Rembrandt Vision Technologies, L.P. v. Johnson & Johnson Vision Care, Inc., 040716 FEDFED, 2015-1079

Docket Nº:2015-1079
Opinion Judge:Stoll, Circuit Judge.
Party Name:REMBRANDT VISION TECHNOLOGIES, L.P., Plaintiff-Appellant v. JOHNSON & JOHNSON VISION CARE, INC., Defendant-Appellee
Attorney:Eric John Magnuson, Robins Kaplan LLP, Minneapolis, MN, argued for plaintiff-appellant. Also represented by Ronald James Schutz, Jacob M. Holdreith, Brenda L. Joly, Jamie R. Kurtz, Ryan Michael Schultz. Gregory Diskant, Patterson Belknap Webb & Tyler LLP, New York, NY, argued for defendant-appell...
Judge Panel:Before Dyk, Moore, and Stoll, Circuit Judges. Dissenting opinion filed by Circuit Judge Dyk. Dyk, Circuit Judge, dissenting.
Case Date:April 07, 2016
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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REMBRANDT VISION TECHNOLOGIES, L.P., Plaintiff-Appellant

v.

JOHNSON & JOHNSON VISION CARE, INC., Defendant-Appellee

No. 2015-1079

United States Court of Appeals, Federal Circuit

April 7, 2016

Appeal from the United States District Court for the Middle District of Florida in No. 3:11-cv-00819-TJC-JRK, Judge Timothy J. Corrigan.

Eric John Magnuson, Robins Kaplan LLP, Minneapolis, MN, argued for plaintiff-appellant. Also represented by Ronald James Schutz, Jacob M. Holdreith, Brenda L. Joly, Jamie R. Kurtz, Ryan Michael Schultz.

Gregory Diskant, Patterson Belknap Webb & Tyler LLP, New York, NY, argued for defendant-appellee. Also represented by Eugene M. Gelernter; Timothy Joseph Barron, Sr., Jenner & Block LLP, Chicago, IL; Charles Davison Hoffmann, Hoffmann Marshall Strong LLP, New York, NY.

Before Dyk, Moore, and Stoll, Circuit Judges. Dissenting opinion filed by Circuit Judge Dyk.

OPINION

Stoll, Circuit Judge.

Rembrandt Vision Technologies, L.P. ("Rembrandt") appeals from the district court's denial of Rembrandt's motion for a new trial under Federal Rules of Civil Procedure 60(b)(2) and (3). Because the district court abused its discretion in denying Rembrandt's Rule 60(b)(3) motion, we reverse and remand for a new trial.

Background

This case returns to us following an unusual set of circumstances. Rembrandt sued Johnson & Johnson Vision Care, Inc. ("JJVC"), alleging that its Acuvue Advance® and Oasys® contact lenses infringed the asserted claim of U.S. Patent No. 5, 712, 327. At trial, the parties disputed whether JJVC's accused lenses met the "surface layer" and "soft" limitations of the asserted claim. Following trial, the jury returned a verdict of noninfringement. The district court, in the alternative, granted judgment as a matter of law that Rembrandt failed to prove that the accused lenses were "soft." Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc. (JMOL Order), 282 F.R.D. 655, 668 (M.D. Fla. 2012). We affirmed the district court's grant of JMOL. Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc. (Rembrandt I), 725 F.3d 1377 (Fed. Cir. 2013).

At trial, Rembrandt relied on expert testimony from Dr. Thomas Beebe to prove that the accused lenses met both the "surface layer" and "soft" claim limitations. During his direct examination regarding the "soft" limitation, Dr. Beebe presented test results to show that the accused lenses met this limitation. During cross- examination, however, Dr. Beebe drastically changed his testimony regarding the testing methodology he used. Because his testimony on cross-examination significantly conflicted with both his testimony during his direct examination and the testing methodology disclosed in his expert report, the district court ultimately struck Dr. Beebe's trial testimony regarding this testing. After noting that Dr. Beebe's stricken testimony was the only evidence that Rembrandt advanced to prove the accused lenses were "soft" in opposing JJVC's motion, the district court granted JMOL that JJVC did not infringe. JMOL Order, 282 F.R.D. at 668.

In turn, JJVC relied on expert testimony from Dr. Christopher Bielawski to support its position that its accused lenses did not meet the "surface layer" limitation, but did not present expert testimony with respect to the "soft" limitation. During the course of his trial testimony, Dr. Bielawski took advantage of several opportunities to impugn Dr. Beebe's credibility. For example, Dr. Bielawski described Dr. Beebe's failure to correct allegedly incorrect data as "misleading and tantamount to dishonesty." Joint Appendix ("J.A.") 4683. JJVC also capitalized on Dr. Beebe's changing testimony. During his closing argument, JJVC's counsel urged that "[y]ou should not trust Dr. Beebe, and you should throw out his testimony, not in part, but in whole. You should not trust Dr. Beebe." J.A. 5159.

After trial, Rembrandt received information suggesting that Dr. Bielawski testified falsely at trial. Although the district court denied Rembrandt's request for post-trial discovery, Rembrandt received much of the discovery it sought from Dr. Bielawski's employer, the University of Texas, through an open records request and state court litigation. In light of that discovery, the parties do not dispute that Dr. Bielawski testified falsely during trial.1

Specifically, Dr. Bielawski repeatedly testified that he personally conducted X-ray photoelectron spectroscopy ("XPS") and time-of-flight secondary ion mass spectrometry ("TOF-SIMS") laboratory testing on JJVC's accused lenses when, in fact, the testing was conducted by Dr. Bielawski's graduate students and various lab supervisors. The post-trial discovery suggests that Dr. Bielawski was not even in the country when some of the testing was done. Moreover, the post-trial discovery suggests that Dr. Bielawski overstated his qualifications and experience with these testing methodologies. Whereas Dr. Bielawski was presented to the jury as an expert in TOF-SIMS testing, he actually "had no TOF-SIMS experience whatseover." J.A. 5437. As such, for the purpose of considering the Rule 60(b) motions, the district court "assume[d] . . . that Dr. Bielawski testified falsely when he said that he personally performed . . . tests, and about his qualifications as an expert in performing those tests." Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc. (Rule 60 Order), 300 F.R.D. 694, 698 (M.D. Fla. 2014).

In addition to showing Dr. Bielawski's false testimony, the post-trial discovery revealed that Dr. Bielawski withheld test results and data analysis that would have undermined his opinions and trial testimony. In particular, Dr. Bielawski withheld data from tests conducted on third-party contact lenses previously found to infringe the asserted claim. JJVC provided the samples of these lenses to Dr. Bielawski and requested that he perform "any initial setup experiments" on the third-party lenses in order to "satisfy[] himself with respect to the proper investigational techniques to be used on contact lenses." J.A. 5576. The test results generated in response to JJVC's request were not produced before trial, and JJVC claims that it was unaware that any data had been generated. Had these test results been produced to Rembrandt, they would have shown that the infringing lenses do not have a surface coating of about 20 nanometers, undermining Dr. Bielawski's testimony at trial. Specifically, Dr. Bielawski testified at trial without contradiction about the differences between JJVC's accused lenses and the infringing third-party lenses, explaining that the infringing lenses "have a surface coating that [is] about 20 nanometers, " J.A. 4697, whereas JJVC's accused lenses do not. JJVC's counsel emphasized Dr. Bielawski's testimony on this point as proof of noninfringement during closing argument:

And guess what, this point 20 is not picked out of thin air. It's exactly what happens when you look at the [infringing third-party] lens.

J.A. 5142.

In light of this post-trial discovery, Rembrandt moved for a new trial under Rules 60(b)(2) and (3), which state:

On motion and just terms, the court may relieve a party . . . from a final judgment . . . for the following reasons: . . . (2) newly discovered evidence, that with reasonable diligence, could not have been discovered in time to move to a new trial under Rule 59(b); [or] (3) fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party.

Following a lengthy hearing on the issue, the district court denied Rembrandt's motion. With little discussion, the district court dismissed Rembrandt's argument that the withheld documents prevented it from fully and fairly presenting its case. The district court thus limited its analysis to Dr. Bielawski's false testimony. The district court concluded that Rembrandt was not entitled to a new trial under Rule 60(b)(2) because Rembrandt had not satisfied the requirement in the Eleventh Circuit that a new trial would probably produce a new result. And it concluded that Rembrandt was not entitled to a new trial under Rule 60(b)(3) because JJVC's counsel was not complicit in the false testimony and because Rembrandt was not prevented from fully and fairly presenting its case. Rembrandt then renewed its motion to reopen discovery into JJVC's awareness of Dr. Bielawski's misconduct, but the district court denied that motion too.

Rembrandt appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Discussion

We review procedural questions such as the district court's denial of a Rule 60(b) motion under the law of the regional circuit, here the Eleventh Circuit. Amado v. Microsoft Corp., 517 F.3d 1353, 1357 (Fed. Cir. 2008). The Eleventh Circuit reviews district court decisions on Rule 60(b) motions for an abuse of discretion. Griffin v. Swim-Tech Corp., 722 F.2d 677, 680 (11th Cir. 1984). Under Eleventh Circuit law, the district court abuses its discretion if it: (1) applies an incorrect legal standard; (2) follows improper procedures in making the determination; or (3) makes findings of fact that are clearly erroneous. Morgan v. Family Dollar Stores, Inc., 551 F.3d 1233, 1260 (11th Cir. 2008).

We first consider Rembrandt's motion for a new trial under Rule 60(b)(3), which permits a district court to grant a new trial in cases involving "fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party." Fed.R.Civ.P. 60(b)(3). To prevail on a motion under Rule 60(b)(3) in the Eleventh Circuit, the movant must establish that: (1) the adverse party engaged in fraud or other misconduct; and (2) this conduct prevented the moving party from fully and fairly...

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