Patently obvious
Expert witnesses play an important role in many kinds of dispute but in patent litigation more than most. Often, they are the difference between winning and losing.
Patents are 20-year monopoly rights. To qualify for patents, inventions must be new and inventive, which largely depend on factual evidence. In particular, an invention is not patentable if it is merely an obvious development of earlier practice.
But obviousness can be a rather subjective judgement: very little is obvious to the ordinary man on the street; and rather too much to the world-leading expert. To set the right benchmark, the court has to use its own invention: a hypothetical skilled reader who is aware of everything invented when the patent application was filed.
The kind of expertise your witness must possess is that of knowing what would be obvious to him. So how do you find such an expert?
First, cast your net wide as well as deep: search other jurisdictions as well as your own. Meet candidates face to face. Take up references.
Second, make your choice early – before the start of proceedings if you can. Their views should help you judge the strength of your case and decide how to present it.
Third, make sure they are good witnesses as well as experts. Don’t just rely on academic credentials; rate them for bedside manner, mental agility and powers of expression too.
Fourth, make sure they know what to expect. If they haven’t given evidence before, take them on a court visit. If they lack court skills, you cannot coach them on specifics but you can give them general guidance, such as how to spot the assumption buried in the question, how to address their answers to the judge – and so on.
Fifth, check their availability. Working experts are better than retired ones, but have more crowded diaries. Video conferencing can lose much of the impact their evidence would have in person, so make sure they are free when you need them.
Sixth, keep them informed but not involved. Experts who get sucked into the winning and losing may forget their overriding duty to the court, modify their evidence to please their clients and lose all credibility in the process. If you need someone to help you prepare, hire a second expert.
Follow these six rules and you won’t go far wrong. They may seem patently obvious – but they work.
This article first appeared in our Litigation Annual Review January 2006. To view this publication, please click here to open a new window.
