The Court often excludes experts who offer opinions regarding U.S. law itself—but there are some gray areas and circumstances where the Court has permitted such testimony. In patent cases, for example, the Court has typically excluded expert testimony about substantive issues of patent law, but has sometimes permitted experts to testify on PTO procedures (and sometimes not).
This week we got some more guidance, specifically in the context of a bench trial. In Upsher-Smith Laboratories LLC v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 21-1132-GBW, the Court unsealed an order from last year denying a motion to exclude two expert opinions regarding legal issues, including one opinion by a law professor and another by a lawyer.
The Court recognized that these sorts of opinions are typically excluded:
There is a "well-established practice of excluding the testimony of legal experts, absent extraordinary circumstances because it is the Court's function to determine the applicable legal standards." . . . An expert opinion that "really reads like an attorney's argument or brief["] should be excluded.
Upsher-Smith Laboratories LLC v. Zydus Pharmaceuticals (USA) Inc., C.A. No. 21-1132-GBW, D.I. 272 at 3 (D. Del. July 16, 2024).
And, here, the Court acknowledged that the experts' opinions would be impermissible. But it declined to exclude the opinions because they were interwoven with helpful and permissible opinions:
[T]he Court recognizes that certain portions of Mr. Carrier's report constitute legal opinions. See, e.g., D.I. 245, Ex. 2 ("Carrier Reply") at 2 (arguing that USL's expert "fails to respond to my arguments regarding how a court would treat the no-relinquishment clause"), 9 ("[A] court applying antitrust law should, in my opinion, find an antitrust violation."); Ex. 3 ("Carrier Dep.") at 233:23-235:21 ("It is my opinion that the license and settlement agreement as interpreted by USL presents significant antitrust concerns that I underscored in my analysis of a per se analysis, a quick look, and rule of reason."). However, his report also discusses the history and competitive effects of no-relinquishment provisions, and other aspects of these provisions that, while implicating legal regulations, may ultimately provide helpful context to the Court in analyzing USL's contract claim and Zydus's public policy affirmative defense. . . . Thus, the Court is not prepared at this time to find Mr. Carrier's testimony inadmissible or unnecessary.
Id. The Court also emphasized that this is a bench trial—but it didn't say whether that factor was necessarily dispositive:
This is particularly the case given that this matter is scheduled for a bench trial. Indeed, the Court is certain that "[t]he able attorneys on both sides of this case can articulate the law in their arguments and post-trial briefing." . . . To the extent that Mr. Carrier's testimony is duplicative of those arguments, it "risks wasting a substantial amount of time." . . . Ultimately, however, any time wasted redounds to Zydus. The Court will not wholesale exclude Mr. Carrier's testimony, but Zydus should carefully consider whether it is the best use of time.
Id. at 3-4. Judge Stark actually did something similar back in 2012, when he permitted testimony from a legal expert in a bench trial but suggested it may be a waste of the party's time. See Galderma Labs., L.P. v. Tolmar, Inc., C.A. No. 10-045-LPS (D. Del. Feb. 17, 2012) (transcript).
Judge Williams came to a similar conclusion about a second expert, a lawyer who offered expert testimony "on the FDA regulatory regime":
The Court finds that Ms. Davidson's testimony on this issue situates real world examples of relinquishment in the context of FDA regulations and is permissible expert . . . . testimony. Other portions of Ms. Davidson's testimony may consist of impermissible legal conclusions but, for the reasons discussed regarding the testimony of Mr. Carrier, the Court is not prepared at this time to exclude all of her testimony.
Id. at 4.
Ultimately, this seems to be a particularly judge-specific issue. Some of our judges have issued strong opinions excluding the opinions of experts who testify on issues of substantive law. Former judges Jordan and Robinson went so far as to issue guidelines that explicitly precluded some patent law expert testimony. But other judges have sometimes given parties more leeway. And, as this opinion shows, the chances that the Court will permit this kind of testimony may be better for a bench trial.
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