Best Practices for Selecting, Retaining and
Working with Experts in Patent Cases
ABA-IPL 25th Annual Intellectual Property Law Conference
Arlington, Virginia
April 8, 2010
Moderator: Nicole D. Galli, Esquire, Pepper Hamilton LLP
12145346.2
Co-Authors and Presenters
C. Erik Hawes, Esquire, Morgan, Lewis & Bockius LLP
Kathleen M. Kedrowski, C.P.A., Navigant Consulting
Arthur H. Patterson, Ph.D., DecisionQuest
Teresa Stanek Rea, Esquire, Crowell & Moring
Marta L. Villarraga, Ph.D., Exponent, Inc
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Attitudes and Beliefs Act as Cognitive
Filters
What Is
Sent:
What Is
Received:
Evidence (and
many other
things)
Perception
Filter:
Pre-existing
Attitudes & Beliefs
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The Importance of Storytelling
• Jurors (and judges) make sense of your case by
creating a story with the facts, evidence, witnesses,
and events.
4
Understand and Meet Jurors’
Expectations
• If the story you are telling does not meet jurors’ expectations
about how the world works, they are going to (pick all that apply):
−
−
−
−
Not like you
Not listen to you
Not believe you
Vote against you
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Maximize Expert Credibility
• Ask a lawyer:
− Credentials
− Experience
− Style
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Maximize Expert Credibility
• Ask a juror:
− Style
− Experience
− Credentials
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Presenting Complex Evidence
• “It is a mistake to underestimate the intelligence and
cognitive ability of jurors.”
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Presenting Complex Evidence
• “It is not a mistake to underestimate the ability of
lawyers and experts to make simple evidence
confusing and complex evidence incomprehensible.”
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Finding and Selecting Testifying Experts
• How do you find a good testifying expert?
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−
−
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Pros/cons of expert locator services
Pros/cons of using prior art author
Pros/cons of using an academic
Should you use your client as technical or damages
expert?
− Should gender/race be considered?
− Vetting your prospective expert
• Interview in person
• Check references!
• Daubert decisions
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Finding and Selecting Testifying Experts
(cont’d)
• Sharing an expert in a joint defense case
− Sometimes required by the court
− Often makes sense for multiple defendant cases,
especially for common issues such as invalidity
− Mechanics of such retention
• Retained by each group member or by group as whole?
− Tensions between theories and sharing of information
− Other pros and cons
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Finding and Selecting Testifying Experts
(cont’d)
• Whether to use technical experts in connection with
claim construction
− Allowed for background on patent and technology at
issue, but otherwise extrinsic evidence of limited utility in
most cases – with one important exception
− Use and selection of technical advisor for court
• Some courts will require (or recommend) a technical
advisor be appointed to advise the court on the technology
at issue
• Can end up as Special Master
− Pros and cons
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Finding and Selecting Testifying Experts
(cont’d)
• Single or multiple technical experts for invalidity and infringement
issues?
− Often will see separate experts for invalidity and infringement
in multiple defendant cases
• Defendants share the invalidity expert and may/may not share
the infringement expert(s)
− Other reasons for splitting up the issues?
• For example, does your invalidity expert have to have
contemporaneous experience in the art at issue?
− Put another way, does the age of your expert matter?
• Potential tension between conflicting positions
• Simply too much territory to cover
− Other pros/cons of multiple v. single expert
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Finding and Selecting Testifying Experts
(cont’d)
• One expert for both damages theories or one for reasonable
royalties and one for lost profits?
− Most damages experts can do both but some may have
particular experience in one or the other (i.e. licensing)
− Reasons to split it up?
• Two bites at the apple (i.e., given that these are alternative
theories, it may make sense to split it)
• If licensing issues are particularly complicated may want a
separate royalty expert
• Conflicting theories or tensions
• Other?
− Cost considerations/duplicative analyses
− Other pros and Cons
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Finding and Selecting Testifying Experts
(cont’d)
• Use of a patent law expert
− Permissible topics
•
•
•
•
Patent office practice and procedure
To explain a particularly convoluted prosecution history
Willfulness/evaluate attorney opinion
Inequitable conduct
− Pros and cons
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Using Consulting Experts
• For what purpose would you use a consulting expert
in a patent case?
− For additional support, particularly for an academic
testifying expert
− To perform testing/analysis that you do not want your
testifying expert to do personally
− Developing and testing theories you do not want your
testifying expert to do
− Someone with extensive experience but who is not
willing to testify
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Using Consulting Experts (cont’d)
• Could/should there be communication between the
testifying and consulting expert(s)?
• Can testifying and consulting experts be from the
same firm?
− Fire walls necessary
− Subpoenas
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The Mechanics of Expert Retention
• The mechanics of expert retention
− Who sends the retention letter? the expert or the
lawyer?
− Best practices for expert retention letters
• Sample accounting testifying expert retention letter
− Should the client ever retain the expert?
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How to Work Most Effectively With Experts
• Discovery/privilege considerations
− Under current Federal Rule of Civil Procedure 26(a), drafts of
expert witness reports and all communications between
counsel and the expert must be disclosed
− Under amendments to Rule 26(a) that were proposed at the
end of last year, draft reports and expert/counsel
communications would be deemed attorney work-product and
specifically excluded from disclosure
• These amendments were approved by the U.S. Judicial
Conference in September 2009 and submitted to the Supreme
Court. The Supreme Court is expected to approve the
amendments by May 1 and submit them to Congress. Unless
Congress rejects the amendments, they will take affect on
December 1, 2010
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How to Work Most Effectively With Experts
(cont’d)
• Rule 26(a) amendments were proposed because:
− Many lawyers agree to not exchange drafts and
communications in particular cases
− Access to drafts and communications often increase the
expense of discovery, with minimal return (if any)
− The need to avoid reducing communications (and drafts) to
writing complicates the attorney-expert working relationship
and can increase cost
− The need for consulting experts increased with the
introduction of the current rule in 1993, in order to insulate
testifying experts, which creates inequities for clients that
cannot afford two experts
− Attorneys are less willing to use experts who do not have prior
testifying experience, for fear their attempts to train such
expert to testify will be misconstrued
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How to Work Most Effectively With Experts
(cont’d)
• Optimal timing of retention
− When should you retain your testifying technical
expert(s)?
•
•
•
•
Theory then expert or expert then theory?
Prior to filing of suit (if representing plaintiff)?
Prior to claim construction?
Early to assist in prior art searching/discovery
− When should you retain your consulting expert?
• Same concerns as with testifying expert
− When should you retain your damages expert(s)?
• Early to assist in valuing case for settlement purposes
• Early enough to consult on damages theories
• Early to assist in document collection and discovery
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How to Work Most Effectively With Experts
(cont’d)
• Best practices for working with your expert
− Establish expectations early
• Communicate, especially regarding time line and budget
− Include in developing strategy as appropriate
− Keep your experts apprised of schedule changes, the
implications of rulings (on motions, etc.) and the like
− Adequately prepare your expert for deposition and trial
• Benefits of having your expert work with a jury consultant
− Rule 26 Expert report
• If at all possible, have the expert write their own report or,
at a minimum, make sure they are completely comfortable
with it
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How to Work Most Effectively With Experts
(cont’d)
• Best practices for working with your expert (cont’d)
− Discuss key assumptions necessary for analysis, for
example:
•
•
•
•
for damages experts, patent is valid and infringed
legal arguments stay with attorneys
technical arguments stay with technical expert
damages arguments stay with damages expert
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How to Work Most Effectively With Experts
(cont’d)
− Share key information
• Importance of managing the flow of information
• Implications of “negative” or “missing” information
• Implications of contemporaneous information vs. prepared
for litigation
• Allow access to client’s personnel and client’s site as
needed (e.g., manufacturing locations)
• Technical Expert checklist: briefs, claim construction,
depositions (with exhibits), file history, drawings, product
brochures, design information, exemplars, commercial
embodiments, motions (in limine, Daubert) against the
expert, relevant case law (e.g. doctrine of equivalents, all
elements rule), etc.
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How to Work Most Effectively With Experts
(cont’d)
• Best practices for working with your expert (cont’d)
− Share key information (cont’d)
• Damages Expert checklist: Defendant’s financials (product
line statements), plaintiff’s financials (product line
statements), operating expense detail, overall financial
statements for validation, pricing, license agreements,
royalties paid/licenses (patented product, other), market
surveys, industry data, capacity detail (cap ex
expenditures, plant data, etc.), budgets, forecasts,
marketing or business plans, etc.
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How to Work Most Effectively With Experts
(cont’d)
• Contributions of the technical expert to your case
− Insight (technical, understanding of art) and appropriate
analysis, including “reality checks”
− Prior art searching
− Deposition questions and trial cross-examination
questions for inventor(s), other experts, etc.
− Input for claim construction, motions as they relate to
technical matters (e.g., Daubert)
− Input on exhibits for Markman hearing, trial, etc.
(including demonstratives)
− Assist in preparation of outline of direct testimony for
trial
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How to Work Most Effectively With Experts
(cont’d)
• Contributions of the damages expert to your case
− Assist in document collection and discovery requests to the
other side
− Assistance with 30(b)(6) depositions
− Consultation on damages theories
− Calculation of potential damages
− Deposition questions and trial cross-examination questions for
other experts, etc.
− Input on exhibits for trial, etc. (including demonstratives)
− Assist in preparation of outline of direct testimony for trial
− Usually the last witness for each side
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