Posted by Mark Swansiger on October 6, 2008 4:01 PM |Permalink|TrackBacks (0)

Dear Friends,

This issue of The Expert Advisor contains valuable advice from two Round Table Group experts with vast experience in e-discovery and 3D exhibits. Our Featured Expert, Johnette Hassell, Ph.D., a national consultant and expert witness in computer forensics and e-discovery, explains how to use the 2006 e‑discovery amendments to the Federal Rules of Civil Procedure to your advantage. 

An article authored by Jeff Drake, principal of Drake Exhibits, explains how 3D exhibits can document and demonstrate the physical aspects of cases involving a variety of catastrophic events. He details the ways in which a Demonstrative Evidence Specialist works in tandem with the legal/expert team to create a visual strategy for use in presenting a case.

A third article discusses a recent federal district court order in a patent infringement case striking out those portions of an expert witness's report that were based on secret government studies.

The Expert Advisor is dedicated to providing our readers with assistance in locating, preparing, and utilizing experts. Please send your ideas for upcoming themes or articles to mswansiger@roundtablegroup.com.

Regards,

Russ W. Rosenzweig, CEO
Round Table Group, Inc

Posted by Mark Swansiger on October 6, 2008 2:39 PM |Permalink|TrackBacks (0)

A federal district court in Delaware recently ruled, in a pre-trial order, that unsubstantiated portions of an expert witness's testimony in a patent infringement case were inadmissible.[1] The dispute involved two types of scintillator crystals used for medical purposes. The expert, a research scientist employed by Los Alamos National Security (LANS), stated that the two crystals were "different substances and the difference between their properties are such that they cannot be considered to be equivalent." He based his report, in part, on studies undertaken at the Los Alamos National Laboratory (LANL). LANS operates LANL for the Department of Energy.

The expert's work for LANS dealt with homeland protection and national security. Consequently, his use of government property was severely restricted, and he could not use work-related data in connection with this case. Moreover, he was barred from producing any LANL documents for use in the litigation.

Basing her decision on fundamental principles of fairness, the judge pointed out that confidential data cannot be used "as both a shield and a sword." The expert, who was precluded from sharing his work with the litigants, could not rely on his recollection of that work product in the lawsuit because "there clearly was no principled way to test his recollection and opinion."

---

[1] Siemens Medical Solutions USA, Inc. v. Saint-Grobain Ceramics & Plastics, Inc., DC DE, Civ. No. 07-190-SLR, August 20, 2008.

Posted by Mark Swansiger on October 6, 2008 12:37 PM |Permalink|TrackBacks (0)

By Jeff Drake[1]

Trial attorneys, insurers, investigators, and forensic experts dealing with cases that involve a variety of catastrophic events can benefit from the use of 3D exhibits that document and demonstrate the physical aspects of their cases.  Following a fire, explosion, construction accident, structural failure, or other incident, it is critical that the evidence be documented immediately in order to preserve a record of the event for trial. This is where a Demonstrative Evidence Specialist (DES) steps in.

The DES is a designer trained in problem solving, who works in tandem with the legal/expert team to create a visual strategy for use in presenting a case. The DES consults with the attorneys to learn about the evidence and theory of the case, and also meets with expert witnesses scheduled to testify at trial in order to learn the technical issues involved from their point of view. In many instances, the DES's mission is to illustrate the expert's testimony. Attorneys can look to the DES to support the litigation process in ways that far exceed the production of exhibits.
 
Investigation Process

The DES works with investigators in documenting a scene, interviewing witnesses, inspecting equipment, creating technically accurate, visually specific graphics, and providing illustrations for expert reports. For example, the DES may work with a fire protection engineer to understand and graphically depict the dynamics of a sprinkler system's performance and effectiveness during a fire that overwhelms the system due to the building design.
 
Interaction with Attorneys

The DES bolsters the attorney's case by creating preliminary exhibits for use in depositions; assisting during depositions by supplying pre-made graphic templates to help witnesses (i.e., provide scale components for use by the witness in recreating a kitchen layout before a fire); drawing artistic sketches of a witness's testimony during deposition (i.e., illustrating the position in which a nurse found a deceased patient in a bed-rail entrapment case); and producing a series of trial exhibits that effectively summarize the client's case.
 
Trial Testimony

There are two reasons for a DES to testify at trial:

1)      Defense: When the other side objects to the exhibits, the DES must be able to testify that they are fair and accurate in order for them to be entered into evidence.

2)      Offense: The DES is an ideal witness to introduce and explain the site to the judge and jury as the exhibits are introduced. Having gone through a painstaking process to create fair and accurate exhibits, the DES often knows the physical site better than any other member of the litigation team. 

The DES needs a thorough understanding of a situation to create the exhibits. Often, the work involves drawing or building the site piece by piece in a scale model or computer model. Litigators can capitalize on this knowledge and use it to great advantage in court. The attorney who best explains the physical aspects of a case to the court effectively owns the site.

The DES's testimony may include explaining the process used to recreate a site (listing such items as the technical documents, medical records, depositions, photographs, expert reports witness descriptions, and video footage that were reviewed); describing the reconstruction process (the CAD program used, the scale used, consultations with experts, and first-hand inspection of the site and/or equipment); and the medium or materials used in the final exhibits.
 
Design Process

The DES looks at a case through the eyes of a juror and asks the following questions:

    * How would this best be explained to me?
    * What do I want to see as the attorney is explaining this case to me?

Demonstrative evidence can take the form of graphic exhibits (both printed and electronic), scale models, and animations. The DES recommends which type of exhibit or combination of exhibits will most effectively illustrate the case. This recommendation takes into account the complexity of the case, the trial schedule, and the budget available for exhibits.

The DES integrates all of the available information into as few exhibits as possible to simplify the in-court presentation. A scale model is one of the most effective types of exhibits for accomplishing this purpose. Whether the model is of a building or a product, the jury members will have a much easier time understanding the circumstances at issue if they can see the physical aspects of the case in three dimensions, right in front of them. 3D models are used to explain orientation, terminology, physical relationships, size, and scale; they enable the jury to focus on the issues at hand without struggling to understand what the site looks like.

Two cases in which models prepared by Drake Exhibits were key factors in obtaining positive results for its clients are described below:

Malden Mills textile plant explosion and fire

In 1995, the Malden Mills textile manufacturing plant in Methuen, Massachusetts, was the site of a massive explosion and fire that resulted in dozens of injuries, financial losses totaling nearly $500 million, seven years of litigation, and one of the largest fire investigations in the region's history. Retained by the mill's property insurer, Commerce & Industry Insurance Co., Drake Exhibits assisted in all phases of the case-from site investigation, documentation, and reconstruction to demonstrative evidence services that included design and development of a series of graphic exhibits and a scale model.

The scale model of the portion of the Monomac building involved in the initial explosion and subsequent spread of the fire represented an area measuring over 200' long and over 100' wide, including structures outside the building and trailers parked next to the building. Flock line and dryer equipment inside were represented in detail. The scale of the model had to be large enough for people to easily view the detail and small enough to be transported to meetings and court hearings. The exhibit was designed to split into two sections, each measuring 7' long, 3' wide, and 3' tall.

The use of this model for case strategy meetings, witness interviews, court hearings, and mediation greatly simplified many of the tasks that the legal and expert teams had to accomplish in order to achieve a favorable settlement for the client.

Monomac Building Model
 
Child fatality - booster seat product liability

A child succumbed to injuries sustained in a car accident following the failure of the booster seat restraint in the vehicle in which he was riding. On behalf of the defense (the booster-seat manufacturer), Drake Exhibits located an exemplar of the Toyota Camry's rear section and prepared it as a trial exhibit to illustrate proper seatbelt-fastening methods. Drake also produced a model at three times the actual size of the car's seatbelt mechanism that dramatically illustrated how a foreign object (in this case, a rubber band) would cause the seatbelt to malfunction. Both exhibits were critical to a swift finding for the defense.

Camry Seat   Seatbelt Mechanism

[1] Mr. Drake is Principal of Drake Exhibits (www.drake-exhibits.com). He joined the Round Table Group in 2008.

Posted by Chris Crone on October 2, 2008 4:35 PM |Permalink|TrackBacks (0)

By Johnette Hassell

 

Johnette Hassell, Ph.D., a national consultant and expert witness in computer forensics and e-discovery, has been on Round Table Group's list of experts since 2005. She is the founder and CEO of Electronic Evidence Retrieval, L.L.C.,[1] a full-service computer forensic and e-discovery firm that provides litigation support from initial case investigation, through discovery, and into trial.  Dr. Hassell is a highly acclaimed national speaker on e-discovery and computer forensics.

 

In this article, Dr. Hassell explains how to thread the e-discovery maze created by Rules 26-37, Federal Rules of Civil Procedure.

 

You Know You Need E-Discovery Help When ...

 

• You believe the other side is not giving you all that you are entitled to
• You know the opposition has a massive information infrastructure and you want to prevent them from burying you in discovery production  
• You have proof that the other side has not produced everything
• You have just received a production of 50,000 e-mails and 500,000 documents

Have any of these circumstances occurred in your practice? Or in the practice of anyone you know? The 2006 e‑discovery amendments to the Federal Rules of Civil Procedure place powerful tactics in the hands of litigators, tactics that you can use to address each of these issues, and many others.

 

Here's how e-discovery and computer forensic consultants and experts can help you when you encounter any of these situations.

 

You Believe They Are Not Giving You All That You Are Entitled To

You have requested the production of e-mail communications between two relevant parties. After much stalling, the other side produced a few printed e-mails, saying that's all they have. You suspect that many more messages exist. In a 30.b.6 deposition, you ask the deponent how she communicates with her secretary, particularly when she is traveling. She replies, "We use e-mail." You follow up with questions about e-mail servers and document retention and destruction policies, perhaps reminding the deponent about the serious sanctions (such as $1.6 billion) imposed for deleting and not producing relevant e-mails.

 

What are your options when the other side continues to resist? You can go to the court and get an order that the e-mails be produced, which often results in only a few more messages. Or, as I recommend, you can obtain an order allowing an e-discovery expert to examine the opposing side's computers and servers, and search for existing and deleted e-mails responsive to your request. If you take the latter tactic, you'll meet resistance in the form of claims of privilege, confidential information, trade secrets, copyrights, and so on. Fortunately, there is a viable solution to this problem. The e-discovery expert can extract e-mails and other materials that satisfy your selection criteria and provide a copy to the opposing party for review. The opposition would then produce responsive, non-privileged results and provide you with a privilege/redaction log. The e-discovery expert, of course, would retain the original materials and log--just to keep everything honest.

 

You Know the Opposition Has a Massive Information Infrastructure and You Want to Prevent Them from Burying You in Discovery Production

The opposition is large, perhaps multinational. You know there is going to be a lot of discovery produced, perhaps thousands of boxes of paper documents. In one of my cases (before enactment of the e-discovery amendments), the defendant produced 8,000 e-mails; however, he generated them "electronically" by printing and then scanning them into a fax-like format. The scanned files could not be searched for recipients, subjects, key words, or other criteria. To review an e-mail, someone had to open each file, read it, and enter it into a document-tracking system.

 

This is the type of situation in which having an experienced e-discovery expert on your team really pays off. The amendments call for very early discussions of e-discovery, specifically directing attorneys to address the form of electronically stored information (ESI) production at the Rule 26 "Meet and Confer." Furthermore, counsel are directed to produce a list of persons with custody and control of ESI and a list, "by location and category," of all the ESI they expect to rely on in their case--and to produce this list at least 21 days before the Rule 26 conference. You need to be ready by knowing all that the amendments allow in e-discovery.

 

Specifying the Form of Production

As a default, the e-discovery amendments provide for the production of electronic documents in the form in which they are normally kept and used. The amendments also give you the right to request the form in which the results are to be produced; thus, your first step in protecting against the paper blizzard is to inform opposing counsel that you will request electronic production. Each discovery request should specify the form in which it should be produced. I usually suggest native form--the form in which the documents or information was originally created and stored.  Courts have been inconsistent, but at least one (Autotech Techs. Ltd. P'ship v. Automationdirect.com, Inc.) held that if you did not initially request the production in electronic form, you cannot go back and obtain it in electronic form after it was produced in a reasonably useful, albeit paper, form.

 

If you are the producer and the requester did not specify the form, the amendments require you to describe the form you will use. In contrast to Autotech, another court (White v. Graceland Coll. Ctr. for Prof'l Dev. & Lifelong Learning, Inc.) required the producer to produce e-mails a second time, in electronic form, after producing only printed e-mails in the first production.

 

The amendments specifically state that if the producing party can search the documents, the receiving side must also have that ability. They also allow native format to be converted into some "reasonably usable" form. In my case with the 8,000 e-mails, after I complained about the form of the initial delivery, the next production came in a specialized .pdf format that was not searchable. You can thwart this type of obstructionist tactic by stating in your request that any searchability in the original format must be maintained.

 

I believe that such searchability is important in discovery management. If documents can be searched, they can be electronically analyzed and organized, thereby reducing your time and your client's costs. I will discuss some specific electronic analysis later in this article.

 

Formulating Your Request for Production

Your second chance at preventing an over-inclusive production lies in carefully crafting selection criteria in your discovery request. Attorneys used to request "all documents relating to the contract between...." People went through their files and pulled what seemed to be responsive. Now, because of the sheer volume of ESI, we want to use electronic tools to identify responsive electronic documents.

 

The challenge is in answering the question, "What criteria do the tools use?" Initially, we used simple search terms such as "All files containing any of the following words: MySecretSauce, Mr. Bad Guy, Big Competitor, Smith Contract." But that approach often yields too many or too few hits. If, for example, "MySecretSauce" appears in the company's e-mail banner, every corporate e-mail would yield a hit.  Furthermore, a search for "Smith Contract" may yield too many hits if Mr. Smith is a party to many contracts, most of them unrelated to your litigation. Also, an e-mail might refer to the Smith "matter," "agreement," or "issue," and never use the word "contract."

 

While there is no magic bullet in this situation, it is a good time to call in an experienced e-discovery consultant.

 

In recognition of these issues, judges are calling for collaboration between the parties in developing selection criteria and, importantly, testing those criteria. In fact, the e-discovery amendments specifically provide for such testing.

 

Some judges, for example Magistrate Judge John Facciola in U.S. v. O'Keefe and Equity Analytics v. Lundin and Magistrate Judge Paul Grimm in Victor Stanley, Inc. v. Creative Pipe, Inc., are getting savvy about selection criteria, with Judge Grimm famously saying "all keyword searches are not created equal."

 

You Know That They Have Not Produced Everything

You have a copy of a relevant, responsive document or e-mail that the opposing side has not produced. You included search criteria in your production request that should have gotten a hit, but the item has not been produced.

 

This is another situation in which you need to call for a complete forensic examination of the opposition's computers and servers. As indicated earlier, such a request will probably be met with great resistance. But a forensic examination can recover a wealth of evidence not otherwise available, such as deleted files, file fragments that demonstrate the prior presence of files, attempts to thwart discovery by the use of secure overwriting software, and more.

 

You Have Just Received an Electronic Production of 50,000 E-Mails and 500,000 Documents

 

Your approach to reviewing this production may well depend on the size of the case. Consider two situations:

 

First, suppose you have a huge case involving hundreds of millions of dollars. There are well-known electronic e-discovery tools that process e-mails, attachments, and documents and allow you to view the data in many ways. They can identify e-mail conversations, shared documents, common-term usage and much, much more. Such tools can cost several hundred dollars per gigabyte for processing the discovery and may be cost-prohibitive for smaller cases. These tools are also valuable in the case-assessment phase to help attorneys understand the nature of their client's data.

 

Second, consider a case whose value does not justify an expenditure of the millions of dollars needed for the services described above. In such situations there are ways to significantly reduce the cost of analysis. Note that employees within a company frequently have multiple copies of the same documents and e-mails (each has his/her own copy of a document; each may have multiple versions of the same document, etc.). Thus, a first step in reducing the size of the production is to identify duplicate copies of the same information, a process known as deduping. Obviously, you only have to review a duplicate document once; however, the mere presence of a duplicate may be relevant to your case. For example, it may be of great interest that an unauthorized employee has a copy of a proprietary design document.

 

There is also an emerging technology that identifies near-duplicate documents. Near-duplicate documents are similar within a certain percentage threshold, such as two similar MS Word documents (the original and an edited version), or an e-mail and the response to that e-mail. Organizing electronic files into sets of near-duplicates reduces the time needed to review the documents and helps assure consistency in their analysis. It also provides insight into the evolution of documents and their various changes along a timeline. Typical charges for near-duplicate analysis are cents per document analyzed.

 

Because of forwarding, "cc:-ing," and replying, an e-mail collection has a more complex structure than a collection of other documents. E-mail thread analysis is used to organize e-mails into meaningful groups, such as a chain of e-mails in which each one contains its predecessor. Again, the reviewer saves time and gains consistency by reviewing a thread as an entity, rather than each e-mail individually. Attachments remain associated with their e-mail message, facilitating a "who-knew-what-when" analysis. An additional benefit is that missing e-mails can be identified, often leading, as it did in one of my cases, to the "smoking gun."  As with near-duplicate analysis, typical charges are cents per e-mail analyzed.

 

Summary

 

The e-discovery amendments address many more issues, some involving legal theory and others dealing with such practical concepts as metadata and information architectures. See my blog, ComputerForensicsEDiscovery.com, for ongoing discussions and practical insight on the e-discovery and computer forensic landscape.

Posted by Chris Crone on July 17, 2008 10:21 AM |Permalink|TrackBacks (0)

Dear Friends,

This issue of The Expert Advisor contains valuable advice from two of Round Table Group's experts with vast experience in corporate and patent matters. First, our Featured Expert, Prof. Douglas M. Branson, a renowned authority on corporate governance and securities regulation, provides litigators with 10 tips for use in preparing expert witnesses prior to depositions and trial.

An article authored by Philip L. Brooks, Managing Member of Brooks Consulting LLC, brings an insider's perspective to patent-infringement investigations. Phil explains how methods of investigation have changed over the last decade and notes that important data can be obtained by attending trade shows, speaking with employees and industry experts, and conducting Web research.

A third article highlights the U.S. Supreme Court's recent ruling that limits the ability of patent holders to demand royalties from companies at each stage of the production process.

Round Table Group is dedicated to providing our readers with assistance in locating, preparing, and utilizing experts. Please send your ideas for upcoming themes or articles to mswansiger@roundtablegroup.com.

Regards,

Russ W. Rosenzweig, CEO
Round Table Group, Inc.

Posted by Chris Crone on July 17, 2008 9:37 AM |Permalink|TrackBacks (0)

By Philip L. Brooks[1]

The VP of Sales for your company just returned from the industry's top annual trade show in Las Vegas with bad news. In addition to manning the company's exhibit booth and meeting with clients in a private hotel suite, she took a quick spin around the trade show floor. To her dismay, she discovered that a company, which none of you had heard of, was demonstrating a device with features eerily similar to your most recently launched product. Although the VP had attempted to strike up a conversation with the person at the "new" competitor's booth, he clammed up when he saw the corporate logo on her nametag.

Now what...?

In 1998, Jeff Moore, then a law student at Franklin Pierce Law Center, conducted an informal survey of law firms and companies in which he posed two questions:

1.      "How does an inventor know whether his process or method patent is being infringed?"

2.      "Where can an inventor go to have his IP protected on an ongoing basis by monitoring for illegal use?"[2]

Moore's report included the following observations: 

"The offensive search for potential infringers is targeted at finding infringers that can be forced to license or pay damages. Once an infringer is located the patent and literature searches may still be required to defend the patent and encourage a settlement."

"Companies have mostly relied upon internal resources to keep up on technology and identify potential patent infringers. Employees know the business, the key players, the technology, and often spot competitors that are infringing on process patents."[3]

Mr. Moore's comment that internal employees know the market best and are usually a more efficient and effective source for tracking down potential infringers might have been true 10 years ago. However, in 2008, his rationale appears to apply only in a fraction of patent-infringement investigations. Indeed, many clients are not really focused on such monitoring activities in the normal course of business--they have too many other things to concentrate on. Outside experts with industry, product, or patent-infringement experience are able to access information sources that may not be available to internal employees. Remember how the trade-show booth attendant clammed up when he recognized a competitor? 

Nevertheless, corporate employees are critical to the process because they can provide the retained expert with valuable information regarding the company's products and the industry in general. They are also helpful in defining the ways in which the claims of the patent might manifest in the features of products that your company does not currently produce.

One of the valuable side effects of patent-infringement investigations is the ability to obtain competitive and market intelligence, beyond the evidence of potential infringement. This information provides your company with valuable data that can be used going forward in day-to-day business activities.

Today, the volume of information available to businesses is much richer than it was in the past. Pertinent data can be gathered by attending trade shows, speaking with such parties as former employees and industry experts, and conducting Web research. In 1998, many companies (even very large ones) often had fairly static Web sites that consisted of only a few pages of text. Today, businesses often maintain multiple Web sites that offer deep content, multimedia informational sources, and links to third-party sources that provide supplemental information. This trend toward increased availability of valuable information shows no sign of slowing.

Retained experts may provide a valuable service in assisting your counsel in determining the liability aspects of patent-infringement cases. Product searches and investigations to establish potential infringement of your company's patent portfolio are conducted by:  

• Identifying businesses in your company's market and nearby markets
• Investigating companies and/or products that potentially infringe your patent portfolio using a detailed methodology, incorporating the latest Web-search technologies
• Identifying products of these businesses with features/functionality that potentially infringe upon your patents' claims



• Legally collecting documentation of this potential infringement
• Obtaining brochures, white papers, user's manuals, press releases, product reviews, financial filings, and other product or corporate document
• Developing questionnaires in conjunction with counsel to elicit information, through interviews and/or Web demos, that is relevant to the patent claim
• Attending trade shows and industry conferences in order to obtain product information
• Acquiring products for further technical evaluation

In "Patent Searching an Effective Tool for Competitive Intelligence," author Vinod Singh makes a very good case for why patent searching should be left to the experts--professional patent searchers.[4]   He discusses detailed steps--at least 13--that he considers essential for a complete search. He also points out that a skilled searcher should possess knowledge of search procedures, database limitations, technical tools, and software.

An early step in Mr. Singh's search process involves recordkeeping. He recommends that interested parties "[r]ecord the search words on a page in a project notebook and add other words as they come to mind or encounter them in other patents. Usually the word list becomes separated into groups of words covering different aspects of the invention."

This is excellent advice. When using search tools, you may end up following a number of different and often convoluted paths. Documentation of the keywords is essential to enable the researcher to explore all avenues and to revisit pertinent URLs using other search engines and/or tools. Moreover, the terminology used with respect to certain products or technologies often varies significantly in different parts of the world. Sometimes the variation may be as subtle as the use of acronyms, rather than complete word descriptions.

Also, while your company may rely on certain keywords to describe an invention, an expert may know that other members of the industry use a variety of keywords. In some cases, the infringement may occur in industries with which your company currently does no business. The expert's knowledge of the keywords applicable to other industries may lead to the detection of infringing products that your internal team would never discover. It is important to make sure that all relevant keywords are incorporated in your search--individually and in different combinations.

Back to the trade show...

Attendance at trade shows is a valuable tool in the expert's arsenal.  In the course of my patent-infringement investigations, I have uncovered some amazing details on products at trade shows.  Presented below are just a few of the insights I have gleaned over the past 12 years:

•  In addition to obtaining informational product brochures and white papers, attendees have access to demonstrations, cutaways, or components of products. Moreover, although the practice is not widespread, some visitors take digital pictures of booths and products. Thus far, I have not personally observed exhibitors discouraging people from taking pictures. [5]
• Salespersons are often more open to discussing product details in person than they might be over the phone.
• Conversations with other attendees can be a great source of information.
• Examining the exhibitor list before the show begins enables you to maximize the time spent at the show and to check out all companies that are of interest to you. In one trade show visit, my primary focus was on a specific company and its customers' booths. However, while reading the materials ahead of time, I noticed several businesses that were competitors to my target company, and I decided to stop by their booths. During the course of that show, I discovered eight to 10 competitors that had the potential of infringing upon my client's patents, and I subsequently shifted my primary focus to those entities.

Be sure to consider the role that an expert can play in your next patent investigation. You may derive significant value by retaining an expert to develop an ongoing infringement-monitoring program to protect your company's patent portfolio on a long-term basis. Having invested in the patents, you realize their true value only when you enforce those patents or seek out potential licensees.

Posted by Chris Crone on July 17, 2008 9:21 AM |Permalink|TrackBacks (0)

The U.S. Supreme Court's recent ruling in Quanta Computer, Inc. v. LG Electronics, Inc. (553 U. S. __, Dkt. No. 06-937, June 9, 2008) limits the ability of patent holders to demand royalties from companies at each stage of the production process. In this case, LG Electronics (LGE) licensed its computer component patents to Intel Corp., which then sold microprocessors and chipsets produced using those patents to computer manufacturers. Both Intel and non-Intel components were used in combination in the computers. The manufacturers did not modify the Intel components and followed Intel's specifications when incorporating the parts into their systems.

LGE unsuccessfully argued that the manufacturers' combination of Intel and non-Intel products infringed upon its patents. The Court determined that the doctrine of patent exhaustion applies to method patents. Even though a patented method cannot be sold in the same way as an article or device, methods can be embodied in a product, and patent rights are exhausted upon the sale of that product. Because LGE's license agreement authorized the sale of components that substantially embodied the patents at issue, consummation of that sale terminated its patent rights with respect to the components. The terms of the license agreement did not restrict Intel's right to convey its products to third parties for use in combination with non-Intel parts.

Posted by Chris Crone on April 25, 2008 9:29 AM |Permalink|TrackBacks (0)

by Lisa Fields

Your client believes that a competitor's new product infringes upon its patent. You need to find an expert witness to determine whether or not the allegations are true. How can you find a top quality expert with the specific knowledge you need?

Dennis Crouch, an Associate Professor of Law at the University of Missouri, recently conducted an analysis regarding patent litigation.  His findings indicate that our fictional product infringement description above is a very real problem for many practicing patent attorneys.  He observed that the number of patents being litigated has substantially increased over the last 20 years. "More complaints are being filed and more patents are being asserted with each complaint."    

One way to help ensure that your patent cases reach a successful conclusion is to seek help from an expert witness referral firm such as Round Table Group (RTG).  Round Table Group fulfill requests for patent experts more often than any other type of expert, says RTG's Nick Zafran, who has been researching and compiling the company's extensive billing data.

RTG's research has shown that patent experts bill for more hours than any other category of expert witnesses. "A medical expert often reviews a single person's medical file," says Zafran, "but for patent experts, there can literally be hundreds or thousands of pages of documents to review."

Top-four fields and their rates

When seeking a patent expert, consider billing rates for the top-four fields:

1.    Computer scientists.

They examine computer systems, Internet protocols, software source code and operating systems--and earn an average of $425 per hour, according to Round Table Group data.

"They're the most in demand, and the stakes involved in these cases are a lot higher," says Zafran, "so they feel that their rates can be higher."

2.    Biomechanical engineers.

These experts review cases dealing with medical devices like heart valves and stents and earn an average of $386 per hour. "It's a very big area now, especially for us," says Zafran.

3.    Electrical engineers.

They consult on cases that involve electrical devices, among them circuit boards, semiconductors and electronic power systems. These experts earn an average of $353 per hour, according to RTG data.

4.    Mechanical engineers.

Cases typically involve mechanical devices such as pulley systems or automotive components, and engineers earn an average of $291 per hour.

Technical jargon translation

Patent cases usually settle, says Zafran, but attorneys nonetheless seek experts who can translate technical jargon into layman's terms. Round Table Group can make this step of the process easy.

"We can set up a phone interview so an attorney can get a sense of how well someone speaks," says Zafran. "If you went to one of the standard free lists to find an expert, you're not going to get that."

Attorneys also seek experts who have some--but not too much--experience. "They prefer experts that have specific expertise without appearing to be a hired gun," says Zafran.

"Finding someone who has experience with your product who doesn't go from case to case is hard to find on your own."

It is important to note that expert services firms commonly present a rate higher than what an expert demands. The amount varies but is typically around $100. In exchange for this, expert services firms locate and vet hard-to-find experts in all specialties. These experts, at the top of their field, are often not listed on any free "expert" databases.

Predictions for expert billing rates

This concludes The Expert Advisor's series on expert witness billing rates, but we'd like to leave you with a forecast for the future of the topic at hand.

The following trends should surface in the coming months or years, according to Round Table Group research:

•    Billing rates should start moderating.

Expect expert witnesses' rates to stabilize or even drop slightly, says Zafran. The main reason? "Competition for jobs," he says. "That's going to keep rates where they are or bring them down a bit, across all categories, except maybe very high-end surgeons with specific expertise."

•    Lending experts will be in demand.

More litigation surrounding mortgage lending should surface in the near future, says Zafran. "Experts who at one time worked in high-level lending positions are going to be fairly high in demand," he says.

To learn more about expert witness billing rates, or to source an expert witness for a case, get in touch with Round Table Group by calling 312-280-1930 or emailing expertadvisor@roundtablegroup.com.

Posted by Chris Crone on April 25, 2008 9:24 AM |Permalink|TrackBacks (0)

by Lisa Fields

When seeking an expert witness, should you set your sights on someone local, or should you search nationwide? Of course, there's no right answer: Your decision will vary depending on the details of your case.

Regional or Nationwide: How do you decide?

Distant experts can be just as accessible as regional ones, says Round Table Group's Aaron Yoho, because "there's been a change in the way that people conduct business.  People take flights daily for their jobs, so it's not out of the realm of reason for experts to travel to see their clients."

Money might not be a factor, either, Yoho says, since faraway expert witnesses often don't charge more than regional ones--except those from major metropolitan areas.

But, there are reasons beyond money or accessibility for choosing an expert witness in your immediate geographical area.

Consider the following points to determine whether geography makes an impact on your case:

Narrow your search to your geographical area if:

Having someone closer to the scene would be an advantage.

"If it's an engineering case, the expert may want to look at a bridge or building in person instead of relying on pictures," Yoho says.

Juries in your state prefer hometown experts.

"Some jurors perceive expert witnesses from different locations as condescending," says Round Table Group's Phil Davis. "If you choose expert witnesses with local flavor, the juries may relate to them better."

Rules require that expert witnesses are from your region.

"A law in Tennessee states that you have to be a resident of Tennessee, or a contiguous state, if you're going to testify," says Yoho.

"There are also instances where the expert witness needs to have a state's professional engineering license to understand the regulations of a case."

Search for your expert nationwide if:

There's no concrete reason why the expert would have to be local.

"The vast majority of expert witness' work gets accomplished in their own offices," says Yoho. "If they need to go on location, the cost is of no consequence in the long run, considering how inexpensive it is to fly nowadays."

You seek someone with credentials from a notable university.

"In a medical malpractice case, a jury might like someone from Johns Hopkins better than just a local hospital," says Yoho.

Limiting Scope Can Be Daunting

Finding an expert witness on your own can be time-consuming and difficult, especially if you limit yourself to a tiny geographical region, or you're not sure where to start when searching on a nationwide scale.

"We find experts all day every day," says Yoho, "so we're much more expedient and efficient. Our network leads to our success. There's a lot of overhead for attorneys to make the connections we have, and for them to do it four or five times a year, it's not worth their time."

Round Table Group is well-versed in regional and national searches for expert witnesses. "If you're limited by local rules and regulations, we understand those kinds of searches," says Yoho. "If you're looking on a wider scale, we search in a way that makes sense for you: Most of the researchers at Round Table Group start at your location and spiral outward from there. We pride ourselves on finding the best experts."

Posted by Chris Crone on November 5, 2007 11:41 AM |Permalink|TrackBacks (0)

Dear Friend,

With this issue, we continue our examination of billing rates. Number one on Round Table Group's list of most expensive expert witnesses: doctors.

Our Medical Expert Witness Billing Rates article de-mystifies the criteria for the top five requested specialist categories. Make sure you get the best possible medical expert for your case--for the right price--by comparing your budget to our statistics.

Then, take a look at 4 Ways to Avoid Spoliation With Expert Witnesses. Document spoliation could result in preclusion of testimony--or worse. By knowing the expert witness' role in spoliation prevention, you have a leg up on the other side.

Please let me know if you have any ideas for upcoming themes or articles. Email me with your comments. As always, our mission is to provide readers with an edge in locating, preparing and utilizing experts.

Regards,

Russ W. Rosenzweig, CEO
Round Table Group, Inc.