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.