Selecting and Working with an Expert

1. 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

2. 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

3. Choosing an Expert

4. 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

5. Litigation Objective (cont.) • Educate the other side…or scare them? • Most cases don’t go to trial • Negotiations • Can defendant bring counterclaims? • Antitrust issues

6. 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

7. 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

8. 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.)

9. 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

10. 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?

11. 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?

12. 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

13. The Interview

14. Questions by the Attorney • Conflicts • Availability • Experience in similar cases • Other qualifications • Cost

15. Questions by the Expert • Schedule • Discovery status • Other experts? • Negotiation status

16. Cost Management

17. Cost Management • How do you get everything you want and keep your expert happy without breaking the bank?

18. 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

19. 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

20. Milestones • Plot tasks and deadlines on a time line  Engagement client visit discovery report checklist +2 weeks +4 weeks +12 weeks

21. 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

22. 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

23. Timing

24. 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

25. 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

26. 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?

27. 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

28. Benefits of Early Retention (cont.) • Identify facts, theories, potential problems that might support or defeat an early motion for summary judgment

29. 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

30. 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

31. Work Product/Discovery Issues

32. Attorney Work Product • “Core work product” • Documents prepared by attorneys that contain their mental impressions and thought processes • Not discoverable

33. 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

34. 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.

35. 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

36. 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)

37. 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.

38. 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)

39. Testifying Expert • Expert writes it • Discoverable • Expert considers it • Discoverable • Expert received it • Discoverable

40. 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