Selecting and Working with an Expert Gregory J. Lavorgna, Esq. – Drinker Biddle & Reath LLP Jesse David, Ph.D. – NERA Economic Consulting Calculating & Proving Patent Damages LSI Seminar – Philadelphia, PA October 30, 2006
Selecting and Working with an Expert
Gregory J. Lavorgna, Esq. – Drinker Biddle & Reath LLPJesse David, Ph.D. – NERA Economic Consulting
Calculating & Proving Patent DamagesLSI Seminar – Philadelphia, PA
October 30, 2006
Selecting and Working with an Expert - Topics Choosing an Expert
Litigation Objective Expertise/Experience Reputation of the Firm Cost Availability/Timing Compatibility
The Interview Cost Management Timing Work Product Issues
Litigation Objective
Force defendant to exit? Push lost profits
More aggressive claim Expert should be able to analyze the market
Get a license? Reasonable royalty
More realistic claim
Litigation Objective (cont.)
Educate the other side…or scare them? Most cases don’t go to trial Negotiations
Can defendant bring counterclaims? Antitrust issues
Expertise Should expert have direct experience with subject matter of case? Pharmaceutical, healthcare industries
Critical institutional background Counsel should have reasonable expectations about finding a candidate
Helpful if expert understands liability issues Will appear to be more than just a “bean counter”
Academic vs. professional
Experience Lots of cases can mean lots of experience Can also mean greater potential for inconsistent positions from prior cases
Does the expert look like a “hired gun”?
Few cases can mean a “clean” background Can also suggest lack of expertise
Experience (cont.) Track record in court
Mentioned in opinions? Favorably or unfavorably?
Plaintiff or defendant work? Less critical for patent cases
CV Relevant non-litigation experience (publications, speeches, etc.)
Reputation of the Expert’s Firm
How important is it? Other experiences within your law firm
Client management Expectations about the expert’s colleagues/assistants
Cost
Look behind hourly rate Ability of seasoned expert to get right to the core may be cheaper in the long run
Can expert provide cost estimates based on previous cases?
Is expert willing to work to a reasonable budget?
Availability
No conflicts Will expert be there when you call?
Will expert give your case the attention it requires? Will expert personally write reports, deal with counsel, etc.?
How much will expert delegate to junior colleagues?
Compatibility Can you and your client work smoothly with expert?
Is expert Reasonable? Flexible? Polite to client? Polite to staff?
Importance of a face-to-face interview
Questions by the Attorney
Conflicts Availability Experience in similar cases Other qualifications Cost
Cost Management
How do you get everything you want and keep your expert happy without breaking the bank?
Understand How Expert Charges
Hourly Agreed Amount Blended
Different people at different rates Reduced rate plus “top off” after recovery
Avoid appearance that compensation based on outcome of case
Create a Budget Step 1: Know what you want your expert to do
Step 2: Know when you want your expert to have things done
Step 3: Agree on scope and staffing of tasks
Step 4: Fill in the blanks Cost for each task and when payment will be made
Milestones
Plot tasks and deadlines on a time line
Engagement client visit discovery report
checklist+2 weeks +4 weeks +12
weeks
Staffing Schedule What tasks will expert do personally? What tasks will expert delegate to support staff?
Make sure delegation will be cost-effective Billing rates only part of the equation Efficiency and experience are important Credibility also an issue Protection of work product may be an issue
Monitor Progress
Milestone chart and staffing schedule should be reviewed regularly May (probably will) need to be revised as case develops
Keeps everyone focused and avoids “scope creep”
Prevents unpleasant surprises
Timing – When to Retain the Expert
Best time: may depend on the case Amount at stake Budget concerns Complexity of issues
Worst time: last minute
Consulting Expert Consider hiring expert as consultant early in the case Plaintiff: before complaint is filed Defendant: as soon as complaint is served
Make sure scope of engagement clearly limited Specify no testimony in engagement letter
Consulting/Testifying Experts
Can initially engage expert as consultant Can always expand scope of engagement to testimony later in the case
Can also engage separate consulting and testifying experts Firewall between them?
Benefits of Early Retention
Early estimate of amount at stake For plaintiff, may affect strategy for approaching defendant
Maybe litigation not best option For defendant, may assist in preparing counterclaim
Benefits of Early Retention (cont.)
Identify facts, theories, potential problems that might support or defeat an early motion for summary judgment
Benefits of Early Retention (cont.) Assistance in discovery
Expert can identify facts that will need to be established to support damages theory
Help prepare interrogatories and requests for production
Expert can review opponent's discovery responses
Help identify areas for additional discovery, motions to compel, etc.
Expert can assist with fact witness depositions
Help make sure you ask the right questions and get the right answers
Disadvantages Cost Expert may turn out to be incompatible
However, As to cost, can always hold initial work until needed
Initial work may avoid chasing wild goose theories
If expert incompatible, better to find out early
Attorney Work Product
“Core work product” Documents prepared by attorneys that contain their mental impressions and thought processes
Not discoverable
Communicating with Experts
What is discoverable and what isn’t?
Fed. R. Civ. P. 26 (a)(2)(B) testifying experts (b)(4)(B) consulting experts
Communicating with Testifying Experts Fed. R. Civ. P. 26(a)(2)(B) states that an expert retained to give testimony must prepare a written report
The report shall contain a complete statement of all opinions to be expressed and the basis and reasons therefore; the data or other information considered by the witness in forming the opinions; any exhibits to be used as a summary of or support for the opinions; the qualification of the witness, including a list of all publications authored by the witness within the preceding ten years; the compensation to be paid for the study and testimony; and a listing of any other cases in which the witness has testified as an expert at trial or by deposition within the preceding four years.
Non-Substantive Communications
Invoices Discoverable
Cover letters Discoverable Attorney work product may be excepted from discovery
Fed. R. Civ. P. 26(a)(2)(B) No universal agreement in all circuits
What if Expert Considers Core Work Product in Forming Opinion?
Majority rule Core work product is discoverable if considered by a testifying expert
Regional Airport Authority v. LFG, LLC, 2006 U.S. App LEXIS 21035 (6th Circuit)
Minority rule Core work product protected even when considered by a testifying expert in forming opinion
Ladd Furniture, Inc. v. Ernst & Young, 1998 U.S. Dist. LEXIS 17345 (M.D.N.C. Aug. 27, 1998)
Work Product Protection and Non-Testifying Experts Fed. R. Civ. P. 26 (b)(4)(B):
A party may, through interrogatories or by deposition, discover facts known or opinions held by an expert who has been retained or specially employed by another party in anticipation of litigation or preparation for trial and who is not expected to be called as a witness at trial, only . . . upon a showing of exceptional circumstances under which it is impracticable for the party seeking discovery to obtain facts or opinions on the same subject by other means.
Documents Generated by Expert
Expert designated to testify Discoverable
Expert not expected to be called as witness Limited discovery
Showing of exceptional circumstances . . . impracticable to obtain by other means
Fed. R. Civ. P. 26 (b)(4)(B)
Testifying Expert
Expert writes it Discoverable
Expert considers it Discoverable
Expert received it Discoverable