. See pp. 28-32, infra. 2 Wigmore, Evidence sec. 563 (3d edition 1940). Ibid. Regarding this bias of scientific environment, see Anderson v. American Smelting & Refining Co., 265 F. 928, 936 (Ď. C. Utah 1919). either case, the result in the trial of technical issues may be adjudication based upon prejudices rather than merits. It is therefore understandable that the elimination of bias has been-and should be an important objective in any reform procedure. But it is doubtful if this aspect of the problem justifies the substitution of any procedure designed to eliminate or unwarrantedly curtail the party presentation of expert evidence. The predominant proposal for reform in the use of experts in court is the so-called court-appointed or neutral expert procedure. One such proposal, although permitting the use of party experts, suggests the desirability of either eliminating or sharply curtailing the party presentation of expert evidence. In the comments to rule 403 of the Model Code of Evidence which provides for the court appointment of experts it is said: The chief reason for the distrust of expert evidence is that it comes from a biased source. All commentators agree that the control of the parties over the selection of experts must be limited. The distrust, it is true, cannot be eradicated by merely permitting the judge to appoint expert witnesses, so long as the parties may continue to call experts of their own selection; but the distrust can be greatly lessened; the jury will know that experts selected by the judge will ordinarily be impartial; and if these experts agree, the conflicting opinions of the partisan experts will be discounted. *** *7 This overlooks the distinction which must be made between conflict among experts that results from bias and conflict that results from honest disagreement. Where honest disagreement exists between the parties' positions on the technical evidence, the trier of fact should have the benefit of considering two such opposing points of view.8 It is not to be expected that experts should disagree and squarely contradict each other on scientifically established matters of fact falling directly within their field. However, differences of opinion among experts are natural enough when they are called upon to draw inferences from observed facts. *** [I]t is only in exceptional cases *** that facts carry such weight as in themselves to decide a point at issue, and, as a rule, only inferences of varying degrees of probability can be drawn from them. The wellworn saying that "facts cannot lie" is an obvious platitude, but they may be capable of more than one interpretation, each of which may even be partly true; and so it is an everyday occurrence for expert witnesses to support, in all good faith, conflicting opinions which may be based essentially upon the same facts. This observation is particularly relevant in patent litigation. Questions pertaining to the validity of a patent or its infringement necessarily turn upon the interpretations given to the specifications and claims. A broad interpretation will result in a greater range of laboratory possibilities than a narrow interpretation. The point is illustrated by extracts from the specifications of a patent cited as prior art in a recent patent infringement suit involving a self-generating lather composition.10 The specifications read: The emulsions contemplated by the present invention may be produced in any of the known ways of forming emulsions, no claim being made herein to the method by which the emulsions are formed. Homogenizers, colloid mills, and agitators 7 Model Code of Evidence 204 (1942). See Yankwich, On the Use of Experts in Patent Causes, 22 J. P. O. S. 639, 641 (1940), and 26 A. B. A. J. 736, 737 (1940). See also, Frost, The Patent System and the Modern Economy, Study No. 2, Senate Subcommittee on Patents, Trademarks, and Copyrights, 84th Cong., 2d sess., 56-57 (1957). Mitchell, The Expert Witness 1 (1923). In this connection, see also, Kurtz v. Belle Hat Lining Co., 280 F. 277, 280 (2d Cir. 1922). 10 Carter Products, Inc. v. Colgate-Palmolive Co., 130 F. Supp. 557 (D. C. Md. 1955), affirmed 230 F. 2d 855 (4th Cir. 1956), certiorari denied, 352 U. S. 843 (1956). |