Technical Advisors: Welcome Scientific Education, But at What Cost to

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MARCH/APRIL 2003 IPLitigator 1 Technical Advisors: Welcome Scientific Education, But at What Cost to a Patent 9s Notice Function? Luke L. Dauchot and Jeffrey C.

Metzcar Luke L. Dauchot is a partner in the Intellectual Property group of Kirkland & Ellis, Chicago, IL . Jeffrey C.

Metzcar is an associate and registered patent attorney at Thompson Hine LLP in Dayton, OH. His practice is focused on the litigation and trial of patent cases. The firm has offices in Brussels, Cincinnati, Cleveland, Columbus, Dayton, New York City, and Washington DC.

A patent c[p]romote[s] the Progress of Science and useful Arts d 1 both by rewarding the patentee for his inventive behavior through a limited monopoly and stimulating innovation through the public disclosure of the patented invention. Patent claim construction, the process by which courts define the reach of the patent monopoly, thus serves two ends: it cedes to the patentee that which is properly claimed as his inven- tion and unambiguously demarcates what remains in the public domain for future innovation. But claim construction is an ex post facto process; it typically takes place well after the patent has usually issued, in the context of litigation.

For patents to serve their public policy function, patentees ... more. less.

and future innova- tors require an a priori understanding of the reach of the patent monopoly that is consistent with how it may later be demarcated by a court. Thus, claim con- struction must at once effectively resolve the techno- logical issues presented by the patent and do so through predetermined and consistently applied rules. In short, it must be reasoned and predictable. To render a scientifically reasoned claim construc- tion, a trial judge must educate him or herself about the relevant art. Until most recently, that process largely was left unregulated, with the Court of Appeals for the Federal Circuit opting for general pro- nouncements to the effect that a cdistrict court has the discretion to consider factual or appropriate extrinsic evidence, such as expert testimony, for pur- poses of a tutorial or for background information in the technical area at issue. d 2 Left to their own devices, trial courts have sought innovative approaches to alleviating the difficulties created by their status as lay persons in the realm of patent interpretation. d 3 One such approach is the use of technical advisors, MARCH/APRIL 2003 VOLUME 9 NUMBER 3 DEVOTED TO INTELLECTUAL PROPERTY LITIGATION & ENFORCEMENT Edited by the Law Firm of Grimes & Battersby 2 IPLitigator MARCH/APRIL 2003 cspecial law clerks d who, on an ad hoc basis, provide a trial court with assistance on technical issues. While the technical advisor is a welcome addition to the claim construction process in that ca well- informed claim construction is more likely to be the right one, d 4 he or she comes at the cost of pre- dictability in claim construction. Whether and how a trial judge will use a technical advisor, who will be used as a technical advisor, and how much impact that advisor will have on the ultimate claim construc- tion, is anyone 9s guess. Claim Construction: Policy Considerations Since the US patent laws were amended in 1870 to require an inventor to cparticularly point out and dis- tinctly claim the part, improvement, or combination which he claims as his invention or discovery, d 5 courts consistently have stressed the importance of the patent claim 9s notice function. As Justice Bradley put it in White v. Dunbar : Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include some- thing more than, or something different from, what its words express . . . The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a man- ner different from the plain import of its terms. 6 But the cplain import d of claim language has inher- ent limitations. cAn invention exists most importantly as a tangible structure or a series of drawings. A ver- bal portrayal is usually an afterthought written to sat- isfy the requirements of patent law. This conversion of machine to words allows for unintended idea gaps which cannot be satisfactorily filled. d 7 Thus, defining the reach of a patent in the vacuum of claim language alone ultimately degenerates into an exercise of form over substance and undermines the very purpose of patents: cTo promote the Progress of Science. d 8 Hence the role of intrinsic and extrinsic evidence in claim construction. Intrinsic evidence is information within the four corners of a patent and its prosecution history, namely, the cpublic record. d Because these docu- ments are publicly available, such evidence is the tool of first resort to stake the metes and bounds of a patent: it is only fair (and statutorily required) that competitors be able to ascertain to a reasonable degree the scope of the patentee 9s right to exclude. They may understand what is the scope of the patent owner 9s rights by obtaining the patent and prosecution history 4 cthe undis- puted public record d 4and applying established rules of construction to the language of the patent claim in the context of the patent. 9 Evidence outside the public record ( i.e., cextrinsic evidence d) is disfavored in claim construction, pre- cisely for the same reason that intrinsic evidence is favored: [C]ompetitors are entitled to review the public record [of a patent], apply the established rules of claim construction, ascertain the scope of the patentee 9s claimed invention and, thus, design around the claimed invention. Allowing the pub- lic record to be altered or changed by extrinsic evidence introduced at trial, such as expert testi- mony, would make this right meaningless. 10 But extrinsic evidence cannot altogether be elimi- nated, for two reasons. First, when cclaim language remains genuinely ambiguous after consideration of the intrinsic evidence d extrinsic evidence may be called upon to construe a claim but only to the extent that such reliance does not ccontradict the claim con- struction unambiguously apparent from the intrinsic evidence. d 11 Second, and more germane to the subject of this article, extrinsic evidence is essential to scien- tifically reasoned claim construction. While the Supreme Court in Markman v. Westview , aimed to make claim construction more predictable by insulating the process from the vagaries presented by the jury system, trial judges are for the most part not scientists. As one commentator put it, cthe notion that trial judges are uniquely qualified to divine and declare as a matter of law the true meaning of a patent claim . . . is nothing more than myth. d 12 The fact is that without technical background, a trial judge 9s claim construction will not be scientifically coherent. And while a patent and its prosecution his- tory may provide some of that background, much of it must come from outside the public record. Neither a patent nor its prosecution history is intended to serve as a science textbook. Quite to the contrary, the law presumes that a patent is read by a person cskilled in the art to which it pertains, or with which it is most nearly connected. d 13 Thus, only through extrinsic evidence can a trial judge, as he or she is duty bound to do, construe a patent from the per- spective of one skilled in the art. In short, notwithstanding the threat it poses to the patent 9s notice function, extrinsic evidence is needed to assure scientifically coherent reasoning. To recon- cile these competing interests, the Federal Circuit has adopted two rationales. First, it has drawn a distinc- tion between the disfavored use of extrinsic evidence for the purpose of shaping a claim and the favored use of such evidence for the purpose of education. 14 With respect to the latter, the Federal Circuit has deemed it centirely appropriate, perhaps even prefer- able, for a court to consult trustworthy extrinsic evi- dence to ensure that the claim construction it is tending to from the patent file is not inconsistent with MARCH/APRIL 2003 IPLitigator 3 clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field. d 15 Second, the Federal Circuit has accorded some forms of extrinsic evidence such as dictionaries special treatment. 16 But these rationales are imperfect. The use of extrin- sic evidence to learn the relevant art is bound to shape the claim. Indeed, if not to help shape the claim, of what use is the education? As for dictionar- ies, what of competing dictionary definitions? At what point does a cfactual d dictionary definition metamorphose into an opinion? Indeed, as technol- ogy grows more complex, the line between opinion and fact blurs, so as to increase the risk that cselec- tion of the expert d amounts to the cselection of an outcome. d 17 Yet it is precisely under these circum- stances that the need for technological assistance is particularly acute. In the final analysis, our system of patent adjudica- tion demands educational forays by trial judges that invariably compromise the notice function of patents. That reality, along with its troubling implications, is underscored by the role of technical experts in the patent claim construction process. Technical Advisors: The Law, Their Role, and Their Implications Technical advisors are cspecialized law clerks, dwho, very broadly speaking, help cthe jurist to educate himself in the jargon and theory disclosed by the tes- timony and to think through the critical technical problems d presented by a case. 18 The role of a techni- cal advisor escapes easy definition. It is a function of a court 9s individual need and preference, and can range from investigation of the facts and auditing of accounts to examination of witnesses and computa- tion of damages. Depending upon the particular issues involved in a case, the technical advisor might be selected from diverse occupations such as accoun- tants, engineers, and actuaries. 19 From the standpoint of educating the jurist about technical issues: [t]he role of the technical may be viewed as ful- filling five separate functions. First, the technical advisor translates and interprets for the court the technical language used in the case. Second, the technical advisor offers an exposition and delineation of the technical disagreement between the parties. Third, the technical advisor relates this disagreement to the broader princi- ples of the science or technical art involved. Fourth, the technical advisor presents his or her own opinion on the technical facts and related matters at issue. Finally, the technical advisor may conduct pertinent experiments, either on his or her own or in cooperation with others. 20 Courts enjoy marked discretion in the appointment and use of technical advisors. As articulated by Jus- tice Brandeis: Courts have (at least in the absence of legislation to the contrary) inherent power to provide them- selves with appropriate instruments required for the performance of their duties. This power includes authority to appoint persons uncon- nected with the court to aid judges in the perfor- mance of specific judicial duties, as they may arise in the progress of a cause. 21 A measure of the freedom enjoyed by courts in their use of technical advisors are the substantial strictures that govern their cousin, court-appointed experts. Unlike technical advisors, court-appointed experts often contribute to the evidence, usually through direct testimony and cross-examination. Federal Rule of Evidence 706 dictates both the circumstances under which an expert witness can be appointed and sets forth procedural safeguards for their use. In par- ticular, Rule 706 requires that the court describe the expert witness 9 duties in writing and that the witness advise the parties of his or her findings. 22 Rule 706 also permits the parties to depose the expert witness, to call the expert witness to testify at trial, and to cross-examine the expert witness. 23 Technical advisors are not governed by Rule 706. 24 Moreover, in contrast to the conspicuous role of an expert witness, the technical advisor frequently oper- ates outside the view and control of the parties, com- municating with the judge on an ex parte basis and typically off the record. While such freedom no doubt enhances the effectiveness of the advisor, it does con- flict with the adversarial tradition of the American court system, which leaves to the adversaries the task of educating the fact-finder through the presentation of evidence. Hence, the caution that cappointments [of technical advisors] should be the exception and not the rule, and should be reserved for truly extraor- dinary cases where the introduction of outside skills and expertise, not possessed by the judge, will hasten the just adjudication of a dispute without dislodging the delicate balance of the juristic role. d 25 The use of technical advisors also carries troublesome implica- tions from the standpoint of appellate review and accountability. Although Justice Breyer did not touch on these issues when he advocated the appointment of special masters and specially trained law clerks to assist courts in handling complicated or otherwise technical evidence, 26 others have. cIt is fundamental that no judgment be maintained under circum- stances that suggest that the fact finder may have relied on covert, personal knowledge rather than on the evidence produced in open court and subject to review by the parties, the public, and the appellate court. d 27 These concerns notwithstanding, technical advisors have been well received in the context of patent cases. As one court put it: c[C]omplex claim construction 4 IPLitigator MARCH/APRIL 2003 presents an ideal case for a court-selected technical advisor. d 28 In defending the use of technical advisors on an ex parte basis, one court observed that: [l]itigants should understand that in securing the relative certainty of judicial claim construc- tion as to the scope of a patent monopoly, they have surrendered to judges the autonomy to shape these issues themselves. In this sense, Markman represents a drift toward the Euro- pean civil justice system of adjudication. This Court accordingly prefers the assistance of its own technical advisor to the clash of adversary presentations. 29 The court has a point. Patent cases test, if not strain, the limits of this country 9s adversarial system of jus- tice, which not only relies on adversaries to develop facts but forces them to do so through often unwieldy rules of evidence. Such limitations recently com- pelled the Federal Circuit to remind counsel in a patent case before it cthat they are not only advocates for their clients; they also are officers of the court and are expected to assist the court in the administration of justice, particularly in difficult cases involving complex issues of law and technology. d 30 Indeed, the complex nature of patent claim construction was a substantial policy consideration behind the US Supreme Court 9s decision to leave claim construction to judges rather than juries. As the Supreme Court stated in Markman v. Westview Instruments, Inc. : Patent construction in particular cis a special occupation, requiring, like all others, special training and practice. The judge, from his or her training and discipline, is more likely to give a proper interpretation to such instruments than a jury; and is, therefore, more likely to be right, in performing such a duty, than a jury can be expected to be. d Parker v. Hulme , 18 F. Cas., at 1140. Such was the understanding nearly a cen- tury and a half ago, and there is no reason to weigh the respective strengths of judge and jury differently in relation to the modern claim; quite the contrary, for cthe claims of patents have become highly technical in many respects as the result of special doctrines relating to the proper form and scope of claims that have been devel- oped by the courts and the Patent Office. d Wood- ward, Definiteness and Particularity in Patent Claims, 46 Mich. L. Rev. 755, 765 (1948). 31 But the Supreme Court in Markman did not address, from the perspective of policy or practice, what makes a trial judge better suited than a juror to understand the technology underlying the patent. In reasoning that leaving claim construction to judges would promote cuniformity in the treatment of a given patent, d the Supreme Court as well left that question untreated: As we noted in General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, 58 S. Ct. 899, 902, 82 L. Ed. 1402 (1938), c[t]he limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others and the assurance that the sub- ject of the patent will be dedicated ultimately to the public. d Otherwise, a czone of uncertainty which enterprise and experimentation may enter only at the risk of infringement [sic] claims would discourage invention only a little less than unequivocal foreclosure of the field, d . . . and c[t]he public [would] be deprived of rights sup- posed to belong to it, without being clearly told what it is that limits these rights. d. . . Uniformity, would, however, be ill served by submitting issues of document construction to juries. . . . [T]reating interpretative issues as purely legal will promote (though it will not guarantee) intra- jurisdictional certainty through the application of stare decisis on those questions not yet sub- ject to interjurisdictional uniformity under the authority of the single appeals court. 32 The reality, however, is that in patent cases the cinterpretative issues d are usually less about arcane canons of document construction than they are about science. The construction of patent claim is inex- orably intertwined with the science that underlies, indeed shapes, them. Indeed, c[t]he added responsi- bility of instructing a jury on the construction of an allegedly infringed patent deepens the need for judges to be fully conversant with the science or technology at issue. d 33 Meeting this need through technical advi- sors can threaten cuniformity in the treatment of a given patent. d There are no rules governing the selection of techni- cal advisors. The circumstances calling for the appointment of a technical advisor, the choice of the technical advisor, and the topics on which technical advisors will provide advice are all questions that are left to the discretion of individual judges. Whether communications with technical advisors are on or off the record, whether they are held in the presence of parties, and whether and how a technical advisor 9s input is recorded as well are matters that are left to the discretion of the trial judge. For these reasons, the Intellectual Property Law Section of the American Bar Association last year approved a resolution thatcalled for, inter alia , dthe adoption of procedural guidelines that . . . promote uniformity and consis- tency in the trial courts 9 . . . use of materials or advi- sors to understand the relevant art. d 34 This year, in TechSearch L.L.C. v. Intel Corporation , 35 the Federal Circuit spoke out for the first time on the use techni- cal advisors. While the opinion is noteworthy in that itmarks a welcome shift from the Federal Circuit 9sprior laissez-faire approach to this issue, the decision leaves a number of issues unsettled. MARCH/APRIL 2003 IPLitigator 5 Technical Advisors: Federal Circuit 9s Perspective In TechSearch L.L.C. v. Intel Corporation 36 the Fed- eral Circuit addressed an appeal from a district court 9s summary judgment of non-infringement, which followed a decision on the construction of the patent claims in issue. Appellant TechSearch L.L.C. appealed not only the district court 9s claim construc- tion but also the district court 9s use of a technical advisor. Specifically, TechSearch complained that the district court cabrogated its authority by allowing d a technical advisor cto resolve disputed issues of fact, d that the technical advisor had violated the trial court 9s own rules on the use of the advisor, and that the trial court failed to institute appropriate procedural mea- sures associated with that use. 37 According to the Federal Circuit, after the trial court undertook its Markman hearing in August of 1999 (and apparently after the court decided the claim con- struction issues), it advised the parties through a Memorandum Decision and Order of its decision to appoint a technical advisor: The court recognized that such appointments should be reserved for the exceptional case, but deemed it appropriate in this particular case because infringement would be ca highly techni- cal [issue] far beyond the boundaries of the nor- mal questions of fact and law with which judges routinely grapple. d . . . The district court further explained that c[a] judge may not appoint a tech- nical advisor to brief him on legal issues, or to find facts outside the record of the case; the advi- sor 9s role is to acquaint the judge with the jargon and theory disclosed by the testimony and to help think through certain of the critical prob- lems. d . . . The court determined that its technical expert, Dr. Hearn, was a neutral third party, and explained its reasoning for that determination in its memorandum decision. The court reiterated that Dr. Hearn had cagreed that he will not engage in any independent investigation of the underlying litigation, provide evidence to the Court, or contact any party or witness in this action. d The court further agreed to identify any material relied upon by Dr. Hearn, other than that submitted by the parties or cthose upon which a person versed in the relevant field of knowledge would be reasonably expected to rely. d The court stated that Dr. Hearn would exe- cute an affidavit indicating his understanding of that order before beginning his engagement, and would file an affidavit attesting to his compli- ance with its terms at the conclusion of his employment. 38 TechSearch 9s specific issues with the appointment of a technical advisor were as follows: (1) the trial court callow[ed] Dr. Hearn to resolve disputed issues of fact; d (2) Dr. Hearn cundertook independent research and possible experiments; d (3) the cdistrict court likely used such information d and cshould have allowed the parties to depose Dr. Hearn consistent with Fed. R. Evid. 706 to determine the extent this alleged evidence influenced the court; d and (4) cDr. Hearn 9s failure to certify his compliance with the order. d 39 In addressing these issues, the Federal Circuit ini- tially turned to the question of what law to apply. Deeming these questions cprocedural issues that are not themselves substantive patent law issues, d or climited to and unique to patent cases, d the Court looked to cregional procedural law. d 40 In so doing, the Federal Circuit looked to the law of the Ninth Circuit, which capplies an abuse of discretion standard to a district court 9s appointment of a technical advisor. d 41 Before turning to the question of whether there was an abuse of discretion, the Federal Circuit addressed the substantive legitimacy of technical advisors and observed as follows: A technical advisor is helpful in assisting the court in understanding the scientific and techni- cal evidence it must consider. See [Ass 9n of Mex- ican Am. Educators v. California 231 F.3d] at 590; see also Gen. Elec. Co. v. Joiner, 522 U.S. 136, 149, 139 L. Ed. 2d 508, 118 S. Ct. 512 (1997) (Breyer, J. concurring) (endorsing the appoint- ment of specialists to assist district courts in understanding scientific or technical evidence); Reilly v. United States, 863 F.2d 149, 156 (1st Cir. 1988). Such evidence in a patent case includes expert testimony, scientific articles and texts, and patents, upon which the court must rely in understanding the technology so that it can interpret the patent claims and determine whether to grant motions for summary judg- ment of validity, invalidity, infringement or non- infringement, and to assist the court in articulating appropriate jury instructions. 42 Further, the Federal Circuit adopted the Ninth Cir- cuit 9s reasoning that the district court 9s function as a gatekeeper of cscientific and technical evidence d defined by the Supreme Court 9s decision in Kumho Tire Co. v. Carmichael , 43 necessarily required the authority to appoint a technical advisor. 44 Citing the Supreme Court 9s decision in Ex Parte Peterson 45 on the subject of a trial court 9s inherent power cto appoint persons unconnected with the court to aid judges in the performance of specific judicial duties, d 46 the Fed- eral Circuit noted that c[t]he law has long recognized that it may effectively use the knowledge of experts to inform and support the judicial process to settle dis- putes. d 47 Finally, and turning to patent cases in partic- ular, the Federal Circuit remarked that: 6 IPLitigator MARCH/APRIL 2003 The trial court 9s inherent search for truth is the basic building block by which the judicial process maintains its credibility within the fab- ric of our society. In this search, it cannot be expected that trial judges will have the expertise in biotechnology, microprocessor technology, organic chemistry, or other complex scientific disciplines. Therefore, in those limited cases where the scientific complexity of the technol- ogy is such that the district court may require the assistance of a technical advisor to aid in the understanding of the complex technology under- lying the patent, it has the inherent authority to appoint such an advisor. 48 Next, the Federal Circuit turned to the procedure governing a trial court 9s use of technical advisors. As an initial proposition, the Federal Circuit noted that the Ninth Circuit cimplicitly recognize[s] that district courts should use this inherent authority sparingly and then only in exceptionally technically compli- cated cases, d 49 although cit has not held precisely what procedural safeguards district courts should employ. d 50 On the latter question, the Federal Circuit set out to creasonably predict d how the Ninth Circuit would decide. 51 Although the majority of the Ninth Circuit in Asso- ciation of Mexican Educators v. California 52 expressly refused to adopt the dissent 9s cspecific guidelines d for the use of technical advisors cbecause such strict compliance would unnecessarily undo [the] entire trial, d the Federal Circuit nevertheless read the Ninth Circuit 9s opinion to crecognize[] the need for some procedural safeguards and the need for a reviewing court to have a standard against which to judge abuse of discretion. d 53 Based on that reading, the Federal Circuit proceeded to c[c]onceptually. . . distill from the . . . opinion appropriate guidelines from which the Ninth Circuit would delineate desirable proce- dural mechanisms to safeguard the use of a technical advisor and generate a record for review on appeal. d 54 cDistilling d those guidelines from the dissenting opin- ion in Association of Mexican Educators, the Federal Circuit concluded that: [T]he district court in appointing a technical advisor must: use a cfair and open procedure for appointing a neutral technical advisor . . . addressing any allegations of bias, partiality or lack of qualifications d in the candidates; clearly define and limit the technical advisor 9s duties, presumably in a writing disclosed to all parties; guard against extra-record information; and make explicit, perhaps through a report or record, the nature and content of the technical advisor 9s tutelage concerning the technology. 55 With respect to the procedure for appointment of the technical advisor, the Federal Circuit added that typically a candidate 9s list would be compiled by the parties and supplemented by the recommendations of the district court. 56 Furthermore, in order to ensure that the technical advisor adhered to the clearly defined and written duties, pre-appointment and post-appointment affidavits could be used in which cthe technical advisor declares that he or she has complied with these safeguards, operated within the scope of his or her assignment, and confined his or her information sources to the record. d 57 With respect to guarding against information not of record, the Federal Circuit clarified: Typically this would entail making clear to the technical advisor that any advice he or she gives to the court cannot be based on any extra-record information, except that the advisor may rely on his or her own technology-specific knowledge and background in educating the district court. 58 Applying these standards to the facts at hand, the Federal Circuit concluded that c[g]iven the extent of the safeguards imposed by the district court as it exercised due care to avoid improper influence by its technical advisor, we conclude that the district court did not abuse its discretion in the appointment and use of the technical advisor. d 59 Moreover, cto the extent the procedures followed by the district court fell somewhat short of those essential to avoiding such influence, we note that the district court appointed the technical advisor prior to the issuance of the Ninth Circuit 9s en banc opinion in Association of Mexican American Educators, and the district court at least followed the minimum requirements necessary at that time. d 60 In a concurring opinion, Judge Dyk expressed con- cern that cthe district court 9s infringement analysis may have been too heavily influenced by the techni- cal advisor, d and that as a general proposition it is cimportant that district judges confine technical advi- sors to the proper sphere 4to provide advice without compromising the decisionmaking obligation of the district judge. d 61 On that issue, the majority acknowl- edged the reality that with the use of a technical advi- sor, the compromise of some decision-making authority is inevitable: c[a]s a practical matter, there is a risk that some of the judicial decision-making function will be delegated to the technical advisor. District court judges need to be extremely sensitive to this risk and minimize the potential for its occur- rence. d 62 Though laudable in its attention to the subject of technical advisors, the decision in TechSearch L.L.C. has two significant shortcomings. First, it leaves the treatment of technical advisors to the law of the regional circuit on the basis that their use is a matter of procedure not climited to and unique to patent cases. d Second, it limits the use of technical advisors to cexceptionally technically complicated cases d with- out justifying or defining that standard. That techni- cal advisors are not climited to and unique to patent cases d is not dispositive of the question of whether the Federal Circuit should apply its own law rather than that of regional circuits. The determination of MARCH/APRIL 2003 IPLitigator 7 whether a particular issue cpertains to patent law d must be guided by the policies underlying the cre- ation of the Federal Circuit, namely, to bring about uniformity in the patent law and to minimize confu- sion and conflicts in procedural matters. 63 Accord- ingly, the Federal Circuit has held: [O]ur practice has been to defer to regional cir- cuit law when the precise issue involved an inter- pretation of the Federal Rules of Civil Procedure or the local rules of the district court. Resolution of such issues manifestly implicates the consis- tency of future trial management. Similarly, with regard to substantive legal issues not within our exclusive subject matter jurisdiction, our prac- tice has been to defer to regional circuit law when reviewing cases arising under the patent laws. However, we have not deferred in the resolution of all procedural issues merely because that issue might separately arise in a case having nothing to do with the patent laws. 64 The use of technical advisors in patent cases impli- cates matters that are unique to patent law. The Fed- eral Circuit 9s holding in Markman v. Westview Instruments, Inc., 65 that claim construction is a strictly question of law was rooted in the premise that claim construction is a unique aspect of patent law: There is much wisdom to the rule that the con- struction of a patent should be a legal matter for a court. A patent is a government grant of rights to the patentee. By this grant, the patentee owns the rights for a limited time to exclude others from making, using, or selling the invention as claimed. Infringement of the patentee 9s right to exclude carries with it the potential for serious consequences . . . . When a court construes the claims of the patent, it cis as if the construction fixed by the court had been incorporated in the specification, d and in this way the court is defin- ing the federal legal rights created by the patent document. 66 Particularly in the context of claim construction, the role of the technical advisor is of no less import. While a technical advisor does not offer cevidence, d he or she is a resource who falls precisely within the scope of the Federal Circuit 9s charge that district courts should cconsult trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held under- standings in the pertinent technical field. d 67 Con- versely, the technical advisor also falls squarely within the Federal Circuit 9s admonition that c[a]llowing the public record to be altered or changed by extrinsic evidence introduced at trial, such as expert testimony, would make this right [to design-around the claimed invention] meaningless. d 68 Accordingly, while techni- cal advisors may not be climited to and unique to patent cases, d the use of a technical advisor can directly implicate interests that are unique to patent law. This justifies regulation by the Federal Circuit. As the Federal Circuit has acknowledged, c[w]e have . . . applied our law beyond the limits of substantive patent law and into areas in which the disposition of non patent-law issues is affected by the special cir- cumstances of the patent law setting in which those issues arise. d 69 Moreover, c[w]e have held that a pro- cedural issue that is not itself a substantive patent law issue is nonetheless governed by Federal Circuit law if the issue 8pertains to patent law 9 [or] if it 8bears an essential relationship to matters committed to our exclusive control by statute. 9 d 70 As Judge Giles Rich put it: c[T]he name of the game is the claim. d 71 Whether and how a trial court uses a technical advi- sor to help it construe a patent claim necessarily cbears an essential relationship to matters committed to [the Federal Circuit 9s] exclusive control by statute. d True enough, it appears that the trial court in Tech- Search L.L.C. did not use a technical advisor for its claim construction. According to the record as described by the Federal Circuit, the technical advisor was appointed following the construction of the claims. But the Federal Circuit did not draw that dis- tinction in its conclusion that c[b]ecause understand- ing issues of complex science and technology is not so unique as to clearly implicate the jurisdictional responsibilities of this court in a field within its exclu- sive jurisdiction we apply regional procedural law. d 72 The Federal Circuit 9s treatment of the technical advi- sor as subject to the law of the regional circuit carries two practical consequences. First, few circuits have law on a heavily nuanced issue that carries much sub- jectivity. Thus, the Federal Circuit is forced to divine what a circuit would do on a question upon which the regional circuit could very well ultimately rule differ- ently. Indeed, characterizing the Federal Circuit 9s holding in TechSearch L.L.C. as having weak prece- dential underpinnings is charitable. Although the Federal Circuit stated that the Ninth Circuit 9s major- ity opinion in Association of Mexican American Edu- cators crecognized the need for some procedural safeguards and the need for a reviewing court to have a standard against which to judge abuse of discre- tion, d 73 the majority opinion did not go so far: Judge Tashima [of the dissent] also proposes a list of procedures for district courts to follow when appointing technical advisors. Even assuming that those procedures are appropriate, the district court did not have the benefit of Judge Tashima 9s dissent before this trial, and we will not fault the court for failing to foresee his recommendations. We are not willing to find an abuse of discretion and to undo this entire trial because the district court did not follow a set of guidelines that are required nowhere in the rules or relevant case law. 74 1.U.S. CONST. art. I, § 8, cl. 8. 2.American Imaging Servs., Inc. v. Intergraph Corp., No. 99-1485, 2000 WL 772725, at *7 (Fed. Cir. June 12, 2000) (unpublished). 3.William F. Lee & Anita K. Krug, cStill Adjusting to Markman: A Pre- scription for the Timing of Claim Construction Hearings, d 13 Harv. J.L. & Tech . 55, 66(1999). 4. Id . 5.Patent Act of 1870, ch. 230, §26, 16 Stat. 198 (1870). 6.White v. Dunbar, 119 U.S. 47, 51 352 (1886). 7.Autogiro Co. of Am. v. United States, 384 F . 2d 391, 396 3397 (Ct. Cl. 1967). 8.U.S. CONST. art. I, §8, cl. 8. 9.Markman v. Westview Instr., Inc . , 52 F.3d 967, 978 3979 (Fed. Cir.1995) (citations omitted). 10.Vitronics Corp. v. Conceptronic, Inc ., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (citation omitted). 11.Pitney Bowes, Inc. v. Hewlett-Packard Co . ,182 F.3d 1298, 1309 (Fed. Cir. 1999) ( quoting Bell & Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997)). 8 IPLitigator MARCH/APRIL 2003 The second difficulty presented by leaving the ques- tion of technical advisors to regional circuits is incon- sistency in law. Given the impact that technical advisors can have on the question of claim construc- tion and given that cto decide what the claims mean is nearly always to decide the case, d 75 leaving this issue to regional circuits hardly seems consistent with the Federal Circuit 9s raison d 9être: cUniformity in the treatment of a given patent. d 76 For example, the First Circuit 9s treatment of technical advisors differs mate- rially from the safeguards set out by the Federal Cir- cuit in TechSearch based upon the Federal Circuit 9s interpretation of Ninth Circuit law. In Reilly v. United States , 77 a non-patent, medical malpractice case in which the district court appointed a technical advisor to assist the court in the calculation of damages, the First Circuit proposed for future cases a set of guide- lines for the appointment and use of technical advi- sors in general. In substantial agreement with the law of the Ninth Circuit (as created by the Federal Circuit in TechSearch ), the First Circuit in Reilly proposed that the parties have a hand in the appointment of the technical advisor, that the court provide a job descrip- tion for the advisor that is cof record, d and that at the conclusion of the advisor 9s employment the advisor should file an affidavit attesting to compliance with the job description. 78 With respect to generating a record for appeal, however, the First Circuit sug- gested that the judge and the advisor must be free to communicate in a frank and open fashion. Accord- ingly, the First Circuit, in contrast to the Ninth Cir- cuit, cdisagreed with the suggestion that a technical advisor should be required, as a matter of course, to write a report. d 79 In upholding the trial court 9s use of a technical advi- sor, the Federal Circuit in TechSearch L.L.C. also ruled the use of technical advisors should be left to cexcep- tionally technically complicated cases. d The closest the Federal Circuit comes to explaining what such a case is, however, is in its allusion to cthose limited cases where the scientific complexity of the technol- ogy is such that the district court may require the assistance of a technical advisor to aid in the under- standing of the complex technology underlying the patent. d 80 Of course, that description applies to most patent cases and invites uncertainty. Moreover, this should focus on the complexity of the case. 81 While a technical case involving computer science may be cexceptionally complicated d to a federal judge who majored in psychology, it might be relatively easy to one who majored in computer science or who hap- pens to have particular aptitude for the disciplines required to sort through the technical issues. In the final analysis, the focus should be the need of the jurist, not the complexity of the case. Conclusion The Federal Circuit 9s relatively lax regulation of the use of extrinsic information for educational purposes in contrast to its stringent limitations on the use of such information for shaping claim language must be rooted in a belief that former is more benign to a patent 9s notice function than the latter. But that is not necessarily the case. According to the 1999 ABA Markman survey, in eighty percent of the cases where trial courts allowed extrinsic evidence, technical expert testimony was considered. 82 However, c[n]o doubt aware that their claim construction would find a more hospitable appellate environment without reliance on extrinsic evidence, fifty-one (51) percent of the trial courts that allowed extrinsic evidence professed not to rely on it. The extent to which such extrinsic evidence influ- enced the claim construction process is, of course, a thornier question that is far more difficult, if not alto- gether impossible, to measure. d 83 In encouraging trial courts to educate themselves about the art underlying the claims that they are charged to construe, the Federal Circuit undoubtedly has it right. It has been observed that: cIt 9s a shame that Congress mismatched the problems in patent law with the hierarchical position of the [Federal Cir- cuit] court it created. Since problems generally arise in finding facts in this specialized area, a special trial court might, in retrospect, have been a better idea. d 84 Maybe so, but unless and until such special trial courts are created, the scientific chasm inherent in leaving the construction of patent claims in the hands of laypersons must be bridged. Technical advisors offer a viable, if imperfect, solu- tion to this predicament. Although the Federal Circuit has it right in leaving the choice of whether to use a technical advisor to the sound discretion of the trial judge, that discretion should simply rest on the judge 9s need for education, rather than a showing that the case itself is cexceptionally technically compli- cated. d Moreover the use of technical advisors more- over, should be made subject to stringent and uniform standards that are designed to prevent undue or improper influence over the decisionmak- ing process and allow for proper appellate review. MARCH/APRIL 2003 IPLitigator 9 12.David W. Plant, cThe Lessons of Markman 9s Progeny, d ADR Currents , Dec. 1998, at 13. 13.35 U.S.C. § 112. 14. Compare Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), with Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999). 15.Pitney Bowes, Inc. at 1309 (emphasis added). 16. See Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000) ( cA dictionary is not prohibited extrinsic evidence, and is an available resource of claim construction. d); Interactive Gift Express, Inc. v. CompuServe Inc . , 231 F.3d 859, 866 (Fed. Cir. 2000) ( cDictionaries, which are a form of extrinsic evidence, hold a special place and may sometimes be considered along with the intrinsic evi- dence. d). 17.Michael H. Gottesman, cFrom Barefoot to Daubert to Joiner : Triple Play or Double Error?, d 40 Ariz. L. Rev. 753, 776 (1998). 18.Si-Hung Choy, Comment, cJudicial Education After Markman v. West- view Instruments, Inc. : The Use of Court-Appointed Experts, d 47 UCLA L. Rev. 1423, 1438 31439 (2000) (footnote omitted). 19.Reilly v. United States, 682 F. Supp. 150, 158 (D.R.I. 1988) (reviewing the history of technical advisors). 20. Id. at 152. 21.In re Peterson, 253 U.S. 300, 312 (1920). 22.Fed. R. Evid. 706(a) ( cA witness so appointed shall be informed of the witness 9 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 wit- ness 9 findings, if any. d). 23.Fed. R. Evid. 706(a) ( c[T]he witness 9 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, includ- ing a party calling the witness. d). 24.Reillyv. U.S., 863 F.2d 149, 156 (1st Cir. 1988) ( cRule 706, while intended to circumscribe a court 9s right to designate expert witnesses, was not intended to subsume the judiciary 9s inherent power to appoint technical advisors. The Civil Rules, after all, were never meant to become the sole repository of all of a federal court 9s authority. d); TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1378 (Fed. Cir. 2002) ( cA district court 9s appointment of a technical advisor [is] outside the purview of Rule 706 of the Federal Rules of Evidence. d). 25. Reilly , 863 F.2d at 156. 26. See General Elec. Co. v. Joiner, 522 U.S. 136, 149 (1997) (Breyer, J. con- curring). 27.Price Bros. Co. v. Philadelphia Gear Corp., 649 F.2d 416, 419 (6th Cir. 1981); See also United States of Am. v. Green, 544 F.2d 138, 146, n.16 (3d. Cir. 1976) (Generally, however, the court should avoid ex parte commu- nications with anyone associated with the trial, even its own appointed expert.). 28.MediaCom Corp. v. Rates Tech. Inc., 4 F. Supp. 2d 17, 30 n.11 (D. Mass. 1998); see alsoTechSearch , 286 F.3d at 1377 ( cTechnical advisors may be useful for the understanding of scientific evidence generally as well as the science or technology involved in patent cases. d). 29. MediaCom Corp . 30 at n.11 . 30.Allen Eng 9g Corp. v. Bartell Indus., Inc., No. 01-1238, 2002 WL 1765989 ( Fed. Cir. Aug. 1, 2002). 31.Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 3389 (1996). 32. Id. at 390 3391 (citations omitted). 33.Ellen E. Deason, cCourt-Appointed Expert Witnesses: Scientific Posi- tivism Meets Bias and Deference, d 77 OR. L. Rev . 59, 85 (1998) (footnote omitted). 34.Resolution 266 (Passed 2001 AR []-R.601-1). 35.TechSearch L.L.C. v. Intel Corp., 286 F.3d 1360 (Fed. Cir. 2002). 36. Id . 37. Id. at 1380. 38. Id. at 1368 31369 (citation omitted) (alterations in original). 39. Id. at 1380. 40. Id . at 1377. 41. Id. ( citing Association of Mexican Am. Educators v. California, 231 F.3d 572, 591 (9th Cir. 2000) ( en banc )). 42. TechSearch at 1377. 43.Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999). 44. TechSearch at 1377. 45.Ex Parte Peterson, 253 U.S. 300 (1920). 46. Id . at 312. 47. TechSearch at 1377. 48. Id . at 1378. 49. Id . at 1378 ( citing Association of Mexican Am. Educators v. California, 231 F.3d 572, 590-591 (9th Cir. 2000) ( en banc )). 50. TechSearch at 1378. 51. Id. 52. Mexican Am. Educators , 231 F.3d 572. 53. TechSearch at 1378. 54. Id. at 1379. 55. Id . (footnotes omitted) (relying on Judge Tashima 9s dissenting opinion in Mexican Am. Educators at 611 3614). 56. TechSearch, 286 F.3d at 1379 n.3. 57. Id . at 1379 n.4. 58. Id . at 1379 n.5. 59. Id . at 1381. 60. Id . 61. Id . (Dyk, J., concurring). 62. Id . at 1379. 63.Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 857 (Fed. Cir. 1991). 64. Id . at 858 (footnotes omitted). 65.Markman v. Westview Instruments, Inc., 52 F. 3d 967 (Fed. Cir. 1995). 66. Id. at 978. 67.Pitney Bowes, Inc. v. Hewlett-Packard Co . ,182 F.3d 1298, 1309 (Fed. Cir. 1999). 68.Vitronics Corp. v. Conceptronic, Inc ., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (citation omitted). 69.Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999) ( citing Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1564 (Fed. Cir. 1994) (holding that Federal Circuit law applies to the question of personal jurisdiction in a patent suit), Hybritech Inc. v. Abbott Lab., 849 F.2d 1446, 1451 n.12 (Fed. Cir. 1988) (holding that Fed- eral Circuit law applies in the determination of whether the plaintiff has established its right to a preliminary injunction in a patent case), Goodyear Tire & Rubber Co. v. Releasomers, Inc., 824 F.2d 953, 954-955 n.3 (Fed. Cir. 1987) (holding that Federal Circuit law applies to deter- mine whether a sufficient controversy exists between the parties to per- mit an accused infringer to bring an action seeking declaratory judgment of noninfringement and invalidity), Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1212 (Fed. Cir. 1987) (holding that Federal Circuit law governs whether a patentee is entitled to have the issue of inequitable conduct tried in the jury trial that the patentee has demanded on the issue of infringement), and Truswal Sys. Corp. v. Hydro-Air Eng 9g, Inc. 813 F.2d 1207, 1212 (Fed. Cir. 1987) (holding that Federal Circuit law governs whether particular materials are relevant for purposes of discovery in a patent case)). 70. Midwest Indus ., 175 F.3d at 1359 ( quoting , respectively, Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1574 31575 (Fed. Cir. 1984) and Biodex Corp. v. Loredan Biomedical, Inc. 946 F.2d 850, 858 3859 (Fed. Cir. 1991)). 71. cThe Extent of Protection and Interpretation of Claims 4American Per- spectives, d 21 Int 9 l Rev. Indus. Prop. & Copyright L. 497, 499 (1990). 72. TechSearch , 286 F.3d at 1377. 73. Id. at 1378. 74. Mexican Am. Educators , 231 F.3d at 591. 75. Markman , 52 F.3d 967, 989 (Mayer, J., concurring). 76. Markman , 570 U.S. 370, 390 (1996). 77.Reilly v. United States, 863 F.2d 149 (1st Cir. 1988). 78. Id . at 159 3160. 79. Id. at 160 n.8. (suggesting also, however, that cit would have been better practice to document the interchange between jurist and advisor in some more readily retrievable fashion. d). 80. TechSearch , 286 F.3d at 1378. 81. Cf. Reilly at 156 ( cWe concur wholeheartedly that such appointments [of technical advisors] should be the exception and not the rule, and should be reserved for truly extraordinary cases where the introduction of out- side skills and expertise, not possessed by the judge , will hasten the just adjudication of a dispute. d) (emphasis added) ( cWe wish to emphasize our strongly-held view that the appointment of a technical advisor must arise out of some cognizable judicial need for specialized skills. d). 82.Luke L. Dauchot & Karl M. Laskas, c1999 American Bar Association Section of Intellectual Property Law 1999 Markman Survey, d 18 A.B.A. SEC. PUB. I.P.L. 3 (Spring 2000). 83. Id. 84 .See Rochelle Cooper Dreyfuss, remarks at the Tenth Federal Circuit Judicial Conference (Apr. 30, 1992), in 146 F.R.D. 205, 240 (1992). Reprinted from IPLitigator, Volume 9, Number 3, pages 17 325, with permission from Aspen Publishers, Inc., Gaithersburg, MD 1-800-638-8437 or www.aspenpublishers.com.

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