A patent infringement expert witness is someone who's called in a matter of patent infringement in order to give evidence to the court. The witness may describe technical issues as well as the merits of the invention.

Expert Witnesses in a Patent Litigation Case

In nearly all cases of litigation involving intellectual property, expert testimony is an important component. Having the right expert testimony and analysis can be the difference between winning and losing the case.

An inside expert must be chosen. This expert should be someone with the best knowledge of how the technology at the root of the issue relates to the business of the company. The inside expert will help find one or more outside experts. The company might choose different experts for damages related to invalidity and infringement.

The offering party will have a stronger case if they can choose the right outside expert as well as properly prepare him or her for the trial and use the expert's opinions in their strategy. The expert should be able to educate the court and the jury on subjects that are outside of their regular experience.

To argue an effective case, it's best to choose an expert with the following traits:

  • Outstanding experience
  • Impeccable credentials
  • Effective communication skills 

Choosing the Right Inside Expert

The first thing a company should do in creating a team of experts is find an inside expert to help with the case.

The inside expert has several roles, including the following: 

  • Assisting counsel in staying focused on underlying business goals
  • Helping to identify the most effective outside experts, particularly for technology issues
  • Helping the outside expert apply abstract principles to the company's particular issues
  • Providing honest and realistic reports related to the status of the case 

A company's size determines the number of potential inside experts to choose from. When selecting an inside expert, the company should consider if the expert will likely be called as a key witness. Consider the following points when choosing someone to be your expert witness

  • How objective the candidate can be with respect to the issues
  • If the candidate has adequate time 
  • How credible the candidate is
  • Whether or not the candidate can effectively consult with outside counsel

When a suitable inside expert has been chosen, he or she, along with outside counsel, will then identify outside expert(s).

Finding an Outside Expert

You can find experts in various environments, but the credibility of their testimony often depends on where you find them. The following are some locations you'll find potential experts:

A lot of attorneys prefer to find experts in academia because they believe juries will see professors as more likely to be unbiased and trustworthy than experts from other areas.

You should also consider an expert's geographic location, as this may have an impact on how the jury relates to the expert. It's important to know what will and will not resonate in the area your case is pending. It's preferable to find an expert who has a regional connection to the court, but this is less important than having an expert who's suitably qualified.

When you identify a potential expert, carefully study all of his or her previous articles and any former testimony. You don't want any material that can be considered contradictory or impeachable. A review of an expert's prior publications and trial experience may be costly and time-consuming, but it's a necessary step.

The opposing side will look for any way to discredit the expert during testimony, so you must prepare your witness before the trial on how to handle any potentially contradictory statements. This will ensure the credibility of the expert in the eyes of the jury and judge.

After selecting an expert, send an engagement letter that outlines the expected scope of services. Be detailed, as this can minimize any misunderstandings between you and your witness. You can also detail where you want the expert to focus in his or her preparation so that the efforts are most relevant to your case.

The right expert can truly make or break a patent infringement case, so choose wisely, using the recommended sources for the most credible, trustworthy witnesses. This gives your case the best chance for a positive outcome.

If you need help locating a patent infringement expert witness, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.