Expert Opinion Evidence Must Be Both Reliable And Relevant to the Issue Before The Trial Court

MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp., [2006-1305, -1326] (September 20, 2007) [PLAGER, Schall, Dyk] NON-PRECEDENTIAL The Federal Circuit held that the trial court did not abuse its discretion in excluding the expert report and testimony of MEMC’s expert witness, and affirmed the judgment of non-infringement of MEMC's U.S. Patent No. 5,919,302. The Federak Circuit further held that there are genuine issues of material fact on the issue of enablement, and vacated summary judgment of invalidity for lack of enablement. The Federal Circuit dismissed the cross-appeal relating to its affirmative defenses of anticipation and obviousness.
BRIEF: U.S. Patent No. 5,919,302 discloses a method for producing semiconductor-grade single crystal silicon wafers that are substantially free of agglomerated vacancy intrinsic point defects. MEMC sued for infringement, and the defendants moved for summary judgment and to exclude the testimony of MEMC's expert with regard to the issue of infringement on the ground that they were inadmissible under FRE 702 and the standards set forth in Daubert.
Under Daubert and Rule 702, expert opinion evidence must be both reliable and relevant to the issue before the trial court. While MEMC's expert's tests may be commonly used in the industry to examine defects in silicon wafers, the record indicates that the results of those tests cannot prove that all the claim limitations are met. The Federal Circuit said that although the issue is a close one, under our deferential standard of review it could not find the distric court abused its discretion in concluding that the report and testimony relating to infringement failed to meet the standards of relevance and reliability required by Rule 702.
As to enablement, the Federal Circuit said that the enablement requirement is satisfied if the patent teaches a person skilled in the art at the time the patent application was filed how to make the claimed invention without undue experimentation. LOF: Enablement is a legal conclusion based on underlying factual considerations. There were conflicting expert declarations from the MEMC and the defendants, resulting in summary judgment that the disclosure was not enabling. The Federal Circuit appreciated the effort of the distrtict court to resolve the complex issued, but concluded that there were facts in dispute that could not be resolved on a motion for summary judgement.