Thursday, April 07, 2016

JOHNSON & JOHNSON VISION CARE [JJVC] loses Rembrandt matter at CAFC; remand for a new trial

This was an 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.

The outcome was reversal:

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.

At issue

After trial, Rembrandt received information suggesting
that Dr. Bielawski testified falsely at trial. Although
the district court denied Rembrandt’s request for posttrial
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


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

Relevant law at CA11:

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).

As to Rembrandt’s motion for a new trial
under Rule 60(b)(3):

The CAFC concluded --that the district court clearly erred
in finding that Rembrandt
had a full and fair opportunity to present its
infringement case.--

On this record, we cannot agree that Rembrandt had
a full and fair trial on the “soft” limitation. We rejected
an argument similar to JJVC’s in Fraige v. American-
National Watermattress Corp., 996 F.2d 295 (Fed. Cir.
1993). In Fraige, the defendant forged a prior art document.
Fraige, 996 F.2d at 296. Although the forged
document was not presented to the jury, several witnesses
who testified at trial had reviewed the document. Id. at
296, 298. We explained that we could not accurately
determine the impact of the forged document on the jury,
noting that “[w]hen it became known that the jury was
presented testimony based on fraudulent documentation,
where that testimony was relevant and material to the
issue of patent validity, all of the jury’s invalidity findings
became suspect.” Id. at 299 (emphasis added).
Similarly, here, we will not speculate as to what impact
the fraud and misconduct had on the ultimate judgment
of noninfringement where the false testimony and
withheld documents were material to the issue of patent
infringement and could well have impacted the jury’s
verdict, as well as the district court’s decision to exclude
Dr. Beebe’s testimony and consequently grant JMOL on
the “soft” limitation. We agree with Rembrandt that it
was prejudiced by the withholding of third-party test
results and by the false testimony. As the Fifth Circuit
held in Rozier, Rembrandt is not required to prove that
the withheld documents were of such nature as to alter
the result in the case. 573 F.2d at 1339. Instead, Rembrandt
need only show that timely production of the
documents would have made a difference in the way
Rembrandt’s counsel approached the case or prepared for
trial. Id. at 1342.


We next look to whether Rembrandt established that
“the adverse party engaged in fraud or other misconduct.”
Harre, 750 F.3d at 1503 (citation omitted). We conclude
that the district court abused its discretion in concluding
otherwise. Specifically, the district court erred by summarily
dismissing Rembrandt’s allegations of misconduct
and by requiring proof that JJVC or its counsel was
complicit in Dr. Bielawski’s false testimony.
Rembrandt alleges fraud based on Dr. Bielawski’s
false testimony and misconduct based on Dr. Bielawski
and JJVC’s failure to produce the contradictory test
results on third-party lenses. Each allegation forms an
independent basis for a new trial under Rule 60(b)(3).
JJVC does not dispute that Dr. Bielawski testified falsely
and that it never produced the test results for the thirdparty
lenses. Instead, JJVC argues that Rule 60(b)(3)
cannot provide relief because JJVC was not complicit in
the fraud or the misconduct. Considering only
Dr. Bielawski’s false testimony, the district court held
that Rembrandt was not entitled to a new trial under
Rule 60(b)(3) because it had not shown that either JJVC
or its counsel was complicit in any fraud or misconduct.
Turning first to Rembrandt’s allegations of misconduct,
we agree with Rembrandt that the district court
erred by failing to fully address Rembrandt’s allegations
of misconduct and requiring proof of complicity. As used
in Rule 60(b)(3), “‘[m]isconduct’ does not demand proof of
nefarious intent or purpose as a prerequisite to redress.
. . . The term can cover even accidental omissions—
elsewise it would be pleonastic, because ‘fraud’ and ‘misrepresentation’
would likely subsume it.” Anderson v.
Cryovac, Inc., 862 F.2d 910, 923 (1st Cir. 1988) (emphasis
added); see also Bros Inc. v. W.E. Grace Mfg. Co., 351 F.2d
208, 211 (5th Cir. 1965) (“The effect [of misconduct] was
the same whether there was evil, innocent or careless,

Credulity straining:

JJVC argues that a new trial is not warranted because
it “was unaware of any testing of these lenses.”
Appellee Br. 28. JJVC’s argument strains credulity, given
that it provided the lenses to Dr. Bielawski and talked
about them during closing argument. But we need not
determine whether JJVC’s failure to obtain and produce
this data was intentional or merely accidental; as explained
above, even an accidental omission qualifies as
misconduct under Rule 60(b)(3).

Misinterpretation of precedent:

Rembrandt argues that the district
court misinterpreted Eleventh Circuit precedent by
requiring proof of complicity to satisfy Rule 60(b)(3). We
Although evidence of complicity was considered by the
Eleventh Circuit in Harre, the court did not announce a
rule requiring such evidence to prevail on a Rule 60(b)(3)
motion. The district court in this case acknowledged as
much, stating that “the Harre court did not expressly
limit its holding to circumstances in which counsel is
complicit with witness misconduct . . . .” Rule 60 Order,
300 F.R.D. at 699. Instead, after concluding that the
appellant had “presented sufficient evidence to support
the allegation that [the expert] committed perjury,” the
Harre court turned to the second inquiry under
Rule 60(b)(3)—“whether the conduct complained of prevented
Appellants from fully and fairly presenting their
case.” Harre, 750 F.2d at 1504–05.

As to knowledge of perjury:

Likewise, we have previously affirmed a grant of a
new trial under Rule 60(b)(3) in view of an expert’s perjured
testimony, even when it was undisputed that the
party was unaware of the perjury. See Viskase Corp. v.
Am. Nat’l Can Co., 261 F.3d 1316, 1324 (Fed. Cir. 2001).
In Viskase, an expert witness lied about his personal
involvement in laboratory testing concerning alleged
infringement. Id. Although there was no evidence that
the sponsoring party or its counsel was aware of the
expert’s perjury, the district court had determined that
the party’s counsel “surely knew there must have been
additional documents and that there were additional tests
conducted” that had not been produced, and, as a result,
“conclude[d] that [the party] cannot escape responsibility
for [the expert’s] testimony.” Viskase Corp. v. Am. Nat’l
Can Co., 979 F. Supp. 697, 705 (N.D. Ill. 1997). In affirming
the district court’s grant of a new trial, we “agree[d]
with the district court that the jury verdict was irretrievably
tainted and was properly set aside.” Viskase, 261
F.3d at 1324.

The mandate rule arises at the end:

Because we reverse the district court’s denial of Rembrandt’s
motion for a new trial under Rule 60(b)(3), we do
not consider whether the district court abused its discretion
in denying Rembrandt’s Rule 60(b)(2) and discovery
motions. We also reject JJVC’s argument that the mandate
rule precludes consideration of Rembrandt’s Rule
60(b) motions. Our prior decision in this case did not
address, explicitly or implicitly, Rembrandt’s request for a
new trial under Rule 60(b). See Rembrandt I, 725 F.3d

Judge Dyk dissented.

To succeed on a motion under Rule 60(b)(3), it is not
necessary to establish that the fraud “alter[ed] the result
in the case.” Rozier v. Ford Motor Co., 573 F.2d 1332,
1339 (5th Cir. 1978). But, the movant must demonstrate
by clear and convincing evidence that the alleged fraud or
misconduct prevented it “from fully and fairly presenting
his case or defense.”
Cox Nuclear Pharm., Inc. v. CTI,
Inc., 478 F.3d 1303, 1305 (11th Cir. 2007); Harre v. A.H.
Robins Co., 750 F.2d 1501, 1503 (11th Cir. 1985); see also
11 Charles Alan Wright et al., Federal Practice and
Procedure § 2860 & n.12 (3d ed. 2012) (noting that to
qualify for relief under the rule, “the fraud must have
prevented the moving party from fully and fairly presenting
his case,” and citing cases). In other words, the
moving party must demonstrate that the misconduct
“substantially interfered with its ability fully and fairly to
prepare for, and proceed at, trial.” Anderson v. Cryovac,
Inc., 862 F.2d 910, 926 (1st Cir. 1988). In my view, the
majority’s decision effectively eliminates this requirement,
and errs in reversing the district court’s determination
that this standard was not met.

Dyk states:

The question here is whether Dr. Bielawski’s laterdiscovered
false testimony about the “surface layer”
limitation should result in re-opening the district court’s
JMOL of non-infringement based on the plaintiff’s failure
to produce any evidence in response to the JMOL motion
(absent Dr. Beebe’s stricken testimony) that the accused
lenses met the “soft” limitation. The district court correctly
concluded that the JMOL should not be reopened
because Rembrandt was not deprived of a full and fair
opportunity to present its case on the “soft” limitation—
an issue which was dispositive of non-infringement.
I note at the outset that the majority incorrectly focuses
on the jury verdict of non-infringement. See, e.g.,
Maj. Op. at 8 (“The verdict was irretrievably tainted by
Dr. Bielawski’s false testimony and Dr. Bielawski’s and
JJVC’s withholding of relevant documents. While we do
not know the exact impact the false testimony would have
had on the jury, the false testimony may well have been
critical to the noninfringement verdict and the jury may
well have been impacted upon learning that Dr. Bielawski
committed an act at least as egregious as Dr. Beebe’s.”)
Whether the jury verdict was tainted by Dr. Bielawski’s
testimony about Dr. Beebe is not relevant. The jury
verdict is not under review here; the district court’s grant
of JMOL (on the “soft” limitation only) is, and the district
court did not rely on Dr. Bielawski’s testimony in granting

As to fair defense

standard before Rule 60 was adopted was quite clear.
“[T]o justify setting aside a decree for fraud whether
extrinsic or intrinsic, it must appear that the fraud
charged really prevented the party complaining from
making a full and fair defense.” Toledo Scale Co. v.
Computing Scale Co., 261 U.S. 399, 421 (1923) (emphasis
added). “If it does not so appear, then proof of the ultimate
fact, to wit, that the decree was obtained by fraud
fails.” Id. This requires a showing of how “the complaining
party was, without his fault, deprived of his opportunity
to present his defense on the merits. . . . Chancery
will intervene, therefore, only when the complainant was
prevented from presenting a meritorious defense by the
inequitable conduct of his adversary unmixed with negligence
or fault on his own part.” In re Innis, 140 F.2d 479,
481 (7th Cir. 1944). “[I]t [is] an imperative condition of
such relief that the party seeking it shall make it clearly
appear that he had a good defense to the action, which, by
fraud or accident, he was prevented from making, and
also that there was neither fault nor negligence on his
part.” Talbott v. Pickford, 36 App. D.C. 289, 298 (D.C.
Cir. 1911), aff’d sub nom., 225 U.S. 651 (1912). This
common law equity standard was incorporated into the
Rule 60(b)(3) standard. Rozier, 573 F.2d at 1339 (citing
Toledo Scale, 261 U.S. at 421).

Under Rule 60(b)(3), when the alleged misconduct is
related to issues that “are essentially irrelevant to the
legal issues upon which the case turned,” relief from the
judgment is not warranted. Simons v. Gorsuch, 715 F.2d
1248, 1253 (7th Cir. 1983);

Dyk mentioned "implosion"

Rembrandt has failed to show how knowledge of Dr.
Bielawski’s misconduct would have changed its approach
to the “soft” limitation. The JMOL was based entirely on
the exclusion of Dr. Beebe’s testimony because of his
“abrupt and still unexplained implosion” that “led to the
derailment of the trial” on the softness issue. J.A. 7444.2

Dyk suggests a remand:

The majority’s resolution of this factual dispute as to
whether JJVC’s counsel should have known about the
withheld documents is inconsistent with our role as a
court of review and the deferential “abuse of discretion”
standard of review. As we have found, when the lower
tribunal has left a factual issue unresolved, “[w]e are
unable to engage in such fact-finding in the first instance
and must therefore remand for further proceedings.”
Nike, Inc. v. Adidas AG, No. 2014-1719, 2016 WL 537609,
at *14 (Fed. Cir. Feb. 11, 2016). This is a matter for the
trial court and, at best, a remand for further fact-finding
would be appropriate as to whether JJVC’s counsel should
have known about the documents.

Recall the beginning of the decision:

remand for a new trial


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