Judge Calls His Own Expert at Oracle/Google Patent Trial

Amy Miller
Source: www.law.com

There's nothing unusual about a federal judge appointing a technical expert to help unravel convoluted claims during a patent trial. But Judge William Alsup in the Northern District has done something prominent litigators in the Bay Area say they've never before seen a judge do.

On Aug. 30, Alsup appointed an expert to testify specifically on damages in Oracle America Inc.'s closely watched suit against Google Inc., which claims the Android mobile operating system violates Java-related patents and copyrights that Oracle acquired when it bought Sun Microsystems Inc. in 2009.

"He wants an impartial expert who is beholden solely to the court," said Stanley Young, an IP litigator at Covington & Burling in Silicon Valley.

Litigators say it's a bold move by Alsup to deal with the controversial task of determining damages in contentious patent hearings, an issue Congress punted in its latest effort at patent reform. But they also worry that court-appointed experts who testify can wield too much influence over juries and undermine lawyers' ability to advocate for clients.

"The risk is, it turns into a one-witness trial," said Henry Bunsow, an IP litigator at Dewey & LeBoeuf in San Francisco. "The individual party's position becomes lost in the trial, and whatever the independent expert says is taken as gospel."

Damages have been a contentious issue in Oracle's case against Google from the start. Alsup had asked the parties to submit damages reports at the start of the trial, rather than the end, hoping to prevent any delays in the trial.

In May, Oracle submitted a whopping $6.1 billion damages report, and after weeks of haggling, Alsup granted a motion by Google's lawyers at King & Spalding; Greenberg Traurig; and Keker & Van Nest to exclude it. Oracle, which is represented by Morrison & Foerster and Boies, Schiller & Flexner, had overreached, Alsup wrote, "evidently with the goal of seeing how much it could get away with, a 'free bite,' as it were."

Google has maintained that the patents at issue are neither valid nor infringed, so Oracle isn't entitled to any damages, an argument Alsup has also rejected.

In July, Alsup told the two sides he wanted them to choose and pay for one damages expert. When they couldn't agree, he went ahead and appointed James Kearl, an economics professor from Brigham Young University, along with a lawyer to represent him in his dealings with the two sides.

Google tried to head off Alsup, arguing in a July 26 court filing that both sides already had their own damages experts, and that a court-appointed expert would bias a jury.

"If the jury is aware that the court's expert was appointed by the court and is not a representative of both parties, that expert will have a powerful stamp of court approval and objectivity that will lend a disproportionate weight to that expert's opinions and testimony," wrote Keker & Van Nest's Robert Van Nest.

In rejecting that argument, Alsup cited one of the few Northern District cases where a judge has appointed an expert witness to testify: Monolithic Power Systems v. 02 Micro International Limited. In that case, Judge Claudia Wilken had appointed a technical adviser, not a damages expert.

"Far from complicating the jury's decision on damages, as Google argues, the testimony of a Rule 706 expert would assist the jury by providing a neutral explanation and viewpoint," Alsup wrote. "This assistance will be particularly useful because both sides have taken such extreme and unreasonable positions regarding damages in this action."

02 Micro lost the case in 2007, and argued to the Federal Circuit U.S. Court of Appeals that the independent expert's testimony had unfairly biased the jury. But the Federal Circuit affirmed, saying the district court hadn't abused its discretion.

The rules are clear that judges can appoint experts who will testify in court, says Brandon Baum, founder of Baum Legal, an IP litigation boutique in Silicon Valley, who's also an adjunct professor at Hastings College of the Law. But he does have concerns.

"It's a clever strategy for being reasonable and rational when it comes to damage awards," Baum said. "But I think that if we start going down the road where we're going to let court-appointed fact finders testify at trial, we really are giving up some of our belief in the jury system."

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