Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care , 818 F.3d 1320 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
REMBRANDT VISION TECHNOLOGIES, L.P.,
Plaintiff-Appellant
v.
JOHNSON & JOHNSON VISION CARE, INC.,
Defendant-Appellee
______________________
2015-1079
______________________
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.
______________________
Decided: April 7, 2016
______________________
ERIC JOHN MAGNUSON, Robins Kaplan LLP, Minneap-
olis, 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.
______________________
2 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
Before DYK, MOORE, and STOLL, Circuit Judges.
Opinion for the court filed by Circuit Judge STOLL.
Dissenting opinion filed by Circuit Judge DYK.
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 Proce-
dure 60(b)(2) and (3). Because the district court abused
its discretion in denying Rembrandt’s Rule 60(b)(3) mo-
tion, 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 Ad-
vance® 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. Follow-
ing 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. (Rem-
brandt 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” limita-
tion, Dr. Beebe presented test results to show that the
accused lenses met this limitation. During cross-
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 3
VISION CARE
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 exam-
ination 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 suggest-
ing 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
4 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
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 spectrome-
try (“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 super-
visors. 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. Where-
as Dr. Bielawski was presented to the jury as an expert in
TOF-SIMS testing, he actually “had no TOF-SIMS experi-
ence 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 testimo-
ny, the post-trial discovery revealed that Dr. Bielawski
withheld test results and data analysis that would have
undermined his opinions and trial testimony. In particu-
lar, Dr. Bielawski withheld data from tests conducted on
third-party contact lenses previously found to infringe the
1 Because perjury is a crime and Dr. Bielawski is
not a party to this litigation, we express no opinion as to
whether Dr. Bielawksi committed perjury. Instead, we
accept, for the purpose of deciding this case, the parties’
and district court’s conclusion that Dr. Bielawski testified
falsely at trial.
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 5
VISION CARE
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 gen-
erated. Had these test results been produced to Rem-
brandt, 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. Specifi-
cally, 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 testi-
mony 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 follow-
ing reasons: . . . (2) newly discovered evidence,
that with reasonable diligence, could not have
been discovered in time to move to a new trial un-
der Rule 59(b); [or] (3) fraud (whether previously
called intrinsic or extrinsic), misrepresentation, or
misconduct by an opposing party.
6 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
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 mis-
conduct, 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
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 7
VISION CARE
previously called intrinsic or extrinsic), misrepresenta-
tion, 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 miscon-
duct; and (2) this conduct prevented the moving party
from fully and fairly presenting its case. Harre v. A.H.
Robins Co., 750 F.2d 1501, 1503 (11th Cir. 1985), vacated
in part on other grounds, 866 F.2d 1303 (11th Cir. 1989).
Proof that the result of the case would have been different
but for the fraud or misconduct is not required; instead,
Rule 60(b)(3) “is aimed at judgments which were unfairly
obtained, not at those which are factually incorrect.”
Rozier v. Ford Motor Co., 573 F.2d 1332, 1339 (5th Cir.
1978) 2 (internal citations omitted); see also Wilson v.
Thompson, 638 F.2d 801, 804 (5th Cir. 1981) (“We recog-
nize that a party moving under Rule 60(b)(3) may prevail
without showing that the alleged fraud affected the
outcome of the prior trial.”).
I.
We start with the easier question of whether Rem-
brandt had a full and fair opportunity to present its case
given Dr. Bielawski’s false testimony and withholding of
relevant documents. In denying Rembrandt’s motion
under Rule 60(b)(3), the district court concluded that
“even accounting for Dr. Bielawski’s misconduct, Rem-
brandt was not prevented from making its case,” and
explained that this holds true “even without considering
that JJVC was entitled to judgment as a matter of law
because Rembrandt failed to present evidence on an
essential element of its case.” Rule 60 Order, 300 F.R.D.
at 701 & n.9. The district court also summarily dismissed
2 Fifth Circuit precedent prior to September 30,
1981 is binding on the Eleventh Circuit. Bonner v. City of
Pritchard, 661 F.2d 1206, 1209 (11th Cir. 1981).
8 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
Rembrandt’s argument that it was prevented from fully
and fairly presenting its case due to the withheld docu-
ments as “murky at best.” Id. at 697 n.1. We conclude
that the district court clearly erred in finding that Rem-
brandt had a full and fair opportunity to present its
infringement case.
Dr. Bielawski testified on a central infringement issue
at trial—whether JJVC’s accused lenses met the “surface
layer” claim limitation. In doing so, he testified falsely
about his personal involvement in the testing, as well as
his experience with the relevant testing methodologies.
[A8] He also withheld contradictory test results on third-
party lenses known to infringe and generated at the
request of JJVC’s counsel. Because these test results
were not produced, Dr. Bielawski testified without con-
tradiction about alleged differences between the accused
lenses and the third-party lenses to show that the accused
lenses did not have the claimed surface layer. JJVC’s
counsel emphasized these differences as proof of nonin-
fringement in his closing argument. In addition,
Dr. Bielawski and JJVC’s counsel seized several opportu-
nities to impugn the credibility of Dr. Beebe, but the jury
never heard that Dr. Bielawski had presented false testi-
mony. Under these circumstances, we cannot agree with
the district court that this conduct did not prevent Rem-
brandt from fully and fairly presenting its infringement
case. 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.
JJVC and the dissent nonetheless assert that the dis-
trict court did not abuse its discretion, relying on a ra-
tionale different from that of the district court.
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 9
VISION CARE
Specifically, JJVC argues that Rembrandt had a full and
fair trial because Dr. Bielawski did not testify regarding
the “soft” limitation and Rembrandt cannot show that the
false testimony and improperly withheld documents
resulted in substantial impairment of its ability to pre-
sent its case on the “soft” limitation. We are not con-
vinced by JJVC’s argument.
The district court granted JMOL, not because of the
merits of JJVC’s noninfringment position, but because its
exclusion of Dr. Beebe’s unreliable testimony compelled
that result. The district court judge acknowledged that he
may well have responded differently had he been aware at
the time of Dr. Bielawski’s false testimony. During the
hearing regarding the Rule 60 motions, he explained:
I guess my problem with it is – is that – or my
query is that – I don’t think I – I'm not sure I
would have gotten to that place [of granting
judgment as a matter of law] – or I sure – I may
have gotten to that place differently – or I may –
something different may have happened if I had
known at the time – Dr. Beebe’s shortcomings
came out during the trial.
And they were obvious and – and I made my rul-
ing based on what I saw, noting, also, that as I re-
call it you were able to, with the jury, take great
advantage of his implosion.
And so you kind of got – you kind of got a double
whammy. You got me ruling as a matter of law to
strike his testimony. But you also got to argue to
the jury that – that one of their experts had – was
unworthy of any credence. And so you got to do
all that because Dr. Beebe’s malfeasance came out
during the trial.
August 2, 2013 Motion Hearing, J.A. 7440–41. In the
order denying Rembrandt’s Rule 60(b)(3) motion, the
10 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
district court also acknowledged that Dr. Bielawski’s
misconduct was at least as egregious as Dr. Beebe’s:
This was a serious and detrimental occurrence. It
insulted the jury, violated the integrity of the ju-
dicial process, and interfered with the search for
the truth that is the hallmark of our trial-by-jury
system. Moreover, this false testimony was given
in a highly contested patent case in which an ex-
pert for Rembrandt, Dr. Beebe, radically changed
his expert testimony during the middle of his ex-
amination. As a result, the Court struck his tes-
timony and entered an alternative Rule 50
judgment against Rembrandt because it was una-
ble to prove a required element of its case without
Dr. Beebe’s testimony. . . . Now, having learned
post-trial that JJVC’s expert likely lied on the
stand, arguably committing an act at least as
egregious as Dr. Beebe’s, it is a fair question to
ask whether Rembrandt should be entitled to a
new trial.
Rule 60 Order, 300 F.R.D. at 698.
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 docu-
ment. 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). Although
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 11
VISION CARE
an arguably “independent” ground of invalidity existed in
Fraige—invalidity under 35 U.S.C. § 112—we neverthe-
less reversed the district court’s denial of a new trial
under Rule 60(b)(3). 3 We concluded that where the im-
pact of the tainted evidence on the allegedly “independ-
ent” ground of invalidity could not be ascertained, the
independent ground was not a basis for denying the
request for a new trial. Id. at 299–300.
Similarly, here, we will not speculate as to what im-
pact the fraud and misconduct had on the ultimate judg-
ment 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, Rem-
brandt 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. Here, Rembrandt could have deposed
3 The dissent asserts that Fraige is inapposite, con-
tending that “our reasoning was that relief was available
not under Rule 60(b)(3) but under the savings clause in
Rule 60.” We disagree. The Court’s decision in Fraige
rested on Rule 60(b)(3). Indeed, the Court specifically
stated that “[t]he effect of the tainted evidence on the
section 112 defense, while less certain, cannot be ascer-
tained and therefore is similarly not a basis for denying
the Rule 60(b)(3) motion for relief from the patent invalid-
ity judgment.” 996 F.3d at 299–300 (footnote omitted).
12 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
the individuals who actually conducted the testing for
JJVC. JJVC based its noninfringement argument at trial
nearly exclusively on the surface layer limitation. Know-
ing the weaknesses in JJVC’s evidence regarding the
surface layer limitation could well have changed the
nature of the entire proceedings. We cannot and will not
speculate about the profound effects knowledge of the
withheld documents and falsified testimony of JJVC’s
primary witness would have had on the proceedings and
the district court’s JMOL. Suffice it to say that this raises
a substantial question undermining the judgment of
noninfringement.
Finally, we note that Rembrandt presented additional
evidence at trial to show that JJVC’s accused lenses
satisfied the “soft” limitation. For example, JJVC stipu-
lated that the accused lenses are silicone hydrogel contact
lenses, and the record contains evidence that suggests
silicone hydrogel contact lenses yield a Shore D test result
of zero. The dissent states that Rembrandt failed to raise
this evidence in response to JJVC’s JMOL motion. It is
true, as we noted in our prior opinion, Rembrandt identi-
fied only Dr. Beebe’s testimony when responding to
JJVC’s JMOL motion. Rembrandt I, 725 F.3d at 1383.
Had Dr. Beebe’s testimony not been stricken, it certainly
would have prevented the court from entering JMOL in
favor of JJVC. In addition, although not relied on by
Rembrandt in responding to JJVC’s JMOL motion, there
was additional evidence in the trial record that the ac-
cused lenses met the “soft” limitation. In light of this
record, we cannot conclude that Rembrandt had a full and
fair trial on infringement.
II.
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
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 13
VISION CARE
otherwise. Specifically, the district court erred by sum-
marily 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 third-
party 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 miscon-
duct, 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 ‘mis-
representation’ 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,
purpose.”).
JJVC admits that it provided samples of third-party
lenses to Dr. Bielawski to conduct “initial set up experi-
ments” on the lenses. The relevance of these tests to
JJVC’s noninfringement defense cannot be disputed—
14 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
Dr. Bielawski testified about differences between JJVC’s
accused lenses and the third-party lenses that were
known to infringe and JJVC’s counsel emphasized these
differences during his closing argument.
JJVC argues that a new trial is not warranted be-
cause 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 ex-
plained above, even an accidental omission qualifies as
misconduct under Rule 60(b)(3).
Turning next to Rembrandt’s allegations of fraud, the
district court concluded that Rule 60(b)(3) requires proof
of JJVC’s complicity in the false testimony, relying heavi-
ly on Harre, 750 F.2d 1501, as well as cases outside of the
Eleventh Circuit. Rembrandt argues that the district
court misinterpreted Eleventh Circuit precedent by
requiring proof of complicity to satisfy Rule 60(b)(3). We
agree.
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 pre-
vented Appellants from fully and fairly presenting their
case.” Harre, 750 F.2d at 1504–05. Although the Harre
court also determined that counsel “must have been
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 15
VISION CARE
aware” of the perjury and expressed deep concern in view
of that determination, it did not suggest that relief under
Rule 60(b)(3) would otherwise have been unavailable. See
id. at 1505. Consistent with our understanding, a subse-
quent Eleventh Circuit case cited Harre for the proposi-
tion that mere “perjury constitutes fraud under [Rule]
60(b)(3).” See Bonar v. Dean Witter Reynolds, Inc., 835
F.2d 1378, 1383 n.7 (11th Cir. 1988). The Fifth Circuit
has also recognized that Rule 60(b)(3) is remedial and
should be liberally construed. Rozier, 573 F.2d at 1346.
Likewise, we have previously affirmed a grant of a
new trial under Rule 60(b)(3) in view of an expert’s per-
jured 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 affirm-
ing the district court’s grant of a new trial, we “agree[d]
with the district court that the jury verdict was irretriev-
ably tainted and was properly set aside.” Viskase, 261
F.3d at 1324. We are presented with very similar facts
here. Although JJVC may have been unaware of
Dr. Bielawski’s false testimony, JJVC should have known
that additional tests were conducted and additional
documents were generated. Indeed, it provided samples
of the third-party lenses to Dr. Bielawski, requested that
he conduct initial testing on those lenses, and questioned
Dr. Bielawski on the same subject matter during trial.
16 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
At bottom, the district court erred by concluding that
the Eleventh Circuit would require proof that JJVC or its
counsel was complicit in Dr. Bielawski’s false testimony.
In this most unusual case involving false testimony by
both parties’ experts and misconduct, we cannot agree
that the Eleventh Circuit would require complicity in
Dr. Bielawski’s false testimony. While the district court
gave thoughtful consideration to Rembrandt’s
Rule 60(b)(3) motion and to the integrity of the judicial
process, it erred in requiring complicity and summarily
dismissing Rembrandt’s separate allegation of miscon-
duct. We thus conclude that the district court abused its
discretion in denying Rembrandt’s motion for a new trial
under Rule 60(b)(3).
III.
Because we reverse the district court’s denial of Rem-
brandt’s motion for a new trial under Rule 60(b)(3), we do
not consider whether the district court abused its discre-
tion in denying Rembrandt’s Rule 60(b)(2) and discovery
motions. We also reject JJVC’s argument that the man-
date 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
1377.
CONCLUSION
We hold that the district court abused its discretion in
denying Rembrandt’s motion for a new trial under Rule
60(b)(3). We therefore reverse and remand for a new
trial.
REVERSED AND REMANDED
United States Court of Appeals
for the Federal Circuit
______________________
REMBRANDT VISION TECHNOLOGIES, L.P.,
Plaintiff-Appellant
v.
JOHNSON & JOHNSON VISION CARE, INC.,
Defendant-Appellee
______________________
2015-1079
______________________
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.
______________________
DYK, Circuit Judge, dissenting.
This case presents two important questions about the
interpretation of Rule 60(b)(3) of the Federal Rules of
Civil Procedure in the context of false testimony by an
expert witness. The first is whether a showing by a
movant that it lacked a “full and fair” opportunity to
present its case requires some showing that the result
could have been affected by the false testimony. The
second is whether false testimony by an expert witness
can be attributed “to the opposing party” (as required by
the rule) without a showing of knowledge or reason to
2 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
know that the testimony was false. I respectfully suggest
that the majority is wrong on both counts.
I
Relying on Rule 60(b)(3), Rembrandt sought to set
aside a summary judgment of non-infringement of the
asserted claim of U.S. Patent No. 5,712,327 (“the ’327
patent”) based on false testimony of Johnson & Johnson
Vision Care’s (JJVC’s) expert witness, Dr. Christopher
Bielawski. The district court denied relief.
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 present-
ing 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 require-
ment, and errs in reversing the district court’s determina-
tion that this standard was not met.
At the original trial, JJVC argued for a finding of non-
infringement based on two limitations of asserted claim 1
of the ’327 patent. The claim requires contact lenses that
are both (1) “soft” and (2) have a “tear-wettable surface
layer.” ’327 patent, col. 8 ll. 2–16. These are separate and
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 3
VISION CARE
independent limitations. For example, both “hard” and
“soft” contact lenses can be coated with a material to
make the lenses more “tear-wettable.” Similarly, the
patent itself describes prior art “soft” lenses that lack a
surface layer. Thus, to prevail in its infringement case,
Rembrandt had the burden of independently proving (1)
that the accused contact lenses were “soft” and (2) that
the accused lenses had a surface layer. In this case, two
witnesses testified falsely, one for each side and one on
each issue.
The district court construed “soft” to mean “having a
Hardness (Shore D) of less than 5” on the Shore scale—an
accepted standard for hardness. Rembrandt Vision
Techs., L.P. v. Johnson & Johnson Vision Care, Inc., 282
F.R.D. 655, 657 (M.D. Fla. 2012) (“JMOL Order”). In
other words, to meet the claim limitation, the accused
lenses had to have a value of less than five according to a
commonly used testing and measurement method for
hardness.
Rembrandt’s expert witness, Dr. Thomas Beebe, Jr.,
testified that the accused contact lenses met the “soft”
limitation of the patent claim. During his testimony
about the “soft” limitation, “Dr. Beebe’s trial testimony
did not match the opinions disclosed in his expert report.”
Rembrandt Vision Techs. v. Johnson & Johnson Vision
Care, Inc., 725 F.3d 1377, 1379 (Fed. Cir. 2013) (“Rem-
brandt I”). “In fact, the differences . . . [were] so substan-
tial that Dr. Beebe essentially performed an entirely
different test” than he had described in his expert report.
JMOL Order, 282 F.R.D. at 663. During what the district
court described as an “implosion” on the stand, Dr. Beebe
“completely changed his testimony” during cross-
examination. Id. at 668. Accordingly, after trial, the
district court excluded Dr. Beebe’s testimony and, because
“Dr. Beebe’s testimony was the only evidence presented at
trial that showed that the accused lenses met the ‘soft’
4 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
limitation,” the district court granted JJVC’s motion for
judgment as a matter of law (“JMOL”) that the accused
lenses did not infringe because they did not meet the
“soft” limitation. Rembrandt I, 725 F.3d at 1383. On
appeal, we affirmed the district court’s exclusion of Dr.
Beebe’s testimony and the subsequent grant of JMOL. Id.
at 1378.
A different scenario played out with respect to the
“surface layer” limitation. The district court construed
the “surface layer” limitation to mean “a layer beginning
from and including the outermost surface and moving
inward to an arbitrary depth of the lens and having a
different composition from the ‘body’ portion of the lens.”
Rembrandt Vision Techs. L.P. v. Johnson & Johnson
Vision Care, Inc., No. 11-cv-0819, ECF No. 300 (Tran-
script of May 10, 2012), at 295. In other words, to in-
fringe, contact lenses must contain an outer layer made
up of a different material than the rest of the contact lens.
JJVC’s expert witness, Dr. Bielawski, testified that the
accused products did not meet the surface layer limita-
tion.
After trial, Rembrandt discovered that Dr. Bielawski
had falsely testified about his credentials and about who
had performed the testing in his expert report. Rem-
brandt also discovered that data from Dr. Bielawski
regarding surface-layer testing of third party lenses had
been withheld. As the majority notes, Dr. Bielawski
testified for JJVC “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.” Maj. Op. at 3.
The question here is whether Dr. Bielawski’s later-
discovered 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
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 5
VISION CARE
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 correct-
ly 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 fo-
cuses 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 grant-
ing JMOL.
In this respect, to succeed on the Rule 60(b)(3) motion
for a new trial, Rembrandt was required to show that the
false testimony resulted in a substantial impairment of its
ability to present its case on the “soft” issue. “Substantial
impairment may exist, for example, if a party shows that
the [misconduct] precluded inquiry into a plausible theory
of liability, denied it access to evidence that could well
have been probative on an important issue, or closed off a
potentially fruitful avenue of direct or cross examination.”
Anderson, 862 F.2d at 925. But if the misconduct is
related to evidence that is “cumulative, insignificant, or of
marginal relevance,” “retrial would needlessly squander
judicial resources.” Id. at 924.
6 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
Rembrandt’s only argument as to substantial impair-
ment is that it “could have moved for summary judgment
on the surface layer issue—or streamlined its trial evi-
dence on the issue—and thus had more time to present
additional evidence regarding the ‘soft’ nature of the
accused lenses.” Reply Br. at 24. In other words, Rem-
brandt speculates that it would have spent more time
preparing its case for the “soft” limitation and could have
potentially prevented Dr. Beebe’s meltdown on the stand.
And the majority asserts that the existence of such a
possible reallocation of resources is sufficient, stating that
“[k]nowing the weaknesses in JJVC’s evidence regarding
the surface layer limitation could well have changed the
nature of the entire proceedings. We cannot and will not
speculate about the profound effects knowledge of the
[alleged misconduct] would have had on the proceedings
and the district court’s JMOL.” Maj. Op. at 12. Under
this standard, it is hard to see any case where, after a
party proves misconduct of any kind, that party would not
be afforded relief. In effect, the majority’s holding renders
the “full and fair” requirement a nullity. Neither Rem-
brandt nor the majority can point to any case where Rule
60(b)(3) relief has been granted based on such specula-
tion.
The authority is uniformly to the contrary. The
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 ulti-
mate fact, to wit, that the decree was obtained by fraud
fails.” Id. This requires a showing of how “the complain-
ing party was, without his fault, deprived of his oppor-
tunity to present his defense on the merits. . . . Chancery
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 7
VISION CARE
will intervene, therefore, only when the complainant was
prevented from presenting a meritorious defense by the
inequitable conduct of his adversary unmixed with negli-
gence 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); see also PMC, Inc. v. Atomergic
Chemetals Corp., No. 95-7509, 1995 WL 595557, at *1 (2d
Cir. Sep. 25, 1995) (unpublished decision) (finding claim
of lack of a full and fair opportunity “to be without merit”
when an expert lied about his credentials because the
misconduct “did not have ‘such a close nexus to the is-
sues’” relevant in the case); Anderson, 862 F.2d at 931(relief under Rule 60(b)(3) should not be granted where
the misconduct “would have had no effect on the result” of
the case).
A review of cases where Rule 60(b)(3) motions have
been granted shows that relief is only granted when the
misconduct involves material, relevant evidence; in other
words, when knowing about the misconduct actually could
have made a difference. See, e.g., Abrahamsen v. Trans-
State Express., Inc., 92 F.3d 425, 430 (6th Cir. 1996)
(plaintiff in a tort action resulting from a car accident
entitled to a new trial because defendant’s attorney
8 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
withheld evidence of a statement by defendant’s driver
that he “dozed off” while driving, leading to the accident);
Rozier, 573 F.2d at 1339, 1342–43 (defendant improperly
withheld an internal cost/benefit report showing the
defendant’s knowledge of the defect and rejecting a safer
design; the report “would have” affected plaintiff’s ap-
proach to the design-defect tort case, and the plaintiff was
“prejudiced”); Seaboldt v. Pa. R.R. Co., 290 F.2d 296, 299
(3d Cir. 1961) (defendant entitled to a new trial in a
personal injury case relating to a back injury because
plaintiff’s counsel failed to supply information concerning
a chiropractor who would have testified that he “had
treated the plaintiff previously for a ‘chronic’ back ail-
ment” before the alleged injury.).
Fraige v. American-National Watermattress Corp.,
996 F.2d 295 (Fed. Cir. 1993), relied on by the majority, is
not to the contrary. In that case, counsel for the accused
infringer had submitted to the court “false and forged
documentation” about a supposed prior art reference. Id.
at 296. The motion was made under Rule 60(b)(3), and we
held that relief should have been granted under that rule.
However, our reasoning was that relief was available not
under Rule 60(b)(3) but under the savings clause in Rule
60, which allows a court to “entertain an independent
action for fraud on the court.” Fed. R. Civ. P. 60(d)(1); see
also Fraige, 996 F.2d at 297 (citing the savings clause).
As the Advisory Committee Note to the rule explains, “the
rule expressly does not limit the power of the court, when
fraud has been perpetrated upon it, to give relief under
the saving clause. As an illustration of this situation, see
Hazel-Atlas Glass Co. v. Hartford Empire Co.,” 322 U.S.
238 (1944). 1 Fed. R. Civ. P. 60(b) Advisory Committee
1 Fraud on the court, not even alleged in this case,
constitutes “an unconscionable plan or scheme which is
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 9
VISION CARE
Note to the 1946 Amendments. We found in Fraige that
“[l]ike Hazel-Atlas, [the defendant’s] fraudulent conduct
was a wrong against the judicial system as well as against
[the plaintiff.]” 996 F.2d at 299. Appropriately, we found
that a new trial was necessary because for more serious
“fraud on the court” (unlike Rule 60(b)(3)), the moving
party need not demonstrate prejudice to receive relief
from a judgment because “a decision produced by fraud on
the court is not in essence a decision at all, and never
becomes final.” Kenner v. Comm’r of Internal Revenue,
387 F.2d 689, 691 (7th Cir. 1968). Fraige is not authority
for the proposition that Rule 60(b)(3) does not require a
showing of lack of full and fair opportunity.
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
designed to improperly influence the court,” and, unlike
fraud referenced in Rule 60(b)(3), involves the “integrity
of the court itself.” Charles Alan Wright, et al., Federal
Practice and Procedure § 2870 (2012). In Hazel-Atlas, for
example, the Supreme Court found that the patent-
holder’s “flagrant” and “deliberate” plan to deceive both
the Patent Office and the district court “call[ed] for noth-
ing less than a complete denial of relief [] for the claimed
infringement of the patent thereby procured and en-
forced.” Hazel-Atlas, 322 U.S. at 250.
2 Although the district court deferred action on the
JMOL until after the jury verdict, it could have granted
the relief at the end of the presentation of Rembrandt’s
case. If it had done so, Dr. Bielawski would never even
have testified.
10 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
The majority suggests that there was other evidence
in the trial record that the accused lenses met the “soft”
limitation, but such evidence was not raised by Rem-
brandt in response to the JMOL motion. Maj. Op. at 12.
In the first appeal, we held that Rembrandt had not
preserved the right to argue this evidence in connection
with the JMOL motion. 3 I fail to see how the decision by
Rembrandt not to raise this evidence could have even
arguably been affected by Dr. Bielawski’s false testimony.
In any event, Rembrandt’s decision not to raise this
evidence represents a strategic litigation choice. Rule
60(b)(3) cannot be used to allow a party to escape its own
negligence in developing its case. Courts routinely deny
Rule 60(b)(3) motions when a party loses not because of
the alleged fraud but because of its own failings. “When a
party is capable of fully and fairly preparing and present-
ing his case notwithstanding the adverse party’s arguable
misconduct, the trial court is free to deny relief under
Rule 60(b)(3).” Karak v. Bursaw Oil Corp., 288 F.3d 15,
22 (1st Cir. 2002); see also Diaz v. Methodist Hosp., 46
F.3d 492, 497 (5th Cir. 1995). Nothing about Dr.
Bielawski’s misconduct regarding the “surface layer”
limitation prevented Rembrandt from raising other evi-
dence on the softness issue in response to the JMOL
motion.
3 Specifically, we found that “[i]n opposing JJVC’s
motion for judgment as a matter of law, Rembrandt only
pointed to Dr. Beebe’s trial testimony. Moreover, Rem-
brandt conceded at the post-trial hearing that Dr. Beebe’s
testimony was the only evidence presented at trial that
showed that the accused lenses met the ‘soft’ limita-
tion. . . . We decline to upend the district court’s decision
on a basis that was not raised below.” Rembrandt I, 725
F.3d at 1383 (emphasis added).
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 11
VISION CARE
Quintessentially, the resolution of a Rule 60(b)(3) mo-
tion is a matter of discretion for the district court judge,
who sat during the entire trial and is most intimately
familiar with the reasoning for his own statements and
previous order. Here the district court concluded that no
retrial was appropriate. In an effort to suggest that the
district court would have reached a different result if it
had applied a different standard, both Rembrandt and the
majority point to ambiguous statements by the district
court during the Rule 60 hearing when the trial judge,
before reaching his final decision on the motion, speculat-
ed that the false testimony might have somehow affected
the JMOL decision as to the soft limitation. But, as
noted, Dr. Bielawski offered no testimony on the “soft”
limitation, and the district court made no finding of any
such relationship in its final decision. 4 At best, the dis-
trict court’s statements suggest that a remand to the
district court might be appropriate to reconcile the final
order and the court’s earlier statements.
In short, the record here demonstrates that Rem-
brandt failed to produce any credible evidence on one
element of its case. That failure had nothing to do with
Dr. Bielawski’s false testimony. In the prior appeal, we
affirmed that the district court acted properly in exclud-
ing Dr. Beebe’s testimony and in granting JMOL of non-
4 In the final order, the district court found that
“[w]hat Rembrandt mainly lost here was an opportunity
to discredit or eliminate an expert witness who . . . was
not required for JJVC to win the case. When the trial is
looked at in its totality, even accounting for Dr.
Bielawski’s misconduct, Rembrandt was not prevented
from making its case.” Rembrandt Vision Techs., L.P. v.
Johnson & Johnson Vision Care, Inc., 300 F.R.D. 694, 701
(M.D. Fla. 2014) (“Rule 60 Order”).
12 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
infringement based on the lack of evidence. That previous
determination should not be disturbed by a subsequent
discovery of false testimony about an entirely different
issue.
II
There is also, in my view, a second error in the major-
ity opinion. Under Rule 60(b)(3), “the court may relieve a
party or its legal representative from a final judgment,
order, or proceeding” if there was “fraud (whether previ-
ously called intrinsic or extrinsic), misrepresentation, or
misconduct by an opposing party.” Fed. R. Civ. P.
60(b)(3). I also disagree with the majority’s conclusion
(contrary to that of the district court) that the rule does
not require any evidence that the misconduct was at-
tributable to “the opposing party” as required by the text
of Rule 60(b)(3).
The majority finds that the district court erred in “re-
quiring proof of [JJVC’s] complicity” in Dr. Bielawski’s
false testimony. Maj. Op. at 13. According to the majori-
ty, “[i]n this most unusual case involving false testimony
by both party experts, we cannot agree that the Eleventh
Circuit would require complicity in Dr. Bielawski’s false
testimony.” Id. at 15.
The two other circuits that have confronted the issue
have reached the opposite conclusion. As the Seventh
Circuit explained, “[e]xpert witnesses . . . are free agents.
Parties and counsel have an obligation not to deceive the
court about the witness and to correct statements they
know to be false, but they are not responsible for the
details of the witness’s testimony.” Metlyn Realty Corp. v.
Esmark, Inc., 763 F.2d 826, 833 (7th Cir. 1985). Thus, the
Seventh Circuit held that, absent evidence that “the
adverse party procured or knew of any false testimony,”
relief under Rule 60(b)(3) is not available. Id. at 832; see
also Richardson v. Nat’l R.R. Passenger Corp., 49 F.3d
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 13
VISION CARE
760, 765 (D.C. Cir. 1995) (declining to “substitute a less
restrictive limitation” under Rule 60(b)(3) for attribution
to a party misconduct of another “for the one expressly
adopted under the Rules”). The majority’s conclusion also
conflicts with long-settled evidence and professional
responsibility rules. See Fed. R. Evid. 607, Advisory
Committee Notes to 1972 Proposed Rules (abandoning the
“traditional rule against impeaching one’s own witness”
because “[a] party does not hold out his witnesses as
worthy of belief”); Model R. Prof. Resp. 3.3 and comments
(a lawyer will only be responsible for false testimony if the
lawyer knew or should have known the testimony was
false).
While the Eleventh Circuit has not expressed itself
clearly on the issue here, there is no reason to think that
it would reach the opposite conclusion. In the Eleventh
Circuit case granting Rule 60(b)(3) relief discussed by the
majority, Harre, 750 F.2d at 1503, the court found “that
the record support[ed] Appellants’ argument that a mate-
rial expert witness testified falsely on the ultimate issue
in the case, where the defense attorneys knew or should
have known of the falsity of the testimony.” Id. at 1503(emphasis added). Nothing in Bonar v. Dean Witter
Reynolds, Inc., 835 F.2d 1378 (11th Cir. 1988), is to the
contrary. Bonar, a case involving vacation of an arbitra-
tor’s punitive damages award, cites Harre for the proposi-
tion that “[t]here is no doubt that perjury constitutes
fraud,” and that the perjury is material when it goes to a
“central issue” in a case. Id. at 1383 n.7 & 1385. The
Eleventh Circuit in Bonar did not discuss Harre in the
context of party complicity under Rule 60(b)(3) because
Bonar did not involve that issue (nor did it involve Rule
60(b)(3) at all).
The majority points to Viskase Corporation v. Ameri-
can National Can Company, 261 F.3d 1316 (Fed. Cir.
2001), as supporting its position. See Maj. Op. at 15. But
14 REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON
VISION CARE
Viskase arose in the Seventh Circuit, which explicitly
requires evidence of complicity to attribute false testimo-
ny of an expert witness to a party under Rule 60(b)(3).
Metlyn, 763 F.2d at 833. The district court in Viskase
specifically found that the plaintiff’s counsel “surely knew
there were additional documents [that had been withheld]
and that there were additional tests conducted” relying on
evidence such as “invoices directed to [plaintiff’s] counsel
and [the expert’s] notes document[ing] counsel’s
knowledge.” Viskase Corp. v. Am. Nat. Can Co., 979 F.
Supp. 697, 705 (N.D. Ill. 1997). There is no similar evi-
dence or finding here.
The majority agrees that JJVC “may have been una-
ware of Dr. Bielawski’s false testimony” but suggests that
JJVC may have been complicit in withholding Dr.
Bielawski’s data from tests on third-party contact lenses.
Maj. Op. at 15. According to the majority, “JJVC should
have known that additional tests were conducted and
additional documents were generated. Indeed, it provided
samples of the third-party lenses to Dr. Bielawski, re-
quested that he conduct initial testing on those lenses,
and questioned Dr. Bielawski on the same subject matter
during trial.” Id.While JJVC admitted that it did “suppl[y] [the third
party lenses] to Dr. Bielawski,” it did so “only for use in
setting up his equipment.” Appellee’s Br. at 28. Accord-
ing to JJVC, it “did not ask Dr. Bielawski to generate data
on those lenses, and did not know that one of his assis-
tants had (apparently) done so.” Id. In fact, JJVC asserts
that “Dr. Bielawski repeatedly reassured JJVC’s counsel
that he had given them all of the data he generated and
all of the documents he relied upon.” Id. at 63. The
district court did not resolve this factual dispute as to
whether JJVC’s counsel should have known that addi-
tional evidence existed, finding instead that this “murky”
assertion did not support a finding that Rembrandt was
REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON 15
VISION CARE
prevented from fully and fairly presenting its case. Rem-
brandt, 300 F.R.D. at 697 n.1.
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.
I respectfully dissent.