Transcript DINNER SESSION – FEBRUARY 15TH INTRODUCTION TO THE …

Expert Witnessing for Fun and
Profit
© Tom Rhyne 2014
General Outline
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A review of what a patent is, and isn’t
Overview of patent litigation
Role of expert witnesses
How to get started as an expert
What expert witnesses are asked to do
A few “tips of the trade”
What Does Patent Litigation Entail?
• Plaintiff tries to prove that:
– Defendant infringes one or more of the issued claims in
the U.S.
– Plaintiff is being harmed by that infringement
– Defendant must pay damages ($) to the Plaintiff for past
infringement (up to six years)
– Defendant may need a license for future infringement
• Defendant tries to prove that:
– They don’t infringe
– The asserted claims are invalid over the prior art
– The Patentee did something wrong in getting their patent
– The USPTO did something wrong in issuing the patent
How Does a Patent Trial Proceed?
• If a case gets to trial…
– Jury selected
– Opening by Attorneys where they lay out their cases
– Testimony by witnesses for Plaintiff introducing the patent
and explaining how the Defendant allegedly infringes and
what compensation is appropriate
– Testimony by witnesses for the Defendant explaining why
they don’t infringe and usually that the patent is invalid,
plus alternate theory of damages
– Testimony by witness(es) for Plaintiff rebutting whatever
the Defense witnesses said
– Closings by Attorneys (P/D/P)
What Happens Before Trial?
• 15 to 24 months of work for all parties…
– Plaintiff does “due diligence” in forming their assertions of
infringement
• Collect public information; buy a product and analyze it, etc.
– Plaintiff notifies defendant, or files without notice
– Plaintiff given access to confidential information
under a Protective Order
• Circuitry, software, employees made available for deposition
– Defendant searches for prior art to assert
invalidity
– Defendant figures out ways to deny infringement
What Happens Before Trial?
• 15 to 24 months of work for all parties…
– Both sides prepare and file documents
• Brief by attorneys explaining the theories of
infringement and invalidity
• Court provides “constructions” of key terms in the
asserted claims (Markman Opinion)
• Reports written by experts explaining their opinions
and the bases for those opinions
• Experts provide rebuttal reports
• Experts are deposed by attorneys on the opposite side
Who Are the Witnesses at a Patent Trial?
• Fact Witnesses
– Inventors who tell their story
– Technical people from the Defendants who explain the
accused product or method
• Technical Expert Witnesses
– Individuals who seek to explain the relevant technology in
relation to the asserted patent
– Free to offer their own opinions about issues in the
litigation
• Economic Analysts
– Propose what damages ($$) should be paid if Plaintiff wins
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My First Case as an “Expert” Witness
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My First Case as an “Expert” Witness
• Wentworth v. Gulton, April 14, 1982
• Patent Infringement Case – Bus Destination
Signs
• Bench Trial
• Wentworth had Patent and Sued Gulton, a
Company that Was Selling “Flip-Dot” Signs
• Key Issue at Trial Was Invalidity for
Obviousness Over the Prior Art
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My First (and Following) Cases
• Wentworth’s patent was found to be invalid.
“Because the court decides that the patent is invalid
as an obvious combination of prior art, it does not
consider the infringement issue.”
• My Second case:
– Philip Hinderstein (“Scott Hunter”)
– Wayne Willenberg
– And so on…
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So, You Want to be an Expert Witness…
• You probably need to have good-sounding
resume:
– Lots of letters after your name?
– Lots of directly relevant experience?
– Publications in the relevant field?
• Good reading skills
• Good writing skills
• Good at explaining complex things to nontechnical people
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Opportunities for Engineers
• Testifying expert
– Explain technology to attorneys, Court, and jury
– Offer opinions about infringement and validity
– Usually help with planning for trial
• Non-testifying expert
– Analyze accused systems, including “code reads” of
software-based systems
– Analyze prior art
– Assist attorneys and testifying expert(s)
• Patent Agent
– Assist with the “prosecution” of a patent application
1999
Provisional application filed on July 3, 1998. Full application must
be filed no more than 1 year later to have benefit of that priority
date. What is the latest date for filing the full application?
If So, How Do You Get Started?
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Contact an expert placement firm
Word of mouth from an existing expert
Contact an attorney at an IP litigation firm
Problem: Experience is needed, but only
comes from getting work as an expert
– Attorneys are reluctant to hire someone as a
testifying expert who hasn’t done it before
• Has been deposed
• Has testified in Court and been cross-examined
Some Basic Facts…
• Lots of demand for experienced experts
– Texas is a hot bed of patent litigation
– There are three or four of us with EE/CS experience
and Texas credentials – often all of us are booked up
• Experts get paid by the hour, win or lose
– Testifying experts charge from $400 to $700 per hour
– Non-testifying experts charge from $200 to $400 per
hour
– Some experts double the fee for testimony in
deposition or trial
More Basic Facts…
• Typical case takes 1.5 to 2 years
– Can generate from 100 to 300 hours of work,
with higher time for cases that go to trial
– Far less than half of the cases go to trial
• You can do much of the work in your home
town, but may have to travel elsewhere
– Code review, equipment inspection
– Need to attend trial almost every day
– Trials involve long days with planning at night
What Happens After I am Retained?
• Discussion with attorney regarding your
possible role and the patents and accused
products/methods in the case
• Sign a Letter of Appointment and a Protective
Order if you are doing infringement or noninfringement (deal with secret stuff)
• You are made known to other side who have
a week or so to object to you
What Happens After That?
• Study, study, study…
– Patent itself, File History, Related References, Preliminary
Infringement and Invalidity contentions; claim
constructions provided by the Court; accused system
• Meet with attorneys to exchange information and ideas
• Start work on an expert report that will explain what you
have done to form your “expert” opinions, what those
opinions are, and the bases for those opinions
– Includes your CV, hourly rate, publications, work history,
and testimony over the past four years
What Happens After My Report is Filed?
• Other side schedules a deposition
– 7 hours on the clock for each report for cases in
Federal Court
– Videotaped and court reporter takes it down
– Other side’s attorney asks carefully prepared
questions
– You are always one answer away from losing
your client’s case
• Supplemental reports can trigger additional
depositions…
Things to Know About Depositions
• Really smart people have torn your written
reports apart
• Really smart people have reviewed everything
else about you (prior writings of books,
papers, possibly prior expert reports, and
prior testimony)
• Questions be can wide ranging
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Depositions
• Preparation…
– Re-read everything from both sides, especially
rebuttal reports that attack your reports.
• But, know your own report inside and out.
– Plan for 1 to 2 days of “depo-prep” with your
attorney(s).
• Go over weak points as identified in rebuttal reports.
• Ask about the nature of the deposing attorney.
– Remember that he or she is not your friend.
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Depositions
• Federal depositions normally limited to 7
hours on the clock. Usually takes 9-10 total
hours.
– Try to make them come to your place if you can.
– ITC depositions not so limited.
– What to wear?
– Answer the question that is pending.
• Don’t volunteer.
• Less said is usually the better choice.
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Depositions (Expert or Not)
• During the Depo…
– Your attorney will have a style of objecting…
• Lots? Few?
• Learn their style and leave them time to object if needed.
• The Eastern District’s “Form” objection.
– Watch for bad questions yourself…
• Unclear questions – don’t help, just ask for clarification. It
never hurts to ask!
• Compound questions. “You have asked two questions, which
one do you want me to answer.”
• Assumes facts not in evidence. “I’m sorry, but I cannot agree
with your question as stated.”
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Depositions
• During the Depo…
– Your expert report is your best weapon and
shield.
• Bring a proper copy.
• Refer to it often. After looking up a citation, “As I said
in paragraph 34 of my initial expert report …”
• Feel free to ask for clarification.
• If you don’t know, just say so and shut up.
• Don’t respond to attorney tricks like looking at you
quizzically or leaving dead air for a while.
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Depositions
• During the Depo…
– Be careful what you and your attorney discuss during
breaks or at lunch. Might be asked about that.
• Confirm if that is off limits.
– Some attorneys want to micro-correct your prior
answers during the deposition.
• If you made a significant mistake, OK.
• Minor things can be done when you review the transcript –
you will have an opportunity to do that.
– I ask attorneys to hold minor criticisms until after the
deposition is over. “Greatest deponent ever!”
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Depositions
• During the Depo…
– Take your time.
– Take plenty of breaks.
– Try not to look too informal on camera.
– If the attorneys “get into it,” stay out of it.
– If you are comfortable doing it, try to avoid brief
answers that don’t represent your full opinions,
but don’t equivocate or pontificate.
• The other attorney is often just looking for a sound
bite.
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Depositions
• During the Depo…
– Can’t be forced to give a “YES/NO” answer.
• Your attorney should help with that if you are pushed.
– Ignore attempts to intimidate you…
• References to “the Jury”
• Comments like “so, you can’t answer my question?” or
“You don’t know that?” or “You didn’t do that?”
– Don’t be afraid to state that you believe you have
already answered the pending question.
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Depositions
• During the Depo…
– At some point you will be asked a bunch of
question about your credentials.
• Just answer them directly and truthfully.
• You will likely hear those questions again.
– Re-Direct at the end…
• I prefer not to do this, but some attorneys seem to feel
obligated.
– Need to fix problems with testimony.
– Need to get information not in the reports on the record.
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Details…
• Getting work:
– More you do, the more you get, unless you screw
up.
– But, expert witnessing is the only profession
where the more experience you have the less
qualified you are!
– Word of mouth versus placement firms.
• Word of mouth is good.
• Placement firms vary. Check them out. Can be very
useful .
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Attorney Danger Signs…
• Not all attorneys are created equal:
• Calling you too late in the game.
• Failure to reply to calls or emails.
• Pressure to hold technical positions you are
uncomfortable with.
• Changes in assigned personnel at law firm.
• Unexpected insertions into a draft report.
• Lack of preparation for deposition or trial.
• Overloaded with other responsibilities as case
proceeds.
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Details…
• Financial Issues:
– How many cases can I handle and still do my
other job?
– How much should I charge?
• Will be known and likely asked about during trial.
– Don’t let it bother you!
• Can be too much or too little.
• “Hazardous duty pay?”
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Details…
• Keeping records, expenses, invoices…
– I keep a spreadsheet showing hours worked each
day and what I did. Easy to get behind and forget.
• How much detail on the entries?
• Keep up with out-of-pocket expenses, too.
– Who pays me? Law firm or the actual client?
• Discuss payment procedures and expected timing at
the beginning.
• Discuss how to handle slow payment.
• Discuss what happens if the client goes broke.
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Details…
• Demeanor in and outside the Courtroom:
– Don’t bring cell phone to Court.
– Assume that a Juror is always watching.
– Avoid being chummy with attorneys and experts
on either side.
– Fancy cars, jewelry, watches are usually to be
avoided.
– The “Are you still here?” effect…
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