Declarations and testimony from technical experts are often used in intellectual property (IP) litigation or post-grant proceedings to inform the court about factual disputes. The technical experts for the opposing parties rarely agree, and so there is an important role for lawyers to ensure that expert statements and testimony does not deviate from the truth, and that the facts that best support a client’s most important arguments are included in the record a persuasive and credible way.
Patent legal contexts in which expert declarations may be used.
There are several phases during a patent infringement suit brought in federal district court, where declarations by technical experts may be used by a plaintiff or defendant. For example, technical expert witnesses are often used to make declarations in support of the briefs used to argue what words in the patent claims mean. That phase of patent litigation is often referred to as a “Markman hearing,” and the court is permitted to consider extrinsic evidence (e.g. expert testimony, and contemporaneous publications) in addition to the intrinsic evidence (e.g. drawings and description in the asserted patent, and applicant admissions made to the United States Patent Office before the patent was allowed).
Expert declarations may also be used by a plaintiff or defendant in support of motions for summary judgement of infringement, non-infringement, or invalidity. Undisputed facts supported by a technical expert can be important to a summary judgment motion. In such contexts, disputed facts are to be construed in favor of the non-moving party, so the summary judgment motion may be defeated by contrary testimony from an expert hired by the opposing party. Later, at trial, the fact finder (e.g. a jury) will decide which expert’s testimony should be weighted as more credible or reliable.
Even after liability is established or conceded, one or more experts may be employed by the parties to support arguments about the amount of damages that should or should not be awarded.
Declarations by technical experts are also commonly utilized by the parties to post-grant proceedings before the Patent Trial & Appeals Board (PTAB) of the United States Patent Office (USPTO). In such proceedings, facts alleged in the initial petition for inter-partes review (IPR) or post-grant review (PGR) are often supported by a declaration by a technical expert. Technical experts are also commonly used to support patent owner responses, and petitioner replies in such proceedings. Such technical expert declarations may opine about the meanings of claim terms, and the difference or similarity between the patent challenged in the post-grant proceeding versus technology described in prior art publications.
In some situations, it may be advantageous for a technical expert to provide a factual declaration under 37 CFR 1.132, to advance a patent application towards allowance during patent prosecution. For example, a technical expert might explain to the USPTO that a device or method disclosed in the prior art is factually different in structure or operation from that claimed in the pending patent application. In that case, although the expert will typically not be deposed or cross-examined by the patent office during patent prosecution, the expert may later be deposed by an infringement defendant (about statements made in the earlier declaration), if the resulting patent is asserted in litigation.
The importance of expert depositions and cross-examination in litigation.
In nearly all adversarial contexts where a technical expert’s declaration may be used, the opposing party will be given an opportunity to cross-examine that expert at a deposition and/or at trial. Answers provided by the technical expert in response to questioning during deposition or cross-examination may greatly impact the outcome of litigation. Therefore, the attorneys for both parties are keenly interested in the preparation and conduct of the expert before and during deposition and cross-examination.
Preparing an expert for deposition or cross-examination.
By the time of deposition or cross-examination, the party offering the expert should have already introduced favorable opinions and statements from the expert in a carefully worded declaration or via direct testimony. Hence, the party offering the expert should not need any additional statements or admissions to be made by the expert in deposition or cross-examination.
Consequently, the deposition and/or cross-examination of a technical expert can be a break-even or lose situation for the party offering the expert, and is a break-even or win situation for the opposing party. Specifically, the deposition or cross-examination is a potentially winning opportunity for the opposing party to obtain unscripted admissions by the expert, that may undermine the expert’s prior statements or credibility.
Thus, it is potentially risky for a technical expert witness to embark on an unstructured narrative during deposition – even if most of what the expert says is in hopes of hitting a “home run” for the party with whom the expert agrees. After all, it is only the contradictions and mistakes likely will be used from all of the deposition or cross-examination testimony. The attorney preparing for cross-examination should strive to know the case as well as or better than the expert himself, and develop a carefully planned questioning strategy and outline.
It is up to the attorney who represents the party that offered the expert to prepare the expert prior to deposition or cross-examination. The expert should typically limit answers to only the questions actually asked (without volunteering more), to tell only the truth without speculating, and to avoid answering questions that exceed the scope of the expert’s declaration or direct testimony. During deposition or cross-examination, the defending attorney may object to objectionable questions, depending on the rules of the governing forum, and the expert must become accustomed to waiting for the possibility of such objections before rushing to answer. The attorney preparing the expert will usually review the facts of the case with the expert prior to deposition or cross-examination, so that the expert is less likely to make mistakes or appear to be insufficiently knowledgeable about the subjects of opinions that already have been offered in the case.
BHW services related to expert declarations, depositions, and cross-examinations.
Working with our clients’ experts.
BHW attorneys are competent and experienced in collaborating with our clients’ experts to prepare factual declarations in support of legal arguments made in patent litigation, post-grant proceedings, and patent prosecution. We assist our clients’ technical experts to effectively and safely communicate such supporting opinions. We are also experts in preparing our client’s experts for deposition or cross-examination, and defending those experts and our clients’ privileged information and interests (e.g. from objectionable questions) during deposition or cross-examination questioning by opposing lawyers.
Questioning opposing party’s experts.
All BHW partners have advanced engineering degrees, engineering industry experience prior to the practice of law, and patent litigation experience. Hence, we are very experienced and effective when deposing and cross-examining our opponent’s technical and other experts.