Addressing for the first time the issue of whether Rule 706 appointments of experts burden a party’s Seventh Amendment right to trial by jury, the U.S. Court of Appeals for the Federal Circuit held that court appointments of experts, when administered properly, do not encumber the right to trial by jury. Monolithic Power Systems, Inc. et al. v. O2 Micro Int'l Ltd., Case Nos. 08-1128, -1136 (Fed. Cir., Mar. 5, 2009) (Rader, J.).

The district court judge appointed an independent expert pursuant to Fed. R. Evid. 706(a) to opine on complex technical issues. During trial, the jury was instructed that Dr. Santi was “an independent witness retained by the parties jointly at the court’s direction to assist in explaining the technology at issue in this case.” Dr. Santi’s opinions generally agreed with the case presented by Monolithic Power Systems (MPS), and the jury found that O2 Micro’s asserted claims were invalid and not literally infringed by MPS. O2 Micro appealed the verdict to the Federal Circuit on the basis that the appointment of Dr. Santi by the district court violated its Seventh Amendment right to a jury trial.

The Court held that the district court’s appointment of Dr. Santi did not amount to an abuse of discretion because Rule 706 appointments, while rare, are authorized by the Federal Rules and clearly fall within the inherent powers of the judge. Although it noted that the district court believed that Dr. Santi’s opinion would greatly influence the jury, the Court held that the district court “properly administered the standards set by Rule 706.” In particular, the Court noted that it allowed the parties to show cause why an expert witness should not be appointed, instructed the parties to nominate and confer on an agreeable expert witness, provided detailed instructions to Dr. Santi regarding his duties and ordered him to be available for depositions, ordered the parties to share Dr. Santi’s costs and allowed both parties to call their own experts to attack, support, or supplement Dr. Santi’s opinions.

The Court was somewhat troubled by the disclosure of Dr. Santi’s independent status to the jury, but noted that “district courts enjoy wide latitude to make [Rule 706] appointments.” Also, the district court instructed the jury that Dr. Santi’s opinions were not to be given any more weight than those of any other witness. In support, the Court noted that the jury verdict did not entirely agree with Dr. Santi’s opinions.

The Court held that “[u]ltimately, O2 Micro’s arguments that Dr. Santi’s testimony relieved the jury of its tasks are policy arguments against Rule 706” and noted both that Congress entertained and rejected these arguments while drafting Rule 706 and that the Supreme Court has long recognized the constitutionality of court-appointed experts.

Practice Note: While district court judges rarely appoint independent experts, such an appointment can add considerably to the complexity of a patent litigation. A practitioner who finds themselves in an unfavorable position (as O2 Micro did in this case) should ensure that the jury is not predisposed to accept the independent expert’s opinions and spend considerable resources addressing the expert’s opinions.