Expert witnesses can be a valuable element to any type of legal case. This is especially true when the case involves complex concepts or technologies that are likely to be unfamiliar to judges and juries. Effective patent expert witnesses need to have thorough knowledge of the technology described in the patents and also, the specific area of intellectual property involved in the case. While these experts can be important players in the legal process, what is their true role? Do they provide objective useful information and contribute to the formulation of the arguments as part of the team, or are they used simply to add credibility or parrot the attorneys arguments to get the information on the record, or to present it to the attorneys?
What is an Expert Witness?
The basic definition of an expert witness is relatively self-explanatory – they are experts in their field who are brought on to provide input or testimony on a related legal matter. They use their knowledge, skill, education, experience or training in their specialized field to provide information that will assist the trier of fact and help them make the best decision.
Expert witnesses are not attorneys, at least not usually. The attorney’s emphasis is on legal stuff with a knowledge of technology, while an expert’s emphasis is on the technology, with a knowledge (hopefully) of the legal stuff. The expert’s job is to provide sound opinions and the reasoning and support for those opinions. They are hired to be the voice of reason when evaluating arguments and opinions and to stand against opinions they don’t believe in. It is important that the expert actually understands the issues so that they can be a member of the team, otherwise all they can do is parrot the attorney’s position.
A good patent expert can help find evidence and generate good arguments. For example, many times our experts have found prior art that the attorneys and search firms have not found. They have created and strengthened invalidity arguments that the attorneys hadn’t fully laid out or understood. Many times we have found new grounds for infringement that the attorneys didn’t come up with on their own.
The patent attorneys I have worked with are smart, and most if not all, have a degree in a technical field. However, the job of an attorney is different from that of an expert. The job of the attorney is to be an advocate. It is their job to try and get the best results for their clients. Sometimes, well intentioned attorneys make arguments that are overboard. It is the expert’s job to be the voice of reasons and objectivity. The expert needs to say when the argument goes too far for the available evidence and involved technology. They need to have the courage to tell the attorney that they can’t and won’t make certain arguments. Otherwise, if they make those arguments, they can lose their most important asset – their credibility. In certain circumstances, an expert can even be excluded and not allowed to testify in the case at all.
Testifying experts often have their qualifications challenged by opposing counsel. It is crucial to the overall success of the case and an expert’s ability to testify that they are fully qualified to offer their opinion on the subject matter in question. Attorneys should always thoroughly vet each expert witness they intend to work with.
Originating from the 1993 case of Daubert v. Merrell Dow Pharmaceuticals, the Daubert Standard is widely used in many state and federal courts as a way for judges to evaluate and determine the validity of expert testimony. The five questions that judges are to consider when applying the Daubert Standard are as follows:
- Can the theory or technique be tested, and has it been tested?
- Has the theory been peer-reviewed or published?
- What is the error rate?
- What standards control the operation of the technique, and are they maintained?
- Is it widely accepted among the relevant scientific community?
The Daubert Standard can also be useful when attorneys are reviewing an expert’s history, with special attention paid to any challenges or disqualifications the expert has had in the past.
Patent Expert Witnesses
Just like other types of expert witnesses, patent expert witnesses are subject matter experts and offer specific knowledge and experience in their fields. Witnesses with targeted expertise in the topics involved in the case should be used, including electrical engineering, software, product design, mechanical engineering or other niche areas. The best patent expert witnesses also have a solid understanding of patent law, in addition to their technical expertise.
So the question arises, does a patent expert witness provide valuable, independent analysis, and insight, or are they simply a way for attorneys to make their arguments and get information presented at trial? The intention is, of course, for the expert witness to give their unbiased opinion based on their depth and breadth of knowledge related to the subject technology. Unfortunately, some patent expert witnesses in the past have been shown to be influenced by legal counsel. This happens more often when the expert doesn’t really understand the law which forms the basis of their testimony. when this happens, the testimony can be both unconvincing and uncredible, and was proven to hold no basis for the facts of the case. Here are two examples of this:
Apple v. Wi-LAN
One example is the case of Apple v. Wi-LAN. A final judgment was entered by the U.S. District Court for the Southern District of California, awarding Wi-LAN over $85 million in damages for infringement. Following an appeal by Apple and a cross-appeal by Wi-LAN, the case was heard by the U.S. Court of Appeals for the Federal Circuit.
The testimony for Wi-LAN’s patent damages expert heavily relied on testimony that was found to be factually inaccurate. As such, the Court determined that the patent expert’s opinion was “untethered to the facts” of the case. This determination led to the previous verdict of $85 million being vacated, showing the importance of accurate and objective witness testimony.
Caltech v. Broadcom Ltd.
Another example of a patent expert witness negatively altering the course of a case can be found in California Institute of Technology v. Broadcom Limited. The U.S. Court of Appeals for the Federal Circuit determined that Caltech’s expert witnesses did not offer any factual basis in their testimony. The judge in the case referenced existing case law by stating that expert testimony fails when it discusses the result instead of the mechanism, as was the case with Caltech’s witnesses.
The ruling goes on to say that Caltech’s experts failed to explain why two non-infringing components could be combined to create an infringing device. The decision upon appeal was to enter a judgment of non-infringement in favor of Broadcom, reversing the previous award of $1.1 billion to Caltech.
Alpine Engineering’s Commitment
Patent litigation is heavily reliant on expert witness testimony for showing infringement or invalidity of a patent. It is also an area of law that often involves substantial amounts of money, as seen in the cases summarized above. Because of this, ensuring that your expert understands patent law, can contribute to the analysis and can withstand scrutiny is crucial. Testimony from a patent expert who is not an independent, unbiased, and committed member of the team will not stand up to the challenges of the courtroom.
Alpine Engineering & Design, Inc. is committed to providing an impartial and honest summation of the facts at hand, based upon science and engineering best-practices. Our expert witnesses are mechanical engineering specialists who are well-versed in patent law. As a company, Alpine Engineering’s allegiance is to providing an unbiased opinion, which the team who sought our assistance may then use in their decision of the best way to proceed with a case. Alpine Engineering is never a puppet, but instead part of the team to seek the best outcome possible for all parties involved.
To have us give an unbiased evaluation of your patent or product liability case, call us at (801)763-8484 to learn more about the expert services we offer.