Parties to patent infringement actions heavily rely on experts to explain their “case.” The finder of fact, whether judge or jury, often views them as detached guides who truly understand the often esoteric subject technology, or other issues, given the expert’s credentials. Patent issues such as infringement, claim construction, validity, enforceability and damages, which are critical to a case, may rise or fall on these experts. Accordingly, and despite their “expert” status, there is no shortage of considerations surrounding them.
Sometimes, a party's expert just does not work out, and a substitute (possibly late in a case), may become an issue. Replacing or substituting new experts is not guaranteed: courts apply different standards to assess these situations, resulting in a variety of results.
Even if the original experts remain, practitioners must carefully work with them to ensure all necessary information is provided, while preventing the exposure of privileged or otherwise immunized communications. Recent jurisprudence likely will require the production of all communications, information or documents relied on or considered by the experts, although proving either or both might be contentious.
Vetting an expert early and diligently can avoid the problems arising with a substitute expert. The full article on this subject explores in detail recent case law and considerations for IP practitioners.
Andrew P. MacArthur is an Associate in the Gibbons Intellectual Property Department.