Claim Construction: In Sanders v. Mount Sinai School of Medicine, 2005 WL 2242151 (S.D.N.Y. Sept. 13, 2005), the plaintiffs patented their method of treating eight separate medical conditions with botulinum toxin. They subsequently assigned their rights under the patent to their employer, Mount Sinai Hospital, pursuant to the terms of their employment contracts. According to their agreement, Mount Sinai was required to pay the plaintiffs a percentage of the revenue derived from the botulinum toxin. Mount Sinai’s right to the patent was challenged by a drug manufacturer, Allergan, which claimed it had priority with respect to the treatment of two of the eight diseases: hyperhydrosis and rhinorrhea. Mount Sinai ultimately conceded the issue with respect to the treatment of hyperhydrosis, and licensed to Allergan its patent rights concerning that condition. The U.S. Patent and Trademark Office then struck seven additional claims made under the patent originally issued to the plaintiffs.
The plaintiffs filed an action against Mount Sinai alleging that it failed to police and enforce the rights under the patent, resulting in a significant loss in patent coverage. They further alleged that Mount Sinai’s omissions constituted a breach of the patent assignment agreement, which created an implied obligation to use reasonable efforts to commercialize the bulk of the patent claims.
The plaintiffs offered attorney Maurice B. Stiefel as an expert witness. Attorney Stiefel opined that Mount Sinai failed to exercise reasonable steps to maintain all or part of the original patent. Specifically, he testified that Mount Sinai failed to seek a reissue of the rest of the patent prior to settling with Allergan with respect to hyperhydrosis, investigate whether the plaintiffs did in fact have priority with respect to the treatment of hyperhydrosis, and/or fully investigate whether the plaintiffs were the first to diligently commence the development of the use of botulinum toxin as a treatment method in the first instance. Mount Sinai moved to preclude this testimony on the grounds that it constituted impermissible legal conclusions and improperly questioned decisions by Mt. Sinai, which, as the patent owner, had exclusive control over its use and disposal.
The court permitted the testimony. It held that attorney Stiefel’s opinions did not constitute “claim construction” because his interpretation of the stricken patent claims was foundational in nature and necessary to give context and factual support to his conclusion that Mount Sinai did not reasonably protect the patent coverage. Moreover, his assumption that an implied obligation existed under the assignment agreement was permissible because the plaintiffs were allowed to amend the complaint to assert this theory and a ruling on its merits had not been issued.
Industry Standards: In 985 Associates, LTD. v. Daewoo Electronics America, Inc., No. S 966-03 CnC (Chittenden County, Vt., May 1, 2006), the plaintiffs claimed that a microwave oven manufactured by the defendant caused a fire, which resulted in personal injuries and property damage. To support this allegation, they offered witnesses Nathaniel Johnson and Timothy Austin as experts in the field of fire causation and origin. The court precluded their testimony on the grounds that it was not based upon sufficient facts and methodology.
The court relied heavily upon the generally accepted standards for investigating fires and explosions set forth by the National Fire Protection Association. The guidelines, which are based upon scientific method, require investigators to follow an established procedure to the extent necessary to ensure objectivity and diligence. Neither of the plaintiffs’ experts followed the generally accepted guidelines.
Mr. Johnson’s opinion was tarnished by preconceived notions about the cause of the fire. He was asked to examine the microwave by Mr. Austin, who told him it was the cause of the fire and instructed him to determine how – not if – the appliance was defective. Mr. Johnson did not visit the fire scene or otherwise investigate the basis for these statements. According to the court, these types of assumptions are exactly what the guidelines are designed to avoid. Similarly, Mr. Austin never examined the inner-working of the microwave involved in the fire and failed to consider the report issued by the Burlington Fire Department.
It was also notable that the plaintiffs’ experts both opined that the microwave was defective, but failed to demonstrate that they were qualified to do so. Indeed, Mr. Johnson never tested an exemplar appliance or completed an in-depth examination of the microwave involved in the fire. He merely requested a schematic of the microwave and offered his opinion without ever receiving one.
Speculation: In Tokio Marine & Fire Ins. Co., Ltd. v. Duncan, 2006 WL 648013 (S.D.N.Y. March 14, 2006), the plaintiff alleged that valuable glassware was damaged at or in transit to or from his home in New Jersey and during an exhibit in Japan. He called four expert witnesses on the issue: Professor Martin Eidelberg, David Donaldson, Frederick Brandt and William Warmus. The defendants’ motion to preclude the plaintiff’s experts was granted. None of the plaintiff’s experts examined the glassware until several years after the alleged damage occurred. The glassware was moved several times during that period, and the experts did not examine them in a neutral environment (i.e. one of them used the plaintiff as an “assistant,” and the objectivity of others was compromised by seeing their colleagues’ work). Thus, the opinions offered by the plaintiff’s experts were “no different from what jurors might find [when] presented with the same evidence . . .”
Mr. Bender is a senior associate in the New York City office of Harris Beach, PLLC. He defends Fortune 500 corporations in product liability suits and mass torts involving things such as industrial chemicals, medical devices, fast food, handguns, and airborne contaminants. His practice requires the use of expert witnesses in a wide array of fields, including bioengineering, epidemiology, toxicology, surgery, industrial hygiene, computational fluid dynamics, and airflow modeling. Mr. Bender contributes to this newsletter in his role as the Expert Witness Co-Chair of the DRI Technology Committee. He also serves as the Vice-Chair of Publications of the DRI Young Lawyers Committee, and as the Young Lawyers Vice-Liaison to the DRI Trial Tactics Committee. He can be reached at 212-313-5405 or bbender@harrisbeach.com.
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