Lawyer Monthly - June 2022

Roleof theExpertWitness The role of an expert witness is first and foremost to provide an economically sound and defensible expert opinion as to the damages suffered due to the infringement of a patent or other piece of intellectual property as governed by current laws and regulations as well as current case law and precedent. This role requires the assumption of validity and infringement as pled by the plaintiff, which may ultimately be found by the court to be not valid or not infringed. In many instances of litigation, the value of a patent or technology is virtually never able to be established through factual, explicit evidence. It is therefore necessary for a damages expert to come in and analyse the specific circumstances and technologies at issue, and come to a reasonable, economically defensible opinion as to the value of a piece of technology or patented invention. MyMost Interesting Intellectual Property Cases I have worked on a significant number of patent cases throughout my career. The technologies covered by the patents I have worked with include (but are not limited to) internet software, computer networking, semiconductors, oil and gas drilling technologies, internet technologies, WiFi technology, cellular technology and medical devices. Throughout my career I have very much enjoyed working on a wide range of different technologies, and I thoroughly enjoy the opportunity to analyse very specific technologies in depth, and attempt to assess the value of pieces of technology that are utilised in multi-functional products containing a significant number of features – and sometimes other patented technologies. I have especially enjoyed my work in the computer networking, cellular, oil and gas and software fields. Technologies in these industries are typically extensive and relatively complex. Assessing the value of a particular piece of technology or single feature within complex multi-feature technological products is extremely interesting and challenging. Intellectual Property LitigationTrends IP litigation of nuanced claims of patents, as well as establishing damages suffered by any accused infringement, can be a very time-consuming and complex endeavour. US patent case rulings, and precedents providing guidelines for the approaches that will be accepted by the court, are extremely intricate and require a significant amount of time and thought to construct a sound economic opinion that complies with the current case law and guidelines required by the court. The industry has seen an increasing number of intellectual property lawsuits filed year-over-year. It appears patent holders and businesses with patented technology are increasingly using patents and the ability to exclude competing technologies as a business strategy to create a competitive advantage in the market. Daubert motions – motions that can be brought to challenge the acceptability of an expert witness’s opinion – have become a motion that virtually every expert witness (damages witnesses as well as technical expert witnesses) must deal with in every case today. These 95 JUN 2022 | WWW.LAWYER-MONTHLY.COM EXPERT WITNESS motions ask the judge to decide whether or not a portion or all of the opinions of an expert will be allowed to be presented to the jury during trial. These motions used to be relatively rare and reserved to challenge the most radical opinions. Today, however, these motions are used on a very regular basis as part of litigation strategy in virtually every case. Additionally, courts have recently been moving toward requiring experts to rely more and more on explicit facts and evidence produced in litigation. Expert opinions are very heavily scrutinised by the courts, specifically through the Daubert process, and courts appear to be moving towards disallowing portions of expert opinions that are not explicitly based on facts established by specific evidence produced in the specific case. This can sometimes lead to exclusion of reasonable economic, business and negotiation principles due to the lack of specific evidence supporting some of these concepts, even though in a realworld business negotiation many of these principles would likely be considered given the circumstances and/or lack of any other specific information. These trends can create substantial challenges for damages experts in forming reasonable, experienced opinions. Riseof Trademark Infringement With the increase in competition in the market in today’s economy, companies that own copyrights and trademarks must be extremely diligent in monitoring the market for potential infringers and be willing and able to quickly move to protect their intellectual property. I recently worked on a trademark infringement case assisting a local business that was experiencing a direct competitor infringing their trademark. This infringement caused significant confusion in the market with my client’s customers, to the extent that my client’s customers were accidentally calling the competitor for follow-up. The amount IP litigation is an extremely complex and time-consuming process.

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