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Mark Barry, M.D. v. Medtronic, Inc.

Area of Law:

Patent infringement


Defendant sought to preclude the testimony of Plaintiffs' expert on the grounds that (1) Plaintiff's expert's rebuttal opinions were irrelevant because the court already excluded Defendant's patent law expert whose opinions Plaintiff's expert was rebutting and (2) Plaintiff's expert testimony was independently inadmissible because his testimony was not helpful to the trier of fact, was speculative, and constituted improper expert opinion.


Defendant's motion was granted.


The testimony of Plaintiff’s expert, Nicholas Godici, was irrelevant

Godici’s testimony was irrelevant given that the court previously excluded most of the testimony by Defendant’s expert Carmichael, namely regarding time limits faced by PTO examiners, the duties owed to the PTO, possible examiner responses, HIPPA confidentiality obligations, and fraud. Because Godici was a rebuttal expert and Plaintiff stated that Godici’s opinions regarding public use were only relevant to rebut Carmichael’s excluded opinions, the court found that there was nothing left to be rebutted by Godici.

To the extent some of Carmichael’s opinions were not excluded, they were not helpful to the jury. The jury will be shown a Patent Video and provided with a list of glossary terms used at the PTO. Counsel will be free to use closing argument to point to the file wrapper that records what the PTO did or said. As a result, using an expert would be cumulative, unnecessary, and unhelpful, and neither expert will be permitted to testify.

Godici’s testimony was independently inadmissible because it was not helpful to the trier of fact, was speculative, and constituted improper expert opinion

First, the court excluded Godici’s testimony because it was not helpful to the jury. The majority of Godici’s opinions related to inequitable conduct, an issue for the court, not the jury.

Second, the court excluded Godici’s testimony because it was improperly speculative. For example, Godici’s opinions allegedly supported Plaintiff’s theory that the alleged misconduct surrounding Figure 6 from the patent specification did not constitute “egregious conduct,” but rather would be subject to a simple PTO certificate of correction. Godici opined that “there is no evidence that the description in [F]igure 6 in the patent specification misled the examiner” and that a drawing that illustrates before and after depiction would be at most [] ancillary.” Slip op. at 6. However, the court found that Godici’s opinions on this issue rely entirely on speculative assertions about what a PTO examiner would or should have done. The court noted that other courts have found speculation about the thought process or reasoning of the examiner inadmissible because an expert may not speculate as to what the examiner did or did not think, or how different information would have impacted the examiner’s opinion or thoughts.

Third, Godici lacked the qualifications to testify on the technical aspects of the patented technology. He was not an expert or a person of ordinary skill in the art.

Finally, Godici’s articulation of the legal standards and his ultimate legal conclusions about inequitable conduct were inadmissible because his report told the jury what result to reach. The report laid out Federal Circuit law on the issue of inequitable conduct and then suggested how to apply this law to facts about which Godici had no personal knowledge. It was for the court or the jury to make these factual findings and apply the law, not for Godici to tell either the court or the jury how to do so.