When Is An Economic Expert Witness Needed? Part 2

In Getting the full value of economic experts in IP litigation: A qualified expert is key, attorney Devon Zastrow Newman writes that “Expert witnesses can make or break your intellectual property litigation.”

How is an expert qualified to present testimony?

A person can become an expert through education, skill or experience. Economic experts may be trained in finance, accounting or economics and may have certifications in business financial management, financial forensics and other related fields. Economists or professors can be experts. An economic expert may have litigation experience in the market at issue.

The expert must evaluate the claim and construct a model projecting the plaintiff’s condition had the breach not occurred or had the defendant secured permission for its actions. The expert must understand the claim and the case law that establishes how models are constructed.

The expert prepares a written report pursuant to Federal Rule of Civil Procedure 26. The report allows the other party to determine the basis for the expert’s opinion and retain an expert to rebut it. The rebuttal expert provides a similar report. Each side can depose the other side’s expert(s) to uncover weaknesses in the expert’s opinion, in anticipation of cross-examination or bringing a motion against the other party’s case or to disqualify the expert. Finally, an economic expert gives testimony at trial, explaining his or her opinion and the steps taken to perform the analysis.

How can in-house counsel streamline development of the expert opinion?

To form an admissible expert opinion, the expert will need direct access to the kinds of information needed from the plaintiff to perform the analysis.

To streamline the process, in-house counsel should ensure he or she understands the business management of the products at issue, which can be challenging for a multi-product company. For a manufacturing company, this could include knowing the identities and functions of the manager, salespeople, customer service team and accounting group who work with the products.

In-house counsel should work closely with trial counsel to understand the general legal theory behind the expert’s opinion so that he or she can help identify the information available for the expert’s use in developing an opinion regarding the theory. For instance, one IP damage theory is “lost profits,” meaning that the plaintiff claims that each sale made by the defendant could have been made by the plaintiff, and therefore all of the defendant’s profits from infringing sales should be given to the plaintiff. To prove this theory of damages, the expert will need to understand the plaintiff’s manufacturing capacity, material costs, product cycle length and profit margins. An in-house counsel should be able to promptly locate the information or connect the expert directly with the right staff who can educate the expert about the plaintiff’s business practices and provide any data or documents needed for the expert to crunch the numbers.

The best source of information about the legal theories, necessary information, and timelines for expert witness needs is trial counsel. Having early conversations with trial counsel about the process can prepare in-house counsel for the road ahead and to equip the expert with the right information.

Devon Zastrow Newman is a shareholder in the Portland office of Schwabe, Williamson & Wyatt, P.C., where she leads the Intellectual Property Litigation Group. She focuses her practice on intellectual property and complex litigation, and has extensive experience representing patent and trademark owners in infringement actions. Ms. Newman is also a registered U.S. patent attorney and assists clients in obtaining patent, trademark, and copyright protection for their innovations. She earned her J.D. from Cornell Law School.



About Karen Olson

Information Professional with twenty years experience in legal, public record, and business research. Fifteen years law firm experience.

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