Trudell Medical International Inc. v. D R Burton Healthcare, LLC decided Feb 7, 2025

Case Overview: This is about a United States Court of Appeals for the Federal Circuit ruling on a patent infringement case between Trudell Medical International Inc. (Trudell) and D R Burton Healthcare, LLC (D R Burton). Trudell sued D R Burton for infringing on its patent (U.S. Patent No. 9,808,588) for portable devices used in Oscillatory Positive Expiratory Pressure (OPEP) therapy.

Key Issues and Findings:

1. Expert Testimony (Dr. John Collins):

2. Issue: The central issue revolves around the admissibility of expert testimony from Dr. John Collins, who testified for D R Burton on the issue of non-infringement.

3. Ruling: The court found that the district court abused its discretion by allowing Dr. Collins to testify on noninfringement. This is the core reason the court reversed some of the earlier rulings.

4. Rationale:Untimely Expert Report: Dr. Collins did not submit a formal expert report on non-infringement during the discovery period. His seven-page declaration was submitted after the close of discovery, violating Federal Rule of Civil Procedure 26. The court notes, “It is undisputed Dr. Collins did not submit an expert report on noninfringement during the discovery period.”

5. Lack of Justification/Harmlessness: D R Burton failed to demonstrate that this failure to disclose was substantially justified or harmless, as required by Rule 37. The court stated, "The district court did not, nor could it, explain why allowing Dr. Collins’ untimely noninfringement testimony was substantially justified or harmless.”

6. Insufficient Notice: While the district court argued the declaration provided some notice, the court of appeals found it insufficient, particularly since Dr. Collins' testimony went beyond the scope of the declaration, and because Trudell did not have the opportunity to depose him. The ability to cross-examine was not considered sufficient to cure the lack of a timely deposition.

7. Unreliable Testimony: The court found Dr. Collins's opinions were "untethered from the district court's claim constructions" and cited specific instances of conflict. For instance, Dr. Collins opined that the patent required "more than one vane" even though the court had construed "a vane" to broadly include "one or more vanes" J.A. 38. He also incorrectly compared accused products to figures in the specification rather than to claim language.

8. Conclusion: Due to the failure to follow proper procedure and the unreliable nature of the testimony, the court found Dr. Collins's non-infringement testimony should have been excluded entirely.

9. Judgment as a Matter of Law (JMOL) on Infringement:

10. Issue: Trudell argued that, without Dr. Collins's testimony, there was insufficient evidence for the jury to find non-infringement.

11. Ruling: The court affirmed the district court’s denial of Trudell's JMOL motion.

12. Rationale:Even without Dr. Collins's testimony, the court held that a jury could still discredit Trudell's expert witness. The court noted, “the jury was free to discredit the testimony of Trudell’s expert, Dr. Durgin, and find that Trudell failed to meet its affirmative burden to prove infringement.”

13. The court affirmed that credibility determinations are within the sole province of the jury and will not be re-weighed by the court.

14. New Trial:

15. Issue: Trudell sought a new trial based on the improper admission of Dr. Collins's testimony.

16. Ruling: The court reversed the district court’s denial of a new trial and remanded the case.

17. Rationale: The court concluded, "The harmful and prejudicial admission of Dr. Collins’ testimony warrants a new trial on infringement."

18. The court explicitly stated that “the district court abused its discretion in admitting Dr. Collins’ noninfringement testimony because it was untimely, failed to comply with Federal Rule of Civil Procedure 26, and was unreliable under Federal Rule of Evidence 702.”

19. The court directed that on remand, the record should be confined to evidence already produced and admitted, explicitly excluding Dr. Collins’ noninfringement testimony. The court emphasized that “it would be improper to reopen discovery where D R Burton previously indicated to Trudell that it did not intend to produce additional expert reports or depose Trudell’s experts.”

20. Reassignment of the Case:

21. Issue: Trudell requested the case be reassigned to a different judge on remand.

22. Ruling: The court granted the request and ordered reassignment.

23. Rationale:The court concluded that the original judge’s statements throughout the case demonstrated that he did not intend to manage a fair trial, and undermined the appearance of fairness.

24. The court pointed to specific comments made by the judge, like "And I’m going to settle this case or resolve it or dismiss it by September 30th. Just – that’s a heads up" J.A. 1719 at 3:15–17 and “[O]ur duty is to get this case done. And if you can’t get it done, then I will. You can get it done by settling it. I can get it done by having a verdict in it.” J.A. 2052 at 20:14–16.

25. These statements were seen as similar to those in a previous case, Beach Mart, Inc., where reassignment was also ordered, and where the same judge had presided.

26. The court concluded that there was sufficient reason to believe the judge’s conviction to quickly terminate the case would be no different on remand.

Key Legal Principles and Rules:

• Federal Rule of Civil Procedure 26: Governs expert witness disclosures and requires timely and comprehensive reports.

• Federal Rule of Civil Procedure 37(c)(1): Specifies the consequences for failing to disclose information or witnesses as required by Rule 26, including exclusion of evidence unless the failure was substantially justified or harmless.

• Federal Rule of Evidence 702: Governs the admissibility of expert testimony, requiring that it be reliable and helpful to the trier of fact.

• JMOL Standard: The court reviews a denial of JMOL de novo and grants it only if "the only conclusion a reasonable jury could have reached is one in favor of the moving party."

• New Trial Standard: A new trial is warranted if the verdict is against the clear weight of the evidence, is based upon false evidence, or results in a miscarriage of justice.

Conclusion:

The Court of Appeals found significant errors in the district court's handling of expert testimony, specifically the allowance of Dr. Collins's testimony. This led to a reversal of the denial of Trudell's motion for a new trial and the granting of reassignment to a new judge. The court emphasized the importance of adherence to the rules of discovery and evidence in the interest of fairness and justice, and the need for expert testimony to align with claim constructions, and that testimony must be supported by a proper report, and it is not sufficient to allow a witness to testify about an issue that they haven't been deposed on, even if they are later cross examined at trial. The court also found that the trial judge's behavior and statements created a situation that appeared unfair.