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

Choosing an Expert

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

The Interview

Questions by the Attorney

Conflicts Availability Experience in similar cases Other qualifications Cost

Questions by the Expert

Schedule Discovery status Other experts? Negotiation status

Cost Management

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

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

Work Product/Discovery Issues

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

Drafts

Draft expert reports and other documents prepared by testifying expert witnesses are discoverable Krisa v. Equitable Life Assur. Socy., 196 F.R.D. 254 (M.D. Pa. 2000)

If your expert witness writes it, it is discoverable