The effort and capital involved in applying for and receiving patents can make them among a company’s most valuable assets. According to an interview between attorney Steven H. Reisberg and Robert Ambrogi, patent loss through litigation could land a devastating blow to a company, crippling it in the market or forcing it out of business. Often, patent cases are marred by the complexity of the technology and outcomes “hinge on highly detailed scientific evidence.”
Ambrogi believes experts therefore become an indispensable part of the equation and often directly impact the outcome of a case. Concluding from the article and from our experience, some attorneys find it prudent to arrange for their retained expert to meet directly with the inventors of a patent or other technical staff of the client to better understand the item in question. In conjunction with counsel, these meetings have the opportunity to unveil new details and explore the depths of complex concepts.
In addition, this meeting could produce fruitful information that your expert may not be able to gather from ordinary documentation reviews or reading deposition transcripts, writes Ambrogi. During these meetings your expert may ask questions that help identify potential problems or anticipate arguments that could surface at trial.
Although arranging this type of meeting may not be necessary, or practical, on every occasion, it could lend confidence to your expert’s conclusions. It may also be beneficial to the end client in that it may build greater confidence in your expert, explains Ambrogi.
One caution, however, is that attorneys must be cognizant of potential discovery issues when arranging this type of meeting. You never know what may come out of these get-togethers; some attorneys might not want to take a chance. Mr. Reisberg, nonetheless, believes that “allow[ing] such concerns to dominate can be a case of the tail wagging the dog.”
Ultimately, the decision to engage in this type of meeting should be made on a case-by-case basis. The facts, the circumstances, and the necessity should all be weighed to determine if the benefits outweigh the costs. However, in doing so you might just unveil or clarify a crucial piece of the puzzle and strengthen your argument.
Tell us: Do you find it useful to have the inventors or technical teams meet with your expert?
Taken in part from “How to Make Best Use of an Expert in Patent Litigation,”.