Good expert, good case

In patent cases, the idea of an ‘expert’ witness can seem like a contradiction. The court commonly requires the expertise of a ‘person having ordinary skill in the art’, and not necessarily of a genuine leader in the specific field. Not only that, but this ordinary skill must be retrospective. Patents that are subject to litigation may be several years old.

It is no use employing an expert on the current state of the art if the court is concerned with the state of the art of a decade ago. In both jury and bench trials, the decision-makers (the jury or the judge) are unlikely to be experts in the particular technical field, so highly complex product analyses may not have the desired effect.

Yet, for attorneys, in-depth and current expertise may be vital criteria for selecting an expert, not least because the attorneys themselves may not understand the technical make-up of the patent at issue.

Intervet

Clearly then, selecting the correct expert requires some skill, most notably an appreciation of the competing demands of the role in the context of the matter before the court.

“Selecting an expert witness is more of an art than a science,” says Richard Willoughby, a partner at Howrey LLP in London, whose choice of patent expert in the recent Intervet patent case was commended by the UK High Court.

“It is no use employing an expert in the current state of the art if the court is concerned with the state of the art a decade ago.”

“There are cases where a learned technical expert ends up persuading a judge. [In the Intervet case] the expert was someone who approached it with a very practical, not too learned approach. You need to be looking through the eyes of a notional skilled person, and an ivory tower approach may not be the best one. Some academics are not good at changing their thought process to that of someone closer in character to a recent PhD graduate than they are, for example. If you get a good coalface expert, that’s very often the best bet.”

In Intervet, the patent at issue was for a “[m]ethod for the in vitro diagnosis of type II porcine circovirus infection and diagnostic reagents”. Intervet claimed that the patent was invalid on the ground of obviousness. Intervet’s expert was Dr Alan Radford, an animal virologist with no specific experience of the pig disease and associated virus under investigation.

As the court acknowledged, he “had no experience as a pig vet” and was not “a pathologist or a bacteriologist”. Despite this, the court praised Radford as an “excellent expert witness”. Though he had no first-hand knowledge of the disease or virus in question, the court found “his qualifications and skills as a virologist were such that he could well have been recruited as a member of the [hypothetical] skilled team” that would have been interested in the disease and the possibility that a virus was responsible.

Dr Radford had not served as an expert witness before, but many of those appearing in courtrooms on both sides of the Atlantic are regulars. This has advantages and disadvantages: an expert who is well versed in the quirks of courtroom procedure may be a more fluent representative of their viewpoint; conversely, there is a danger of the expert acquiring a reputation as a ‘gun for hire’ and becoming a professional witness rather than a professional expert.

Experience counts

Particularly in the US, experienced expert witnesses are common. Ivan Zatkovich is a computer science specialist who has served as an expert witness in 18 patent cases, as well as in a similar number of other, non-IP matters. “A lot of times attorneys will say they want someone who is fresh in the field, understands the background and is not necessarily an expert witness,” he says.

“But, in reality, they often choose seasoned experts. You would want someone with some background who has done testimony before. Someone who can get an idea of what the patent was at the time. It’s important that someone was an expert when the patent was filed. Then they can give the background on the invention and haven’t pop out of nowhere.”

There are several skills to look for when hiring an expert, Zatkovich says. “One of my biggest skills is confidence and being able to tell a compelling story. If you have done a thorough analysis and believe your opinions, you have to then make it into a good story, and that means simplifying the argument for your audience.” Of course, a relatively small proportion of IP cases actually end in trial, so experts also need to be of value at the earlier stages of the process.

“You start looking at a case and you start thinking about your approach,” Zatkovich says. “When you are seasoned, you’re doing your clients a service. I do have the opportunity to bring experts on from time to time, and I look for someone who can do a lot of technical analysis and write well. They must have knowledge of the area, and they must want to do it. You have to be curious about inventions.”

To the casual observer, all this talk of expert witnesses prompts a very obvious question. If experts are supposed to be objective, and each case turns on its own particular facts, then how can two competent experts represent different sides of the case? One might expect two people with ‘ordinary skill’ to look at a patent, look at a potentially infringing product and come to the same conclusion about infringement, obviousness or prior art.

This is where the expert’s role gets especially difficult, and why some have fallen foul of judges by defending positions in court that turn out to be untenable based on the evidence. Because while it is true that two opposing experts may reach similar conclusions based on their understanding of a case, the solution is rarely so clear-cut as to provide just one possible answer.

“There are always weak points and strong points to any case,” says Zatkovich. “While you always provide objective testimony, you can help the attorneys by pointing them to the stronger points of their case.” In the average case, in the US at least, an expert is brought in around the time of claim construction. This provides ample opportunity for a good expert to positively influence the direction a case takes and leaves them less likely to be exposed on the stand if the case goes to trial.

“An expert who is well versed in the quirks of courtroom procedure may be a more fluent representative.”

However, experts do not always enjoy the luxury of time. An attorney may realise they need an expert quite late in proceedings, or may end up having to change experts during the case due to unforeseen circumstances or unknown conflicts.

When that happens, the expert may be faced with a harder task, especially if the strategy for the case has already been decided. If such a situation arises, a good attorney may alter their approach to downplay the expert evidence or rework their courtroom strategy to accommodate the new viewpoint.

But assuming the attorney knows what kind of expert they want, they still have to find them and make contact. There are several ways to go about this. The most obvious, and probably still the most common, is to task a luckless associate with trawling through the literature on a subject in the hope of finding someone who fits the bill.

There are other options, though.

Outsourcing the search

Several companies, most notably in the US, provide matching services for attorneys and experts. IMS Expert Services for example, finds experts at the behest of law firms or large corporations who, for whatever reason, don’t want to do it themselves. So a law firm will engage IMS to search for an expert, briefing it on the nature of the case and the type of person required.

Then IMS will research the field and come up with a shortlist of experts to present to the client. If the right expert is found, IMS will take a set fee from the client’s payment to the expert. But why should a non-law firm be better at identifying the best expert for a given case than the lawyers themselves? The short answer is that they may not be.

Ted Gorder is vice-president of operations at IMS. “It’s difficult to tell an attorney that we can do it better, but we are professionals,” he says. “The message is ‘let us do the legwork so that you can do the legal work’...It takes the work off the lawyers and we do it as well as they do. We go deeper and broader when doing our research.”

IMS typically works on about 500 IP cases a year, so it has experience on its side. Though there are no statistics on the success or otherwise of experts who are sourced through the company, it has worked for 90 of the top 100 US law firms and, Gorder says, obtains lots of repeat business from satisfied clients.

He says that IMS looks for specific attributes when recruiting experts. “We look for the four ‘Cs’. The first is credentials: does the expert have the right qualifications? Then there’s credibility: is the expert credible? Competence is also important— whether the expert knows the precedents and standards. Finally, communication: can the expert write well and can they provide a technical explanation in lay terms?”

There are other concerns too. It is normally better to have a witness who is local to the relevant court, to facilitate better communication with a jury. And while it is often desirable to employ an industry specialist, IMS will typically provide a range of academic and industry experts for the client to choose from.

An ideal world

An ideal expert then seems to be a combination of academic, industrial researcher and teacher: someone who can communicate in a range of registers and translate complex ideas into simple language. And whether lawyers find the expert themselves or outsource the process, the choice is likely to have important ramifications for the success of a case.

In jury trials in particular, a ‘person of ordinary skill’ is likely to have an impact that goes beyond the immediate content of a testimony. In a courtroom with lawyers and a judge who know the procedure and feel at home, the expert may turn into a point of reference for those jury members not so familiar with the process.

Paradoxically, the expert may be the key to humanising the case, bringing it down from the level of legal nitpicking and technical argument to the nuts and bolts—the patent, the prior art, its purpose and its use. Where laypeople decide who wins a case, the closest thing to a layperson in the courtroom is a key asset. And that’s the expert.