Monolithic Power Systems (MPS), Asustek, and Advanced Semiconductor Manufacturing v. O2 Micro (CAFC 2008-1128)

The Federal Rules of Evidence allow a court to appoint an expert either "on its own motion or on the motion of any party." Fed. R. Evid. 706(a). Rule 706(a) provides:

The court may appoint any expert witnesses agreed upon by the parties, and may appoint expert witnesses of its own selection . . . A witness so appointed shall be informed of the witness' duties by the court in writing, a copy of which shall be filed with the clerk, or at a conference in which the parties shall have opportunity to participate. A witness so appointed shall advise the parties of the witness' findings, if any; the witness' deposition may be taken by any party; and the witness may be called to testify by the court or any party. The witness shall be subject to cross-examination by each party, including a party calling the witness.

Id.

District courts rarely make Rule 706 appointments, but it is within their power.

O2 argued "that the district court's appointment of Dr. Santi as an independent expert unduly burdened its Seventh Amendment right to a trial by jury." Hogwash, the CAFC ruled.

The framers of the Federal Rules expressly contemplated: "[I]n the exercise of its discretion, the court may authorize disclosure to the jury of the fact that the court appointed the expert witness." Fed. R. Evid. 706(c). The district court properly exercised this discretion, taking care to instruct the jury that it should not assign Dr. Santi's opinion greater inherent weight on accord of his independent status.

Bizarrely, the appeals court was troubled about the practice of having an independent expert sort things out, rather than the typical adversarial slants, endemic to U.S. jurisprudence, that make it more difficult to get to the nut of the matter. Britain's system, for example, is designed to be more oriented to getting the root of things, not so much the "shooting match" approach of this country. Not that things work always as designed.

The predicaments inherent in court appointment of an independent expert and revelations to the jury about the expert's neutral status trouble this court to some extent. Courts and commentators alike have remarked that Rule 706 should be invoked only in rare and compelling circumstances. In re Joint E. & S. Dists. Asbestos Litig., 830 F. Supp. 686, 693 (E.D.N.Y. 1993) (noting that "use of Rule 706 should be reserved for exceptional cases in which the ordinary adversary process does not suffice"); Wright, supra, § 6302 ("Rule 706 powers are properly invoked where the issues are complex and the parties' experts have presented conflicting testimony that is difficult to reconcile or have otherwise failed to provide a sufficient basis for deciding the issues."). However, under Ninth Circuit law, district courts enjoy wide latitude to make these appointments. This court perceives no abuse of discretion in this case where the district court was confronted by what it viewed as an unusually complex case and what appeared to be starkly conflicting expert testimony. See, e.g., Walker, 180 F.3d at 1071 (finding no abuse of discretion in Rule 706 appointment where the scientific evidence was "confusing and conflicting" and the appointment "assist[ed] the court in evaluating contradictory evidence about an elusive disease of unknown cause").

The expert apparently cleared the smoke O2 hoped to blow.

The jury found the asserted claims invalid under both MPS's obviousness and on-sale bar theories. Additionally, the jury found no literal infringement of the claims, but found infringement under the doctrine of equivalents as to claims 12 and 14.

District court decision affirmed.