1 Expert Witnesses in Patent Cases By Edward D. Manzo and Emily ...

Expert Witnesses in Patent Cases
By Edward D. Manzo and Emily S. Adelman 1
Experts of several types are used in litigation for testifying and for consulting with
counsel. 2
This paper considers various aspects of the role of expert witnesses in patent litigation.
As for testimony, the scope is addressed by Rule 702 of the F.R. Evid., which sets forth
two broad topics suitable for expert witness testimony: “If scientific, technical, or other
specialized knowledge will assist the trier of fact [a] to understand the evidence or [b] to
determine a fact in issue, a witness qualified as an expert *** may testify thereto in the form of
an opinion or otherwise if [three conditions are met].” 3 [lettering added]. 4
This means that as far
as expert testimony is concerned, one authorized task for an expert is to assist the trier of fact to
understand the evidence. A second authorized task is to assist the trier of fact to determine an
issue in the case. The first task usually does not involve opinions of the expert, but the second
one does.
1 Edward D. Manzo is a founding partner of Cook, Alex in Chicago and has specialized in IP law since 1975.
He is the originator, lead author, and editor-in-chief of Claim Construction in the Federal Circuit (Thomson-West
2007), an annual review of Federal Circuit case law on substantive and procedural issues in patent claim
construction, and he serves on the Patents Subcommittee of the Pattern Jury Instruction Committee for the Seventh
Circuit. He was also lead counsel or “of counsel” for IPLAC (the Intellectual Property Law Association of Chicago)
in amicus briefs in Phillips, ITW v. Independent Ink, and KSR. He holds a degree in Physics from the Polytechnic
Institute of Brooklyn (Unified Honors Program 1972) and law degree from SUNY-Buffalo (1975, cum laude).
Emily S. Adelman is a third year law student at The John Marshall Law School in Chicago and is a registered
patent agent and law clerk at Cook Alex. She is an Articles Editor on the John Marshall Review of Intellectual
Property Law and has a degree in Mechanical Engineering from the University of Michigan. She has published the
following student comment: Trademark Parodies: When is it OK to Laugh?, 6 J. MARHSALL REV. INTELL. PROP. L.
72 (2006).
2 Among the many resources on expert witnesses is C. Kuhne III, A Litigator’s Guide to Expert Witnesses
(American Bar Assn. 2006). This resource covers the legal framework behind expert testimony, applicable discovery
and evidentiary rules, and selection, deposition, presentation, and cross-examination of experts.
3 The three conditions are “… (1) the testimony is based upon sufficient facts or data, (2) the testimony is the
product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the
facts of the case.” FED. R. EVID. 702.
4 In William Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993), the Supreme Court interpreted
Rule 702 as imposing a “gatekeeping” responsibility on trial judges to make sure that the three requirements of the
rule are met prior to admitting expert evidence .
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What are the roles of testifying experts in patent cases? Patent cases inherently involve
assertions about technology – what the invention is (claim construction), whether it is used
(infringement), whether it meets conditions for patentability (validity), and on occasion whether
there are issues over the disclosures to the Patent and Trademark Office (PTO) – be they
regarding prior art, testing, etc. As such, patent cases involve subject matter that is often the
subject of specialized knowledge and hence are fertile ground for the use of experts. Hence,
these traditional topics addressed by experts in patent cases are: (1) to prove or disprove
infringement, (2) to prove patent invalidity or rebut such attacks, and occasionally (3) to
comment on practices and procedures in prosecuting patents before the USPTO.
The plaintiff’s burden is not only to show liability but also to prove and quantify damages
in a non-speculative way. The patent statute provides for damages not less than a reasonable
royalty, but it also allows lost profits in appropriate cases. One ordinarily uses an expert to
quantify damages, and hence we add (4) to establish the amount of damages.
In these four uses, the expert is presented for purposes of helping to persuade the trier of
fact. This list of four customary experts is not complete. Patent cases are lawsuits and as such
further expertise can be brought to bear beyond the attorney’s arguments and presentations.
Currently, one should also engage (5) an expert on electronic forensics to assist with document
discovery, production, and related issues. Two further uses of an expert witness are: (6) in
preparing and presenting a technology tutorial during (or before) the claim construction phase of
the case, and (7) in preparation of demonstrative exhibits, which can relate to any or all of the
topics mentioned already.
Some of these experts will be testifying while others need not. A 1996 article by Molloy
et al. (“Molloy”) on the use of experts points out how an expert may be used in general, noting
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these reasons that are not specific to patent cases but are nevertheless certainly valid
observations:
(1) to assist you in learning the subject matter in issue;
(2) to assess the record for completeness;
(3) to identify issues otherwise missed;
(4) to assist you in drafting interrogatories and requests for production by
suggesting questions to ask and information in request;
(5) to respond to expert interrogatories;
(6) to evaluate your opponent's response to interrogatories;
(7) to assist you in preparing to depose and cross-examine opposing counsel's
expert;
(8) to draft technical questions for use in questioning the opposing party and the
opposing expert;
(9) to sit in on or otherwise evaluate the deposition of the opposing party and the
opposing expert; and
(10) to help frame the direction from which you will present evidence. 5
Molloy’s 10 observations relate to use of the expert after litigation has commenced, but an expert
can also be used before suit is filed. An expert can help to assess the case. For example, a
prospective plaintiff may turn to experts to evaluate the merits of the infringement case, identify
potential weaknesses in the validity of the patent, and give some idea about damages. For a
company that is aware of an infringement charge or an adversely-held patent that has a chance of
being asserted in litigation, counsel may engage an expert to identify and evaluate defenses.
A. Characteristics of Expert Witnesses
The characteristics of a good expert witness follow from the contemplated task and the
audience the expert is expected to serve. Selecting a testifying expert involves a host of factors
that simply do not apply when the expert is hired to assess the case, educate the lawyer, prepare a
5
Maureen K. Molloy, Patricia S. Orr & Lawrence D. Copp, Five Steps to Using Expert Witnesses Effectively,
22 VERMONT BAR J. & L. DIG. 14, 16 (1996).
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tutorial, prepare exhibits, assist with discovery, or testify in declarations to be filed with the court
on why an adversary’s electronic discovery is deficient or why the adversary has spoiled the
evidence.
When it comes to testifying experts, common sense is a good guide. You want the expert
to help convince the judge or jury that your position is correct (and that your opponent’s is
wrong). From this perspective, the best expert is the one who is most persuasive. Such an expert
(a) has been qualified by a court, (b) has actually testified at trial many times before, possibly on
your technology or on your point, and (c) has generally persuaded the jury in his or her favor
(and whose testimony has withstood appellate review).
However, to expand that a bit and apply a more rigorous approach, the authors of one law
review article analyzed interviews of over 200 jurors in 36 civil cases and developed a
comprehensive model of the key factors that jurors consider when they are judging the credibility
of an expert witness. 6
This research revealed that what makes an expert a good one does not
depend on any single characteristic. 7
Instead, jurors associated the following characteristics with
credible testimony:
• lack of bias;
6 Sanja Kutnjak Ivkovic & Valerie P. Hans, Jurors’ Evaluations of Expert Testimony: Judging the Messenger
and the Message, 28 LAW & SOC. INQUIRY 441 (2003). This law review article made the following analogy
regarding expert witnesses:
[E]xpert witnessing may be characterized as a ‘performance.’ Lawyers commission and direct
these presentations. The determinants of the performance begin with the lawyer’s choice of a
performer (casting) and proceed to the content of the testimony (script) and the manner of
presentation (staging). If these efforts are successful, the audience’s perceptions of the messenger
and the message unite to form their reaction to a performance that is designed to have a specific
impact – like the intertwining of character and plot in a play. As we learn more about how jurors
respond to experts, it is worthwhile to keep in mind that the dimensions of expert performance are
chosen and created with the aim of influencing jury decision making. Arguably, one important
function of adversarial cross-examination is to help jurors pull back the curtain on the performance
of an expert witness. Research that examines the relative effects of credentials, motives,
presentation style, and content on expert credibility may show more fully how jurors judge the
expert performance presented to them.
Id. at 480.
7 Ivkovic, supra note 6, at 445.
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• good credentials;
• a pleasant personality;
• a clear, objective, focused, not overly long presentation that utilizes diagrams and
models;
• use of lay terms;
• a presentation that is complete, consistent, and not too complex;
• knowledgeability in the area of expertise; and
• familiarity with the case. 8
Jurors who were interviewed also gave their opinions as to qualities that they associated
with bad expert witnesses. Bad witnesses:
• are boring,
• make it obvious that they are there because they are being paid,
• do not know much about the case or its issues, and
• get flustered or overly defensive on cross-examination. 9
“Bad” experts also include ones who are evasive on cross-examination when they try to
get around a question or start giving a big explanation for something that the jury does not
understand. 10
An overly-long list of credentials could also undermine the credibility of an expert
witness. 11
A jury may find that a long list of credentials indicates that the person does not have
time to actually practice in the field of their supposed expertise. Furthermore, a long list of
publications by the expert does not necessarily guarantee that the expert has much practical
expertise and experience in the field. Prior publications may contain conflicting portions that
will be open for exploitation by opposing counsel. 12
Practical experience and actual knowledge
8 Ivkovic, supra note 6, at 458 (stating that the jurors ranked presentation style as the most important factor to
credibility; credentials came in second while general impressions of the expert came in third).
9 Ivkovic, supra note 6, at 457.
10 Ivkovic, supra note 6, at 471.
11 Ivkovic, supra note 6, at 462-63.
12 Damages Analysis and Expert Testimony: Avoiding Common Mistakes when Selecting an Expert Witness,
available at fulcruminquiry.com/Selecting_an_Expert_Witness.htm [hereinafter Damages Analysis].
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are more important than paper qualifications. 13
The average expert witness is 50 years old,
which suggests that experience over time is of major importance in an expert’s qualifications. 14
How the testifying expert speaks is also a very important factor. The expert must use
layman’s terms and provide a well paced presentation. 15
In other words, powerful language and
avoiding jargon and long narratives makes for more effective expert witnesses. 16
An expert with
the natural ability to use layman’s terms will probably have some teaching experience. The
expert witness must be able to teach very complex and technical issues to the jury. An expert
with teaching experience, especially in the area of the case, will be able to explain these issues in
a clear and concise manner. “Who is better qualified to teach a jury, than a qualified teacher?” 17
(On the other hand, one who does nothing but teach may have difficulties in cross examination
directed to the lack of practical, field experience. See below.)
Communication skills are not the only characteristic that the jury will notice. Body
language, attitude, carriage, facial expressions, gestures, appearance, and shrugs and nods also
play a crucial role. 18
An expert witness who appears confident, but is not demeaning, will have
the most effective testimony.
13
James S. Schultz, Juries: Arbiters or Arbitrary?: Redefining the Role of the Jury: The Expert Witness and
Jury Comprehension: An Expert’s Perspective, 7 CORNELL J. L. & PUB. POL’Y 107, 113 (1997).
14
Bernalyn D. McGaughey, The Role and Responsibility of an Expert Witness, 3 DRAKE J. AGRIC. L. 227
(1998).
15 According to one study:
Jargon is much more extensive than many experts realize. About 15% of the typical jury pool does
not know what a percentage is. They do not know it must add up to 100. Similarly, what is a
"mean"? . . . "Hostile environment" is viewed by many jurors as including anything that they do
not like about the workplace. This is a reasonable inference based on the everyday use of the word
. . . . Jurors ask over and over again, "Why can't they just tell us in plain English what this all
means?"
Cynthia H. Cwik, Guarding the Gate: Expert Evidence Admissibility, 25 A.B.A. LITIGATION 6 (1999).
16
Steven Lubet, Expert Witnesses: Ethics and Professionalism, 12 GEO. J. LEGAL ETHICS 465, 471 (1999).
17 David Theodore Tirella, Winning Strategies: The Four Ps of Expert Witness Selection, 80 FLA. BAR J. 65, 66
(2006). The top four qualifications an expert can have is that they are a practitioner, a professor, has published peerreviewed
articles, textbooks, or guidelines, and presents well in front of a jury. Id. at 65.
18 Jeffrey L. Baliban, 13 th Annual Guide to Expert Witnesses: What Counts in Selecting an Expert, 24 LOS
ANGELES LAWYER 48 (2001).
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Many of these factors are inapplicable to experts who are not intended to testify. Experts
on electronic discovery, computer systems, and the like need not have jury appeal. Experts who
prepare technology tutorials to be delivered to the judge, and preparers of demonstrative exhibits
also need not have jury appeal. On the other hand, the Federal Circuit does permit district courts
to receive expert testimony on claim construction issues, which often includes technology
tutorials, and that “evidence” may sometimes be presented live. In such a case, the lawyer must
consider persuasiveness to the court (not the jury – as claim construction issues are not for jury
consideration).
An expert can also be used, however, to educate the jury about the technology that it is
going to consider. A judge may allow a witness to present a technology tutorial for the jury – not
a claim construction tutorial. Here again, some jury appeal is desirable, although experts who
present such technology tutorials are not giving opinions, and the jury probably will not need to
address their credibility. Moreover, it is not genuinely likely that the parties will have a true
dispute over what the background technology is in their case. One district court opinion
explained why the receipt of expert testimony regarding the technology in general was permitted,
overruling objections under F.R. Evid. 702 and noting that experts need not express nor even
hold an opinion with regard to the issues involved at trial, but that instead the key concern is
whether expert testimony will assist the trier of fact in drawing its own conclusion. An expert
may explain principles without applying them or offering an opinion on the ultimate issue. 19
Indeed, the Advisory Committee notes to Rule 702 indicate that it can be “important in some
19 Fresenius Medical Care Holdings, Inc. v. Baxter International, Inc., 2006 WL 1329999 (N.D. Cal. 2006) at
*5 citing U.S. v. Rahm, 993 F.2d 1405, 1411 (9th Cir. 1993); Smith v. Ford Motor Co., 215 F.3d 713, 718 (7th Cir.
2000); and Erickson v. Baxter Healthcare, Inc., 151 F.Supp.2d 952, 968 (N.D. Ill. 2001).
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cases for an expert to educate the factfinder about general principles, without ever attempting to
apply these principles to the specific facts of the case.” 20
Note that an economical alternative to hiring an expert to explain the background is to
use the inventor herself, provided she is well-spoken, communicative, preferably animated, and
knowledgeable.
B. Selecting Expert Witnesses
The starting point in selecting the expert witnesses is determining what issues require or
would benefit from expert witnesses and what your budget is like. There are cases where an
expert witness might be helpful but the cost is outside the budget. On the other hand, many
patent cases are sufficiently important that allowances must be made for expert witness costs in
the budget. Other cases are so important that the budget is a secondary concern at best. The
lawyer will need to consult with the client on recommendations and monetary constraints. As
just noted, sometimes an in-house witness can attend to simple tasks relatively economically.
They are, however, inherently biased and become exposed to cross-examination where their
shortcomings can be exposed. Managing the costs of expert witnesses is discussed infra.
1. Expert Teams or a Sole Expert for Each Issue?
Once the issues are determined, a further question is whether a single expert or a team of
experts can be used on any given issue. One may choose a team of experts or a sole expert for
certain issues. A redundant or back-up witness can sometimes be necessary. 21
20 Committee Notes FED. R. EVID. 702.
21
Over a lawyer’s career, it is likely that an expert’s mortality will be a factor, and having a back-up witness is
beneficial. Expert witnesses are often somewhat older, and it is not at all uncommon for an expert to become
incapacitated (or die) late in the litigation, between or during depositions, and even during trial. A provision for
redundancy seems uneconomical but addresses this situation. Not every judge is willing to stay a case for 4-8 weeks
while counsel looks for a replacement expert and his or her deposition is taken. In addition, a replacement who has
to work on a compressed time schedule may lose credibility for that circumstance alone.
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One danger with multiple experts on the same topic is that they may disagree with one
another, and the disagreement might be discovered by the adversary. On the other hand, it is
frequently the case that there is room for disagreement on most issues. If the testifying witness
discusses the case with anyone, that is discoverable. There is no “inter-expert” privilege.
a. Multiple Technologies Used As Prior Art
Some issues have separable components, and in such instances, a team of experts may be
useful, each one focusing on a particular segment of the task. For example, in a case that blends
two technologies, it may be hard to find any single individual who truly is an expert in the
specific narrow field.
Consider an example from the genesis of video games, many years ago, to be played on a
television receiver. The prior art included a “Star Wars” video game played on a Digital
Equipment Company PDP computer by “hackers” (students, teaching assistants) at MIT. The
display they used was not a “raster scan” device but instead a point display customarily used for
computers (a point plotting type of device, not raster scanned). Other prior art involved a device
that would accept point data and reformulate it as an electronic signal to deliver to a raster scan
device, such as a television receiver (or monitor) for display. Here, a person of “ordinary skill” in
programming video games (a computer hacker) was not an expert in video display technology,
and vice-versa.
In this instance, an academic expert could be useful or a vice president of engineering
may have been able to opine authoritatively on the obviousness of combining these technologies.
But in any event, that is one example where multiple experts could be called upon for their
separate areas of expertise. This example would apply when different technologies are combined
in the (alleged) invention. In these instances, each witness testifies in a focused area, and one
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expert could testify on the combination. Moreover, an expert in one technology probably would
not even be qualified in the other technology and could not pass the gatekeeper requirements of
Daubert.
b. Separable Aspects of the Case
In a case of suitable magnitude, counsel may have separate teams for the case-in-chief
and the defensive case. That is, counsel for the patentee may have one team working on
establishing infringement and another team defending validity and enforceability. The
infringement case involves obtaining a detailed understanding of the accused product, process, or
composition and applying the claims of the patent, as interpreted by the court, thereto.
The defensive case deals mainly with rebutting attacks on the patent, usually based on
prior art. This second aspect of the case could be done by the same expert but it could also be
delegated to a separate team of lawyers and expert(s). An important point for the plaintiff will be
to ensure that one expert does not contradict the other. Defense counsel will try to get the
infringement witness to read claims on the prior art and will try to get the validity expert to
identify the accused product, process, or composition with the prior art. The experts have to be
prepared for these attacks.
c. An Expert with Support Staff
On damages, a team approach is commonly used and has economic advantages. The
damages analysis requires so much study and analysis that it is not economical for a high-priced
testifying expert witness to handle all of the analysis personally. Usually, a damages expert
works with a team within his own organization. Sometimes the organization provides a blended
billing rate for this service, and that single rate applies to all hours logged. In such instances, less
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senior experts will be doing much of the background study, while the more senior expert will be
slotted for review, overseeing the expert report, and giving all testimony.
d. Cost Factors
Few clients tell litigation counsel to spend liberally on anything – experts included. Yet,
counsel occasionally are told by clients that a given case is vital to the core (or only) business of
the company or that an adverse outcome of the case will be a mortal blow to corporate growth or
survival. Such cases generally call for a less restrictive litigation budget. More often, however,
clients are interested in low litigation costs.
Sometimes, one can avoid hiring certain experts. Two examples will illustrate this.
EXAMPLE 1: In some simple patent cases, proving infringement
does not require expert testimony because the issue does not
require scientific, technical or specialized knowledge to determine.
This is more likely to be true in simple mechanical cases than in
other types of cases, or where one can make out an infringement
case largely through admissions of adverse technical witnesses or
documents of the adversary. The issue can be resolved based on
common observations within the grasp of the lay juror. (For
example, does the conveyor make a turn? Does an apparatus
include a certain structure? Does the accused product embody
features of a patented design to such an extent that one would be
confused between the patented design and the accused product?)
Fact witnesses can be sufficient to address the issues, avoiding
expert witness costs. Defense counsel, on the other hand, may need
expert witnesses to explain persuasively why what seems evident
is in fact not the case.
EXAMPLE 2: If you represent a patent owner and the real remedy
your client seeks is injunctive relief, e.g., if damages for past acts
are small, then it makes little sense to spend perhaps $100,000 to
calculate that you have been damaged by $10,000. You might
forsake calculating past damages. Of course, in eBay Inc. v.
MercExchange, L.L.C., 126 S.Ct. 1837 (May 15, 2006), a
unanimous Supreme Court rejected the “general rule” of the
Federal Circuit that a permanent injunction should issue after
patent infringement is judicially established, except in
extraordinary situations. Some courts have denied permanent
injunctions even after a plaintiff establishes not only liability but
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also that the infringement was willful. 22 The court may award
relief against future damages in the form of a royalty – effectively
a compulsory license. An expert should be useful in establishing
what would be reasonable under the circumstances. Bifurcation
might be desired to avoid costs of the economic expert witness.
You may sometimes have no choice but to call upon your adversary’s expert(s). While
this is without cost, it is not a suggested strategy and should be attempted only when utterly
necessary – for example when your own expert becomes incapacitated, dies, or her testimony is
rejected under Daubert. Your opponent’s expert may have to choose between answering
truthfully, against the interests of the party hiring him, or answering falsely and losing
credibility. The following is an example:
EXAMPLE 3: Your client is plaintiff in a patent infringement suit
and runs out of funding for the suit. The client advises you that
only $10,000 is available for expert witnesses. After advising the
client of the enormous risks in this, if counsel decides not to
withdraw from representation but to continue, the client decides
not to offer expert testimony on damages in the case in chief. A
client representative will testify as to the plaintiff’s profit margins,
licensing position, past licensing, lost sales, and state of the
market, and will try to quantify damages. The defendant’s damages
expert is expected to testify that the amount is too high by an order
of magnitude. You plan to cross examine that adverse witness to
establish that there is room for disagreement as to the amount and
that your own witness’ posited amount is different from the
expert’s view but still within reason, based on accepted principles.
The reason for the difference may depend on a simple fact
determinable by the jury, such as whether your client would
capture more of the lost sales than the defendant’s expert says.
22 KEG Technologies Inc. v. Laimar, 436 F.Supp.2d 1364 (N.D. Ga. June 8, 2006); Z4 Technologies, Inc. v.
Microsoft Corp., 434 F.Supp.2d 437 (E.D. Tex. June 14, 2006); Finisar Corporation v. The DirecTV Group, Inc.,
2006 U.S. Dist. LEXIS 76380 (E.D. Tex., July 7, 2006); Paice LLC v. Toyota Motor Corp., 2006 WL 2385139
(E.D. Tex. Aug. 16, 2006); Voda v. Cordis Corp., 2006 WL 2570614 (W.D. Okla. Sept. 5, 2006); Sundance, Inc. v.
DeMonte Fabricating Ltd., 2007 WL 37742 (E.D. Mich. Jan. 4, 2007); IMX v. LendingTree, LLC, 469 F.Supp.2d
203 (D. Del. Jan. 10, 2007); Praxair, Inc. v. ATMI, Inc., 479 F.Supp.2d 440 (D. Del. March 27, 2007); Baden
Sports, Inc. v. Molten, 2007 WL 2056402 (W.D. Wash. July 16, 2007); and MercExchange LLC v. eBay, __
F.Supp.2d __, 2007 WL 2172587 (E.D. Va. July 27, 2007).
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Outside these extreme conditions, one can still reduce expert witness costs in patent
cases. When a cost-cutting client requires a testifying expert, counsel may look to less
experienced or less-credentialed candidates who will still do good work and be presentable. Not
every expert whose testimony will meet Rule 702, F.R. Evid., charges top rates. A jury may
forgive less experience in an expert. Of course a more experienced expert will be more polished,
but if cost is an issue, polish may have to be forsaken. Consider the following example:
Example 4: Inequitable conduct is an issue in your case. The client
declines your suggestion to hire a former Commissioner of Patents,
who is extremely polished, testifies regularly, is available, knows
the law thoroughly, and charges $600 per hour. Instead, you locate
a practicing patent prosecution lawyer with 40 years of hands-on
experience in the same city where the case is being tried. His
testimony will be acceptable under Rule 702, and he charges $200-
250 less per hour than the former Commissioner.
Another way to economize is to use an in-house witness who qualifies as an expert. This
trades cost for possible loss of credibility, as the witness will generally be seen as biased.
However, this generalization can be overcome, as each candidate must be evaluated
independently. It is not inconceivable that an in-house witness will be persuasive.
One can save on expert costs by limiting the number of experts. Let a single technical
expert witness handle both validity and infringement issues.
Expert witnesses generally charge on an hourly basis. If cost containment is an issue, you
should to make it clear to your experts what your monetary constraints are and require the
prospective experts either to agree to a maximum price or at least to notify counsel when costs
are approaching an agreed amount.
A fixed price contract can be discussed. To protect against paying the fixed price despite
an early disposition, the prices can be “staged.” A practical problem with fixed price contracts is
that one never knows in advance how much work is going to be needed. Experts, like lawyers,
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are not generally willing to devote unlimited excess hours without compensation. However, with
some imaginative thinking, a fee structure might be negotiated that is neither contingent on the
outcome nor based wholly on a straight hourly basis. For example, engagement could be on a
monthly basis, or tiered based on the number of hours, or have different rates apply to different
tiers. It is not uncommon for experts to have a lower rate for office work than for testimony.
Finally, this discussion should not be understood as a suggestion that these cost-cutting
measures should be used routinely. Patent litigation in general is too complex, has high attorney
fees, and has a strong probability of injunctive relief to risk losing the case by skimping on
expert witnesses.
2. Sources of Expert Witnesses
Technical experts fall generally into two camps -- academics and practitioners. Consider
the exact issue or testimony desired. If your position is that the subject matter is so old that it has
been taught in universities, an academic may be an appropriate expert witness (and he may also
be a fact witness). If the issue is obviousness, one question to consider is what basis an academic
has to opine on what level of “ordinary inventiveness” is possessed by a person ordinarily skilled
in the art (apparently relevant under the Supreme Court’s ruling in KSR v. Teleflex) and what
would not have been a routine matter to the routineer. Counsel will want to explore the basis the
contemplated expert has for rendering such an opinion and whether it meets the requirements of
Daubert.
Fruitful sources of expert witnesses are inventors of relevant prior art patents, inventors
on contemporaneous patents in the same field, and scientists and engineers who work for other
enterprises. Hiring an expert from within the client organization is not optimal because it
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diminishes the perceived neutrality of any opinions he may offer. It is important that an expert
who is going to offer an opinion on a matter in dispute be able to say that he is independent of
the parties (and of counsel). If he is not neutral, his objectivity will be questioned.
On the other hand, if the purpose in calling a certain expert does not involve opinions, but
only is for explaining scientific principles, then some bias in the witness may be tolerable, and
the witness will usually be highly economical. Moreover, his testimony on this subject is not
generally at issue and is not likely to be contradicted. If the matter were in controversy, that
ought to be learned in discovery and an appropriate substitution can be made.
In any event, the expert witness with practical experience in the field at issue should
make a very fine witness.
To maximize effectiveness, counsel has to consider the big picture and how the testimony
will be received by a lay jury. An advantage of an expert witness is that he does not need to have
any preexisting familiarity with the dispute – he need not be a fact witness. He can be a person
who is called in after the fact to look over the evidence, explain it to the jury, and give an opinion
based on scientific principles. This is better than a lawyer presenting it, since it comes in as
testimony from an unbiased “neutral” witness. In this sense, an expert witness is a very potent
weapon.
Having too many experts may backfire – as the jury may consider that if this many
experts are required to explain the subject, it must be inventive.
Another expert for the case may never be intended to be an expert witness. That is, the
non-witness expert is there to consult with the lawyer. Attorney-client privilege can be
preserved, as the consulting expert is employed by the attorney in the preparation of the case and
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forms part of the litigation team. Recent amendments to the Federal Rules of Civil Procedure
differentiate between testifying experts and non-testifying ones and address this concern. 23
3. The Selection Process
Selecting the right expert witnesses for a particular case may be difficult. 24
As with many
other selection processes, comparison shopping is highly recommended. Many searches begin
with referrals from colleagues. 25
Expert search companies and online directories may be of help
as well. 26
On the other hand, one author suggests:
Instead of blindly following a colleague's recommendation,
approach the search as though there has never been a case like your
client's. Review pertinent technical articles, and consider as
potential experts the authors and other sources that are cited in the
23 FED. R. CIV. P. 26(b)(4)(B). The current rule provides:
(B) A party may, through interrogatories or by deposition, discover facts known or opinions held
by an expert who has been retained or specially employed by another party in anticipation of
litigation or preparation for trial and who is not expected to be called as a witness at trial, only as
provided in Rule 35(b) or upon a showing of exceptional circumstances under which it is
impracticable for the party seeking discovery to obtain facts or opinions on the same subject by
other means.
Id. The amended Rule, effective December 1, 2007, provides:
(B) Expert Employed Only for Trial Preparation. Ordinarily, a party may not, by interrogatories or
deposition, discover facts known or opinions held by an expert who has been retained or specially
employed by another party in anticipation of litigation or to prepare for trial and who is not
expected to be called as a witness at trial. But a party may do so:
(i) as provided in Rule 35(b); or
(ii) on showing exceptional circumstances under which it is impracticable for the party to
obtain facts or opinions on the same subject by other means.
Id. The Rule permits discovery of non-testifying experts only if exceptional circumstances exist where it is
impracticable for the party seeking discovery to obtain facts or opinions on the same subject by other
means. The Rule encourages the parties’ pre-trial efforts and is intended to prevent one party from freeriding
on the other party’s work. Kelly McDonald, Gimme Shelter? Not if You are a Non-Witness Expert
Under Rule 26(b)(4)(B), 56 U. CIN. L. REV. 1027, 1029 (1988); see also Hermsdorfer v. Am. Motors Corp.,
96 F.R.D. 13, 14 (W.D.N.Y. 1982) (granting motion to protect non-testifying witness’ attorney-client
privilege); Pearl Brewing Co. v. Jos. Schlitz Brewing Co., 415 F. Supp. 1122, 1137 (S.D. Tex. 1976)
(requiring party to disclose non-testifying expert’s work based on exceptional circumstances).
24 One law review author felt that most experts do not market themselves as expert witnesses, but have a good
reputation through word-of-mouth advertising. General networking and client referrals are a large part of the expert
witness business. This means that the best expert witnesses are probably the hardest to find. See McGaughey, supra
note 14.
On the other hand, damages experts generally keep a fairly high profile. Technical experts may not be as high
profile, but companies have formed to connect technical experts with lawyers. Forensic experts seem to advertise
routinely. Demonstrative exhibit preparers also actively solicit business from the legal profession.
25 Molloy, supra note 5, at 16.
26 Id.
16

footnotes. Seek former employees of the defendant who might be
willing to testify as experts. 27
It is important that, before even looking for an expert witness, the lawyer identify the goal in
hiring an expert witness. 28
Thinking about what the lawyer is trying to achieve in hiring an
expert witness should suggest the characteristics a candidate should have in order to achieve that
goal. Some general criteria that are helpful during the selection process include:
• Education
• qualifications
• credentials
• communication skills
• testimony experience
• cost
• the attorney’s personal experience with the expert
• the reputation and resources of the expert’s firm. 29
A lawyer should interview several expert witnesses in order to become familiar with their
processes and thoughts on the case. 30
The lawyer should make sure that the expert has the right
credentials and can do so by asking such questions as:
• what is the expert’s methodology?
• what is the source of that methodology?
• has it been accepted in the field?
• has it been tested?
• has this methodology been peer reviewed or criticized? 31
27
John C. Cabaniss, The Basics: Choosing and Using an Expert Witness, available at
www.thefreelibrary.com/_/print/PrintArticle.aspx?id=19506755.
28
See Karen L. Hirschman, Selecting, Preparing, and Cross-Examining Expert Witness, available at
www.vinson-elkins.com/pdf/resources/PLIT0507HIRSCHMAN.pdf. This article includes a practice checklist for
attorneys to use to help them with selecting, preparing, and cross-examining an expert witness.
29 Baliban, supra note 18.
30
See Gabrielle Bonne, Working with an Expert Witness: The Seven Deadly Sins, available at
www.law.com/jsp/law/LawArticleFriendly.jsp?id=1144760096580.
31 See Hirschman, supra note 28.
17

An expert’s ability to provide short answers that are directly on point should also be
assessed before hiring. 32
The expert should be able to explain difficult concepts quickly and
have energy and enthusiasm in doing so. 33
For an effective expert witness testimony, the jury
must not only understand and believe it, but it must also motivate them. 34
A candidate who has
testified as an expert witness in the past is familiar with the litigation process and may have the
confidence to convince a jury. 35
Expert witnesses should not be too quick to agree with an attorney’s theory of the case.
Thought should be given to the opponent’s position, and then the expert should explain why it is
incorrect. 36
It is imperative that experts be able to express their candid opinion without sounding
like advocates for the party engaging them. “No one enters a courtroom or hearing unbiased.
But no witness should enter the courtroom with a ‘what do you want me to say’ attitude.” 37
If
the expert witness does not agree with the attorney’s position, his expertise may still be valuable
in preparing for trial. If the expert thinks the case is a weak one, he may be able to help plan a
settlement negotiation or help the case to move forward with an alternative theory. If it turns out
that the expert does not have expertise in the right area, he may be able to refer the attorney to a
more suitable expert for the case.
Scientists and doctors often specialize in different fields within their area, and an attorney
should hire a scientist with the appropriate level of expertise. In some cases multiple experts
should be hired because of their varying skills. One expert may be hired to help prepare the case
32 An expert that provides answers that are longer than necessary may bring trouble to the case by confusing the
jury or by provoking unwanted questions upon cross-examination. David Nolte, How to Succeed with Expert
Witnesses, 29 LOS ANGELES LAWYER 35 (2006).
33
Damages Analysis, supra note 12.
34 Schultz, supra note 13, at 114.
35
See Baliban, supra note 18.
36 Damages Analysis, supra note 12.
37 McGaughey, supra note 14.
18

while a different expert may be hired to testify at a deposition and trial. 38
Many experts who are
not available for trial may be able intellectually to dissect the case to determine if it is weak. 39
This expert may also be able to aid in finding an expert to testify. Caution should be taken,
however, if two experts are hired because they may impeach each other with inconsistent
testimony. 40
C. Expert Witness Preparation
There are many things an attorney can do to help an expert prepare to testify at trial in
order to maximize its effect on the jury. An attorney’s litigation process should provide plenty
of time to select the right expert, for the expert to perform adequate analysis, and to alter the plan
based on the expert’s preliminary conclusions. 41
Undertaking a consultation with an expert early
in the litigation process is good practice. This consultation will often uncover new evidence in
the case, which may be critical to the jury’s understanding and result in an educated verdict. 42
Attorneys should provide the expert with all of the information and materials necessary to
understand the case.
The expert will have to conduct independent research and constantly be informed of the
latest scientific breakthroughs. 43
Next, tasks and projects should be broken up into manageable
pieces that have separate budgets. 44
The benefits of doing this includes better cost control, less
time wasted doing unnecessary work, better adherence to reasonable deadlines, and the ability to
38 Schultz, supra note 13, at 112.
39 Molloy, supra note 5, at 14.
40 Nolte, supra note 32.
41 Damages Analysis, supra note 12.
42 Schultz, supra note 13, at 111.
43 Schultz, supra note 13, at 114.
44 Scott E. Miller, Expert Witnesses: The Do’s and Don’ts of Using Expert Witnesses, 62 OR. ST. B. BULL. 35
(2002). At the end of this article there is a table containing and comparing the do’s and don’ts of using expert
witnesses.
19

assess the quality of the case early on. 45
It may be a good idea for the expert to make an oral
presentation to the attorney on his research and opinion so that questions may be asked. 46
This
could lead to possible holes in the expert’s analysis of the case. This may also help in preparing
for any settlement negotiations in the case. The expert must be prepared for a rigorous crossexamination
of his opinion based on his written report. The lawyer can help by aggressively
challenging the expert during the initial presentation. This will also help to determine the
expert’s credibility at trial. If the client is a patentee, the lawyer should research the judge
overseeing the case to determine the judge’s past procedures in determining the admissibility of
expert testimony. 47
Discussing whether there is government data that can support the client’s position is very
important. Juries find that government information is highly credible, as opposed to learned
treatises and academic publications. 48
The direct examination of the expert witness begins with the expert’s credentials.
Although it is important to demonstrate that the expert is qualified to give an opinion about the
specific issue at hand, spending too much time going over the credentials should be avoided.
This is because juries tend to be less impressed with education, background, and membership in
professional organizations. 49
Next, the attorney should let the expert tell his opinion and narrate the story. Abrupt
questions and answers gives the appearance that the expert is unsure, not confident, or hiding
45 Miller, supra note 44.
46 Miller, supra note 44.
47 Michael H. King & Stevens M. Evans, Selecting an Appropriate Damages Expert in a Patent Case; An
Examination of the Current Status of Daubert, 38 AKRON L. REV. 357, 367 (2005).
48 Nolte, supra note 32.
49 Cwik, supra note 15.
20

something. 50
The fewer questions asked by the attorney, the more the expert will be able to
teach the jury.
Analogies are of the utmost importance in giving expert testimony. 51
The attorney and
expert should analyze the background of the jury to determine an analogy that would be most
understood by them in order to communicate the particular science. 52
Juries tend to remember
real world comparisons and testimony about what the expert would do in certain situations. 53
The expert should provide direction to the jury during his testimony and emphasize the more
important factors. 54
They should also give several reasons for their conclusions instead of just
one. 55
Repetition is an excellent tool when the word or sentence being repeated is varied slightly
but still conveys the same message. 56
Visual aids are valuable tools. They should provide interest, clarification, and retention. 57
A poorly designed exhibit can confuse the jury and make them unreceptive to the information
presented. Therefore, simple exhibits are usually the best. A simple black and white two
dimensional drawing can be more effective than a professionally prepared three dimensional
illustration of the same subject. 58
The lawyer should get the expert to leave the witness box and
walk over to the jury in order to explain an exhibit easier. The expert can use a laser pointer to
highlight a chart or graph. He can also illustrate his points and conclusions by summarizing
them on a drawing board placed in front of the jury. 59
50
Debra Guiou Stufflebean, The Expert Witness: Knowledge and Communication (The Deadly or Dynamic
Duo), 4 J. OF FORENSIC ECON. 3, 317-327 (1991).
51 Schultz, supra note 13, at 115.
52 See Schultz, supra note 13, at 115.
53 See Cwik, supra note 15.
54 Stufflebean, supra note 50.
55 See Cwik, supra note 15.
56 Stufflebean, supra note 50.
57 Stufflebean, supra note 50.
58 Schultz, supra note 13, at 115-16.
59 Cwik, supra note 15.
21

An expert should avoid doing or saying some things when testifying. Abbreviated terms
should be used as little as possible because even if an abbreviation has been earlier defined, there
may be a lag time in remembering what it stood for each time the abbreviation is used. 60
expert should also avoid using qualifiers such as “almost,” “maybe,” and “hopefully.” 61
The
Instead,
using words such as “very” and “certainly” is much more powerful. 62 Testimony starting with “I
saw,” “I heard,” or “I examined” carry the most credibility. 63
Phrases such as “in my opinion”
and “based on my experience” are less persuasive than “my analysis indicates” and “the data
supports.” 64
The expert’s eyes should be on the attorney while he is asking questions during direct
examination and then to the jury when the testimony is focused on teaching the jury about the
expert’s opinions. 65
On cross-examination, the expert should be polite and patient in answering
questions. 66
The expert should not role his eyes or smile to the jury during cross-examination
because it may give the impression that the expert is insincere. 67 Submitted: August 27, 2007
\\Sbssrv\company\s-emanzo\speeches\Expert Witnesses.doc
60 Stufflebean, supra note 50.
61 Stufflebean, supra note 50.
62 Stufflebean, supra note 50.
63 Nolte, supra note 32.
64 Nolte, supra note 32.
65 DAVID M. MALONE & PAUL J. ZWIER, EFFECTIVE EXPERT TESIMONY, Ch.9 (National Insitute for Trial
Advocacy) (2000).
66 Malone, supra note 65.
67 Malone, supra note 65.
22