Two Mistakes That Can Produce Tragedy in Patent Litigation
Reprinted with permission.
Two Mistakes That Can Produce Tragedy
in Patent Litigation
By Robert Ambrogi
IMS ExpertServices™ is the legal industry's premier full-service expert witness
Robert Ambrogi, in an
interview with attorney Michael J. Abernathy, identified something we see all the time in
patent litigation – that an attorney either "relies too heavily on the expert for technical
help without reviewing the technology" first or they "micromanage the expert" to the point where
they prevent the expert from being an expert. While the article notes that both extremes present
a number of challenges, we believe neither mistake is permanent or unrecoverable.
The first mistake, over reliance upon the expert’s knowledge without learning the technology
yourself, is troublesome because the expert may not share the attorney’s view of the case and
its themes, writes Ambrogi. Litigators are storytellers. They gather information, process it
and package it into a recognizable format that can then be understood by a judge or jury. An
attorney cannot incorporate the expert’s knowledge or technology if he or she has not studied
Robert J. Ambrogi is a Massachusetts lawyer who represents clients at the intersection
of law, media and technology. A news media veteran, he is the only person ever to hold the
top editorial positions at the two leading national U.S. legal newspapers, the National
Law Journal and Lawyers Weekly USA. He is also internationally known for his writing
and blogging about the Internet and technology.
The second mistake, conversely, seeks to micromanage an expert to the point where
the expert’s opinion is masked, or completely subdued, by the attorney’s. This type of attorney
runs the risk of diluting the credibility of the expert witness and creates a weakness that
can be exposed by the opposition, Ambrogi cautions. Attorneys who find themselves in this position
are wise to quickly find a more amicable working solution before inflicting irreversible harm
to their case.
The interview brings to light a number of solutions to mitigate the potential
negative impacts from these mistakes. First, the attorney must engross himself into the subject
matter of a case from the beginning. During this immersion phase, the attorney should incorporate
the expert to ensure understanding of the case precepts, themes and timelines.
the attorney must be prepared to allow the expert to demonstrate their expertise. While some
assistance may be warranted, or even requested, by the expert during this phase, the attorney
must allow their expert the opportunity to review the technology, address the issues in question,
and render an opinion of their own fashion. Although there is considerable team work involved,
attorneys should be cautious of inadvertently or purposefully crafting or swaying the expert’s
Lastly, the attorney should involve the expert during each phase of the proceedings.
The expert should be seen as a member of the team whose role is to provide valuable insight
and expertise at critical junctions. They should be properly prepared to handle any situation
that may arise during deposition or at trial. Experts must be cultivated in ordered to produce
the best fruit.
Attorneys that find themselves either too involved or not involved enough
must take immediate action to avoid significant issues. While there may be points during a proceeding
to reverse course and avoid the pitfalls mentioned above, the best course of action is to adopt
a work style that straddles the divide from the beginning.
How can attorneys avoid being too involved or not involved enough?
Taken in part from
Two Most Common Mistakes Lawyers Make in Using IP Experts," as published in BullsEye, an
IMS ExpertServices e-publication edited by Robert Ambrogi.
This article was originally published in
a newsletter distributed by IMS
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