EXPERT WITNESSES
In patent cases, the idea of an ‘expert’ witness can seem like a contradiction. Te court commonly requires the expertise of a ‘person having ordinary skill in the art’, and not necessarily of a genuine leader in the specific field. Not only that, but this ordinary skill must be retrospective. Patents that are subject to litigation may be several years old. It is no use employing an expert on the current state of the art if the court is concerned with the state of the art of a decade ago. In both jury and bench trials, the decision-makers (the jury or the judge) are unlikely to be experts in the particular technical field, so highly complex product analyses may not have the desired effect. Yet, for attorneys, in-depth and current expertise may be vital criteria for selecting an expert, not least because the attorneys themselves may not understand the technical make-up of the patent at issue.
Intervet
Clearly then, selecting the correct expert requires some skill, most notably an appreciation of the competing demands of the role in the context of the matter before the court.
“Selecting an expert witness is more of an art than a science,” says Richard Willoughby, a partner at Howrey LLP in London, whose choice of patent expert in the recent Intervet patent case was commended by the UK High Court. “Tere are cases where a learned technical expert ends up persuading a judge. [In the Intervet case] the expert was someone who approached it with a very practical, not too learned approach. You need to be looking through the eyes of a notional skilled
person, and an ivory tower approach may not be the best one. Some academics are not good at changing their thought process to that of someone closer in character to a recent PhD graduate than they are, for example. If you get a good coalface expert, that’s very oſten the best bet.”
In Intervet, the patent at issue was for a “[m]ethod for the in vitro diagnosis of type II porcine circovirus infection and diagnostic reagents”. Intervet claimed that the patent was invalid on the ground of obviousness. Intervet’s expert was Dr Alan Radford, an animal virologist
with no specific experience of the pig disease and associated virus under investigation. As the court acknowledged, he “had no experience as a pig vet” and was not “a pathologist or a bacteriologist”. Despite this, the court praised Radford as an “excellent expert witness”. Tough he had no first-hand knowledge of the disease or virus in question, the court found “his qualifications and skills as a virologist were such that he could well have been recruited as a member of the [hypothetical] skilled team” that would have been interested in the disease and the possibility that a virus was responsible.
“ IT IS NO USE EMPLOYING AN EXPERT IN THE CURRENT STATE OF THE ART IF THE COURT IS CONCERNED WITH THE STATE OF THE ART A DECADE AGO.”
Dr Radford had not served as an expert witness before, but many of those appearing in courtrooms on both sides of the Atlantic are regulars. Tis has advantages and disadvantages: an expert who is well versed in the quirks of courtroom procedure may be a more fluent representative of their viewpoint; conversely, there is a danger of the expert acquiring a reputation as a ‘gun for hire’ and becoming a professional witness rather than a professional expert.
Experience counts
Particularly in the US, experienced expert witnesses are common. Ivan Zatkovich is a computer science specialist who has served as an expert witness in 18 patent cases, as 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 oſten choose seasoned
20 World Intellectual Property Review March/April 2010
www.worldipreview.com
©iStockphoto.com / Kamaga
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