An expert witness is granted expertise by way of education, training, certification, skills or experience. This person is then to have an expert opinion who can deliver expert evidence in IP litigation based on that expertise. In intellectual property cases, experts are frequently brought in to determine the level of similarity between a claimed invention and certain allegedly infringing products or standards.
There are testifying and non-testifying experts. The difference between the two depends upon the need for them to testify in court. A non-testifying expert provides their expertise as a consultant to the attorneys and can even help cross-examine other witnesses. The opposing council may examine the background of the testifying expert and subsequently object to her/his assignment to the case, something that a consulting expert is protected against. Moreover, unlike a consulting expert, a testifying expert produces an expert report and may testify in court, for which she/he will be deposed/cross-examined by the opposing council so make sure you are strategically choosing a patent expert witness. A testifying expert may also be required to share with them all notes made on documents regarding evidence with. It is important to create a strategy that will support your IP case and protect your expert consultant most effectively.
Understanding Scientific Evidence Through the Frye Test
Scientific evidence can only be derived from scientific knowledge or techniques. In Frye v. United States (1923), a new method of scientific evidence known as the Frye Test was created. It was determined that admissible scientific evidence must be a result of a theory that had “general acceptance” in the scientific community.
The judges in Frye v. United States outlined the Frye test as, “just when a scientific principle or discovery crosses the line between experimental and demonstrable stages is difficult to define. Somewhere in this twilight zone the evidential force of the principle must be recognized, and while courts will go a long way in admitting expert testimony deduced from a well-recognized scientific principle or discovery, the thing from which the deduction is made must be sufficiently established to have gained general acceptance in the particular field in which it belongs.”
Scientific Evidence Rules Get More Sophisticated With Daubert Test
70 years later, Daubert v. Merrell Dow Pharmaceuticals challenged the Frye test’s assumptions and the Daubert test became the preferred method of determining evidence in all federal, and more than half of US state, scientific cases. There are three cases that combine to make the Daubert trilogy. The two additional cases that further define the Daubert standard are: General Electric Co. v. Joiner and Kumho Tire Co. v. Carmichael.
General Electric Co. v. Joiner determined that a judge may exclude expert testimony when there are gaps between the evidence relied on by an expert and his conclusion, and that an abuse-of-discretion standard of reviews should be used in reviewing whether expert testimony should be admitted.
Kumho Tire Co. v. Carmichael determined that the judge’s gatekeeping function identified in Daubert applies to all expert testimony, even that which is non-scientific. According to Paul Rothstein, in Bloomberg Law, “judges do not feel competent to decide what is good science, as Daubert commands them to do.” His argument is that this is why the remaining US states have not agreed to Daubert standards.
The first thing that must be shown in the Duabert test is whether or not the theory in question is testable and has been tested. The theory must be peer-reviewed to reduce chances of error. The reliability and error rate must be shown to determine the level of certainty. Finally, the extent of general acceptance for the theory by the scientific community must be made clear.
A Daubert motion is a request made for the judge to exclude certain testimony. This motion is made outside the presence of the jury in order to keep them from being swayed by unqualified evidence.
Preparing for Litigation That Includes Expert Testimony
It is important to prepare for a Daubert motion in any case that is going to require expert testimony. The time for a motion is very early – well before there is actually a trial date. Hence, one needs to quickly learn how the expert opinion may be challenged and prepare for a fight as to whether the testimony will be allowed at all.
The primary purpose of the Daubert motion was to allow evidence into court, not to restrict it. In How to Survive Daubert in Nine Easy Lessons: Safely Exploring the Wilds of Expert Evidence, Ladd A. Hirsch points out that the burden of proof is actually on the party that is offering the expert testimony. This is an important challenge in intellectual property law that must not be overlooked. It is contrary to some people’s thoughts regarding the burden of proof because they feel like the expert should be admissible in court unless proven otherwise. Some have learned the hard way that this is not the case.
During the Daubert hearing, the expert in question is not required to testify. Ideally the counsel will try to find out if the judge expects to hear from the witness. Depending upon the answer, a decision will be made weighing the pros and cons of bringing in the expert during the hearing. If the expert is present, they can answer questions regarding their expertise as a form of proof. However, they are subject to cross-examination and their credibility can be diminished.
For deeply sophisticated intellectual property cases, having experts to support findings is crucial. The process of sourcing, interviewing, and presenting an expert witness can be a difficult task for many. GHB Intellect provides litigation support in a broad range of cases related to intellectual property law at GHB Intellect, we have a group of highly-respected experts who are experienced in litigation support and familiar with the Daubert standard. This knowledge increases the chances that litigation counsel will be successful in allowing the evidence to be heard by the court in the first place.
GHB Intellect is a full-service intellectual property consulting and engineering services firm. With a growing cadre of hundreds of industry-seasoned experts & professionals, as well as access to full suites of design and testing equipment, we specialize in high-tech, science, and innovation.