The Battle of the Experts

• Author: Ronald K. Fierstein
• Profession: Lawyer on the team of litigators from the prestigious patent law firm of Fish & Neave
• Pages: 421-448

421

CHAPTER 24

THE BATTLE OF THE

EXPERTS

It was now mid-January, and Frank Carr still had seven witnesses on his

list. Most were directed to specific pieces of the case and so could be

disposed of in a day or two of testimony for each. But also remaining to

be presented were two outside photography authorities that Kodak had

decided to call as its principal experts. Franz Trautweiler was a Swiss sci-

entist who was enlisted to testify regarding the primary film patents in

the suit: Rogers’ Negative Dye Developer and “Excedrin” film unit and

Land’s L-Coat. While he had been a Senior Research Physicist at Eastman

Kodak for four years in the mid-1960s, Trautweiler had spent most of his

career in Europe, working for another technology company active in the

photographic field, the Ilford Group of the conglomerate, Ciba-Geigy.1

Trautweiler began his testimony with a professorial lecture on how

the eye sees color and how that relates to the reproduction of color in

photographic processes. Judge Zobel was clearly fascinated by this

exposition and, as had happened on so many occasions, Trautweiler’s

testimony turned into a dialectic between judge and witness with counsel

standing by as an observer. After some time, as their to-and-fro came to

a conclusion, Carr apparently felt slightly embarrassed that the discus-

sion had gone on so long. He assured Zobel that “it [was] not intended

to be a day-long discourse, your Honor.” “Why not?” responded the

judge, “I might even learn something.”2

Carr picked up his lead of the examination and moved Trautweiler

into a discussion of the Negative Dye Developer patent. This testimony

went on for the rest of the day and the entirety of the next day’s court

session. Kodak’s expert reiterated its now familiar arguments. First, he

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A Triumph of Genius

422

testified that the Rogers process, as disclosed in the patent, was inoperable

without the use of a ballast to anchor the negative dye developer in place.

He alleged that the patent did not teach the use of that kind of expedient.

If true, this would be a ground for invalidation, as patent law requires that

a patent teach “any person skilled in the art” how to make and to use the

disclosed invention.3 Second, he recited and explained at length Kodak’s

contention that if Rogers’ Negative Dye Developer patent were interpreted

broadly enough to cover the photographic process in Kodak’s PR-10 film,

then it would have to be rendered invalid due to having been taught by the

prior Australian patent issued to Whitmore and Mader.4

As Carr seemingly retraced territory that had been covered with pre-

vious witnesses, Schwartz finally stood up to object. He grumbled that the

testimony was cumulative and thus a waste of time. Carr tried to justify

his approach by pointing out that Trautweiler “is a totally disinterested

witness testifying as an expert on behalf of the defendant. The other wit-

nesses who have testified,” he argued, “clearly were employees.”5 Judge

Zobel jumped right on Carr’s rationale, pointing out that Trautweiler had

been a Kodak employee at one time, albeit many years earlier. However,

she once again was determined to err on the side of completeness and to

avoid any criticism later that she somehow prejudiced either party by lim-

iting the presentation it intended to make.

Over Schwartz’s protestations, she gave some insight into her posi-

tion. “Well, I don’t wish to have cumulative testimony,” she explained,

“but a certain amount of repetition does indeed help. It is a little like lis-

tening to a Mozart symphony in which the melody is repeated over and

over again, and you remember it after the fourth or fifth or sixth or eighth

repetition. I don’t think we need to go that far,” she cautioned, asking

Carr if “perhaps you can cut short this testimony.”6 Yet this was not what

Schwartz wanted to hear, knowing that Judge Zobel’s remark signified

a certain acceptance of, if not vulnerability to, one of Kodak’s key strat-

egies. From its various procedural maneuvers, as well as the design of

the testimony in its direct case, Kodak had sought to bring its arguments

before the judge as often and in as many contexts as possible. Its apparent

hope was that this repetition would have precisely the impact on Judge

Zobel that it was appearing to have, assuming, of course, that she accepted

the validity of its positions.

Over the next two days, Trautweiler completed his testimony on the

Negative Dye Developer patent and moved to Rogers’ Excedrin film unit

patent. As soon as Carr asked Trautweiler to provide a general explanation

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