How to Make Best Use of an Expert in Patent Litigation

By Robert Ambrogi Esq
Patents are often a company's most valuable assets. Loss of a patent through litigation could severely reduce a company's competitive standing or even drive it out of business. Worse yet, patent litigation is highly complex. Cases hinge on detailed scientific or technical evidence.

Because of this, experts play a critical role in determining the outcome of a patent case. That is why Steven H. Reisberg, a litigator with Willkie Farr & Gallagher in New York City, has come to believe it is important to take an extra step in preparing to work with an expert in a patent matter.

Mr. Reisberg, a partner in Willkie Farr's litigation department, specializes in commercial and patent litigation. He is an accomplished litigator with a significant track record handling cases involving general commercial litigation, including patent disputes, before courts as well as before national and international arbitral tribunals.

His recent patent cases include representing Koninklijke Philips Electronics NV in patent litigation involving automatic external defibrillators and ultra high pressure discharge lamps.

In patent litigation, Mr. Reisberg believes, it can prove extremely valuable for the lawyer to arrange for the retained expert to meet directly with the inventors or other technical employees of the client, together with counsel. "These direct discussions between the expert and the inventor can have several benefits," he says.

Primary among them is that the discussion can provide the expert with information of a type - both in depth and quality - that would not otherwise be available from review of the documents or deposition transcripts. In addition, pairing the expert with the inventors can help to identify important issues that may arise during the prosecution of the litigation and to develop responses or solutions to those issues.

There is another, less-obvious benefit to arranging a meeting between the expert and the inventors, Mr. Reisberg says. It can help the expert become even more confident in his or her conclusions -- and for the client to develop confidence in the expert.

No single approach applies in every case, Mr. Reisberg cautions, so the lawyer must exercise discretion to do what is best for the case at hand. In addition, the lawyer should bear in mind how such a meeting might implicate issues of discovery. Still, he says, "I have found that to allow such concerns to dominate can be a case of the tail wagging the dog."

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Robert Ambrogi Esq

We are proud to partner with an author of Bob’s caliber to provide exclusive articles for our legal clients and leading industry experts. Robert J. Ambrogi is a news media veteran and the only person ever to hold the top editorial positions at the two leading national U.S. legal newspapers, the National Law Journal and Lawyers Weekly USA. He is currently a Massachusetts lawyer who represents clients at the intersection of law, media and technology. He is also internationally known for his writing and blogging about the Internet and technology. Media and Technology Law Bob represents a range of businesses and individuals, concentrating in print and electronic media companies and the editorial, sales, marketing and technology professionals who work in them. He also counsels businesses and individuals in employment matters. Arbitration and Mediation An established professional in alternative dispute resolution, Bob has been an arbitrator since 1994, focusing on labor and employment and securities disputes. A mediator in a range of civil disputes, Bob completed the training required by Massachusetts law to protect confidentiality.

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