by Robert Ambrogi - Editor
BullsEye Newsletter: January 2006
The
two most frequent mistakes intellectual property lawyers make
while working with an expert witness are polar extremes of each
other, but either can severely undermine the strength of a case.
This is the advice of Michael J. Abernathy, chair of the Intellectual
Property Department at Bell, Boyd & Lloyd, Chicago.
Abernathy says at one extreme is the lawyer who relies too heavily
on the expert for technical help without reviewing the technology
himself.
Abernathy is an adjunct professor of clinical trial advocacy
at Northwestern University School of Law and also serves on
the faculty of the National Institute of Trial Advocacy.
This is a mistake because, although the expert may know the
technology, he does not share the lawyer's knowledge of the
case and its themes.
"Your job as a lawyer is to take information and synthesize
it and have it comport with your case themes," Abernathy explains.
"Often that which may be important to the expert does not comport
with the theme, is not easy to understand and is not persuasive."
Abernathy believes it is the lawyer's duty to immerse himself
in the technology from day one. "You cannot have an expert render
a report without the lawyer asking, 'How does this comport with
the case theme? How does this comport with my opponent's case
theme? How easily will this be understood by the judge, by jurors,
by the appellate court?'"
At the other extreme is the lawyer who will not let the expert
be the expert, and micromanages the expert to a potentially
damaging degree. "The expert becomes simply a mouthpiece for
the lawyer," Abernathy says. "The expert stops being creative."
The lawyer who is too heavy-handed in his management of the
expert, Abernathy cautions, runs the risk of having expert testimony
that appears less credible and is more easily undermined.
Abernathy - who concentrates his practice in patent, trademark,
copyright, trade secret and antitrust litigation - emphasizes
that finding the right balance between these extremes is an
art honed through experience.
"The lawyer has to be involved with the expert, but without
crossing the line into improperly molding the expert's opinion."
Abernathy believes there are two keys to achieving this. The
first step is to bring the expert into the case early, while
the second is to involve the expert throughout discovery.
Care and Feeding
Even more important, he says, is what he calls "the care and
feeding of an expert."
Too often, lawyers fall into a predictable pattern while working
with experts, he explains. The lawyer is deeply involved with
the expert at the outset when the expert is retained, but as
discovery progresses, the lawyer lets the expert sit on the
sideline. Then, when the time comes for expert depositions,
the expert again regains prominence in the lawyer's mind.
"The care and feeding of an expert should be constant and should
be at a very high level so that the expert is an integral part
of the process and knows where the lawyer's thinking is at all
times," Abernathy suggests.
He acknowledges that he is sometimes guilty of failing to follow
his own advice in this regard. "For lawyers, it is often an
issue of time management. But it makes sense to do."
One other common way in which lawyers err in working with an
expert is in their failure to prepare them for their deposition.
Abernathy explains, "I see it happening a lot - the expert is
not as well prepared as he ought to be."
Given the liberal rules of discovery, particularly in federal
courts, there is little excuse for lawyers to fail to prepare
their experts for whatever might come up.
"I tend to push experts very hard on how well their conclusions
will stand up in light of very hard questioning," Abernathy
says. "I try to project what will happen at the deposition and
think about it before hand.
"I want to come in as well prepared as my opponent will be,
to anticipate where they will go, what they will ask, what will
be the form of the questions. If you are well prepared, you
can do that."
Failure to prepare leaves the lawyer little leeway once the
deposition starts. "If your expert is suffering during a deposition,
you're in trouble."
Is a poor deposition fatal? Not necessarily, Abernathy says,
but he encourages lawyers to avoid the question altogether by
preparing the expert thoroughly in advance.
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