World Intellectual Property Review, March/April 2010
Particularly in the US, experienced experts are common. Ivan Zatkovich is a computer science specialist who has served as an expert witness in 18 patent cases and well as in a similar number of other, non-IP matters. “A lot of times attorneys will say they want someone who is fresh in the field, understands the background and is not necessarily an expert witness,” he says. “But in reality, they often choose seasoned experts. You would want someone with some background who has done testimony before. Someone who can get an idea of what the patent was at the time. It’s important that someone was an expert when the patent was filed. Then they can give the background on the invention and didn’t pop out of nowhere.”
There are several skills to look for when hiring an expert, Zatkovich says. “One of my biggest skills is confidence and being able to tell a compelling story. If you have done a thorough analysis and believe your opinions, you have to then make it into a good story and that means simplifying the argument for your audience.” Of course, a relatively small proportion of IP cases actually end in trial, so experts also need to be of value at the earlier stages of the process.
“You start looking at a case and you start thinking about your approach,” Zatkovich says. “When you are seasoned you’re doing your clients a service. I do have the opportunity to bring experts on from time to time and I look for someone who can do a lot of technical analysis and write well. They must have knowledge of the area and they must want to do it. You have to be curious about inventions.” To the casual observer, all this talk of expert witnesses prompts a very obvious question. If experts are supposed to be objective and each case turns on its own particular facts, then how can two competent experts represent different sides of the case? One might expect two people with ‘ordinary skill’ to look at a patent, look at a potentially infringing product and come to the same conclusion about infringement, obviousness or prior art. This is where the expert’s role gets especially difficult and why some have fallen foul of judges by defending positions in court that turn out to be untenable based on the evidence. Because while it is true that two opposing experts may reach similar conclusions based on their understanding of a case, the solution is rarely so clear-cut as to provide just one possible answer.
“There are always weak points and strong points to any case,” says Zatkovich. “While you always provide objective testimony, you can help the attorneys by pointing them to the stronger points of their case.” In the average case, in the US at least, an expert is brought in around the time of claim construction. This provides ample opportunity for a good expert to positively influence the direction a case takes and leaves them less likely to be exposed on the stand if the case goes to trial.