Experts & Expert Reports

Experts and the FRE

FRCP, Rule 26 and experts

How are experts used in patent litigation?

What belongs in a Rule 26 report?

Qualities to look for in an expert

Care and feeding of experts

Experts and the FRE

If specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert may testify about the evidence or the fact in issue in the form of an opinion or otherwise. FRE 702

An expert may base his opinion on hearsay if the information is “reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject. FRE 703

FRCP, Rule 26 and experts

Rule 26 governs discovery pertaining to experts

Requires disclosure of witness list and reports of testifying expert under Rule 26(a)(2) Must identify all potentially testifying expert witnesses Any expert witness “retained or specially employed to provide

expert testimony” must “prepare and sign” a written report regarding his testimony

Rule 26(a)(2)(B) addresses what the written report must contain Disclosure statement required for any testifying expert who does

not have to provide a full written report. Rule 26(a)(2)(C) Statement should include subject matter of anticipated testimony

and summary of facts and opinions to which witness is expected to testify

FRCP, Rule 26 and experts

Discovery from experts Can depose after receiving report. Rule 26(b)(4)(A) Drafts protected from discovery. Rule 26(b)(4)(B) Non-testifying expert not subject to discovery unless

“exceptional circumstances.” Rule 26(b)(4)(B) Communications between testifying expert and attorney

are protected unless communications Relate to compensation Identify facts or data provided by party’s attorney that

expert considered in forming opinions expressed Identify assumptions provided by party’s attorney that

expert relied on in forming opinions expressed

FRCP, Rule 26 and experts

Supplementing expert witness disclosures and responses Affirmative duty to supplement or correct

information provided in expert’s written report or expert deposition. Rule 26(e)(2)

Consequences of failing to identify expert witness or disclose supplemental information Precluded from later use unless omission was

“substantially justified or harmless.” Rule 37(c)(1)

How Are Experts Used in Patent Litigation?

Consulting experts Used to educate attorneys Use to develop viable arguments for later use with

testifying expert Used to evaluate discovery requests and prepare

responses In theory no longer needed

How Are Experts Used in Patent Litigation?

Testifying experts Markman hearing

Tutorial Declaration and testimony on meaning of terms to POSA (e.g.,

Fischell declaration) Pretrial

Rule 26 expert reports (e.g., Simonsen expert report) Trial

Technical experts Teacher of technology Describe state of art before claimed invention Apply claims to the accused device or prior art

Damages experts

What Belongs in Rule 26 Expert Report

Under FRCP 26(a)(2)(B), expert report must contain: Qualifications and publications Compensation Cases in which testified in last 4 years Complete statement of all opinions and bases for them “Facts and data considered” by expert in forming opinions Exhibits to be used

Example Simonsen expert report

Approaches to drafting expert reports Old Rule 26 New Rule 26

Qualities to Look for In an Expert

Ability to teach!!!

Credibility

Recognition in field

Thinker

Hard worker

Not a professional expert

Example: Fischell

Care and Feeding of Experts

What do you do if your expert’s initial opinion diverges from yours? Your burden to educate him

It’s up to you to ensure that you have a committed expert