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Intellectual property cases are often among the most challenging to try in court, in large part because the complex and highly abstract issues can be difficult to communicate to the lay people of the jury. In addition to a carefully planned and constructed argument, it is critical to present cogent, credible, qualified experts who can support an argument, help the jury understand the facts of the case, and construct an understandable framework into which those facts fit. Here are the top ten factors to keep in mind when hunting for the perfect IP expert: 1. Communication Even more than most expert witnesses, an expert in an IP trial must be able to communicate effectively and persuasively, avoid jargon and “talking down” to the jury, and construct clear arguments out of frequently abstract fact-sets. Depending on the trial’s venue, it may even be desirable to retain an expert with a specific regional background or accent, to appeal strongly to the jury. One way to pre-select highly convincing experts is to consider university faculty. People who teach a subject for a living are particularly convincing. 2. Education When reviewing potential experts it is important to remember that, unless impressive credentials are necessary, education is often an equal or better indicator of talent and suitability than present employment or title. In the case of university faculty, for instance, the Stanford Ph.D. who now holds a named chair at Harvard is not necessarily more qualified than the Stanford Ph.D. who is an associate professor at the University of Texas — and the Harvard professor will probably be more expensive and difficult to reach. Big names like Harvard and Yale are impressive, but equally impressive are names listed on the US News & World Report list of top ten engineering schools for 1999: 1) Massachusetts Institute of Technology 2) Stanford University 3) University of California — Berkeley 4) Georgia Institute of Technology 5) University of Michigan — Ann Arbor 6) California Institute of Technology 7) University of Illinois — Urbana-Champaign 8) Carnegie Mellon University 9) Cornell University 10) Purdue University — West Lafayette 3. Publications Where an expert has published prior work, and on what topics, is a strong indicator of his or her suitability for a case, even in cases where the required knowledge-set is very specific. Peruse his or her resume for books, articles, or conference proceedings that bear directly on your case and develop a familiarity with the various academic journals and their selectivity. These will vary from topic to topic. For example, in a case involving a computer hardware patent, publication in one or more of the Institute of Electrical and Electronics Engineers (IEEE) journals such as IEEE Design and Test, or the Journal of Electronic Testing can be a positive indicator. 4. Memberships Membership in a vast number of groups is not an impressive achievement in itself. As with publications, familiarity with respected organizations in a particular field is helpful. For a computer hardware expert, the Institute of Electrical and Electronics Engineers is among the most recognized professional groups, and requires significant contribution to the field for membership. Conversely, groups like Who’s Who in America require only a donation of money and a photo. 5. Awards Again, familiarize yourself with the most meritorious awards and search for them in a resume. Obviously, the Nobel Prize is nothing to scoff at — if you can afford to hire someone who has one — but other things to look for include “best paper” awards at major conferences (take note of what the topic of the paper was) and university teaching awards, which can be an indicator of valuable communications skills. 6. Standing It is important to select an expert who is highly respected in his or her professional community, particularly when two experts from the same industry or field are squaring off against each other, as in an IP trial. This witness will ultimately have more confidence and poise, and be able to draw on more personal contacts and resources within the community than a less regarded individual. For university faculty, indicators of professional standing are easily ascertained: highly regarded professors will have collaborated on many publications, received numerous grants, reviewed submissions for the field’s most-respected journals, and received awards for teaching and research merit. It is often worth the time to contact an expert’s referrals and interview them about his or her standing in the field. 7. Experience All the credentials and erudition in the world are superfluous if the expert has no concept of how to relate his or her knowledge to a dispute over intellectual property. Ideally, the expert will have testified at or at least been a consultant in past IP trials, and will have a good understanding of the litigation process. If not, bringing him or her up to speed may be a demanding task, though a necessary one. 8. Neutrality Some intellectual property experts have become so adept at taking the witness stand that they open themselves up to criticism for being “hired guns,” appearing in several courtrooms every year. It is important to weigh the benefits of presenting one of these super-experts, experienced and talented as he or she may be, against the costs of appearing self-interested to the jury. Often, lesser-known experts are equally effective and present a more objective, unbiased image. (They also cost less.) 9. Cost In intellectual property disputes, perhaps more than in any other type of litigation, experts are critical and ever-present, particularly in the sensitive area of damages calculation. As a result of steep demand, the cost of IP experts can be astronomical. Unless high-class credentials are absolutely paramount (as they admittedly are in many IP disputes), consider foregoing the MIT professor who charges $800 an hour in favor of the equally talented candidate from the University of Minnesota who charges $200. 10. Homework More important than any of the other factors listed here is the degree to which the litigating attorney has researched and learned about the topics at issue. An attorney well-versed in the specific technologies under dispute in a patent case, for example, will be much better prepared to screen, interview, and select a specialized engineering expert with minimum difficulty and confusion. He or she will know which resources to tap, which research or professional fields and sub-fields are likely to contain the ideal expert, and what questions to ask potential experts to determine their suitability.

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