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Experts in Patent Disputes: Selection, Discovery, Use in Claim Construction, Limiting or Striking Expert Testimony

Recording of a 90-minute premium CLE video webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Thursday, August 31, 2023

Recorded event now available

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This CLE webinar will guide patent counsel on the use of experts in patent disputes in both the federal courts and at the PTAB. The panel will discuss the selection of experts and discovery issues with experts. The panel will also address the use of experts in claim construction as well as limiting or striking expert testimony. The panel will offer best practices for working with and preparing experts.

Description

Patent litigation often turns on a battle of expert testimony for infringement, validity, and damages. It is vital for counsel to carefully select experts and invest time in preparing them well. Patent cases are complex, and judges often lack scientific or technological expertise. Given the importance of expert testimony, it is often very detrimental if it is limited or excluded.

Patent litigants and their counsel need to establish a strategy for how to present witness testimony. Counsel must consider the benefits and risks of presenting the testimony under Rule 701 or Rule 702 or both, keeping in mind the disclosure and reliability requirements.

However, how and when a court will allow expert testimony in patent disputes is uncertain. Consequently, it is critical for counsel and litigants to have a backup plan in place to get key information admitted into evidence.

Listen as our authoritative panel of patent attorneys examines experts in patent litigation. The panel will discuss the different types of experts used in patent cases, selection of experts, and discovery issues with experts. The panel will also address the use of experts in claim construction as well as limiting or striking expert testimony. The panel will discuss using experts in the federal courts and at the PTAB. The panel will also offer best practices for working with and preparing experts.

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Outline

  1. Selection of experts
  2. Interaction between experts and counsel
  3. Use of experts in claim construction
  4. Discovery of experts
  5. Limiting or striking expert testimony
  6. Admissibility of expert testimony before PTAB and the courts

Benefits

The panel will review these and other principal issues:

  • What hurdles related to discovery associated with experts will counsel face?
  • What steps should counsel take to exclude or limit an expert's testimony? Or to avoid an expert's testimony from being limited?
  • What are best practices for working with, communicating with, and preparing experts?

Faculty

Bruno, Christopher
Christopher M. Bruno

Partner
McDermott Will & Emery

Mr. Bruno focuses his practice on intellectual property litigation matters, primarily involving trade secrets,...  |  Read More

Prescott, Katherine
Katherine D. (Katie) Prescott

Principal
Fish & Richardson

Ms. Prescott’s practice focuses on patent and trade secret litigation with an emphasis on software, network and...  |  Read More

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