Expert Witness

• Author: Steven H. Voldman
• Profession: Is an IEEE Fellow and graduate of Massachusetts Institute of Technology (MIT)
• Pages: 243-254

From Invention to Patent: A Scientist and Engineer’s Guide. First Edition. Steven H. Voldman.

© 2018 John Wiley & Sons Ltd. Published 2018 by John Wiley & Sons Ltd.

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10.1 Introduction

This chapter focuses on patent litigation and the role of scientists and engineers in pat-

ent litigation process as an expert witness [1–22]. Personally, I have served as an expert

witness in different capacities for more than 10 cases. Each case is unique with different

needs of the patent attorney and the law firm.

10.2 Expert Witness

Expert witnesses are required in patent litigation cases to assist patent attorneys with

the technical and scientific information associated with the patent in question. Expert

witness can play different roles in a patent litigation case. Expert witnesses can serve a s

educators to testifying on the court stand [2–5].

10.2.1 Definition ofExpert Witness

An expert witness, in the United States, is a person whose opinion by virtue of educa-

tion, training, certification, skills, or experience, is accepted by the judge as an expert

[2,3, 5]. The individual is required to be accepted as an expert by a judge. The judge may

consider the witness’s opinion about evidence or about facts before the court within the

expert’s area of expertise. Expert witnesses may also deliver “expert evidence” within

the area of their expertise. The expert evidence can be material in the public domain in

the form of prior art patents, patent applications, corporate literature, technical publi-

cations, or technical proceedings. Their testimony may be rebutted by testimony from

other experts or by other evidence or facts.

10.2.2 Role ofExpert Witnesses

Typically, experts are relied on for opinions on severity of injury, degree of sanity and

causes of failure. In an intellectual property case, an expert may be shown book texts or

circuit boards and asked to ascertain their degree of similarity [2, 3, 5, 15].

The tribunal itself, or the judge, can, in some systems, call upon experts to techni-

callye valuate a certain fact or action, in order to provide the court with a complete

Expert Witness