Best Practices for Selecting, Retaining and Working with Experts in Patent Cases

ABA-IPL 25th Annual Intellectual Property Law ConferenceArlington, Virginia

April 8, 2010

Moderator: Nicole D. Galli, Esquire, Pepper Hamilton LLP

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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 Received:Perception

What Is Sent:Evidence (and

many other things)

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.

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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?− 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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• 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

Finding and Selecting Testifying Experts (cont’d)

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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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• 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

Finding and Selecting Testifying Experts (cont’d)

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• 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

Finding and Selecting Testifying Experts (cont’d)

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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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• 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

How to Work Most Effectively With Experts (cont’d)

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• 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

How to Work Most Effectively With Experts (cont’d)

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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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• 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.

How to Work Most Effectively With Experts (cont’d)

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• 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

How to Work Most Effectively With Experts (cont’d)

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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