7-4 TYPES OF EXPERTS IN TRADE SECRET CASES
| Jurisdiction | United States |
7-4 Types of Experts in Trade Secret Cases
7-4:1 Technical Experts
One type of expert witness that often appears in trade secret cases is a technical expert. Technical experts are typically used to explain to the jury how the defendant did (or did not) use or incorporate the trade secret into its product or system. A technical expert could also testify about how the engineering, design or manufacturing processes the defendant employs differ from that of the plaintiff or about the ease with which a defendant could reverse engineer an alleged trade secret. For example, in one recent case, the defendant's expert offered testimony about how he was able to duplicate the alleged trade secret based only on publicly available materials.20 On the plaintiff's side, the expert in this case testified that it would have taken a "reasonable investigator" with the proper educational background years to develop the trade secret from publicly available sources.21 Furthermore, a technical expert could explain how the defendant might have used or incorporated the plaintiff's trade secrets to "create a competing product, save time and resources, and capitalize on gaps in the market."22
As mentioned above, a technical expert should take care to offer his or her opinions about those areas for which he or she actually has technical expertise.23 That said, Rule 702 does not require that an expert's testimony relate specifically to the products or services at issue in the case so long as the testimony will "assist the trier of fact" and meet the other requirements of Rule 702. As the Fifth Circuit explained, "Rule 702 does not mandate that an expert be highly qualified in order to testify about a given issue. Differences in expertise bear chiefly on the weight to be assigned to the testimony by the trier of fact, not its admissibility."24 On this point, one Texas federal court refused to exclude a technical expert's option merely because he had failed to examine or opine on the specific Rolls-Royce engine that allegedly contained the trade secrets.25 Instead, the court allowed his testimony because it was "useful to teach the jury background information necessary to understand the case, and [was] therefore relevant to the extent of providing the jury pertinent information about the [alleged trade secret] process in general."26 Thus, with technical experts, courts may allow some latitude when comparing the expert's area of expertise to the subject matter about which he or she is testifying.27
On the other hand, both Texas and federal courts do not hesitate to strike technical trade secret experts who fail to explain the basis for their conclusions. In one example, a court addressed the opinion of an expert who compared the plaintiff's software with the defendant's software in an attempt to show that, contrary to the plaintiff's allegations, the defendant's software did not incorporate the alleged trade secrets.28 The court excluded this testimony because it lacked evidence of reliability:
The report does not indicate how [the expert] decided which components to compare, or how much time he spent comparing them. Indeed, the report does not explain how, exactly, [the expert] compared the features of the programs at all. Furthermore, [the expert] does not explain on what basis he concluded when features in the two programs performed different functions; there are no supporting screenshots or reports produced by the two competing programs to support his conclusions. The Court has simply not been presented with any evidence of the reliability of [the expert's] methodology.29
In the very same opinion, however, the court refused to exclude the plaintiff's expert because that report made clear that he had reviewed the user manuals for both programs; spent three days inspecting the defendant's code; took screenshots throughout the inspection of the two programs' codes; and spent days comparing screenshots of the defendant's code with the plaintiff's code.30
7-4:2 Forensic Computer Experts
Modern technology has enabled employees to work from almost any location using all types of electronic devices, including personal devices and home computers. One downside to this trend is that employees—whether intentionally or not—can easily maintain and transmit company documents even after leaving to work for a new employer. For this reason, trade secret cases often involve forensic computer experts tasked with examining the parties' devices to determine how certain trade secret information may have been retained, transmitted or deleted. One example of this type of expert testimony might establish that a departing employee used a USB drive or other device to download documents from a company computer prior to the employee's departure. Forensic computer experts in trade secret cases might also offer testimony to show how a party may have spoliated the evidence establishing his or her use of the trade secret.
A forensic expert for the plaintiff can examine the devices that the former employee had returned to the plaintiff following his resignation or termination—such as a company-i ssued laptop, phone or thumb drive. But only under rare circumstances can one party's forensic expert examine and test the opposing party's devices. As discussed in Chapter 5, courts circumscribe a party's ability to obtain unfettered access to the devices and drives of the opposing party for fear of, among other things, intruding upon attorney-client privileged information. As one federal court explained, "[b]ecause granting a party access to an opponent's electronic storage device, itself, is highly intrusive, according to the Advisory Committee's comments to the 2006 amendments to Rule 34, while direct 'access [to a party's electronic storage device] might be justified in some circumstances,' the rules were 'not meant to create a routine right of direct access' and courts should 'guard against undue intrusiveness.'"31 This court went on to note that "one area where courts have allowed a requesting party to obtain a mirror image of a producing party's computer is where the computer was used to download trade secrets, the misappropriation of which is the suit's issue."32
In 2009, the Texas Supreme Court addressed the specific circumstances under which a trial court could permit a party's forensic expert to examine the opposing party's device or drive.33 At the outset, the court made clear that, in all cases, such measures are "generally discouraged." It then proceeded to set forth specific procedures the requesting party must follow prior to the trial court allowing it to seize and image the...
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