In this episode…
Our guest, Dr. Edwin Hernandez, is active in multiple fields of expertise that have established him as a proficient expert witness. Attending conferences and industry events, reviewing technical papers, and investing in the future through his own initiatives, helps keep him well-informed in very dynamic pursuits such as AI and machine learning. Knowledge is important, and in the fast world of tech, staying current is key.
Check out the full episode for our discussion on collaborating with expert teams, sticking to your report, and the intersection of technology and expert witness work.
Note: Transcript has been lightly edited for clarity
Host: Noah Bolmer: Round Table Group
Guest: Dr. Edwin Hernandez, Founder and Owner, EGLA CORP and the EGLAVATOR
Noah Bolmer: Welcome to Discussions at the Round Table. I’m your host Noah Bolmer, and today I’m excited to welcome Dr. Edwin Hernandez to the show. Now, Dr. Hernandez is the founder of EGLA Corp, a full-service IP and Tech consulting and investment firm and EGLAVATOR, a tech incubator and accelerator. He’s an expert in AI and machine learning, wireless software technologies, and serves on multiple IEEE boards. Dr. Hernandez holds a Ph.D. in Computer Engineering from the University of Florida. Let’s jump into it. You’ve had an impactful tech career with a wide range of accomplishments. How did you first get started as an expert witness?
Dr. Edwin Hernandez: I began in 2014. A friend of mine is a professor at the University of Florida, and he was unable to take care of one case, so he recommended me to take care of the case. I successfully was able to help this customer in a trade secret manner and that’s how everything began.
Noah Bolmer: Did you get any mentorship from your friend? Did you have some idea of what to expect for your first couple of times as an expert witness or were you kind of just thrown into it?
Dr. Edwin Hernandez: No, I actually had a prior experience where I was kind of like an expert, not precisely on the full fledge, it was my own patent case. And then in that case, I learned the tricks of the game, basically, like all the filings, the motions and how everything worked in the Federal Circuit.
Noah Bolmer: Anything that you’d care to share? Any of those tricks of the trade that might be helpful to others, particularly newer expert witnesses who are just getting started?
Dr. Edwin Hernandez: Well, I will say that the main thing for an expert is to really stick with something that bears on the mantle of the truth. If you search- if you stay truthful- you stay with the truth, you stay with the facts, and you say something factually based that you have] some sort of a basis that could be corroborated by some sort of your knowledge, your experience. If you have a vast amount of experience [in] certain fields, even in those cases you need to start pointing out in the right direction to factual data that you find from the discovery. Discovery means that you’re identifying all the facts of the case. I think that’s- I would say that’s the main thing to stay valid to stay in this business. Otherwise, quickly it will be [inaudible] and most likely have some issues there.
Noah Bolmer: Let’s talk about those calls. Somebody calls you on the phone [and] says I’m looking for an expert witness. What are the sorts of questions that they ask you and what are the sorts of questions that you ask them to determine if it’s going to be a good engagement or not?
Dr. Edwin Hernandez: Well, the main thing that I ask, or I get asked for, is my background. What have I done in the past? What kind of cases I’ve been working on? And basically, the challenges that I had in different circuit cases where I had motions to strike, Daubert hearings, and things like that. And have I survived those? Basically, that’s being mostly [the] one because I have too many cases in my pocket. I will say that [is] one of the things I get asked a lot. And I ask also- always the question is, “What’s the time frame?” Because, as you know, sometimes they call you [and say they] need a report [in] a month and you need to review thousands of pages of something. I cannot draft an opinion on something in a very short period of time. Because I’m not full-time on that case, right? Even if I was on that case full time [I will] require ample of time to get used to it.
Noah Bolmer: That’s something that I’ve heard from a lot of my interviewees that they get a lot of calls for rush jobs, [such as], “I need you to read 6 trillion pages and I need a report on it tomorrow.”
Dr. Edwin Hernandez: You need to request an extension of time. And sometimes they do and sometimes I’m in a rush to- the main thing that you have to calculate [is] how many patents that you have to review? How many pages of code, software [and] technical specifications are behind each of those patents? And then okay, can that be done at the time for them requesting to be done? Many times- I wish we had an AI tool that could just see that and say, “Don’t do it.” It’s too- but those four things still- like an expert estimate on time because you need to commit to- I mean, people don’t understand it’s not just writing the report, it’s surviving the summary judgment and surviving the entire deposition. That’s the main thing.
Noah Bolmer: Sure. You mentioned AI and obviously you’re an expert in AI. Where are we going with AI? What is the future hold in AI? Is it a passing trend or is it something that’s here to stay? Has Pandora’s box already been opened?
Dr. Edwin Hernandez: Well, to be honest with you I joined the AI revolution in 2000, and [from] 1996 to 2000. When I was part of the Machine Intelligence Lab at the University of Florida, I began learning everything about machine learning then, neural networks and Lisp (list processing). All kinds of different paradigms that existed at the time. For many years, I actually never surfaced that expertise because it looked like it was a joke. It look- you look less serious. You say, “I’m a robotics expert. I’m an AI expert.” 2000 to 2010, that was like- that was most likely a recipe for a disaster interview or in any job or consulting job. You will never be taken seriously because AI [did] not really work. And recently, with the GPT changes and if you- if I saw the GPT substantially, believe that the changes made are not fundamental to [the] complex artificial intelligence paradigm. It’s just basically very smart ways to twist and turn the way you use data and [those] twists and that was done with GPT. Let’s say about encoding, can say to review the data that’s coming to open new ways and new language models, large language models, are being accommodated to the future. I think [that’s] what opened the Pandora box. Well, this is not necessarily I think, an AI percent. Because you can make AI very complex. The way those engineers creatively connected AI with basic functionality that existed in the past, in coding, and some other practices that connected the two dots. And now we have this new revolution with GPT models and it’s quite a broad topic.
Noah Bolmer: How do you remain an expert in your- yeah, really- multiple fields? What do you do to stay on top of everything with this cutting-edge technology that’s changing rapidly, sometimes on a daily basis? What does it mean to be an expert in your field?
Dr. Edwin Hernandez: Well, I mean, I think I would recommend if you want to remain an expert, number one is to attend conferences. Technical conferences from IEEE, join the technical committees in different conferences, review papers, recent papers from people that will keep you updated. Number two is attending events like Consumer Electronics shows, more work conferences, natural association broadcasting shows. So, then you attend those conferences and then you see what’s going on at the time technically, the state-of-the-art. And in my case, I run an incubator, so we incubate companies. Then we invest in different startups. I see a plethora of maybe- well, in December has been kind of sluggish, I’ve been doing all those things. But let’s say in 2023, I reviewed maybe 80 to 100 business plans with multiple people in different events. Then, you get up to speed to see what people are going through with the technology. Where I mean [within] five to 30 seconds you [will] know [if] the idea is novel or not. And then obviously being in all these patent cases keeps you up to speed, keeps you updated because you get to see [a] source code. You get to review the schematics. You get to review multiple things that make yourself current and cutting edge.
Noah Bolmer: Let’s jump back into some of the specifics of your expert witnessing work. Have you worked for both the plaintiff and defendant side?
Dr. Edwin Hernandez: I have actually, worked for defendants and plaintiffs. On the plaintiff’s side, I think it was a lot of patent cases. And on the defendant’s side, I had some trade secret background on a trade secret matter. And the major idea was to demonstrate that the evidence shown was not a trade secret. Obviously, I cannot discuss the details because it was under a protective order. I was surprised, very interestingly, because court review usually takes a long time, and you have to travel to a law firm and be [in] what is called a clean room environment where you don’t have your laptop [and] you don’t have your phone [but] you have a very interesting tool. You have a biometric tool that you will- they will run your biometrics and then you will see on a PC- actually, you will connect to the remote side. And then if you turn your head to the right or the left for way too long, then it will lock you out. And then it tracks how many minutes you reviewed the code. The tool didn’t allow me to move [my] head to the right or the left. I don’t think it- either the tool was wrong, or I reviewed 17 hours of code. But obviously, like I said, you have to be very concentrated. You need to concentrate your efforts in your mind to help the customer review data that is being presented to you in a very thorough way. As I said, deposition time is when you have the most amount of knowledge to defend your position. Because the position is not- you don’t win anything. I mean, you’re trying not to lose, that’s kind of the game in deposition. I think that’s very interesting how I came about helping both plaintiffs and defendants in cases in trademark, trade secret cases, patent cases, and copyright violations. In some cases where technology is involved in most of those situations.
Noah Bolmer: Have you found yourself working on teams with other expert witnesses? What are those interactions like?
Dr. Edwin Hernandez: Yes, I did. Actually, in the last case, I was with two more experts. Usually, you have a damage expert, and I’m a technical expert, so you have a team right there. The damage expert will rely on my expertise to do some of their calculations, for example. And in some other cases, I am a part of a team of two or three experts where we review multiple patents. They assign three or four to me, three or four to the other guy, and then whatever. And then we both have to collaborate, because in some cases the patents are interconnected. They have similar claims. They have similar technologies. We’re reviewing the same evidence. So obviously, whatever I propose in some cases as part of the solving one of the claims needs to be involved with the other experts to get to an agreement. That’s the path to go. Or there’s too much risk, because of whatever arguments are being made- and invalidity as well as you know, is a big gamble. Validity and infringement and usually very tied together.
Noah Bolmer: Right. Of course, and when you’re working with another team of experts, you’re talking about collaboration. Are you also collaborating with the attorney? Do you feel like you’re all kind of a team?
Dr. Edwin Hernandez: Of course, attorneys are great. I mean, I usually would like the attorney to tell me more of the legal side of the story. What arguments are being said by the other side? Non-infringement arguments, for example, sometimes the non-infringement arguments are ridiculous. [They] are very- they’re not even possible to be technically done. So, my job is to help the attorney understand within the boundaries. And then obviously assist counsel with discovery as well. Sometimes discovery could become problematic. I have one case that I discovered they were hiding information and then attorneys were able [to] get the information even a few years later. And obviously those attorneys will get sanctioned, because of my discoveries. And I was right because the suspicion that I had about the hiding of information was true. And the evidence showed in the supplemental report that there was a lot of evidence that was missing from the production initially, and those attorneys and that client, that opposing client that will- I don’t know if they received sanctions, but there was some motion for sanctions because of that failure to produce important documents.
Noah Bolmer: Wow, that’s an amazing story. Have you had situations like that happen a lot?
Dr. Edwin Hernandez: Yeah, I have one now. Yesterday we received a Daubert hearing for that particular case. In fact, they were questioning my expertise to determine some percentages and then some other facts for the case that were being challenged. But the judge denied their motion completely. So now I get- well, I don’t have- I won’t call [it] the opportunity, but I will have the right to tell the jury in trial at the end of January the story in full, without any impediment.
Noah Bolmer: How do you deal with those sorts of situations where somebody is trying to impeach your credibility or your ability to opine on a specific topic? Do you have any strategies that you use to deal with being impeached, either in a deposition or in front of a jury?
Dr. Edwin Hernandez: Yes, of course. I mean that happens a lot. The attorneys will try to impeach you. To try to strike certain things that you cannot say, or you can say only certain things. But I think the main thing [is] you have to go back to the beginning. Go back to the discovery. Go back to that report- the day you drafted in the report. Did you add [a] sufficient amount to back up the information? Do you have a sufficient amount of facts that will- that paragraph says, “I opine this is true, this is false, or this is infringing on certain things”? That’s because paragraphs N-1 through N-7-whatever it was then, have a sufficient amount of content- or meat, that you can rely on. Because once they go to impeach that paragraph N you will go, “Sir, you have paragraph N-2. This causes part of that. And N-4, then you will see [the] paragraph will have links to exhibits. We have links to date numbers. We have links to things that I have reviewed.” And that’s the strategy to get or not get impeached. [It] doesn’t happen post, it happens pre. So, when you’re writing the report, you are preparing for that. Because once the report is written and once you have supplements and everything has been filed, discovery is closed. There is no way to correct that. You can clarify that, but you cannot add any more arguments.
Noah Bolmer: Let’s talk about your report writing process a little bit. Do you have a particular process? Do you like to storyboard or index things out or do you just kind of write from the beginning to the end? How do you like to write a report?
Dr. Edwin Hernandez: I usually do report writing in the way that I interact with counsel. Sometimes, counsel will send me something and I will be like, “Look, I don’t like what it says here. I can’t- I’m going to rewrite it. It doesn’t fit.” Or something. You know, attorneys make it more legalistic. So, you need to be more technical than legalistic. And I don’t- that’s why I think it is a collaborative effort. The best reports are the ones where they draft the first version, [then] I send it back to counsel, and we go back and forth maybe five to seven times and then we have a final version of that. We usually have to be signed- and I’m not kidding to all the experts out there, don’t be surprised if you’re at 11:53 p.m. the day of the deadline and you’re still signing and sending the report back to council. Because it [has] happened multiple times, that maybe the client will be the actual patent owner or the client in particular cases [says,] “I don’t like the phrase here. Can you rephrase it?” or “I don’t like what it says here. Did you include this piece of evidence in your report?” You have all that back and forth with the cust- with the client, which is the ultimate plaintiff or defendant, and their attorneys as well.
Noah Bolmer: Wow, that’s interesting. Before we wrap up, do you have a story or two that you can talk about that has kind of either influenced or informed the way in general that you are as an expert witness either tactics that you use or things to avoid?
Dr. Edwin Hernandez: Yes. Well, I mean, I’ve been working on a project personally. It’s called the PTAP Expert. The PTAP expert is basically an AI tool like a GPT tool that reads all the pleadings, all the filings in the IPR in the PTAB court. The PTAB is the Patent Trial and Appeals Board for those who aren’t familiar with that. Those records are open to the public, anyone can download them. And I have indexed a lot of the files from those records. And the idea with the PTAB expert is that you use machine learning and AI [to determine] who will win [or] who may lose a particular challenge. Now, with this knowledge base that is learned, let’s say you can tell this PTAB Expert, GPT, I have a case on this electronic device that is wearable, that is, I don’t know- it’s a band that I wear just like the magic band from Disney World, for example. Then it will try to identify, okay, based on that you need a wearable expert and maybe this is the expert for you. This is the best firm for that particular case. This is the potential outcome based on data that is from life, from the PTAB database. And we’ll be extending that to use the Federal Circuit. The PTAB database is open to the public, so the AI and machine learning expertise is being gathered by myself right there. And I will start using it this next year for some of the cases.
Noah Bolmer: That is absolutely fascinating stuff. Dr. Hernandez, thank you so much for joining me here today.
Dr. Edwin Hernandez: Thank you, Noah. Thank you for everything. Have a great afternoon and Happy New Year to everyone.
After a quarter century helping litigators find the right expert witnesses, Round Table Group’s network contains some of the world’s greatest experts. On the Discussions at the Round Table podcast, we talk to some of them about what’s new in their field of study and their experience as expert witnesses.
Dr. Edwin Hernandez is the founder of both EGLA Corp, a full-service IP and Tech consulting firm; and EGLAVATOR, a tech incubator. He is an expert in AI and wireless software and serves on multiple IEEE boards. Dr. Hernandez holds over a dozen patents, and a Ph.D. in Computer Engineering from the University of Florida.
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Intellectual property is a form of legal entitlement which allows its holder to control the use of certain intangible ideas and expressions. The term ‘intellectual property’ reflects the idea that, once established, such entitlements are generally treated by the courts as if they are tangible property. The most common forms of intellectual property include patents, copyrights, trademarks, and trade secrets.
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Software engineering is the engineering division that develops software products using scientific methods, standards and techniques to create effective and dependable products. By studying the user’s needs when designing, building, and testing new applications, software engineers can achieve their goals of satisfying the user’s needs and create software that is used in offices, schools, and homes every day for work, education, and fun.
Technology is the use of science or knowledge to solve problems or invent useful tools. The advantages of modern technology are easy access to information, promotes creativity and invention, improve communication, productivity, and efficiency. Mechanical technology includes wheels, levers, gears, engines, and belts. Electronic technology like computers and washing machines use electricity to accomplish a goal. Industrial and Manufacture technology is used to create a product. For instance, robots used to manufacture automobiles. Medical technology like MRIs and ventilators help diagnose, prevent and treat disease.
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A trademark is a word, name, symbol, or design, or any combination that is used commercially to identify and differentiate goods from one company or seller from those of another manufacturer. Trademarks can be protected by filing a trademark registration application with the United States Patent and Trademark Office and paying a registration fee. The registering of a trademark provides a company with exclusive rights to their trademark and reinforces their legal position during litigation. Our trademark expert witnesses and consultants have a broad range of experience in areas such as trademark infringement, Lanham Act, trademark dilution, false statements, false advertising, marketing, brand confusion and damages, among many others. They include scholars from major universities and professionals who have worked in advertising for Ketchum Communications, Mattel, McDonald’s, and various Fortune 500 companies; practiced law with the Federal Trade Commission; and written a number of books and articles for academic journals.