WHERE PATENT EXPERT WITNESSES CAN IMPACT INTELLECTUAL PROPERTY AND INFRINGEMENT CASES

Patent expert witnesses occupy a critical niche in intellectual property (IP) and infringement litigation cases. Consultants are hired to provide specialized expertise, reports and informed opinions to provide a truthful and factual complement to arguments related to issues of patent validity, infringement, damages calculations, and technology standards.

A common role for a patent expert witness is to offer opinions on the validity of an IP holding. The expert will thoroughly review the patent and its prosecution history along with relevant prior art. Based on their expertise in the field, the expert analyzes whether the patent meets key requirements for patentability such as novelty and non-obviousness. Moreover, experts sometimes opine on whether the patent specification adequately enables a person skilled in the art to make and use the invention. The consulting advisors may also consider issues such as inequitable conduct in front of the patent office. Their analysis and conclusions are presented in an expert report submitted to the court. These opinions aim to either undermine or bolster the validity of the litigated patent.

Another major area is opining on infringement. The patent expert witness compares the asserted patent claims to the features and functionalities of accused products or processes. They analyze whether each element of the claim reads on the accused product, either literally or under the doctrine of equivalents. Over the course of the case, experts may be deposed to explain their infringement theories and overall opinions. Infringement analysis is highly technical and patent experts use their specialized skills to apply claim language to often complex technologies.

Patent expert witnesses are also frequently retained to consider damages. Consultants offer opinions regarding reasonable royalties and lost profits stemming from infringing sales. Damages experts use a variety of financial modeling and economic analysis to calculate monetary remedies. Their work product assesses things like demand curves, price elasticity, alternative non-infringing options, and appropriate royalty rates as applied to the facts of the case. Expert witness testimony is essential for establishing evidence to prove reasonable royalty and lost profit damages.

In high-stakes patent cases, the involvement of qualified patent expert witnesses is indispensable. Pros’ specialized skills in technology, claim interpretation, prior art, and economics bolster attorneys in presenting the strongest case possible. Expert analysis brings clarity on complex issues and lends credibility regarding matters that often define the outcome in patent disputes.