Patent Law

The following is excerpted from an April 2010 IMS Expert Services BullsEye Bulletin by Robert Ambrogi:

Long-debated legislation to overhaul the nation's patent system could be headed soon to a vote by the full U.S. Senate, after the Senate Judiciary Committee announced bipartisan agreement on a compromise bill.

Included in the bill are key provisions that could directly impact the use of expert witnesses in patent cases.

The Act's Impact on Experts

In requiring judges to play this gatekeeping role regarding damages, does the Patent Reform Act foretell stricter standards with regard to the use of expert witnesses? One law professor thinks not. In testimony submitted to Congress, Georgetown University Law Center Prof. John R. Thomas argued that these proposed reforms only underscore evidentiary standards that litigators already must follow in using expert testimony.

"Federal Rule of Evidence 702 currently requires expert testimony to be based upon sufficient facts or data and the product of reliable principles and methods," Thomas said. "Further, these principles and methods must be applied reliably to the facts of the case."

In other words, theories of damages ? to the extent they involve expert testimony ? are already subject to a gatekeeping process. "Accused infringers may file Daubert motions to exclude expert testimony that fails to meet standards of relevancy and reliability," Thomas noted.

Edward M. O'Toole, a patent litigator with the intellectual property firm McCracken & Frank in Chicago, offered a similar opinion. "I don?t think the Patent Reform Act, as currently worded, will affect the role of damages experts."

Federal rules already require litigants to identify expert witnesses and submit an expert's report in advance of trial, and experts are already subject to being deposed by opposing parties, O'Toole noted.

"In most jurisdictions I have been in, these pretrial activities control what will be allowed into evidence at trial," he said. "In other words, Daubert, as expanded, will still be the test."

But while the act might not change the role of the expert, it could lead to an increase in the demand for experts in the fields of economics, finance and accounting. With judges required to engage in stricter scrutiny of damages claims and to conduct that scrutiny in advance of trial, there is likely to be an increase in damages contests and an increase in pretrial hearings related to damages.

Simply put, if the Patent Reform Act becomes law, damages experts will be more critical to patent litigation than ever before. 

Read the full Bulletin here.