Boston Scientific Corp. v. Micrus Corp. – Proposed Order of Appointment (PDF) and Report and Recommendation (PDF) Judge Ware Decided May 22, 2007 Boston Scientific and Target Therapeutics sued Micrus for willful patent infringement. The technology at issue deals with ââ?¬Å?coil delivery systems which are medical devices used to insert embolization coils to a selected site within a blood vessel.ââ?¬Â? Judge Ware decided to appoint a technical expert, although in the Ninth Circuit:

The exercise of this authority should be used sparingly and only in highly complicated cases.

The First Circuit has held that technical advisors are forbidden by FRE 706(a), which permits the judge to appoint an expert witness. Here, Judge Ware appointed the technical advisor (Mr. Rainer Schultz) under the following conditions:

1. Any advice provided to the Court by Mr. Schulz will not be based on any extra-record information. 2. From time to time, the Court may request Mr. Schulz to provide a formal written report on technical advice concerning the case. A copy of the formal written report prepared by Mr. Schulz shall be provided to the parties. However, the Court reserves the right to have informal verbal communication with Mr. Schulz which are not included in any formal written report. 2. Mr. Schulz may attend any court proceedings. 3. Mr. Schulz may review any pleadings, motions or documents submitted to the Court. 4. As a technical advisor, Mr. Schulz will make no written findings of fact and will not supply any evidence to the Court. Thus, Mr. Schulz will be outside the purview of ââ?¬Å?expert witnessesââ?¬Â? under Fed. R. Evid. 706. As such, the provisions in Rule 706 for depositions and questioning of expert witnesses will be inapplicable to Mr. Schulz. See Reilly, 863 F.2d at 155-156. 5. Mr. Schulz will have no contact with any of the parties or their counsel except for billing purposes. 6. The parties are directed to pay the reasonable fees charged by Mr. Schulz for his service as a technical advisor to the Court in this case. If the appointment is made, the parties shall confer to determine an apportionment for purposes of payment of Mr. Schulzââ?¬â?¢s fees. All matters pertaining to the fees of Mr. Schulz are referred to the assigned Magistrate Judge Richard Seeborg. 7. Mr. Schulz shall file a declaration that he will adhere to the terms of his appointment.

Either party was permitted to object to the appointment. The objection was to be made to Magistrate Judge Seeborg. Judge Ware was never to be informed as to which party made the objection. Neither party objected to the appointment of a technical advisor. Neither party objected on the grounds of bias. One party did, however, object to Mr. Schulz being appointed because his experience appears to be a field different than that of a person having ordinary skill in the art. Magistrate Judge Seeborg left the final decision to Judge Ware because neither party suggested that appointing Mr. Schulz would constitute an abuse of discretion.

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