Two General Types of Expert in IP Cases
In patent infringement and other intellectual property cases, there are two general types of expert: “Non-Testifying Expert” and “Testifying Expert Witness”.
Non-Testifying Expert
Non-testifying experts are, in practice, called either "Consulting Experts" or “Expert Consultants”.
FRCP (Federal Rule of Civil Procedure) 26(b)(4)(D) defines a Non-Testifying Expert as:
[an] "Expert Employed Only for Trial Preparation. Ordinarily, a party may not, by interrogatories or deposition, discover facts known or opinions held by an expert who has been retained or specially employed by another party in anticipation of litigation or to prepare for trial and who is not expected to be called as a witness at trial."
In other words, a Non-Testifying Consulting Experts’s work on a case is generally protected from discovery (from the opposing legal team), a privilege similar to “attorney-client privilege."
Testifying Expert Witness
Per FRCP 26(a)(2)(B), a Testifying Expert Witness is one retained or specially employed to provide expert testimony, either in deposition and/or trial. Experts negotiating with a law firm re: an Expert Witness engagement should make note of this fact! Vague assurances that one might get to be Testifying Expert Witness are untruthful at best.
Two Types (At Least) of Testifying Expert Witness
In patent infringement and other intellectual property cases, each side (i.e. the Plaintiff--the one who filed the suit, and the Defendant) will have at least two Testifying Expert Witnesses, one of whom is a financial expert, often a Professor of Accountancy or Economics, who concentrates solely on the matter of damages and is, thus, called the “Damages Expert.” The other Testifying Expert Witness or Witneses (in complex cases, there is often more than one) focus on all of the other aspects of the case.
Attributes of a Testifying Expert Witness
It takes a very special kind of person to be an effective Testifying Expert Witness. A Testifying Expert Witness must meet considerably higher standards on a number of dimensions than non-testifying experts (i.e. expert consultants). Unlike a non-testifying expert, his or her identity, personal and professional reputation, and nearly all documents used to prepare his or her testimony are open to discovery and, thus, revealed in trial. Testifying Expert Witnesses, as a matter of personality, are not adverse to having the personal details of his or her life and career openly discussed in a courtroom before a Judge, Jury, spectators, attorneys, other witnesses, etc. This is why many Testifying Expert Witnesses have "public performance" of some type (e.g. teaching, public speaking, musical performance) in their background.
To summarize, the key attributes of a Testifying Expert Witness are...
- Excellent personal and professional reputation
- Unquestionable expertise in the relevant field of art
- Not averse to having the personal details of his or her life and career openly discussed in a courtroom
- Highly-skilled at deflecting opposing Counsel’s attempts to raise question about his or credibility
- Powerful and authoritative, but also professional, polite and calm, demeanor
- Highly-developed skill in avoiding undue hesitation, making statements that could be construed as contradictory and so forth
- Highly-developed skill at foiling opposing Counsel’s attempts to extract incomplete answers to “Yes or No” questions
- Coolness and grace under pressure (This final attribute warrants elaboration...see the following section.)
Coolness and Grace Under Pressure
While formal challenge of a Testifying Expert Witness’s qualifications (called a Daubert Motion) is relatively uncommon (but hardly rare), the Testifying Expert Witness can count on opposing Counsel to use a variety of subtle questioning tactics to raise doubt in the minds of jury members with respect to his or her credibility. As mentioned above, an effective Testifying Expert Witness has developed the skills to avoid undue hesitation, making statements that could be construed as contradictory and so forth. He or she must also be a powerful and authoritative, but also professional, polite and calm, in demeanor. This usually takes a lot a practice. An effective Testifying Expert Witness ALWAYS rehearses for many hours prior to giving testimony. Such rehearsal is possible, as it is pretty easy to ascertain (every litigator has an M.O.) the types of questions opposing Counsel will ask during cross-examination.
An experienced Testifying Expert Witness, in order to avoid the accusation of be coached (he or she must answer honestly when asked by opposing Counsel whether or not he or she was coached), is adept at using at using audio playback devices to simulate the pressure of direct and cross-examination and and video recording equipment. The expert reviews video of repeated rehearsals in order to evaluate his or her testimony performance.
Written Reports by the Testifying Expert Witness
In most cases, a Testifying Expert Witness, prior to Deposition and long before Trial (should case make it to trial before settlement) will write two types of formal document: The “Expert Report” (often called a “Rule 26 Expert Report”) and one or more optional “Rebuttals” to any Rule 26 Expert Reports written by the Testifying Expert Witness or Witnesses for the opposition. These reports are the topic of another post.
