Patent litigation is greatly influenced by having an expert witness on your side. These expert witnesses provide testimony for infringement, validity, damages, etc.
As a patent litigator, you would want to on-board such individuals in your team during trials. However, the key question is not whether an expert witness helps or not. It is –
How to find an expert witness that makes the most sense for the case?
To find one, some litigators might do a Google search (often ineffective), some may go to specific websites where people link their capsule bio (Note: Good consultants don’t stay active on such databases) or ask someone (in their network).
What is the best option to go with? – You ask.
Finding an expert witness through your network is most effective.
However, the challenge starts when you figure that expert witness is not a career option that many individuals pursue as a full-time job. This means depending upon the patent, the availability of expert witnesses will be a challenge. As patents talk about a very specific aspect of the technology, it is not easy to identify an expert on any database.
So we need to find out if apart from the network approach, is there a more systematic approach to find an appropriate expert witness?
Yes, there is.
The Systematic Approach to Finding the Right Expert Witness
This is where GreyB comes into the play. We have helped our clients in numerous situations where finding a RIGHT expert was the challenge faced by our clients.
I stress on Right because every patent litigation is unique in technology. An individual who has managed IT networks for 30 years may not be the most appropriate expert witness for patent litigation dealing with encryption of data packets.
How can we help you find the right expert? Let’s illustrate this with the help of a case.
How we helped our client find the right expert witness?
We were working on a case where the invention was related to software development, and the patent reference was filed by a leading software company (during the early 2000s). We had conducted both patent and non-patent prior art search, but could not get our hands on any bang-on reference.
One of the challenges we faced was – How to add value to the project? The results of prior art search from patent and non-patent literature were weak. There was no good disclosure. Not even by combining references.
We investigated the progress of the industry and how people were thinking during those times. We went to chat forums and reviewed the history of the technology. This is where we noticed that software engineering was a very democratic subject. A lot of experts were developing products and services. We figured that the missing piece of the information could be either with a professor, the ex-CTO of a company, or a senior developer of the tool, etc.
When we zoomed out, we observed there are so many people who may have witnessed the growth of this industry. This was our first hint that contacting an expert will help in building an argument of invalidity.
But the client had asked us to do a prior art search. Is our job to put together a search report or the arguments that can find a winning strategy? – You might have this question.
For GreyB, the answer was clear: we wanted to find out how best we can build the case of invalidation for our client.
We looked into our observations and suggested finding the experts can help us in filling the missing holes.
The idea was to identify specific experts who can either provide the information we need, refer us to a new database, or a journal or scientific publication that we may have missed, or share a book title that must be explored or the most important one – they can provide expert testimony.
We asked our client if we can change the focus of our project from searching more on patent databases, to finding individuals, who can be instrumental in expert witness strategy.
In a call with the client, they told us they did not know of any expert witness. They were unsure of what should be done next if they did not know of an expert witness.
We suggested that we would help identify this expert. The client was open to this idea. I feel this is the best partnership when you and your client are open to each other’s ideas and a breakthrough can be achieved.
For us, finding an expert is also a search task. When I say search task, what I mean is it requires a strategy.
We started creating the landscape of where such an expert can be found. For starters, we started to identify top inventors and their current associations with the companies. Are there any consultants, who are offering such a service?
We started to locate dominant authors who have published scientific publications in the subject of our interest. We tried to link these citations to their company affiliations to find out who may be appropriate, as well as willing to help us with the expert testimony work.
Another area that we drill down is finding out contributors to the technology, the standards, written in magazines published around that time – the kind of speakers and participants you come across during the events happening around that time.
You would notice our strategy is to find out individuals with criteria of technology background, some evidence that they have knowledge of the technology– that can be in the form of blogs or contributions to chat forums, participation in conferences, et cetera. We also use LinkedIn, with the advanced feature enabled, and not just a simple search on LinkedIn to locate such individuals.
When we identified certain people, we started building a persona about the type of work they may have done and whether they might have any hint or evidence that they might contribute to the technology. We were able to locate a list of seven such people.
Conventionally, one may approach these individuals by simply asking them – Do they want to work as an expert witness?
We did not follow that strategy. Rather, we preferred to see if they were open for a technically challenging discussion. We think expert witnesses are bigger, better, and advanced versions of engineers like us.
We initiated the talk about technology and what our doubts were. We started engaging them in technical discussions without disclosing the specifics of the impact. A few discussions later, we were able to shortlist people who were knowledgable of the technology in which we were interested.
We also took permission from our clients to allow us to reach out to the experts, and share anything that is public information about the project, and getting into a discussion if they were aware of any missing piece. Our client was ready to pay hourly billing for the expert consultants that we identified.
We started our discussions and shared the pain points. Some of the experts specifically mentioned that the missing piece of disclosure that we are searching for is something very obvious. They told us that nobody used to write this level of detail because it doesn’t help. They, in fact, told us anyone skilled in the art would know the exact process that will happen behind the operating system. It would follow the protocol that is described in our patent. I still remember one of the expert witnesses told us, there cannot be any other way that he can think of.
We also talked about our pain of identifying something which is better for a project is not getting accomplished. We felt the expert witness could relate to our pain. One of them asked us – Is there any other way that he can be of help?
That is exactly the point.
We presented the idea – Can our law firm work with you to develop an expert witness scenario for this piece of missing information? We told them they will be paid for this exercise. To our surprise, the expert witness said he has never done this kind of work. However, he would be more than happy to work with our law firm.
This is where we learned that a lot of experts in technology may not have acted as expert witnesses. They may be afraid to a certain extent. It is obvious for them legal paperwork is always a headache. However, we were able to convince the expert witness what role he or she needs to play in the entire scenario.
The law firm was extremely happy because we could source a person on which they can build up criteria on why he or she would have known this particular information.
This is our skillset.
We can identify, search, and strategize the task of finding information rather than simply plugging in keywords or going back to the client and saying there are no results.
Having said that, here are some of the learnings we had from the project that you too can benefit from knowing.
- Having an expert witness helps. One should always aim at filling in the missing gap by locating the expert witness.
- Searching has its limits. Searching on databases like patterns and scientific literature has limitations if the cut-off date of the technology is pretty old.
- Do not get discouraged if there is no strong prior art in the printed material. There are always other intelligent ways when you hit the T Road.
- Expert witnesses are happy to help, but you need to educate them with your tail point in finding the missing information in the technology. Always remember they are ingenious first and later on they do their consulting practice.
- Please educate your expert witness on their level of involvement. People shy away from a lot of legal work requirements. But once you explain them in a logical manner, they are more than willing to contribute.
- Similar to prior art search, always try to build your strategy for finding the most relevant expert witness.
We have done this in multiple projects and have perfected the art of building a strategy.
We could help you identify and reach out to the right expert witness for your case. Have a case where you think we can find you the right expert?
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