Many of our experts (and our attorneys!) have noted that witnesses new to intellectual property cases are often lost in a jungle of jargon and terminology alien to them. Aside from the communication challenges this causes between an expert witness and an attorney, valuable time is also spent by attorneys teaching expert witnesses what the various intellectual property litigation terms mean.

We asked our intellectual property experts and attorneys to send us key terminology they commonly used in intellectual property cases, with which they thought an expert witness, new to intellectual property litigation, should be familiar.

We'd love to add more vocabulary  for this list. Send them to toby.edwards@thomsonreuters.com.

Claim Element: The scope of a patent is defined by its claims. The claim lists all the essential elements of the invention. Only if a product has all of these elements does it infringe a patent. The rights conferred by a patent need to be defined clearly, so as to put others on notice regarding what is and is not covered by the patent. To this end, every patent contains one or more "claims," which provide a definition of what is covered by the patent.  Only things that meet the definitions of the claims infringe the patent.

Claim Construction: The outcome of an attempt at patent enforcement commonly hinges on claim construction, which is the court's accepted definition of specific terms used in patent claims. Claim construction disputes arise over both the definition of technical terms and semantic interpretation. Patent litigants often spend a lot of money on claim construction as it usually determines two root issues of every patent case: whether the plaintiff has a valid claim; and whether the defendant infringed the patent.  A pivotal ruling regarding claim construction came from the Supreme Court in Markman v. Westview Instruments (1996) where the court ruled that the key question of claim construction was one of law within the sole province of the judge, not a jury.

Claim Chart: In a patent infringement lawsuit, the inventor must prepare a patent claim chart that describes how the accused product infringes the patent. Infringement claim charts, which are often referred to as "claim charts," typically show the language of a patent claim on the left side and a description of the infringing activity on the right side. Any given patent claim is only infringed if all of the characterizations on the left side are matched by (accurate) information on the right side.

Dependent vs Independent Claim: There are two basic types of claims:
•    independent claims: claims that stand on their own; and
•    dependent claims: claims which depend on a single claim or on several claims and generally express particular embodiments as fall-back positions.

Independent Claims are typically written with very broad terms, to avoid permitting competitors to circumvent the claim by altering some aspect of the basic design. A dependent claim further clarifies the independent or parent claim. In practice, dependent claims are often used to hone in on the inventor's preferred embodiment of the invention (e.g., the actual product design that the inventor intends to use.) Essentially, an independent claim broadly describes the invention, while  dependent claim #1 describes the invention in a narrower aspect that more specifically describes the preferred embodiment, dependent claim #2 is narrower still, etc.

Prior Art (also known as state of the art): Prior art constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality. If an invention has been described in prior art, a patent on that invention is not valid. Information kept secret (for example, a trade secret) is usually not prior art, provided that employees and others with access to the information are under a non-disclosure obligation. Prior art is generally expected to provide a description sufficient to inform an average worker in the field of some subject matter falling within the scope of the claim. Prior art must be available in some way to the public, and in many countries, the information needs to be recorded in a fixed form. Prior art generally does not include unpublished work or mere conversations.

Priority Date: (also known as a right of priority) This is a time-limited right, triggered by the first filing of an application for a patent or a trademark. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must "claim the priority" of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

The Doctrine of Equivalents: is a legal rule that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention. The Second Circuit Court of Appeals described its purpose as being to "prevent an infringer from stealing the benefit of the invention". Royal Typewriter Co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948). See non-literal infringement.

Invalidity:  An important limitation on the ability of a patent owner to successfully assert the patent in civil litigation is the accused infringer's right to challenge the validity of that patent. In order to obtain a patent, the invention must be useful, novel and non-obvious. Useful means that the invention is capable of serving a useful purpose. Novelty means that the invention was not fully disclosed in a single prior-art reference. The obviousness standard refers to the invention not being obvious to one skilled in the art to which the invention pertains on the basis of a single reference or a combination of references. If a patent is not useful, novel or non-obvious, it is invalid. In the United States, a patent is presumed to be valid. However, this presumption is rebuttable. One of the principal ways of overcoming the presumption of validity is to find prior art which is more relevant to patentability of the claims. Such prior art may, for example, take the form of prior patents or publications. Another approach to invalidating a patent is to prove that the invention was in public use or on sale in the U.S. more than a year prior to the date of the application. If one can prove that the invention was known or used by others in the U.S. or patented or described in a publication in any country before the invention thereof by the applicant, the patent is invalid.  Furthermore, patent law requires that the specification disclose the invention in such a manner as to enable any person skilled in the art to which it pertains to make and use the same. It further requires that the disclosure reveal the "best mode" contemplated by the inventor of carrying out the invention. Failure to comply with either of these disclosure requirements can result in the patent being invalid.

 As an initial step in evaluating the validity, it is frequently desirable to obtain a copy of the United States Patent and Trademark Office's "file wrapper," which contains a copy of the application and the communications between the applicant and the Patent and Trademark Office resulting in issuance of the patent. A review of the file wrapper frequently enables one to determine what rejections of claims were made by the patent office examiner, on what grounds those rejections were made, and what prior art was made of record. This generally provides some insight into what the examiner felt was patentable and what concessions or representations were made by the applicant.

Enablement: Enablement refers to the requirement that a patent application must disclose a claimed invention in sufficient detail for a person skilled in the art to carry out or create that claimed invention.  The disclosure requirement lies at the heart of patent law. An inventor is granted a monopoly for a specified period of time in exchange for the inventor disclosing to the public how to make or practice his or her invention. If a patent fails to contain such information, the patent is unenforceable or can be revoked.

Obviousness: (or non-obviousness) One of the main requirements of patentability is that the invention being patented is not obvious, meaning that a person having ordinary skill in the art would not know how to solve the problem at which the invention is directed by using exactly the same mechanism. The Graham Factors, as set forth by the United States Supreme Court, help determine if the claimed invention is non-obvious.  The Graham factors include:
1.    the scope and content of the prior art;
2.    the level of ordinary skill in the art;
3.    the differences between the claimed invention and the prior art; and
4.    objective evidence of non-obviousness.
In addition, the court outlined examples of factors that show "objective evidence of non-obviousness:"
1.    commercial success;
2.    long-felt but unsolved needs; and
3.    failure of others.
Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966).

Markman Hearing: A Markman hearing is a pretrial hearing in a patent infringement case in which a federal District Court judge examines evidence from all parties on the appropriate meanings of relevant key words used in a patent claim. The U.S. Supreme Court has held that the language of a patent is a matter of law for a judge to decide, not a matter of fact for a jury. A Markman hearing is sometimes referred to as a "Claim Construction Hearing."  The evidence considered in a Markman hearing falls into two categories, intrinsic and extrinsic. Intrinsic evidence consists of the patent documentation and any prosecution history of the patent. Extrinsic evidence is testimony, expert opinion, or other unwritten sources. Markman hearings are important, since the court determines patent infringement cases by the interpretation of claims. A Markman hearing may encourage settlement, since the judge's claim construction finding can indicate a likely outcome for the patent infringement case as a whole. Markman hearings are before a judge, and generally take place before trial, but may also be held after the trial begins before jury selection.

Means-Plus-Function: A means-plus-function claim is a claim including a technical feature expressed in functional terms.  For example: "means for converting a digital electric signal into an analog electric signal." A variant known as a "step-plus-function" claim style may be used to describe the steps of a method invention.
Prosecution history (or prosecution history estoppel) - Prosecution history estoppel is a term used in patent law to indicate that a person who has filed a patent application, and later makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents to broaden the scope of their claims to cover subject matter addressed by the amendments.  With regards to prosecution history estoppel, the U.S. Supreme Court stated that it preferred a presumptive bar approach to the doctrine of equivalents. Under this approach, when a claim is amended, "the inventor is deemed to concede that the patent does not extend as far as the original claim" and the patentee has the burden of showing that the amendment does not surrender the particular equivalent. To succeed, then, the patentee must establish that:
1.    the equivalent was unforeseeable at the time the claim was drafted;
2.    the amendment did not surrender the particular equivalent in question; or
3.    there was some reason why the patentee could not have recited the equivalent in the claim.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U. S. 722 (2002).

Method Claim: A method claim (sometimes referred to as a "process claim") is a process, or series of steps or acts, for performing a function or accomplishing a result. Under a method claim, a patent is only infringed when a person or entity practices all claimed steps. Neither a physical device, such as a product that can be used to practice the method, nor instructions for practicing the method are infringing until they are used by a single person to perform all the steps together.

Apparatus Claim: An apparatus claim defines the invention in terms of its components or in terms of what the invention is as opposed to what it does. An apparatus claim describes a device that usually has active components. An apparatus claim may also be defined with means-plus-function elements. An apparatus claim differs from a method claim, because an apparatus claim generally describes the components of the device or system in terms of physical or structural characteristics. An apparatus claim is infringed by the actual device or system.

Field of Endeavor: For an invention to be eligible for patent protection, it must fall within a permitted field of endeavor. Historically, patents could only be obtained on technical inventions (physical arrangements, devices and apparatuses) while non-tangible or non-concrete inventions (for example, those related to games, medical treatment, algorithms, computer software and methods of doing business) were not patentable. This is no longer the case, especially in the United States. U.S. patents can now be obtained for anything made by man, provided that it produces a useful, concrete and tangible result, rather than just an abstract idea. As a result, computer programs and methods of doing business are now patentable. Other countries, most notably the European countries that are members to the European Patent Convention, are rather hesitant to allow patents in these fields.
 Defining the "field of the endeavor" is not always an easy task. Simply being part of the same industry does not render an invention part of the same field. In order to provide guidance to the inventing community, the Federal Circuit has held that in considering whether a reference is from the same field of endeavor, one may look to explanations of the invention's subject matter in the patent application, as well as "embodiments, function and structure of the claimed invention." 

Relevant Field of Art (or Field of Invention): A very broad description of the area of technology/industry into which the patent falls. This statement may include a paraphrasing of the applicable U.S. patent classification definitions. The statement should be directed to the subject matter of the claimed invention.

Analogous Art: For an application to be considered obvious, it must be "analogous" to prior art (a previous invention).  A prior art reference is analogous only if it addresses the entire problem solved by the patent at issue. Two separate tests define the scope of analogous citable prior art:
1) whether the art is from the same field of endeavor, regardless of the problem addressed; and
2) if the reference is not within the same field of endeavor, whether the reference is still reasonably pertinent to the particular problem with which the inventor is involved.
Under the second test, a reference may be "reasonably pertinent" if it "logically would have commended itself to an inventor's attention in considering his problem." In Re Klein.  In other words, if it has the same purpose as the claimed invention and relates to the same problem, it would be considered analogous art
. 
Anticipation: Anticipation occurs when a prior art reference or event discloses all the features of a claim and enables one of ordinary skill in the art to make and use the claimed invention. In this situation, the claim is then said to lack novelty. The Federal Circuit Court defined anticipation as "a patent defense that must be based on a single prior art reference.  For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference." 35 USC §102.  Anticipation requires only one step to prove if a single prior art reference is available.  If a single document teaches all elements of a patent, in the same arrangement, the single prior art reference can invalidate the target patent.

PHOSITA - Person Having Ordinary Skill In The Art  (at the time of the invention) (also referred to as the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person): The PHOSITA is a legal fiction unique to patent law, similar in concept to the fictional "reasonable person" used in tort and negligence actions. A PHOSITA is a person considered to have the normal skills and knowledge in a particular technical field, without being a genius. He or she mainly serves as a reference for determining, or at least evaluating, whether an invention is or is not non-obvious. If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.
 Additionally, the person skilled in the art is also used as a reference to determine whether an invention is sufficiently disclosed in the description of the patent or patent application (sufficiency of disclosure is a fundamental requirement in most patent laws), or in order to determine whether two technical means are equivalents when evaluating infringement.

Equivalent: If an invention (or prior art) performs the function specified in a claim, is not excluded by any explicit definition provided in the specification for an equivalent, and is an equivalent of the means- plus-function limitation, the prior art is an equivalent. Factors that will support a conclusion that the prior art is an equivalent are:
(A)    the prior art performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification;
(B)     a person of ordinary skill in the art would have recognized the interchangeability of the prior art element and the corresponding element disclosed in the specification at issue;
(C)    there are insubstantial differences between the prior art element and the corresponding element disclosed in the specification;
(D)    the prior art element is a structural equivalent of the corresponding element disclosed in the specification. In other words, the prior art element performs the function specified in the claim in substantially the same manner as the function is performed by the corresponding element described in the specification.
A showing of at least one of the above-noted factors by the USPTO Examiner should be sufficient to support a conclusion that the prior art element is an equivalent.
 
Equivalent Structure: Equivalent structure has a very specific meaning in a means-plus-function setting.  In order to identify an equivalent structure, the claimed function of a means-plus-function element and, the structure described in the patent specification that performs the function must be determined. Once this threshold determination is complete, only then can an equivalent structure be identified in the art relative to that of the patent specification.  The factors discussed above in the discussion of "equivalent" set forth the required analysis for determining equivalence.

Literal Infringement: Literal infringement occurs when every element in the patent claim (each limitation) is found in the allegedly infringing device or process. If a claimed element is missing, then literal infringement is avoided. A "literal" construction of such a limitation may encompass only the disclosed structure and its equivalents. In the case of a claim with a "means plus function" element, the element is met literally when (i) an accused device performs the same function recited in the element, and (ii) the accused device embodies the corresponding structure, material, or acts described by the specification or an equivalent thereof.

Non-literal Infringement (also known as the Doctrine of Equivalents): Non-literal infringement (also known as the Doctrine of Equivalents) exists where there are no substantial differences between the infringing product and at least one claim in the original patent. The non-literal infringement requires that there be an impact on every limitation of at least one claim in the given patent, although they may not be precise and literally the same. If even one element within the patent claim did not have an element of being infringed, it would not qualify for the Doctrine of Equivalents. In other words, even if there is no literal infringement, a claim may be infringed under the doctrine of equivalents if some other element of the accused device or process performs substantially the same function, in substantially the same way, to achieve substantially the same result.

Abstraction-Filtration-Comparison Test (AFC): A method of identifying substantial similarity for the purposes of applying copyright law. In particular, the AFC test is used to determine whether non-literal elements of a computer program have been copied. The AFC test was developed by the United States Court of Appeals for the Second Circuit in 1992 in the case Computer Associates Int. Inc. v. Altai Inc.  The AFC test is a three-step process for determining substantial similarity of the non-literal elements of a computer program. First, the court must identify the increasing levels of abstraction of the program. The purpose of the abstraction step is to identify which aspects of the program constitute its expression and which are the ideas. By what is commonly referred to as the idea/expression dichotomy, copyright law protects an author's expression, but not the idea behind that expression. In a computer program, the lowest level of abstraction, the concrete code of the program, is clearly expression, while the highest level of abstraction, the general function of the program, might be better classified as the idea behind the program. Second, at each level of abstraction, material that is not protectable by copyright is identified and filtered out from further examination.  Third, the defendant's program is compared to the plaintiff's, looking only at the copyright-protected material as identified in the previous two steps.  It is then determined whether the plaintiff's work was copied.

Inventor: The person or persons who contribute to the claims of a patentable invention. An inventor has "intellectual domination" over the inventive process, and is not merely one who assists in its reduction to practice. The courts explain that "[t]he threshold question" of inventorship is "who conceived the invention." "Joint inventors" or "co-inventors" exist when a patentable invention is the result of inventive work of more than one inventor. Joint inventors exist even where one inventor contributed a majority of the work. Absent a contract or license, the inventors are individuals who own the rights in an issued patent. Status as an inventor dramatically alters parties' ability to capitalize on the invention. In the United States, a patent application must be filed in the name of the inventor(s). Intentionally failing to name, or incorrectly identifying inventors, can result in a patent being held invalid.

Conception: "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.." An idea is usually not "definite and permanent" or "complete" where changes result from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.
 The naming of inventors is very important for the validity of the patent. Ordinarily, the courts presume the named inventors are the inventors so long as there is no disagreement.Inventorship is a much more precise legal term. It is, obviously, the quality or state of being an inventor, but what differentiates an inventor from an author? The American Heritage Dictionary defines an "inventor" as someone who has produced or contrived (something previously unknown) by the use of ingenuity or imagination. The United States Patent and Trademark Office (USPTO) defines an inventor as someone "who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor...."

Author: An author is someone who contributes to the final product. To determine authorship on a paper or article, the finished product and all who contributed to the creation of the article or paper should be examined. Thus, authorship will include the researchers who conducted the subject study, of course. It will also include anyone who contributed algorithms, equations, or figures used during the research.  The term author is not synonymous with inventor.  An inventor is someone who participates in the inventive step. An author might imagine an outcome or a solution, while an inventor shows the steps and mechanisms necessary to get there.

Conception: Conception is "the complete performance of the mental part of the inventive act" and it is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice[.]" Townsend v. Smith, 36 F.2d 292, 295 (CCPA 1930). "[C]onception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill." Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd. Pat. Inter. 1973). Conception has also been defined as a disclosure of an invention which enables one skilled in the art to reduce the invention to a practical form without "exercise of the inventive faculty."

Reduction to Practice: The embodiment of the concept of an invention. The date of this embodiment is critical to the determination of priority between inventors in an infringement case. There are two ways that an invention may be reduced to practice:

(1)    By producing a physical embodiment of the invention, which is referred to as actual reduction to practice.  For example:
•    for an item of manufacture, provide a prototype or model of the invention;
•    for a method, perform the method and confirm the results;
•    for a composition of matter, synthesize or otherwise produce the composition.

(2)    By filing a patent application, which is referred to as constructive reduction to practice.

Actual Reduction to Practice: requires that the claimed invention work for its intended purpose. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application. A reduction to practice can be done by another on behalf of the inventor.

Preponderance of the Evidence: The standard of proof required to establish invalidity of patents. Preponderance of the evidence, also known as balance of probabilities is the standard required in most civil cases. The standard is met if the proposition is more likely to be true than not true. Effectively, the standard is satisfied if there is greater than 50 percent chance that the proposition is true.

Clear and Convincing Evidence: In patent infringement cases, juries must find that "clear and convincing" evidence exists in order to invalidate a patent. This is an unusually high standard for a civil case, but is a lesser requirement than proof beyond a reasonable doubt applicable in criminal cases. Clear and convincing evidence is a higher level of burden of persuasion than a preponderance of the evidence. Clear and convincing proof means that the evidence presented by a party during the trial must be highly and substantially more probable to be true than not and the trier of fact must have a firm belief or conviction in its factuality. In this standard, a greater degree of believability must be met than the common standard of proof in civil actions governed by the preponderance of the Evidence standard. 

Ordinary Meaning: The ordinary (or customary) meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention (i.e., as of the effective filing date of the patent application).  Unless an express intent to impart a novel meaning to the claim terms exists, the words are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. 

Definiteness: Patent law states that in order for a claim to be valid it must: (1) set forth the subject matter the applicant regards as his inventions; and (2) particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent. The Supreme Court's standard for interpreting the definiteness requirements is met only when the claims clearly distinguish what is claimed from what went before in the art and circumscribe what is foreclosed from future enterprise. This standard ensures distinction between prior art and the claim itself.

Abstract: The abstract is part of the patent application. The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly the nature and gist of the technical disclosure. A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading "Abstract" or "Abstract of the Disclosure." The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract in an application may not exceed 150 words in length.

Specification: The description, drawings and claims of a patent application. The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery pertains, or with which it is most nearly connected, to make and use the same. The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from prior art. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. Additionally, the inventor must set forth the best mode contemplated for carrying out the invention.

Drawing: A figure filed as part of a patent application to describe and explain an invention. At some point in the proceedings, the drawings must comply with the patent office requirements for formal drawings.

Claim: An inventor/applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. A claim is the definition of a monopoly right that an applicant is trying to obtain. This is an important part of the application, as it is the definition of that for which protection is granted.

Reexamination: The process where a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable. To have a patent reexamined, an interested party must submit prior art that raises a "substantial new question of patentability." A request for a reexamination can be filed by anyone at anytime during the period of enforceability of a patent. To request a reexamination, one must submit a "request for reexamination," pay a substantial fee, and provide an explanation of the new reasons why the patent is invalid based on prior art. Copies of the prior art must be provided, and the party making the request has to let the owner of the patent know that a request has been filed. If the USPTO finds that the request does raise a substantial new question of patentability, the USPTO orders a reexamination. Inventors themselves may also file requests for reexamination. Such requests may be filed before the inventors sue another party for infringing the patent, to make sure that the patent is valid in light of any prior art they may have discovered since the issuance of the patent. The patent office itself may initiate "director initiated" reexaminations, for example, when there is reason to question the validity of the patent. Once a reexamination is ordered, a new examiner is assigned to the case, and the patent goes through another examination similar to the examination it received the first time around.

Trade Secret: Information kept secret by an organization or business entity for the purpose of maintaining a competitive advantage.


 

Congratulations to WRTG expert witness Mr. Joseph Ori of the Paramount Capital Corporation, Larkspur, Ca! He is our randomly chosen iPad winner.  Mr. Ori, who is an expert in commercial real estate joined WRTG  in 2009. He has 28 years of experience, and specialize in the field of commercial real estate with specific knowledge in the areas of finance, investment and development, capital markets and advisory services.Thank you Mr. Ori, for being a part of our international network of expert witnesses.

Westlaw Round Table Group is proud to announce the launch of the Advisory Council of Experts. The WRTG ACEs are a collaborative group of highly experienced experts from many industries, working with us in evaluating our current practices, developing new ideas to better assist our experts, and helping us to improve our expert services program. You can meet them all over the next few months in our newest blog feature "Expert Insight".

Many economists are claiming that the U.S. economy is recovering, if unevenly. Corporate profits are up. The Dow Jones index has been rising steadily for a year, (at this writing) and is at 2008 levels. Credit is becoming more available, albeit slowly. The NAHB notes 2010 housing starts are up 6% from 2009. And, according to a NABE  report, more companies are hiring employees again. But has that trend extended to expert witnesses? Are law firms hiring more expert witnesses?

The short answer is yes, but like all such economic analysis, the complete answer is more complicated.

2010 was, by most accounts, a rather flat year for the legal industry overall. But a closer look at the expert witness industry shows that the use of experts in 2010 was up from 2009, by almost 6%.  The interesting development, however, was not the steady increase in the number of experts hired but rather when they were hired within the lifetime of the case and how they were utilized.

We have found that clients are retaining experts earlier on in the case life cycle. We also see experts being consulted earlier and more frequently as part of the case strategy development process, once retained. This has several implications for experts, including longer relationships with clients and their cases and the concurrent longer time commitments needed of the expert. In addition, we are seeing periods of down time between early case consultations and demand for reports, depositions, and court appearances.

There might be two causes for these developments. First, attorneys (and their clients) are becoming much more cost conscious. By hiring an expert early on, attorneys are spreading out the expert cost over time, and they might also limit costs as well by more efficiently planning their strategy based on the expert's early assessments. This latter point is supported by the trend towards settlement of cases. Second, we have repeatedly heard from our attorney clients that they want to find the best experts earlier, in case they don't settle and need to go to trial.

Last year WRTG saw a significant increase in retained experts over 2009, and based on quarterly trending data we predict an even more significant increase in 2011, as our clients come to WRTG earlier and more often for their expert witness search and referral needs.

Updating your profile with WRTG is the best way to ensure we can connect you with the right clients and the right cases in 2011.

For other trends in the expert witness industry, check out more postings on our expert witness blog.

Congratulations to WRTG expert Calvin Johnson of Electronic Commerce Strategies. He is our winner of the Apple iPad for downloading our WRTG membership logo onto his web page.

Mr Johnson joined WRTG in 2005, and since then has been often consulted, and retained by our clients. An expert in Banking and Technology, Mr. Johnson proudly displays his WRTG membership on his business website.

Thank you Mr Johnson, for continuing to work with WRTG as a valued and respected expert.

You can find Mr Johnson, and thousands of other highly respected and experienced experts for all of your expert witness needs, by calling us at 202 595 2000, or through our web page www.roundtablegroup.com

I am one of several folks who gets to represent Westlaw Round Table Group at the Andrews Asbestos Litigation Conference in New Orleans October 28th and 29th, and I am very much looking forward to it. I interviewed Kenneth Bradley, Sr Attorney Editor and conference organizer, about the conference, and what to expect. Here is his interview.


What are the usual attendees like?
 
Most of our attendees are lawyers who are active in asbestos litigation and many of those are trial lawyers, but some represent clients and never go to trial, especially those who represent companies that usually settle the lawsuits filed against them.  Insurance companies often send representatives, since as you probably know, they have a lot to say about how lawsuits against their clients will be managed.  Some of the defendant companies themselves send in-house counsel.
 
How has the conference changed since its inception? Have there been trends?
 
The issues in asbestos litigation, as far as liability, have been pretty well settled for sometime know.  The conference usually focuses on teaching skills for being successful in lawsuits, from both the plaintiffs' and defendants' perspectives.  Experts who can share the latest studies in medicine and industrial hygiene are big draws.
 
What do you enjoy most about the conference?
 
My professional satisfaction from planning and attending the conference is the chance to interact with the people most active in the litigation that Westlaw Journal: Asbestos covers.  It leads to better coverage for my subscribers because of the contacts I make who turn into sources for developments in litigation.
 
Is there something specific about the upcoming conference you want to highlight?
 
This conference includes a presentation on an issue that has been weighing heavily on defendants and insurers.  That is the imminent change in Medicare secondary payer reporting.  Congress has shifted the burden for reporting settlements and damages paid to Medicare beneficiaries to the payers and many companies say they are having a difficult time figuring out just how the government expects them to comply with the requirements.  There are steep fines involved for non-compliance.

We will also have a presentation from an attorney who this year successfully secured a $200 million judgment for his client against CertainTeed.  He said it may be the biggest award in an asbestos case in California and people will be watching to see how it plays out on appeal.
 
What role do experts play at the conference?
 
Very often experts are on the faculty, for example, the speaker who will address the Medicare reporting requirements.  But we've also had experts in medicine, science, industrial hygiene and actuarial issues related to determining parameters for damages awards.We've even had presentations on how to find and work with expert witnesses.

People who attend the conference who have expertise in these areas will have the opportunity to network with trial lawyers who are always looking to recruit new experts who can assist them in successfully prosecuting or defending asbestos lawsuits.


The Andrews Asbestos Litigation Conference is October 28th and 29th this year. You can more full details here.
 

Here at WRTG our vast network of experts is our greatest asset, and our greatest pride. Increasingly, along with WRTG referring thousands of experts to clients every year, our experts have been referring clients with cases to us! That level of confidence and collaboration is key to our success as the premier expert witness referral firm. And now, we are able to thank our expert witness colleagues who refer cases to us with a $500.00 referral bonus.

Its simple. Any WRTG expert that refers a client with a case to us, and that client retains and uses a WRTG referred expert for that case, will receive a payment of 500.00. You can get more information by calling our expert services team at 202 595 1338 or by emailing them, anytime.

Thank you again for helping us become the premier expert witness referral firm!

In the last few days I have been reading a LOT of expert witness testimony, while working with my new colleagues at Westlaw. For me, this is just fun, digging into thousands of collected and formatted expert depositions in the Westlaw collection, so as to ascertain litigation trends for future expert recruiting. I was in a sort of expert witness Disneyland.

Amidst all these documents that collectively painted a picture of specific litigation trends, certain passages would stand out from the usual high level of expert responses to examination, of which this is one. I offer it as evidence on the importance of early, frequent, and clear communication between expert and client.

Expert's statement: "So, but I'm not trying to say that I'm some sort of expert, I've been trained, I've been educated or anything like that.  Follow what I'm saying?"

Yes, absolutely.

Expert witnesses rely on their spoken and written word to convey certain truths to juries. They are usually cross- examined on these words. Great experts know how to handle a good cross examination, by sticking to the facts, keeping their answers focused and to what they are sure of. But maybe that is not enough anymore.

Body language, as analyzed via video transcripts, is becoming an increasingly common tool, and not just in the court room, but sometimes months in advance by lawyers interviewing and retaining experts. By video taping the interview, clients can use a whole range of visual body language clues to ascertain the expert's comfort and confidence on areas of expertise.

"The words can all be spot on, but if a witness's body says I'm really uncomfortable with my position, the expert can immediately undermine a case,"

the whole story here.

This question is usually asked with some apprehension from new expert witnesses. The key is clearly preparation and caution. Early work and preparation with your client is critical. Aaron Larson, a lawyer based out of Michigan, wrote a very useful series of tips for the new expert witness.Part of it includes:

If you are inexperienced  as an expert witness, you should know the following for deposition:

Know the legal issues. Speak with your client about the legal issues, and get comfortable with the legal terminology for your case.

Only one person may speak at a time. Everything you say at a deposition is being transcribed. The court reporter cannot make a good record when people interrupt each other or talk at the same time.

Only answer the question that was asked. Ordinarily, after you have answered the specific question that you were asked, you will not want to volunteer any additional information. Even if opposing counsel sits silently and seems to expect you to say more, don't fall into that trap. If opposing counsel wants more information, he will ask a follow-up question. Get used to silence even if it makes you uncomfortable -- it is your job to answer questions, not to fill silence.

Think before you answer questions. Whether on direct examination or cross-examination, think before you speak. It is almost always better for there to be a short pause before you answer a question than for you to give a bad answer.



His whole posting with many more great suggestions can be found here